Dairy UK Ltd (Respondent) v Oatly AB (Appellant)

Case summary

Case ID

UKSC/2025/0004

Parties

Appellant(s)

OATLY AB

Respondent(s)

DAIRY UK LIMITED

Issue

Was the Court of Appeal wrong to hold that Oatly AB could not validly register POST MILK GENERATION as a trade mark as this was prohibited under Article 78(2) and Part III of Annex VII of EU Regulation 1308/2013?

Facts

The Appellant, Oatly AB (“Oatly”), is a company that produces alternatives to dairy products from oats, including oat drink. The Respondent, Dairy UK Ltd (“Dairy UK”), is the trade association for the UK dairy industry. On 19 November 2019, Oatly filed an application with the United Kingdom Intellectual Property Office (“the IPO”) to register POST MILK GENERATION (“the Trade Mark”) as a trade mark to be used on T-shirts and oat-based products. On 23 April 2021, the IPO registered the Trade Mark. On 23 November 2021, Dairy UK filed an application with the IPO for a declaration that the Trade Mark was invalidly registered under sections 3(3)(b) and 3(4) of the Trade Marks Act 1994 (“the 1994 Act”). Section 3(3)(b) prohibits registration of a trade mark if it is “of such a nature as to deceive the public”. Section 3(4) provides that “[a] trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law”. Dairy UK argued section 3(4) of the 1994 Act applied as the Trade Mark was prohibited by Article 78(2) and Part III of Annex VII of EU Regulation 1308/2013 (“the 2013 Regulation”). The 2013 Regulation controls when ‘designations’ such as ‘milk’ and related terms can be used on products. The 2013 Regulation has been retained in UK law after Brexit. In a decision issued on 17 January 2023, the IPO rejected Dairy UK’s argument based on section 3(3)(b) holding that the Trade Mark was not deceptive, but on section 3(4) accepted that the Trade Mark was prohibited under the 2013 Regulation. Oatly appealed to the High Court, which overturned the IPO’s decision regarding section 3(4) on the basis that a term is only a ‘designation’ under the 2013 Regulation if it is a generic description of the product; the Trade Mark was not a generic description of a product and was therefore not a ‘designation’. The Court of Appeal disagreed with this analysis, holding that the Trade Mark was a ‘designation’ and prohibited under the 2013 Regulation. Oatly now applies for permission to appeal to the Supreme Court.

Date of issue

2 January 2025

Case origin

PTA

Back to top