Oatly and “Post Milk Generation”: what the Supreme Court decided

The dispute

Oatly owned a UK registration for POST MILK GENERATION covering, among other things, oat-based food and drink products. Dairy UK challenged the registration by relying on the restrictions concerning marks that include protected designations such as “milk” for products that are not dairy products.

The case turned on the interpretation of an exception permitting use where the relevant term forms part of a trade mark that indicates the nature of the product.

The Supreme Court’s approach

The Court held that the exception was not confined to marks that are purely descriptive. A phrase can function as a badge of origin and still indicate a characteristic of the goods. Looked at as a whole and in context, POST MILK GENERATION could indicate products intended for consumers who no longer drink dairy milk.

The judgment restored the original tribunal result. It does not create a general permission to use protected dairy terms for plant-based foods: the outcome depended on the wording of the mark, the relevant legislation and the goods in question.

What brand owners can take from it

Composite slogans should be assessed as a whole. The fact that a mark is distinctive does not necessarily prevent it from also communicating something about the goods. Equally, sector-specific naming rules can operate alongside ordinary trade mark law, so clearance should consider both.

Businesses in regulated product sectors should obtain advice before investing in packaging or filing a trade mark application.

• Assess the complete phrase, not one word in isolation.
• Check sector-specific marketing and labelling rules.
• Keep evidence explaining how the proposed wording will be understood.