Oat-Based Milk Trade Mark Invalid, Supreme Court Rules

The Supreme Court has ruled that a trade mark registered by a company that manufactured oat-based food and drink products was invalid in relation to such products.

In April 2021, the company had registered the trade mark 'POST MILK GENERATION' for use in relation to oat-based food and drink and on T-shirts. Dairy UK, the trade association for the UK dairy industry, applied for a declaration that the registration was invalid under Section 3 of the Trade Marks Act 1994. Section 3(4) of the Act prevents the registration of any trade mark where its use is prohibited by any enactment or rule of law other than law relating to trade marks. Dairy UK argued that Regulation (EU) No. 1308/2013, which became assimilated law following Brexit, contained such a prohibition.

A hearing officer in the Intellectual Property Office (IPO) concluded that the mark was invalid in respect of oat-based food and drink products because it contained the word 'milk' and Point 5 in Part III of Annex VII of the Regulation states that the designation 'milk' cannot be used for products which are not milk, regardless of how the mark may be viewed by consumers. The mark did not fall within the exception in Point 5 for designations that are clearly used to describe a characteristic quality of the products. However, the prohibition did not apply to non-agricultural products, such as T-shirts, which manifestly fell outside the scope of the Regulation.

The company successfully appealed the hearing officer's decision on oat-based food and drink products to the High Court, which concluded that the hearing officer had construed the prohibition in Point 5 too widely. After the Court of Appeal overturned the High Court's decision, the company appealed to the Supreme Court.

The Court held that the term 'designation' in Point 5 has a broad meaning and refers to a mark's use in respect of a food or drink rather than the naming of a food or drink. That meaning was consistent with the purpose of Point 5, which is to set out fair standards of competition in respect of milk. The mark therefore fell within the scope of Point 5 on the basis that it used the term 'milk' as a designation.

In the Court's view, the mark was focused on describing the targeted consumers, particularly younger consumers who might be said to belong to a generation for whom there were widespread concerns about the production and consumption of milk. It was not 'clearly' describing any characteristic of the products. Even insofar as it could be regarded as referring to a characteristic quality of the products, it did so in an oblique and obscure way. In particular, it did not make it clear whether the products were entirely milk free or whether the milk content was merely low. It was not saved by the exception in Point 5 and was therefore invalid in respect of oat-based food and drink.