English court finds POST MILK GENERATION trade mark invalid for oat-based drinks and food products under retained EU agricultural product regulation

The Court of Appeal has recently allowed an appeal by trade body Dairy UK Ltd, and reinstated the UKIPO Hearing Officer’s declaration of invalidity of the UK trade mark POST MILK GENERATION owned by the Swedish manufacturer of plant-based milk products, Oatly AB.

The Court of Appeal held that the Hearing Officer had correctly found the mark was invalid under s 3(4) of the Trade Mark Act 1994, on the basis that an EU agricultural product regulation which continues to apply in the UK under retained EU law (the Common Market Organisation Regulation (1308/2013/EU) or “the CMO Regulation 2013” for short) contains provisions that specifically prohibit the use of the term “milk” in the UK for products not made exclusively of milk.

The Court of Appeal found that the High Court judge had erred in his interpretation that the term “designation” in Article 78(2) and Annex VII, Part III of the CMO Regulation 2013 excluded a trade mark or part of a trade mark. 

In the view of the Court of Appeal, while POST MILK GENERATION might be understood as alluding to the fact that the goods were non-dairy products, it did not clearly describe any such characteristic. 

The case provides a useful reminder of the need to bear in mind the warning of s 3(4) of the Trade Mark Act 1994, namely 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 other than law relating to trade marks”.

At the time of writing it is not known whether this decision will be appealed to the Supreme Court; if not, then the Court of Appeal’s judgment suggests businesses that market dairy alternatives will need to tread carefully and consider whether their trade marks fall within the prohibition in the CMO Regulation, whist accepting that adding words in an effort to make it clear that a product is a dairy substitute might not be enough.  

Case reference: Dairy UK Ltd v Oatly AB [2024] EWCA Civ 1453 (29 November 2024)

Our full article on this case will appear in European Intellectual Property Review Issue 4 published in March 2025.