Tom Moody-Stuart KC represented Dairy UK, the UK dairy industry body, in successfully resisting the appeal by Oatly against the invalidation of Oatly’s trade mark POST MILK GENERATION as registered for non-dairy products. The appeal concerned the extent to which protected “designations” for specific food products (in this case “milk”) can be used as part of trade marks for other food products and is of potentially broad application in the marketing and branding of foodstuffs.
The appeal turned on the meaning (as a matter of assimilated law) of the term “designation” in Article 78(2) and Part III of Annex VII of Parliament and Council Regulation (EU) No. 1308/2013 of 17 December 2013. The Supreme Court held that the term “designation” included use as part of trade mark and was not limited to use as the generic name of a product. As a result, a trade mark containing a designation could only be used lawfully if the use clearly described a characteristic quality of the product in issue. POST MILK GENERATION did not satisfy this requirement. The Supreme Court did not decide the issue of whether such descriptive use would only be permitted if it were also contained in the list of products specified in Commission Decision 2010/791/EU of December 2010, on which the Court of Appeal had been divided (Dairy UK Ltd v Oatly AB [2024] EWCA Civ 1453).
The Supreme Court further held that assimilated law was to be interpreted in accordance with the usual approach to domestic statutory interpretation, albeit that the EU origin of the legislation may be relevant in considering the context and purpose of the provision.
Tom was instructed by Asima Rana of DWF LLP and the Supreme Court summary page is here.