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

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

The Court held that 'designation' in the relevant Regulation includes trade marks and that the use of 'milk' in the trade mark POST MILK GENERATION for oat-based, non-dairy products is prohibited by Article 78(2) and Annex VII, Part III, point 5 of Regulation 1308/2013/EU. The exceptions in point 5 did not apply as POST MILK GENERATION is not a designation clearly used to describe a characteristic quality of the goods, nor is it a product listed in the 2010 Decision. The appeal was allowed and the hearing officer's declaration of invalidity reinstated.

Citation
[2024] EWCA Civ 1453
Parties
Applicant/appellant: Dairy UK Limited; Proprietor/respondent: Oatly AB
Jurisdiction
England and Wales
Judgment Date
29 November 2024
Procedural Posture
Trade Mark Appeal / Court of Appeal (civil Division) on Second Appeal From High Court
Outcome
Appeal allowed; declaration of invalidity reinstated.
Legal Topics
Trade Marks, Deceptive Marks, Regulation of Food Labelling, Interpretation of EU Regulations, Marketing Standards for Agricultural Products
Intellectual Property Law EU Law Food Law Trade Marks Deceptive Marks Regulation of Food Labelling Interpretation of EU Regulations Marketing Standards for Agricultural Products

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Parties

Dairy UK Limited

Applicant/appellant

Oatly AB

Proprietor/respondent

Procedural Posture

Trade Mark Appeal / Court of Appeal (civil Division) on Second Appeal From High Court

Legal Issues

  1. 1 Whether the term 'designation' in Article 78(2) and Annex VII, Part III of Regulation 1308/2013/EU includes trade marks such that the use of 'milk' in the trade mark POST MILK GENERATION is prohibited for non-dairy products.
  2. 2 Whether the use of the trade mark POST MILK GENERATION is permitted under the exceptions in Annex VII, Part III, point 5 of Regulation 1308/2013/EU.

Ratio Decidendi

The Court held that 'designation' in the relevant Regulation includes trade marks and that the use of 'milk' in the trade mark POST MILK GENERATION for oat-based, non-dairy products is prohibited by Article 78(2) and Annex VII, Part III, point 5 of Regulation 1308/2013/EU. The exceptions in point 5 did not apply as POST MILK GENERATION is not a designation clearly used to describe a characteristic quality of the goods, nor is it a product listed in the 2010 Decision. The appeal was allowed and the hearing officer's declaration of invalidity reinstated.

Court Disposition

Appeal allowed; declaration of invalidity reinstated.

Orders

  • The appeal is allowed.
  • The hearing officer's declaration of invalidity in respect of Classes 29, 30, and 32 is reinstated.