March 16, 2021
In March 2019, the Swedish company, Oatly AB, filed an application to register IT’S LIKE MILK BUT MADE FOR HUMANS as an EU trade mark in various Classes, including Class 29, covering inter alia, “Dairy substitutes; dairy product substitutes; milk substitutes; milk substitutes containing oats; oat milk [milk substitute]” etc; Class 30 covering inter alia, “oat-based cake mixes, oat-based biscuit mixes” etc; and Class 32 covering inter alia, “Preparations for making beverages; non-alcoholic beverages; oat-based beverages”.
The application also included goods in Classes 18 and 25.
EUIPO refused registration in relation to the goods set out above in Classes 29, 30 and 32 on the basis of Article 7(1)(b) of the EU Trade Mark Regulation (2017/1001/EU), but allowed it in relation to “Fruit and vegetable spreads; processed fruit, fruit snacks” in Class 29, “processed grains, starches, and goods made thereof, baking preparations and yeasts” in Class 30 and “Functional water-based beverages” in Class 32. The application was also allowed in relation to Classes 18 and 25.
The Fifth Board of Appeal dismissed Oatly’s appeal and Oatly appealed to the General Court, alleging infringement of Article 7(1)(b) and submitting that the BoA had erred in identifying the relevant public and in assessing the distinctive character of the mark applied for.
The GC noted that the signs refused registration under Article 7(1)(b) are those that are regarded as incapable of performing the essential function of a trade mark, i.e. identifying the commercial origin of the goods or services in question.
The GC also noted that, according to case law, the registration of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks is not excluded by virtue of such use. Further, for the purposes of assessing the distinctive character of such marks, it is inappropriate to apply to those marks criteria that are stricter than those applicable to other types of sign.
Further, the laudatory connotation of a word mark does not mean that it cannot guarantee to consumers the origin of the goods or services it covers. It can be seen as both a promotional formula and an indication of the commercial origin of goods or services. Therefore, insofar as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood, even primarily understood, as a promotional formula has no bearing on its distinctive character. Further, an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b).
The GC found that the BoA had been correct to find that the relevant public corresponded to the general public and that its level of attention was average when purchasing those goods. It was also right to take into account the perception of the English-speaking public. However, the GC agreed with Oatly that the English-speaking part of the EU did not only consist of the countries in which English is an official language (Malta and Ireland), but also included those in which English is widely understood, which includes Denmark, the Netherlands, Finland and Sweden. Therefore evidence in relation to the perception of the mark by consumers in those countries should also be taken into account, which the BoA had not done.
As for distinctive character, the BoA had found that the first part of the mark (IT’S LIKE MILK) would be perceived as indicating that the goods marketed consisted of or contained milk substitutes that were like “real” milk, and that the second part of the mark (BUT MADE FOR HUMANS) would be perceived as indicating that they were more apt for human consumption than “real” milk or goods containing “real” milk. It had also found that there was no perceptible difference between the mark as a whole and the conjunction of both of its parts. The BoA had concluded that, perceived in the light of the goods in question, the mark would be understood as a laudatory promotional slogan rather than as an indication of the commercial origin of those goods. It had highlighted the fact that some consumers suffered from lactose intolerance or an allergy to milk or were vegans.
In terms of the meaning of the mark, the GC said that, because of the coordinating conjunction BUT in the middle of the mark, the consumer would perceive an opposition between the first part of the mark (IT’S LIKE MILK ) and the second part of the mark (MADE FOR HUMANS). As a result, the mark conveyed not only the idea that the goods, i.e. foodstuffs, were akin to milk and intended for human consumption, but also the idea that milk itself was not.
Therefore, the mark called into question the commonly accepted idea that milk was a key element of the human diet. This was also apparent from Oatly’s evidence, which showed that the launch of the mark had caused controversy in the Netherlands, Sweden and the UK.
The GC said that the mark therefore conveyed a message that was capable of setting off a cognitive process in the minds of the relevant public making it easy to remember. It was therefore capable of distinguishing Oatly’s goods from goods which had another commercial origin. The GC found, therefore, that the mark had the minimum degree of distinctive character required by Article 7(1)(b).
The BoA had therefore erred in finding that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b). Consequently, the GC upheld Oatly’s appeal and annulled the BoA’s decision. (Case T-253/20 Oatly AB v EUIPO (IT’S LIKE MILK BUT MADE FOR HUMANS) EU:T:2021:21 (20 January 2021) — to read the decision in full, click here).