On 20 January 2021, the General Court (“GC”) handed down its judgment in the appeal brought by Oatly AB (“Oatly”) against the decision of the EU Intellectual Property Office (“EUIPO”) to refuse to register the mark IT’S LIKE MILK BUT MADE FOR HUMANS. The GC held that Oatly’s mark was registrable and that EUIPO had erred in concluding that it was devoid of distinctive character.
In 2019, Oatly, a Swedish company producing oat-based substitutes for dairy products, applied to register the stylised word mark IT’S LIKE MILK BUT MADE FOR HUMANS (as shown below) for goods in Classes 18, 25, 29, 30 and 32. The EUIPO examiner refused to register the mark applied for in respect of certain goods in Classes 29, 30 and 32, such as ‘dairy substitutes’, ‘oat-based pancakes’ and ‘oat-based beverages’, on the grounds of a lack of distinctive character under Article 7(1)(b) of the 2017 EU Trade Mark Regulation.
Appeal to the EUIPO
In February 2020, the Fifth Board of Appeal of the EUIPO (the “Board”) upheld the decision of the examiner, finding that the mark was incapable of performing the function of a trade mark with regard to the initially refused goods and was therefore devoid of any distinctive character. In determining whether the mark had distinctive character, the Board of Appeal separated the words in the mark into two phrases: ‘It’s like milk’ and ‘but made for humans’. In doing so, it found that the first phrase conveyed the message that the goods contained a milk-like product and the second phrase indicated that such products were more suitable for consumption by humans.
Further, the Board considered that the mark applied for would be viewed by the relevant public as a promotional slogan for the relevant goods as opposed to an indication of their origin. This was due to the portrayal of the positive elements of the goods contained in the mark, namely that the plant-based goods were very similar to milk and that they were specifically made for human consumption (unlike cow’s, goat’s and sheep’s milk).
The Board further noted that the length of the mark, together with the lack of other elements that may confer distinctive character on the mark, meant that it was incapable of being registered as or functioning as a trade mark.
General Court’s ruling
On appeal, Oatly asserted that the Board had erred in two ways. Firstly, in its identification of the relevant public and secondly, in its assessment of the distinctive character of the mark.
With regard to the assessment of the relevant public, the GC considered whether the Board was correct in determining the relevant public to be English-speaking territories of the European Union, including Ireland and Malta. The GC accepted the submission brought by Oatly that, in addition to the territories mentioned, the relevant public ought also to include countries in which English is widely understood such as Denmark, the Netherlands, Finland and Sweden.
In relation to the mark’s distinctive character, the GC considered the meaning of the mark applied for and noted that the presence of the word ‘but’ in the middle of the phrase would create an element of opposition between the first and second parts of the mark in the eyes of the relevant public. As such, the GC concluded that the mark counters the common conception that ‘ordinary’ milk is a key element of the human diet. Such conception was shown through the evidence put forward by Oatly in its appeal to the EUIPO which made clear that the launch of its products under the mark in the Netherlands, Sweden and the UK caused controversy among consumers.
As a result of this, the GC held that the mark applied for did have the minimum degree of distinctive character required by Article 7(1)(b) of the 2017 EU Trade Mark Regulation. The GC noted that the mark conveys a message which is capable of setting off a “cognitive process” in the minds of the relevant public, thus making it easy to remember. Consequently, the relevant public would be capable of distinguishing Oatly’s goods from that of a different commercial origin. The appeal brought by Oatly was therefore upheld, and the decision of the EUIPO annulled.
Comment: The GC’s decision confirms that advertising slogans are capable of functioning as trade marks provided that they are sufficiently distinctive and serve to identify the origin of the product in question over and above making a promotional impact. The notable aspect of Oatly’s slogan was the evidence presented to the GC about the underlying conflict and controversy in the statement “like milk but made for humans” which gave the proposed mark a distinctive character over and above the literal meaning of its words.
By considering the cumulative meaning and implication of the phrase as a whole, the GC was able to find an element of distinctive character that the Board had failed to recognise when “dissecting” the slogan into two independent phrases. This decision demonstrates the importance of considering the distinctiveness of a mark as a whole, taking into account its overall conceptual meaning.