In the case of Oatly AB v European Union Intellectual Property Office (EUIPO) Case T-253/20, Swedish oat milk brand Oatly was successful in its appeal to register their trade mark for ‘IT’S LIKE MILK BUT MADE FOR HUMANS’, following a finding that the mark had the necessary distinctive character for registration.

EUIPO REFUSAL

In March 2019 Oatly applied for an EU trade mark for IT’S LIKE MILK BUT MADE FOR HUMANS in classes 18, 25, 29, 30 and 32.

The EUIPO raised objections to some of the goods applied for in classes 29, 30 and 32 on the basis that the mark was devoid of distinctive character within the meaning set out in article 7(1)(b) which is an absolute ground for refusal, read in conjunction with article 7(2) of REGULATION (EU) 2017/ 1001.

In September 2019 the EUIPO examiner refused to register the mark in relation to a substantial portion of the goods applied for by Oatly in classes 29, 30 and 32 which included dairy substitutes, oat based products and beverages of plant based origin. The mark was allowed to proceed for registration in relation to small portion of the goods applied for in the three classes at issue.

FIFTH BOARD OF APPEAL DECISION

Oatly filed a notice of appeal in October 2019 and in February 2020, the Fifth Board of Appeal of agreed with the EUIPO, taking into account the following:

– that the goods were aimed at the general public and the perception of the English-speaking public (Ireland and Malta) should be taken into account;

– that the mark could be broken down into two parts IT’S LIKE MILK which indicated the product was a milk substitute BUT MADE FOR HUMANS which signaled the product was made for human consumption. The board of appeal also found there was not much difference between the reading of the mark as a whole and the mark split into two parts;

– that some, including those with milk allergies and vegans would consider the positive aspects of the product being a milk substitute; and

– that the mark gave consumers the idea that the product shared the same attributes as cows milk.

In light of the above, the Fifth Board of Appeal made it clear that the mark was devoid of distinctive character in relation to the goods in the classes at issue.

GENERAL COURT DECISION

Oatly appealed the decision yet again and the matter was heard by the General Court (Second Chamber). The General Court found that the Board of Appeal “erred in finding that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001”[49]

THE LAW

When assessing the law, the General Court looked at relevant case-law and noted that the essential function of a trade mark is to be a badge of origin, therefore a mark which is devoid of distinctive character is one which is “incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue” which would then allow customers to make a decision on whether to choose to buy the goods again, or steer clear of the goods, as set out in Sykes Enterprices v OHIM (REAL PEOPLE, REAL SOLUTIONS) T-130/01 [18]

The General Court in their assessment of case-law fount that “a minimum degree of distinctive character is sufficient”[22] to stop article 7(1)(b) from kicking in.

THE GENERAL COURT’S EXAMINATION OF THE CASE

The General Court agreed with Oatly’s submission that not only should the perception of the English speaking public be taken into account, but also the perception of countries that are deemed to be English speaking e.g. Denmark, Finland and Sweden.

When assessing the distinctive character of the mark, the General Court found that the mark “conveys a message which is capable of setting off a cognitive process in the minds of the relevant public making it easy to remember and which is consequently capable of distinguishing the applicant’s goods from goods which have another commercial origin” [46].

LOOKING FORWARD

The decision ultimately highlights that is not a high hurdle for a mark to be considered distinctive and that a mark can be considered a slogan whilst still being able to function as a badge of origin. The comments in relation to the cognitive process that takes place when considering a mark provides practical guidance for future applicants of marks that may be on the threshold of being capable of serving as a badge of origin.