Dr Juliette Boynton

March 2026

A few months after the registration was granted, Dairy UK Ltd, the trade association for the UK dairy industry, filed a declaration for invalidity under the Trade Marks Act 1994, Section 3(4), which states:-

“A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law other than law relating to trade marks.”

Dairy UK Ltd referred to the Parliament and Council Regulation (EU) No. 1308/2013 of 17 December 2013 relating to markets in agricultural products that regulates the use of various agricultural terms, including dairy terms, for example milk, cream, yoghurt and cheese.  Specifically, Annexe VII, Part III, at point 1, provides the following definition:-

““Milk” means exclusively the normal mammary secretion obtained from one or more milkings without either addition thereto or extraction therefrom.”

Points 3 and 5 state:-

“The term ‘milk’ and the designations used for milk products may also be used in association with a word or words to designate composite products of which no part takes or is intended to take the place of any milk constituent and of which milk or a milk product is an essential part either in terms of quantity or for characterisation of the product”

and

“The designations referred to in points 1, 2 and 3 may not be used for any product other than those referred to in that point.  However, this provision shall not apply to the designation of products the exact nature of which is clear from traditional usage and/or when the designations are clearly used to describe a characteristic quality of the product.”

Thus, Dairy UK argued that the presence of the term “MILK” in the trade mark and the use of this term on the oat-based products of the registration is prevented by this regulation.

In the original cancellation action, the Hearing Officer concluded that the registration was invalid in respect of the food and drink goods, but not the T-shirts, because the mark contains the word “milk”, and the goods of the registration are not “milk” and thus cannot be referred to as “milk” under the regulation.  However, this does not apply to T-shirts.

Arguments centred around whether the term “designations” exclusively covered items that fell under the definition of “milk” in point 1, namely “normal mammary secretions”, or whether it covered other products that were referred to as milk in common usage.

Oatly appealed to the High Court, where the decision was overturned.  Here, the Judge considered that the term “designation” in points 3 and 5 was critical, opining that it was not the use of the term “milk” in marketing products that was prohibited, rather it was the use of the term “milk” to identify products as being milk that was prohibited.  Paragraph 39 of the Judgement states:-

“it is the use of the term ‘milk’ for products to identify them as being milk, not merely its use in their marketing, that constitutes their designation as such. In this case, the Mark was registered for a variety of goods in different classes and, although it may well have been used in their marketing, it does not purport to market them as any particular product, let alone as milk. Since the Mark does not designate those goods as ‘milk’, point 5 is not engaged and no question of the proviso to point 5 arises.”

Dairy UK therefore appealed to the Court of Appeal, where the High Court Decision was overturned.  All of the Judges agreed that the terms “milk” is one of “designations” and thus all designations must fall within the scope of the definition of “milk”.  As a result, the term “milk” cannot be used in relation to any product which is not “milk” as defined by the Regulation.

There was also the question of whether the proviso in Point 5 saves the trade mark, with Arnold JL indicating that this is not the case:-

“I agree with the hearing officer that it would be understood as referring to potential consumers of the goods.  It may be understood as alluding to the facts that the goods are non-dairy products, but is does not clearly describe any such characteristic.”

Oatly Appealed to the Supreme Court, who issued their Decision on 10 February, and which has been widely discussed in the press.

Oatly argued that “designation” means the name of the product, which is the oat-based product and not the trade mark in question, namely “POST MILK GENERATION”.  As a result, the Regulation does not prohibit the use of the trade mark on an oat-based food or drink.  It also suggested that even if this is wrong, the trade mark is saved by the proviso as “POST MILK GENERATION” is describing a characteristic quality of the product, namely that it is milk-free.

In contrast, Dairy UK argued that “designation” means the use of “milk” or any product thereof in relation to the goods of the trade mark, namely oat-based food and drink.  It does not matter that “POST MILK GENERATION” is not the name of a particular product, it is nevertheless to be used on products that are not “milk” under the definition.  With regards to the proviso of Point 5, Dairy UK argued that the mark does not refer to a characteristic quality of the product, but to the consumers, and thus the application is not saved by the proviso.

The Supreme Court Judges agreed with Dairy UK that “designation” refers to the product as such and to not the name of the product, and thus the term “milk” cannot be used in association with oat-based products.  They also agreed that the mark is not saved by the proviso as POST MILK GENERATION does not describe a characteristic quality of the goods.

There was some discussion on whether use of “MILK-FREE” would be prohibited, with the conclusion that this would be saved by the proviso.

Finally, the Court did confirm that the mark POST MILK GENERATION is valid in respect of T-shirts.  In the Court’s view, this further confirms the decision in relation to the oat-based products, as the mark would be descriptive of the consumers most likely to wear the T-shirt, but not to any characteristic of the T-shirt as such.

In conclusion, the Supreme Court confirmed that EU law, now part of UK law, prohibits the use of the term “milk” on goods that are not “mammary secretions” in accordance with the definition.