Dairy alternative Oatly has overcome objections to its slogan, ‘It’s like milk, but made for humans’, potentially offering a new way for vegan and vegetarian brands to protect plant-based trademarks in the EU.

As we previously covered, EU rules requiring products marketed as ‘milk’, ‘cream’, ‘cheese’, ‘butter’ or ‘yoghurt’ to include dairy have made obtaining trademark protection for plant-based varieties something of a challenge.

According to a CJEU ruling in June 2017: “Purely plant-based products cannot, in principle, be marketed with [such] designations, which are reserved by EU law for animal products.The same is true if those designations are accompanied by clarifying or descriptive terms indicating the plant origin of the product concerned.”

However, as the popularity of plant-based dairy and meat alternatives continues to grow, so too are the number of trademarks being registered for vegan foods, leading to some high profile battles as companies look for ways to successfully register trademarks for their product lines.

By overcoming objections to its trademark slogan ‘It’s like milk, but made for humans’. Swedish brand Oatly may have found a route through the maze.

Appeal to a partial refusal

Although it was first launched in the 1990s, Oatly has only come into the mass public consciousness in recent years, when it became the alternative of choice for plant-based flat whites and cappuccinos.

In March 2019, Oatly submitted an application to the EUIPO to register its advertising slogan 'It's like milk, but made for humans' for products in classes 18 (bags), 25 (clothing), 29 and 30 (foodstuffs) and 32 (drinks), including dairy replacement foods and drinks. The mark was accepted for products in classes 18 and 25 as well as for a number of products in classes 29, 30 and 32, including fruit and vegetable products, processed grains and water-based drinks. However, the application to protect the remainder of products in classes 29, 30 and 32 was refused.

In its review of Oatly’s appeal, EUIPO’s Board of Appeal considered that the first part of the mark, ‘It's like milk’, indicated that the products sold under the mark are or contain milk substitutes, and that the second part, ‘but made for humans’, suggested that the products are intended for human consumption.

According to the Board, the slogan serves more as a laudatory advertisement (see our article on ‘The Impossible Burger’ here) than as an indication of the origin of the products for the purposes of trademark law. The Board also found the trademark not to be adequately distinctive and that the length of the trademark even precludes consumers from recognising the slogan as a trademark. This is a common challenge facing slogan trademarks in the EU, as we previously covered in our article ‘Protecting slogan as trademarks: how and why’.

The ruling of the EU General Court

Oatly appealed the decision of the Board of Appeal to the General Court of the European Union, which ruled on 20 January in its favour.

In particular, it found that by “[calling] into question the relevant public’s perception of milk as a substance intended for human beings by evoking the controversial idea that milk is not appropriate for human consumption. It submits that, consequently, that phrase, taken as a whole, is original, imaginative, paradoxical, surprising, thought provoking and unexpected and is therefore capable of performing the essential function of a trademark.”

In other words, the slogan fulfils the requirements for trademark protection in that it is easy to remember, distinctive and serves to distinguish Oatly's products from those originating from another company. For that reason, the Court found that the Board of Appeal had wrongly refused the trademark, and annulled the contested decision.

Protecting slogans

The right slogan can add significant value to a brand, but obtaining protection is not always easy. As we have previously covered, the EUIPO is especially strict when it comes to trademark protection for slogans, and such marks must first and foremost be distinctive.

Laudatory and/or common phrases are unlikely to achieve registration in the EU; however, as the Oatly ruling reinforces, slogans that are easily memorable, imaginative, surprising, unexpected, or are a play-on-words, are more likely to fulfil the requirements for distinctive character needed to be regarded as a trademark. Slogans with ‘acquired distinctiveness’ through long-standing use (as with Kit Kat’s ‘Have a break’) can also fulfil this requirement, although substantial evidence demonstrating distinctiveness via long-term use will be necessary in this respect.