Plant milk manufacturer, Oatly, recently brought legal action against Glebe Farm Foods, claiming its product PureOaty took “unfair advantage” of their own drink. The High Court  ruled in favour of the farm saying there was no “risk of injury to the distinctive character” of the Oatly brand.

Plant milk manufacturer, Oatly, recently brought legal action against Glebe Farm Foods, claiming its product PureOaty took “unfair advantage” of their own drink. The High Court  ruled in favour of the farm saying there was no “risk of injury to the distinctive character” of the Oatly brand.

Collyer Bristow’s Head of Head of Intellectual Property and Data Protection, Patrick Wheeler, comments:

This case highlights one of the risks of choosing a trade mark that is quite descriptive of the product to which it relates. Other traders are likely to want to use the descriptive name of the product in ways that are likely to come close to the registered trade mark. As a general rule, it is important to take action to stop others using identical or similar marks on identical or similar products, in order to preserve the value and validity of the registered trade mark. However, in some situations the trade mark owner will have a difficult choice to make. Should they take action to try to stop all similar uses, in an attempt to preserve some exclusivity for the registered mark, and risk losing (as here), or should they let most similar uses go, and risk an argument in the future that their registered mark has become generic, in which case the registration will be cancelled?

There is also a public relations danger. It is easy for commentators to build a “David and Goliath” story around efforts by a trade mark owner to protect its registered rights, so there is a risk of losing the PR war even if the trade mark battle may be won. This can have a potentially disastrous impact on product sales and the value of the brand. Those of us who remember the large chain of jewellers operating under the “Ratners” brand will never forget how an unguarded comment by the owner, about the quality of the products which he sold, became a PR disaster leading to the destruction of the brand almost overnight.

These practical and commercial factors need to be carefully considered together with the legal issues whenever owners of intellectual property right wish to take action to stop what they regard as an infringement of their rights. All of these issues should be discussed in detail with their legal advisers prior to deciding on the correct strategy in each situation.