In an appeal brought by Oatly AB, the General Court recently overturned the decision of the Board of Appeal, and allowed the slogan ‘IT’S LIKE MILK, BUT MADE FOR HUMANS’ to be registered (Case T-253/20).
Oatly: Challenger Brand
Oatly AB are a Swedish producer of oat-based dairy substitutes, particularly oat ‘milk’, and have surged in popularity in recent years. In 2017, Oatly applied to register their slogan ‘IT’S LIKE MILK, BUT MADE FOR HUMANS’ as an EUTM in respect of goods in Classes 18, 25, 29, 30 and 32. Their application was rejected on the grounds of non-distinctiveness and Oatly appealed this decision before the Board of Appeal.
The Board considered whether the relevant public would understand the sign purely as a promotional slogan, or whether it could also be perceived as an indication of origin. They did not consider there to be any elements further to the sign's promotional message that were capable of bestowing distinctive character on the mark. There was found to be no perceptible difference between the mark when viewed as a whole and the sum of each of its parts. In addition, it was noted that the long length of the slogan was liable to prevent the mark from being perceived as a trade mark. Both of these factors led the Board to confirm the examination division’s decision that the mark was inherently non-distinctive.
Oatly claimed that the Board had erred in taking in to account consumers who were lactose intolerant or vegan, as they constitute extreme or minority opinions. They submitted that the Board should have considered the general public’s perception of the mark as the goods are everyday consumer goods, and that the general public will consider cow’s milk to be a healthy food staple. Oatly elaborated that the initial perception of the general public will be that animal milk is made for human consumption rather than for baby cows, so the slogan may challenge their preconceptions regarding animal milk, and be linked to Oatly as a result. Oatly provided British and Dutch press reactions to their slogan and the decision in the Swedish lawsuit as evidence of the controversy of the slogan.
By contrast, the EUIPO submitted that the Board of Appeal had considered the perception of vegans and those with a lactose intolerance or dairy allergies, but that the perception of the general public had also been taken into account. They noted that the relevant consumer would be aware that the biological function of animal milk is to feed baby animals, and of the ongoing debate regarding animal milk consumption. Based on this, they reiterated that the average consumer would perceive the slogan as informative that Oatly’s products do not contain milk but have similar properties to milk, and are more suitable for human consumption. The EUIPO submitted that the sign is a purely promotional slogan that cannot also function as a trade mark.
The General Court’s Decision
The General Court largely agreed with Oatly’s submissions, and found there to be elements beyond the promotional message that bestow distinctive character on the mark. In particular, the General Court found that the use of the word “BUT” in the construction of the slogan creates an opposition between the two parts of the mark, and calls into question the commonly held idea that animal milk is good for humans. Based on this, and the evidence of the controversy surrounding the mark, the General Court held that the mark sets off a cognitive process in the mind of the relevant consumer, rendering it easy to remember and therefore capable of distinguishing Oatly’s goods. In light of this, it was held that the mark possesses at least the minimum amount of distinctiveness required for it to function as a trade mark.
Take aways - the distinctive character of trade marks
In the Oatly decision, the General Court confirmed the minimum distinctiveness requirement with regard to the assessment of registrability. The decision reiterates that there is no requirement for a mark to be original or imaginative - it is enough that it sets off a cognitive process, as long as this process renders the sign memorable. The decision also highlights that a mark can fulfil a promotional function, whilst also acting as a badge of origin, providing there are other elements present that bestow distinctive character on the mark; the two are not mutually exclusive. This has been accepted as good law for quite some time, but companies have still faced an uphill struggle to register their slogans as trade marks. This latest decision may just make it easier for other slogans in the future.
It was also interesting to see the influence on the General Court of the press articles about the slogan, even though the case was about inherent rather than acquired distinctiveness. This highlights yet again the need to keep good records internally when a new brand or slogan is launched, not least when it comes to evidencing consumer perception.