Earlier this month, the General Court overturned a decision of the Board of Appeal and permitted Oatly AB to obtain trade mark protection for the slogan “It’s like milk but made for humans” (Case T‑253/20).
This decision follows initial refusals on the grounds of distinctiveness, as well as a challenge brought by the Swedish dairy industry. The decision serves as a reminder of the difficulties in registering slogans, but also the potential for controversial implications to confer that all-important distinctive character.
BACKGROUND TO DECISION
With environmentalism and plant-based diets on the increase, alternative milk products are becoming more popular. One beneficiary of this trend is Swedish company Oatly, which specialises in oat-based dairy substitutes.
The company's marketing approach aims to spark conversation and provoke a reaction. One such example is its slogan “It’s like milk, but made for humans”, which even led to a successful lawsuit from the Swedish dairy industry, which contended that the phrase disparages animal milk (ironically, the publicity from this action resulted in increased sales for Oatly products).
This did not stop Oatly from using the slogan and, in 2019, it filed an EUTM application for the trade mark IT'S LIKE MILK BUT MADE FOR HUMANS. The application was refused due to an alleged lack of distinctive character, in relation to certain dairy substitutes in Class 29, oat-based edible products in Class 30 and plant-based beverages in Class 32.
Oatly appealed this decision, but was unsuccessful. The Board of Appeal (BoA) upheld the refusal, ruling that the mark does not go beyond its obvious promotional and laudatory meaning and could not designate origin.
THE GENERAL COURT DECISION
Oatly appealed this decision further to the General Court (GC) which, in a decision handed down last week, found in Oatly’s favour.
The GC disagreed with the BoA and found that the mark "calls into question the commonly accepted idea that milk is a key element of the human diet". This was supported by evidence filed by Oatly (and which was previously deemed irrelevant by the EUIPO) which showed the controversy caused by the marketing campaign IT'S LIKE MILK BUT MADE FOR HUMANS, in the Netherlands, Sweden and the United Kingdom.
The GC held that the word “BUT” sets up a conflict between the two parts of the mark. As a result, it implies that the goods concerned are milk substitutes which are intended for human consumption, but also that animal milk products are expressly not intended for humans. As such, the GC found that the slogan sets off a cognitive process in the minds of the relevant consumers, making it easy to remember and capable of functioning as a badge of origin.
This decision is a reminder of the difficulties in registering promotional slogans, and that these turn on the circumstances of individual cases. Although there is no requirement for slogans to be imaginative or striking, the controversial nature of this slogan helped to confer distinctive character to the otherwise laudatory term.