UK Supreme Court confirms that 'milk' cannot be used for plant-based products in trade mark dispute

The Supreme Court, in a unanimous decision in Dairy UK v Oatly, has upheld the Court of Appeal's decision that Oatly's slogan "Post Milk Generation" as a mark was invalid in respect of oat-based food and drinks. It was found invalid as trade marks cannot be registered if their use is prohibited by another law. In this case, Oatly's trade mark contained a designated dairy term for plant-based products, which is prohibited by EU-derived assimilated law.

Legal risk in UK market 

This Supreme Court decision is significant as it has confirmed that, even post-Brexit, the UK will remain closely aligned to the EU and maintain a strict approach to the use of protected agricultural terms such as "milk". In short, if a product is not derived from animal milk, it cannot be marketed using reserved dairy designations such as "milk" or "cheese".

In practical terms, terminology such as "oat milk" or "plant-based cheese" now carries heightened legal risk in the UK market. Marketing teams will need to ensure that product names and campaign messaging do not include protected terms.

Following the judgment, it is now a safer course for producers of plant-based products to use clearly descriptive alternatives such as "oat drink" or "plant-based drink" and to keep statements like "dairy-free" factual rather than brand defining.

Long-running dispute

This dispute started in 2021 when Oatly registered the trade mark "Post Milk Generation" for use in relation to oat-based food and drinks (classes 29, 30 and 32) and in respect of t-shirts (class 25). Dairy UK applied for a declaration that the registration was invalid under section 3 of the Trade Marks Act 1994 by being prohibited by another law (that is, the EU's Common Market Organisation Regulation 2013).

Under the 2013 regulation, certain "designations" may not be "used for" any product other than those referred to in the regulation. One such designation is "milk". The 2013 regulation does allow use of the designations in specified circumstances in accordance with a proviso, for example, where the designation is "clearly used to describe a characteristic quality of the product".

Dairy UK's application was successful at the UK Intellectual Property Office (UKIPO) (except in respect of t-shirts), but the decision was overturned in the High Court. The Court of Appeal, in turn, overturned the High Court's decision. Oatly appealed to the Supreme Court.

Designations and the proviso

Oatly had two grounds of appeal. Firstly, it argued that the term "designation" should be interpreted as referring only to the name of the product. It maintained that its trade mark was not used to name the product, and therefore the use of "milk" did not fall foul of the 2013 regulation. Oatly emphasised the UKIPO's finding that consumers would not be deceived by the use of the trade mark.

Dairy UK countered by arguing that "designation" should be given a wide meaning and should encompass any of use of the term in reference to the product. It submitted that the purpose of the 2013 regulation was not only to protect consumers, but also to establish rules of fair competition.

Oatly's second ground of appeal asserted that even if it was wrong about the interpretation of "designation", its trade mark should be saved by the proviso. It maintained that the trade mark was clearly being used to describe a characteristic quality of the product, namely, that there is no milk in the product. Dairy UK disagreed, instead alleging that the trade mark was referring to a type of consumer being targeted by the product.

Statutory interpretation

The Supreme Court's decision turned on the proper interpretation of the 2013 regulation. In interpreting the term "designation", the Supreme Court reaffirmed that the modern approach to domestic statutory interpretation requires the court to ascertain the meaning of the words used in light of their context and the purpose of the legislation.

Giving the word its natural meaning, the Supreme Court agreed with Dairy UK that the wider context of the 2013 regulation confirmed that "designation" should be treated as referring to terms used in respect of food and drink, rather than just in their names. It rejected Oatly’s argument that “designation” was limited to the name under which a food is sold and held that it includes a term used in any way to designate a product in marketing, which can include part of a trade mark or slogan.

Importantly, the Supreme Court noted that the purpose of the relevant part of the legislation was to set out fair conditions of competition and this was distinct from protecting consumers from being deceived. By reserving dairy designations to animal‑based products, the legislation seeks to ensure that those terms cannot be used by competitors in ways that would blur the distinction between categories. The conditions of competition impose a "strict prohibition" on using the term "milk" for non-milk products to protect it.

After failing on its first ground, the Supreme Court considered whether Oatly was saved by the proviso. It concluded that it was not. The court held that it was not clear that the trade mark was being used for descriptive purposes. Even if it was being used to refer to the product characteristic of being "milk-free", that allusion was not clear enough to satisfy the requirement that the designation be “clearly used to describe a characteristic quality of the product”.

Obiter, the court considered the hypothetical trade mark "milk-free" for oat-based food or drink, concluding that it would be the use of a prohibited designation, but it would be saved by the proviso. This confirms that use of regulated terms in a straightforward descriptive way, for example, to state that a product is “milk-free” should still be permissible.

Osborne Clarke comment

The decision provides clarity for food and drink brands within the UK, confirming the strict approach to the use of protected designations, such as milk, cream, butter and cheese in relation to dairy and by analogy to terms like lamb or beef in relation to meat. In this regard, the UK remains closely aligned with the EU approach.

Brands working in the plant-based or alternatives food and drinks space will face increased legal risk in using terms such as "oat milk" or "plant-based cheese". Businesses building brands around legally protected terms – whether in respect of dairy or otherwise – should expect increased scrutiny and should plan their brand strategy accordingly.

Using clearly descriptive terms such as "milk-free" should still be permitted but this usage should be factual rather than brand defining. Alternative terms, such as "oat drink" or "plant-based drink", should continue to be permitted and are likely to be seen as the safer course for plant‑based producers.

This decision related to the use of "milk" in relation to food and drink only. Oatly's "Post Milk Generation" trade mark remains valid in relation to t-shirts as these are not agricultural products and therefore fall outside of the scope of the 2013 regulation.  In practice, Oatly may now choose to concentrate its use of the mark on non‑food goods such as clothing, where the regulatory constraints on dairy designations do not apply.

James Bruce, a trainee solicitor at Osborne Clarke, contributed to this Insight.