Oatly continue to make headlines for their trade mark ventures. Following their successful appeal and registration of the slogan “It’s like milk but made for humans” as a trade mark at the EUIPO, the High Court has now ruled against them in another matter. In favour of family-run Glebe Farm, the Court ruled that their PureOaty branded oat drink does not infringe Oatly’s trade marks or amount to ‘passing off’.
(i) Likelihood of confusion
Oatly, the popular Swedish plant milk manufacturer, claimed that there was a likelihood of confusion between the name PUREOATY and five of their earlier marks. However, the Court found that there was only a low degree of visual, phonetic and conceptual similarity between the respective marks. The addition of the element PURE was considered to create a significant distance between the marks.
Perhaps unsurprisingly, the presence of the shared descriptive element OAT was not considered enough to result in a likelihood of confusion on the part of the public in connection with oat-based products.
(ii) Unfair advantage
Oatly also alleged that the use of the PUREOATY name attempted to take unfair advantage of the reputation of their earlier trade marks. The evidence submitted by Oatly successfully established that they have a reputation in the UK; the first element required for a successful claim on this ground. Although the Court did not find there to be a likelihood of confusion between the respective marks, they considered that use of PUREOATY by Glebe Farm was likely to call to mind Oatly’s earlier marks. Despite this, Oatly’s claim on this ground was ultimately unsuccessful as the Court found that making use of a descriptive element (i.e. OAT) could not be deemed to take unfair advantage of Oatly’s earlier rights.
(iii) Passing off
The Court quickly dismissed Oatly’s claim of passing off on the basis that Glebe Farm’s conduct did not amount to misrepresentation that their goods originated from, or were licensed by Oatly.
Oatly have confirmed that they accept the High Court's decision and will not be filing an appeal. Their spokesperson wished Glebe Farm success moving forward, and Oatly have posted a copy of the decision on their website for ‘total transparency.' Their actions seem to have been carefully considered to try and mitigate the backlash they have received since going after the family-run business. The negative press does highlight the importance of considering the PR implications of bringing legal action against much smaller brands, especially in cases where the chances of success are at very best borderline, as here.
By contrast, this is a great result for Glebe Farm, run by siblings Philip and Rebecca Rayner, who can continue to sell their PureOaty products without the threat of litigation hanging over them, while also benefiting from a lot of free (and positive) publicity.
Lastly, it is reassuring to brands and trade mark practitioners to see the Courts confirming that it is not possible to assert monopoly rights over descriptive elements even when the additional elements in the marks are relatively few and/or are themselves not hugely distinctive. A victory for common sense all round.
If you would like to know more, please contact Ruby Vinsome or your usual Kilburn & Strode advisor.