General Court: milk substitute slogan has minimum degree ofdistinctive character required by Article 7(1)(b)

Richard Milchior– March 10, 2021

– The EUIPO found that the expression ‘it’s like milk but made for humans’ was incapable of performing the function of a mark with regard to the goods at issue
– The General Court disagreed, finding that the mark conveyed a message capable of setting off a cognitive process in the minds of the relevant public
– The mark was thus capable of distinguishing the applicant’s goods from those of others

On 20 January 2021 the General Court (Second Chamber) issued its decision in Oatly AB v European Union Intellectual Property Office (EUIPO)(Case T‑253/20), which involved an application for the word mark IT’S LIKE MILK BUT MADE FOR HUMANS.

Background

On 14 March 2019 Oatly AB filed an application for registration of an EU trademark for the word sign IT’S LIKE MILK BUT MADE FOR HUMANS inClasses 18, 25, 29, 30 and 32.

On 9 April 2019 the EUIPO raised objections against the application as regards some of the goods in Classes 29, 30 and 32 on account of the absolute ground for refusal set out in Articles 7(1)(b) and 7(2) of Regulation 2017/1001. On 5 September 2019 the examiner, on the basis of the same articles, refused to register the mark in respect of some goods in Classes 29, 30 and 32, but accepted it in Classes 18 and 25 and for some other goods in Classes 29, 30 and 32.

By decision of 7 February 2020, the Fifth Board of Appeal of the EUIPO dismissed Oatly’s appeal. The board found that the goods at issue were aimed at the general public, and stated that it would take into account the perception of the English-speaking public in the European Union. It then found that the first part of the mark applied for (‘it’s like milk’) indicated that the goods marketed were, or contained, milk substitutes, and that thesecond part (‘but made for humans’) made clear that they were more apt for human consumption. It also found that there was no perceptible difference between the mark as a whole and the conjunction of both of its parts.

The board also stated that, perceived in the light of the goods at issue, the mark would be understood as a laudatory promotional slogan, ratherthan as an indication of the commercial origin of those goods. It highlighted that some consumers suffered from lactose intolerance or an allergyto milk, or were vegans, and that the mark indicated the positive aspects of those goods and that they were – in contrast to cow’s, goat’s and sheep’s milk – specifically made and apt for human consumption.

The board further highlighted that the goods in Class 29 consisted of different foodstuffs and dairy products substitutes, and that those in Class30 consisted of various oat-based edible products, which might contain milk substitutes. It noted that the goods in Class 32 were drinks andbeverages, or preparations for making beverages, which were of plant origin, could be consumed with milk substitutes and, with regard to which the mark applied for, gave the consumer the idea that those goods had the same characteristics as milk. Finally, the mark contained no other elements that would be capable of endowing it with distinctive character and its length was liable to prevent it from being perceived as a mark.

Based on all of those considerations, it deduced that, beyond its promotional meaning, the expression ‘it’s like milk but made for humans’ was incapable of performing the function of a trademark with regard to the goods at issue and that, consequently, the mark applied for was devoid of any distinctive character.

General Court decision

In the General Court, Oatly alleged an infringement of Article 7(1)(b) of Regulation 2017/1001, which provides that trademarks which are devoid of any distinctive character must not be registered.

The court first recalled that the distinctive character of a mark must be assessed by reference to the goods or services for which registration has been sought and by reference to the relevant public’s perception of the mark.

The registration of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements topurchase the goods or services covered by those marks is not excluded by virtue of such use. However, it is apparent from the case law that,while the criteria for the assessment of distinctive character are the same for different categories of marks (including, for instance, slogans), therelevant public’s perception is not necessarily the same in relation to each of those categories; therefore, it could prove more dificult to establish distinctiveness in relation to marks of certain categories as compared with marks of others.

In that regard, the court pointed out that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposesof guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public bothas a promotional formula and as an indication of the commercial origin of goods or services. It follows that, insofar as the public perceives themark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotionalformula has no bearing on its distinctive character.

Consequently, a trademark consisting of an advertising slogan must be regarded as being devoid of any distinctive character if it is liable to beperceived by the relevant public only as a mere promotional formula. By contrast, and according to settled case law, such a mark must berecognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as anindication of the commercial origin of the goods and services concerned.

Those principles were used to decide this case.

As regards to the definition of the relevant public, since the mark applied for consisted of an expression in English, it was necessary to take into account the public in the English-speaking territories of the European Union, including Ireland and Malta. In view of the nature of the goods atissue, the public displayed an average level of attention when purchasing them.Further, since, according to Article 7(2) of Regulation 2017/1001, it is suficient that an absolute ground applies in part of the European Union fora mark to be refused registration, and since the mark applied for consisted of an expression in English, the Board of Appeal was right in takinginto account the perception of the English-speaking public which did not only consist of the countries in which English is an o􀂨cial language, butalso of those in which, at the very least, English is widely understood, which includes, in particular, Denmark, the Netherlands, Finland andSweden. Consequently, since the consumers in those countries were deemed to be part of the English-speaking public, the evidence which Oatlyput forward for the purposes of explaining their perception of the mark applied for was relevant and may, contrary to what EUIPO seemed to beclaiming, be taken into account.As regards distinctive character, the mark applied for consisted of the phrase ‘it’s like milk but made for humans’. As regards the meaning of themark, on account of the presence of the coordinating conjunction ‘but’ in the middle of that mark, the consumer would perceive an oppositionbetween the

First part (‘it’s like milk’) and the second part of the mark (‘made for humans’). As a result, the mark applied for conveyed not only the idea that the goods at issue, which are foodstuffs, are akin to milk and are intended for human consumption, but also the idea that milk itself isnot. By means of such a meaning, the mark applied for called into question the commonly accepted idea that milk is a key element of the humandiet. The mark applied for thus conveyed a message which was capable of setting off a cognitive process in the minds of the relevant public, making it easy to remember, and the mark was consequently capable of distinguishing Oatly’s goods from goods which have another commercial origin. The mark applied for therefore had a minimum degree of distinctive character under Article 7(1)(b).

The fact remained that that part of the relevant public, even though it does not share it, must be aware of the commonly accepted perception ofmilk as being essential to a human diet. In those circumstances, that part of the relevant public would perceive – and probably approve of – the message conveyed by the mark applied for, which called that perception into question. For that reason, with regard to that part of the relevant public as well, the mark applied for was capable of setting off a cognitive process which was such as to confer distinctive character on that mark.
The Board of Appeal had therefore erred in 􀂦nding that the mark applied for was devoid of any distinctive character and its decision was annulled.