The POST MILK GENERATION Appeal to the Supreme Court- Dairy (UK) Ltd v Oatly AB

Author  Tiia Monto Licence CC BY-SA 3.0  Source Wikimedia Commons

 

Jane Lambert

Supreme Court (Lord Hodge, Lord Briggs, Lord Hamblen, Lord Burrows and Lord Stephens) Dairy UK Ltd v Oatly AB [2026] UKSC 4 (11 Feb 2026)

This was an appeal by Oatly AB ("Oatly") against the decision of the Court of Appeal in Dairy UK Ltd v Oatly AB [2024] EWCA Civ 1453 (29 Nov 2024) to set aside that of Mr Justice Richard Smith in Oatly AB v Dairy UK Ltd [2023] EWHC 3204 (Ch) (14 Dec 2023) and restore the decision of Mrs Judi Pike on behalf of the Registrar of Trade Marks in Dairy UK Ltd v Oatley AB BL O/0049/23 17 Jan 2023.

The Mark

The mark in suit was POST MILK GENERATION which Oatley registered as a UK trade mark under trade mark number UK3445440 for 

• T-shirts in class 25, 
• oat‐based drinks as milk substitutes, oat‐based yoghurt substitute, oat‐based crème fraiche, oat‐based cooking cream and creamer in class 29, 
• oat‐based vanilla sauce and oat-based vanilla custard, oat‐based ice cream and oat‐based food spread in class 30, and 
• oat‐based natural energy drinks, oat‐based breakfast drinks, oat‐based fruit drink beverages and oat‐based smoothie beverages in class 32 

with effect from 19 Nov 2019.

The Invalidity Application

On 23 Nov 2021, Dairy (UK) Ltd ("Dairy"), the trade association of the British Dairy industry, applied to the Trade Mark Registry of the UK Intellectual Property Office ("IPO") for a declaration that the mark was invalid under s.47 (1) of the Trade Marks Act 1994 on the ground that it was registered in breach of s.3 (3) (b) and s.3 (4) of the Act. Dairy argued that the mark was deceptive in that it contained the word "milk" in respect of goods that did not comprise or contain milk or milk products.  It also contended that the use of the term "milk" for products not made exclusively of milk was contrary to the provisions of Part III of Annex VII of EU Regulation 1308/2013.  It further contended that the registration was contrary to law as Part III of that Annex specifically prohibits the use of the term "milk" for products not made exclusively of milk.

Procedural History

Dairy's application came before Mrs Pike, who rejected it in respect of T-shirts because they were not agricultural products and therefore manifestly outside the scope of the regulation relied on  but she allowed it in respect of the other goods.  Oatly appealed successfully against Mrs Pike's decision to Mr Justice Richard Smith.  The Court of Appeal restored her decision on an appeal by Dairy.  It held that the trade mark, as applied to oat-based food and drink, was a "designation" of milk which is prohibited.

Appeal to the Supreme Court

Oatley appealed against the Court of Appeal's decision in Dairy UK Ltd v Oatly AB [2026] UKSC 4.  The appeal turned on the proper interpretation of Regulation No. 1308/2013.  It came before Lord Hodge, Lord Briggs, Lord Hamblen, Lord Burrows and Lord Stephens on 10 Dec 2025.  A statement of facts and issues, the parties' written arguments and videos of counsels' arguments can be found on the Supreme Court's web page on the case.  Judgment was handed down on 11 Feb 2026.  It was written by Lord Hamblen and Lord Burrows with the concurrence of the other Justices.  Lord Burrows delivered a summary of the judgment which was recorded and can be viewed on the Supreme Court's web page of the case.  There is also a press summary which can be downloaded from the same web page.

Issues

Oatly argued that the Court of Appeal was incorrect because "designation" concerns the name of the product.  As the words POST MILK GENERATION were not used to name a product, the trade mark did not fall foul of the Regulation.  The parties formulated the following questions for the Supreme Court:

1. "What is the proper interpretation of the term "designation" in Article 78 (2) and Part III of Annex VII of the 2013 Regulation; and does POST MILK GENERATION fall within the scope of Point 5 of the 2013 Regulation on the basis that it uses the term 'milk' as a designation?"
2. "What is the proper interpretation of the second limb of the proviso in Point 5, and is POST MILK GENERATION saved by that limb of the proviso on the basis that it is clearly being used to describe a characteristic quality of the contested products for which the trade mark is registered?"

Interpretation of Assimilated Law

It was common ground that the 2013 Regulation was "assimilated law" within the meaning of s.5 of the Retained EU Law (Revocation and Reform) Act 2023.  Referring to paras [28] and [29] of R (Project for the Registration of Children as British Citizens) v Secretary of State for the Home Department [2022] 4 All ER 95, [2022] WLR(D) 65, [2022] INLR 189, [2022] 2 WLR 343, [2023] AC 255, [2022] UKSC 3, [2022] HRLR 9, [2022] Imm AR 743, para [27] of News Corp UK & Ireland Ltd v Revenue and Customs Comrs [2023] STI 284, [2024] AC 89, [2023] STC 446, [2023] UKSC 7, [2023] 2 WLR 513, [2023] 3 All ER 447, para [62] of R (N3) v Secretary of State for the Home Department [2025] AC 1473, [2025] UKSC 6, [2025] WLR(D) 111, [2025] 2 WLR 386, para [15] of Darwall v Dartmoor National Park Authority [2025] 2 WLR 1075, [2025] UKSC 20, [2025] WLR(D) 276, [2025] AC 1292 and para [22] of X v Lord Advocate, the Justices directed themselves at para [10] of their judgment that the modern approach to domestic statutory interpretation required the court to ascertain the meaning of the words used, in the light of their context and the purpose of a provision.  In interpreting assimilated law comprising legislation, it was appropriate to apply that modern approach to domestic statutory interpretation, albeit that the EU origin of the legislation may be relevant in considering the context and purpose of the provision.

Ground 1: What is the Proper Interpretation of the Term "Designation" in Point 5 of the 2013 Regulation; and does "POST MILK GENERATION" fall within the Scope of Point 5 of the 2013 Regulation on the Basis that it uses the Term "milk" as a Designation?

Oatly submitted that the word "designation" in Point 5 of Part III of of Annex VII of the 2013 Regulation meant the name of a product. The words POST MILK GENERATION were not the name of a product. They did not even describe it.  The product was known as "oat-based milk".  It followed that Point 5 did not forbid the use of the phrase "POST MILK GENERATION" in relation to any of the specified goods.

Dairy replied that "designation" in Point 5 had a wider meaning.  It meant any use of the words "POST MILK GENERATION" in relation to the goods for which the mark was registered.   Point 5 restricted the use of those words in relation to any product other than natural milk,   

The Justices rejected Oatly's submission that designation in Point 5 meant the name of a product.  Point 5 had to be read with Point 2 (a) and (b), where the word name was used. It followed that designation and name would not have the same meanings in the same instrument. Similarly, designation was unlikely to mean the name of a product because the first sentence of Annex VII stated that for the purpose of the Annex "the 'sale description' meant the name ..... of the food."   A similar point can be made about recital (76) and the heading to Annex VII, where the terms designations and sales description are used, thereby indicating that those words have different meanings.

In their lordships' view, the terms "designation" or "designations" in Point 5 on their natural meaning, viewed in the context of Annex VII, referred to their use in respect of a food or drink and not the naming of it.  The designations referred to in Points 1, 2 and 3, including the term "milk", could not be "used for" any product other than those so referred to. Oat-based food or drink was not referred to in Points 1, 2 and 3 and so the use of the term "milk" in respect of such food or drink was prohibited. That prohibition bit where the designation had been used for a relevant product, and it was not necessary that it had been used as the name of the product. That was a broad meaning that encompassed, but was wider than, and different from, the narrower "name of a product" meaning argued for by Oatly.

Taking into account recital (76), it was clear that the wider meaning was consistent with the purpose of Point 5, which, in respect of milk as a product, was to set out fair conditions of competition. That purpose was distinct from protecting consumers from being deceived. As Ms Pike said in paras [26] and [28] of her decision, it was irrelevant that the conditions of competition imposed a strict prohibition on protecting the use of the term "milk".  Oatly took the Court through previous regulations that covered the scope of Regulation 1308/2013 and had used the term name rather than designation.  The Justices were unimpressed.  In their view, legislation must be interpreted as it stood and it was potentially misleading to look back at previous versions of legislation that were significantly different.

They concluded at para [34] that the appeal failed on Ground 1.  The words "POST MILK GENERATION" fell within Point 5 of the Regulation as it used the term "milk" as a designation.   As the Regulation prohibited such use s.3 (4) of the Trade Marks Act 1994 prevented the registration of those words as a trade mark in respect of the goods in classes 29, 30 and 32.  

Ground 2: What is the Proper Interpretation of the Second Limb of the Proviso in Point 5, and is "POST MILK GENERATION" saved by that Limb of the Proviso on the Basis that it is clearly being used to describe a Characteristic Quality of the Contested Products for which the Trade Mark is registered?

Oatly contended that even if it was wrong on its first point, it could rely on the words: 

"However, this provision shall not apply to the designation of products the exact nature of which is clear from traditional usage and/or when the designations are clearly used to describe a characteristic quality of the product." 

That was because the words "POST MILK GENERATION" were clearly used to describe a characteristic quality of the contested product, namely that it was milk-free. The words "POST MILK GENERATION" used in relation to oat-based milk or food made clear that there was no natural milk in the product.  

Their lordships disagreed.   To come within the proviso, it was necessary that the designation was "clearly" used for the requisite descriptive purpose.  They considered that it was far from clear that the trade mark described any characteristic of the relevant products. On the face of it, it focused on describing the targeted consumers and, in particular, younger consumers who belong to a generation with widespread concerns about the production and consumption of milk unlike past generations. In so far as the words described a characteristic of the product, they were doing so in an oblique and obscure way and certainly not "clearly".

Even if "POST MILK GENERATION" referred to the milk-free characteristic of the products, that characteristic was not described sufficiently clearly to be of any use to consumers.  In particular, it did not indicate whether the product was entirely free of milk or whether the milk content was low.   Secondly, a reference to a characteristic of the contested products would not make sense on a T-shirt, but a description of a young consumer as a member of the POST MILK GENERATION certainly would.

For all those reasons, the appeal also failed on Ground 2.

Comment

This is a rare example of a registration that has been declared invalid on the ground that its use in respect of some but not all of the specified goods was prohibited by law. The case also provides useful guidance on the construction of assimilated legislation in accordance with the Retained EU Law (Revocation and Reform) Act 2023.  Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form at any time.