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Is milk made for humans?

March 03, 2021 - case_law_comment
Is milk made for humans?

Is milk made for humans?

The General Court allows the registration of a controversial slogan as a trade mark.

17/12/2020, T‑253/20, Oatley v EUIPO, EU:T:2021:21


Stefan Martin, Member of the Second Board of Appeal; Jonathan Boyd, EUIPO Trainee

This article reflects the views and opinions of the authors, and not the position of the EUIPO.

Background

Article 7(1)(b) EUTMR provides that:

    ‘1.      The following shall not be registered:
   ...
   (b)     trade marks which are devoid of any distinctive character’.

On 14 March 2019 Oatley AB (the applicant) applied to register the word sign ‘IT’S LIKE MILK BUT MADE FOR HUMANS’ as an EUTM for goods in Classes 18, 25, 29, 30 and 32. Based on Article 7(1)(b) EUTMR read in conjunction with Article 7(2) EUTMR, the EUIPO refused registration of the mark for certain goods in Classes 29, 30 and 32 (including dairy substitutes and related products). However, it allowed the registration of the mark for certain other goods in those classes, as well as for the goods in Classes 18 and 25.

The applicant appealed to the Board of Appeal (BoA). The BoA dismissed the appeal, finding the sign devoid of distinctive character under Article 7(1)(b) EUTMR for the goods at issue (07/02/2020, R 2446/2019‑5, It’s like milk but made for humans, § 43). In particular, it held that the mark’s first part (It’s like milk) simply indicated that the goods were or contained milk substitutes and its second part (but made for humans) that they were better for human consumption than milk. Furthermore, the BoA found no perceptible difference between the mark as a whole and the conjunction of its parts. In the absence of any other distinctive elements, and with a length which it said hindered the sign’s perceptibility as a mark, the BoA found the sign incapable of fulfilling the distinctive function of a trade mark.

The applicant filed an action before the General Court, relying on a single plea in law: infringement of Article 7(1)(b) EUTMR. The Court allowed the appeal and annulled the BoA decision.

The case

The Court began by noting that under Article 7(1)(b) EUTMR and settled case-law a slogan is not automatically precluded from registration as a trade mark, nor is it subject to any stricter-than-normal requirements of distinctive character (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 29 & 35). Moreover, just because a sign is laudatory or promotional does not prevent it from also acting as a guarantee of origin (ibid., § 45). A mark will only be devoid of distinctive character if the relevant public will perceive it as a ‘mere promotional formula’, the converse of which is that it will be sufficiently distinctive if, apart from its promotional function, the relevant public will immediately perceive it as an indication of the commercial origin of the goods concerned (05/12/2002, T‑130/01, REAL PEOPLE, REAL SOLUTIONS, EU:T:2002:301, § 20).

Despite its agreement with the BoA on the law, the Court came to the opposite conclusion applying it to the present case. The Court agreed with the BoA that the relevant public was the English-speaking general public in the EU with an average level of attention (§ 33), but accepted the applicant’s argument that this public would generally see milk as a staple of the human diet. The Court held that, although the mark was descriptive of the goods as akin to milk, but not milk, it questioned ‘the commonly accepted idea that milk is a key element of the human diet’. In so holding, the Court was swayed by the fact the mark’s launch had been controversial in several countries (§ 45). The controversial message conveyed by the mark was enough to prevent it from immediately being understood as descriptive by the relevant public since it would set off a ‘cognitive process’ in their minds, making it memorable and therefore capable of distinguishing the goods from those of a different commercial origin (§ 46 & 48). As such, its registration could not be objected to under Article 7(1)(b) EUTMR.

Analysis

Despite the rarity of slogans being allowed registration, in some ways the outcome of this case is unsurprising. The case-law on slogans has been remarkably consistent over the years, a story more of gradual refinement than haphazard revolution. The starting point is that slogans’ difficulty in achieving distinctiveness is substantive rather than formal; they require no higher standard of creativity to achieve distinctiveness under Article 7(1)(b) than any other sign (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 32-36). This is undoubtedly right, as there is no principled reason for a distinction and a clear line between slogans and other laudatory marks would be a nightmare to draw. In a later case on a slogan the CJEU defined it as ‘a word mark which … conveys to the relevant public a laudatory message, or ... extols the qualities of the goods’ (13/04/2011, T‑523/09, Wir machen das Besondere einfach, EU:T:2011:175, § 39). Here lies the substantive difficulty. Slogans must overcome their essential laudatory and descriptive nature in order to be sufficiently distinctive to fulfil the function of a trade mark. The ways in which they may do this are the same as for all signs, but again slogans will tend not to have the same variety of options as simpler marks in terms of employing grammatical or syntactical irregularities, since they must make enough sense to convey their laudatory message. It makes sense then that when they do achieve minimal distinctiveness it is by using imaginativeness or surprising elements.

This case says less about slogans specifically than it does about the importance of the definition of the relevant public for the assessment of distinctive character under Article 7(1)(b) EUTMR. The BoA and Court agreed that the relevant public was the English-speaking general public with an average level of attention (§ 33). Whether the mark was controversial (and therefore thought-provoking and memorable) enough to serve as an indication of origin depended on whether the relevant public considered milk to be ‘made for humans’ or not. The BoA’s focus on particular groups who value dairy substitutes and are not surprised by milk’s unfitness for human consumption, along with the view that the relevant public would realise that milk is naturally produced by cows for their young and not for humans, led it to conclude that the mark was merely laudatory and descriptive. The Court, by contrast, accepted the applicant’s argument that the general public (being reasonably well informed and reasonably observant and circumspect, and therefore not holding any extreme or minority views) still regarded milk as a key part of their diet. It was therefore controversial to suggest that it is not ‘made for humans’. Further explanation of the Court’s reasons for disagreeing with the BoA and examiner on this point would have been welcome, since this was the minor point which made all the difference in the case. Nevertheless, ‘IT’S LIKE MILK BUT MADE FOR HUMANS’ stands as an example of the sort of surprising or imaginative element that can confer distinctive character on an otherwise descriptive slogan.


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