01/06/2021
The General Court of the European Union (“GC”) issued a decision earlier this year concerning an EU trade mark application for the slogan ‘IT’S LIKE MILK BUT MADE FOR HUMANS’. The mark was applied for by Swedish oat milk producer Oatly AB (“Oatly”).
The GC overturned the EU Intellectual Property Office’s (“EUIPO”) refusal of the mark, and its decision provides a helpful reference point for the degree of inherent distinctiveness required to register a slogan as a trade mark in the EU.
The application covered a variety of food and drink items, as well as bags and clothing. The EUIPO refused the application in respect of the majority of the food and drink products, specifically those that could be made from milk substitutes. The rationale behind the refusal was that the mark IT’S LIKE MILK BUT MADE FOR HUMANS would function only as an advertising slogan and not as a trade mark. In order to be fit for registration a trade mark must be distinctive, that is, it must allow consumers to identify products and services as coming from one specific source. The EUIPO held that the mark did not inform consumers of the specific origin of the branded goods, but only that they are “very similar to milk” and “apt for human consumption”.
Oatly appealed the decision up to the EUIPO Boards of Appeal (“BoA”), who upheld the objection, causing Oatly to appeal further up to the GC.
Registering slogans
The requirement for a trade mark to be distinctive does not explicitly bar slogans from registration. After all, a slogan can function as an indication of origin and an advertising message at the same time. The EUIPO do not apply a stricter test for assessing slogan marks than they would any other type of mark, but they are also alive to the fact that consumers do not typically expect a slogan to indicate the source of branded goods. In practice, we find it can often be difficult to register a slogan as a trade mark without evidence that the slogan has been widely used and that consumers have been educated to associate it with the source of the branded goods.
For example, if you came across the following slogans, chances are that you know the brands behind them (answers at the bottom):
- Because You’re Worth It ®
- Taste the Feeling ®
- Snap Crackle and Pop ™
- Think Different ®
- The Best a Man Can Get ™
And the reason why is that these brands have spent a lot of money and effort putting these slogans in front of consumers. If you have the evidence to prove that this is the case, you are much more likely to succeed in registering a slogan as a trade mark.
This is not to say that a slogan is barred from registration in all other circumstances. It is incredibly helpful to have decades of well documented use, but even without this type of evidence you may be able to register a slogan if you can convince the examiner that it is memorable and capable of identifying your goods and services over those of other companies (that is, it can perform the main function of a trade mark).
But if the slogan in question is particularly nondescript and promotional, an objection will be a lot more likely. It will be more difficult to argue either that the mark is easy to remember, or that it identifies the goods and services as coming from a single proprietor.
The General Court decision
The assessment of whether a trade mark is distinctive enough to be registered is made from the perspective of the pubic who will purchase the goods or services in question. When making this assessment in the EU for a mark that has verbal elements, you have to factor in the multiplicity of languages spoken, so the assessment is made from the perspective of the relevant public who speak the language that the mark is written in.
In its appeal to the General Court, Oatly argued that the BoA had mischaracterised the make-up of the relevant public on two fronts. Firstly, it conducted its assessment from the perspective of consumers only in the EU countries where English is the official language (Ireland and Malta), ignoring all evidence relating to consumers in other countries who nonetheless understood English. And secondly, it considered the relevant public to be made up exclusively of vegans and the lactose intolerant.
English speaking consumers in the EU
There is established EU case law confirming that English is widely understood in countries where it is not the official language (particularly Denmark, Finland, the Netherlands and Sweden) and that the perception of consumers in these countries should be taken into account when assessing the distinctiveness of a mark that is written in English.
This is particularly relevant to Oatly’s case, because when they launched their IT’S LIKE MILK BUT MADE FOR HUMANS slogan in their Swedish home market it caused a stir in the press and the courts. Oatly’s supporting evidence featured material relating to the earlier Swedish litigation around the slogan (concerning trading standards, not trade mark infringement) and the press attention received by the advertising campaign in Sweden, the Netherlands and the UK.
Although Oatly supplied an abundance of evidence testifying to the acquired distinctiveness of the mark in these additional countries, the mark’s acquired distinctiveness was not considered in the GC’s decision. The GC were content to assess the inherent distinctiveness of the slogan, and referred to Oatly’s evidence to determine the consumer’s perception of the mark.
Oatly’s evidence included, for example, a copy of a 2015 judgement of the Swedish courts in a lawsuit brought against Oatly by LRF Mjölk, Sweden’s dairy lobby. In this judgement, the Swedish courts held that IT’S LIKE MILK BUT MADE FOR HUMANS disparages cow’s milk as unhealthy. Oatly was ordered to stop implying that cow’s milk is unfit for human consumption and pay roughly £100,000 in damages.
The reaction of Oatly’s CEO? “Maybe I should have tried it before” [i]. Oatly’s Swedish sales grew by 45% after the lawsuit and the IT’S LIKE MILK BUT MADE FOR HUMANS campaign was rolled out into the Netherlands and the UK, where it also caused a sensation and received strong reactions in the press.
However, because English is not an official language in Sweden or the Netherlands, and because the perception of UK consumers is no longer relevant, this evidence was not taken into account by the BoA. The GC agreed with Oatly that the BoA were incorrect to conduct the assessment of the mark from perspective of Irish and Maltese consumers only. The perception of consumers in other countries where English is widely understood should also be taken into account.
An EU trade mark registration is a unitary right so if there are reasons not to grant it that pertain to even a single EU member state, it cannot be granted at all. As a result, when the EUIPO refuse an application on the basis that it is non-distinctive in one member state, the Applicant can only overcome the refusal by showing that the mark has an inherent or an acquired distinctiveness in that country. This would ordinarily limit Oatly to providing evidence relating to the Irish and Maltese markets. By departing from the Irish and Maltese focus of the BoA’s assessment, the GC worked from a blank slate and assessed the inherent distinctiveness of the mark from the perspective of English speakers across the EU.
While it is intuitive that evidence of the perception of English speakers in countries where the slogan has been used should be considered by the GC, we wonder whether Oatly’s argument may have forged a double edged sword. If the GC were to knock them back and decide that the mark was not inherently distinctive, would Oatly have to prove the marks acquired distinctiveness not only in Ireland and Malta, but also in the additional countries where English is not an official language but nonetheless widely understood?
Consumers of milk-substitutes
In its appeal to the GC, Oatly claimed that the BoA had unfairly restricted its characterisation of the relevant public by considering only the perspective of vegan or lactose intolerant consumers. Oatly argued that the assessment of the mark should not be taken from such a small subsection of consumers, because the goods in question are not exclusively purchased by this subsection of consumers. In making this argument, Oatly characterised the milk-substitute food items as “everyday consumer goods”, adding that consumers of these goods do not hold any “extreme or minority opinions” (somewhat harshly implying that vegans do). Oatly’s argument was that consumers of everyday goods will think of milk as a drink made for humans, not calves. That the slogan IT’S LIKE MILK BUT MADE FOR HUMANS presents the “controversial idea” that milk is not made for human consumption, which makes the slogan original and thought provoking, and distinctive enough to function as a trade mark.
The EUIPO, defending its position to the GC, argued that the vegan / lactose intolerant consumer is keenly aware of debate about the suitability of animal milk for human consumption, and as a result this slogan simply informs this consumer that the goods in question are not made from animal milk. It does not identify Oatly as the source of the goods.
Ultimately, the GC held that it has no material bearing on the outcome of the assessment whether it is made from the perspective of the vegan / lactose intolerant consumer or not. In either case, the slogan conveys a particular message and is capable of functioning as a trade mark. It held that the presence of the word BUT in the middle of the slogan meant that conveys two distinct ideas. Firstly ‘these goods are made for humans’, and secondly ‘milk is not’. This calls into question the commonly accepted idea that milk is produced for human consumption, and the effectiveness of the slogan in this regard can be seen in Oatly’ evidence of the controversy caused by the IT’S LIKE MILK BUT MADE FOR HUMANS campaign in Sweden and the Netherlands.
The slogan sets off this cognitive process in the minds of vegans and non-vegans alike, and both the lactose tolerant and intolerant. The consumer’s personal views and whether they agree with the slogan’s message has no impact on their ability to remember the slogan itself and associate it with Oatly.
Overall the GC held that the cognitive process that the slogan sets off in the minds of the general public (and the vegan / lactose intolerant subsection of the public) in EU countries where English is understood is sufficient to make it “easy to remember” and “consequently capable of distinguishing the applicant’s goods from goods which have a different commercial origin”. The BoA had erred in finding that the mark had no distinctive character, and so its decision was overturned.
The registration has not been granted, however, as it is held up with separate appeal proceedings initiated by Oatly in April 2021 – the details of which have not yet been made public.
Comment
We are glad to see the GC take a reasonable stance on interpreting the extent to which a slogan needs to trigger a cognitive process to be distinctive. This decision reinforces that a slogan does not need to be as witty as an Oscar Wilde epigram in order to be registered. It simply needs to be capable of being remembered and associated with one particular brand – which is the entire point of a trade mark.
While Oatly appeared to have an abundance of evidence to support the argument that it had educated consumers to associate the slogan with its products, the ultimate decision of whether the mark could be registered was not based on actual consumer recognition of the mark, but its ability to be recognised in the abstract. As a result, this decision helps to clarify the minimum degree of distinctiveness necessary to register a slogan as a trade mark. The objection raised against IT’S LIKE MILK BUT MADE FOR HUMANS is designed to prevent the registration of trade marks that have no distinctive character whatsoever. So if the slogan has just enough to get across the line, it can be registered.
You don’t need strong evidence of use (though it helps). The slogan doesn’t need to be original and witty (though it helps). All you need is for the slogan to trigger a cognitive process that makes it easy to remember and capable of being associated with the brand in question.
1. L’Oreal 2. Coca-Cola 3. Kellogg’s Rice Krispies 4. Apple Inc. 5. Gillette
[i] https://www.bloomberg.com/news/articles/2015-05-14/swedish-oat-milk-producer-benefits-from-dairy-industry-lawsuit
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it
