It is a rare treat when courts get to delve into the more obscure parts of Section 3 of the Trade Marks Act 1994. Rarer still when the Supreme Court also gets to have its say. The recent decision in Oatly v Dairy Board [2026] UKSC 4 is one such rarity.
The decision examines the validity of the trade mark registration for ‘Post Milk Generation’, along with the ability to use the mark. This was a mark registered by Oatly, a manufacturer of oat milk drinks. It was challenged by Dairy UK, a dairy trade association, on the basis that use of the word ‘milk’ was a regulated term under Regulation 1308/13 (‘the regulation’) (which, among many other things, at Part III of Annex VII essentially regulates ‘milk’ and names used for dairy products). This engaged the lesser-known Section 3(4) of the Trade Marks Act 1994.
More widely, this case provides a cautionary tale for new, alternative product types. It shows the challenges with educating the public as to their existence in an accessible manner in regulated sectors.
Unlike its well-known cousins in Section 3(1) and 3(2) TMA 1994, Section 3(4) prevents registration of a trade mark ‘if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law other than law relating to trade marks’. An interesting effect of this is that, for the right law, not just registration but also use can be affected.
The regulation first acts to restrict use of the word ‘milk’. It requires it to be from an animal. The relevant part of Annex VII Part III, at para 5, then provides for disapplication of the restriction where the word ‘milk’ is ‘clearly used to describe a characteristic quality of the product’.
The Hearing Officer sided with Dairy UK, finding that the prohibition in Section 3(4) was engaged. The High Court sided with Oatly. The Court of Appeal found for Dairy UK. Oatly appealed.
The Supreme Court held that the use of ‘milk’ in the phrase ‘Post Milk Generation’ was a prohibited ‘designation’ under the regulation. They found that the release provision did not engage. ‘Post Milk Generation’ was not ‘clearly’ descriptive of a characteristic quality of the product.
This will no doubt come as little surprise to those familiar with Section 3(1)(c) TMA 1994 and the restriction on registering marks which exclusively describe a characteristic of the goods/services. Similar considerations apply to the release clause in the regulation. ‘Exclusively’ (Section 3(2)) and ‘clearly’ (the regulation) appear to have a largely equivalent effect. Here, ‘Post Milk Generation’ was too ‘oblique and obscure’ to be descriptive. It told the consumer little about the product, focussing instead on the target audience. This is language similar to that used in 3(1)(c).
It is, however, important to note what this case does not say about prohibiting use of ‘milk’. In particular, the Supreme Court confirms that a purely descriptive use of the word ‘milk’ even on non-milk products is acceptable due to the release provision. ‘Milk-free’, ‘no milk’ or other similar contraindicators are likely acceptable.
It should also be noted that this ties in neatly with the previous TofuTown decision of the CJEU (C-422/16). But the decision goes further. Where in TofuTown the names of the product were concerned, here they were not. However, the Supreme Court found that the use of the phrase ‘designation’ in the regulation was not limited to just the name of the product. It was broader and so caught what might otherwise have been seen as a mere slogan. It was being used on dairy products, and that was enough to capture the use.
This decision highlights the difficulties faced with an uneven regulatory landscape. This was highlighted to some degree in TofuTown but also C-438/23, where the CJEU ruled that a French law restricting use of ‘meat’ terminology on meat-free products was impermissible as there was no similar restrictions in the regulation to those imposed on milk.
Businesses need to be conscious that what might be acceptable in one field may well be prohibited in another – and unexpectedly engage the Trade Marks Act too.
This goes to highlight a further point about newer, emerging categories of product. There will always be a tension with how to market and name these. How does one draw attention to the new product and create awareness that it competes with established alternatives – not on a branding level but as a product. In some ways, the public will decide. In this instance, while the decision means that providers of milk alternatives will take care to avoid the word ‘milk’, it will be a harder sell to the public. Terms such as ‘oat milk’ and ‘almond milk’ are already in common usage. It seems unlikely that a request for ‘oat milk’ on the morning coffee run is going to result in, ‘I think you’ll find it’s oat drink’.
The decision of the Supreme Court is a welcome clarification that the regulation applies to more than just product. More widely, it is a useful reminder that those launching newer products, especially in regulated spaces, need to be aware of rules affecting them. Regulations can emerge to surprise, invalidate and even prohibit use. This was not just a case where registration was prohibited, as use of the trade mark must also stop. The publicity generated in the course of that stoppage was, however, no doubt welcome.
In the last 12 months we have had the pleasure of decisions looking at Section 1(1) TMA 1994 and now 3(4) TMA 1994. With these lesser-used provisions having their time in the limelight, one can only look forward to which provision will next have its chance to shine.
Peter Vaughan is a chartered trade mark attorney and an associate professor at Nottingham Law School
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