Swedish multinational, Oatly, has been defeated on all grounds by family-run UK company, Glebe Farm Foods, in a trademark infringement and passing off case concerning their oat-based drinks.
Oatly sued Glebe for taking unfair advantage of the similarities between the two brands, Oatly’s “OATLY” milk-alternative and Glebe’s “PureOaty” version, and attempted to argue that the similarities between both the words and packaging would cause confusion to consumers, thereby damaging the reputation of Oatly’s brand and infringing its trademarks.
However, the Judge found that the infringement case appeared to centre around the use of the letters “OAT”, which was “purely descriptive of the relevant products” and additionally, the pre-fix “PURE” in Glebe’s brand was the dominant part of the mark, rather than the “OAT” element. Likelihood of confusion was therefore not found.
Oatly’s passing off claim was also unsuccessful as there was no misrepresentation that Glebe’s products “were those of or licensed by Oatly”, indeed Glebe’s packaging prominently displayed the Glebe Farm name. The Judge acknowledged the strength of Oatly’s brand but found that there was no evidence that consumers thought the two brands originated from the same company – a descriptive element had simply been used in both brands – and therefore no unfair advantage or damage was proved.
In the words of Glebe’s owner, this shows “smaller independent companies CAN fight back and win” and the case may well have harmed the reputation of Oatly, with more than 130,000 people signing a petition to stop Oatly aggressively pursuing the family-run Glebe.
It is certainly reassuring to see that there is no place for monopolies over descriptive elements in trademarks. However, when applying for marks there are evidently also risks involved in choosing brands that contain a descriptive component, as other later marks may well contain the same element. We would therefore always recommend discussing the merits of a trademark application with a professional advisor before applying to register the mark and launching the brand.
Please get in touch if you would like to discuss any of the issues discussed above or if you require our assistance in registering a trademark in the UK, EU or abroad.
Madeleine Rhodes firstname.lastname@example.org