Oatly is an oat based milk substitute. Its Swedish manufacturers sell it under a number of trade marks, based around OATLY. Its quirky packaging is designed to create an informal and less corporate image, with features sometime known as “wackaging” (see also Innocent smoothies).
Glebe Farm Foods is a British family company run by the Rayner siblings. It farms oats in Cambridgeshire and makes an oat drink under the name PUREOATY.
And Oatly sued Glebe Farm for trade mark infringement and passing off. Not quite so wacky: more apparently intimidatory. David and Goliath were mentioned in some of the reports.
Following a two-day trial in the Intellectual Property Enterprise Court, the judge Mr Nicholas Caddick QC dismissed the claim (Oatly AB and Oatly UK Limited v Glebe Farm Foods Limited, 5th August 2021).
There was a detailed factual investigation into the process by which the PUREOATY sign came about but nothing sinister was found.
In summary the judge decided that:
the distinctive elements of the two marks were very different and the only other component of the marks was the word “OAT” which is entirely descriptive.
even if the marks were similar, there was no likelihood of confusion (under section 10(2) of the Trade Marks Act 1994.
the PUREOATY sign did not injure or take unfair advantage of the distinctive character of the OATLY marks and did not cause any damage to its repute (under section 10(3)). It did not “ride on its coat-tails”.
The judge confirmed that it was legitimate to adopt similarities of approach and presentation with an intention to benefit from a rival business but a court must be astute not to confuse that with the more specific intention to benefit from the reputation and goodwill of the relevant trade mark. It is possible to “live dangerously” without infringing.
Since no relevant confusion was found, the claim for “passing off” was also rejected.
Clearly the protection of business assets such as trade marks and goodwill is vastly important to businesses and litigation or the threat of it is a vital tool for this purpose. And sometimes it is necessary and legitimate. And Laytons will gladly advise any business that thinks it has a case to pursue.
The fact that the judgment took 35 closely argued pages to demolish the argument that the commercial rivalry was illegitimate is a credit to our system but possibly a straw poll based on the actual products might have given an instinctive result.
In a prime example of “wackaging” of a public relations message, Oatly’s spokesperson issued a communication as follows. Following much criticism on social media, it seems to have disappeared:
“For us, this case has always been about protecting our trademark … If we were to let one company pass because they, like Glebe Farm, seem to be one of the good guys, that might leave the door open for the bad ones.
“Truth is, we love all oat drink companies and never brought this case to damage Glebe Farm.
“In fact, we want them to thrive and help bring products into the world that are good for the planet.
“We just think they should do so in their own unique voice, just like we do.”
Tough wacky love from one oatmilk company to another. Too bad it was expressed in an expensive piece of litigation and the judge found that the rival’s voice was unique enough.
