JUDGMENT OF THE GENERAL COURT (Second Chamber)
20 January 2021 (*)
(EU trade mark – Application for the EU word mark IT’S LIKE MILK BUT MADE FOR HUMANS – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑253/20,
Oatly AB, established in Malmö (Sweden), represented by M. Johansson, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 February 2020 (Case R 2446/2019-5), regarding an application for registration of the word sign IT’S LIKE MILK BUT MADE FOR HUMANS as an EU trade mark,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 May 2020,
having regard to the response lodged at the Court Registry on 17 July 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 14 March 2019, the applicant, Oatly AB, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2        Registration as a mark was sought for the word sign IT’S LIKE MILK BUT MADE FOR HUMANS.
3        The goods in respect of which registration was sought are in Classes 18, 25, 29, 30 and 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. In response to a request to that effect on the part of EUIPO, the applicant, on 9 April 2019, amended the description of some of the goods in Classes 29 and 30 covered by the mark applied for.
4        On 9 April 2019, EUIPO raised objections against the application for registration as regards some of the goods in Classes 29, 30 and 32 on account of the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, and requested that the applicant submit its observations. As a result of a request by the applicant to that effect, the time limit within which to reply was extended until 9 August 2019.
5        The applicant submitted its observations on 19 July 2019.
6        By decision of 5 September 2019, the examiner, on the basis of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, refused to register the mark applied for in respect of the goods corresponding to the following description:
–        Class 29: ‘Dairy substitutes; dairy product substitutes; milk substitutes; milk substitutes containing oats; oat milk [milk substitute]; oat-based beverages and drinks for use as a milk substitute; milk substitute based beverages and drinks [milk substitute predominating]; almond milk, almond milk-based beverages; coconut milk, coconut milk-based beverages; hemp milk used as milk substitute; peanut milk, peanut milk-based beverages; rice milk, rice milk for use as milk substitute; soya milk, soya bean milk, soya milk [milk substitute]; functional milk substitute beverages; fruit-flavored oat-based drinks; milk substitute-based drinks containing coffee; yoghurt substitutes; yoghurt substitutes containing oats; milk substitute preparations for making yoghurt; oat-based yoghurt substitute; oat-based yoghurt and drinking yoghurt free of milk and lactose; yoghurt and drinking yoghurt substitutes containing oats; fruit-flavored yoghurt substitutes; fruit-flavored yoghurt substitutes containing oats; sour milk substitutes; sour cream substitutes; sour milk substitutes containing oats; sour cream substitutes containing oats; cream substitutes; crème fraiche substitutes; cream substitutes containing oat; crème fraiche substitutes containing oats; non-dairy creamer; oat-based cooking cream and creamer; vegetable based cream; butter substitutes, margarine substitutes; oat-based butter substitutes; oat-based margarine substitutes; dairy substitutes cheese products; dairy substitutes cheese mixtures; dairy substitutes cheese powder; cheese substitutes; oat-based cheese; instant powder dairy substitutes; milk substitute powder, milk substitute powder for food and nutritional purposes; dried milk substitute powder, cream substitute powder; flavored milk substitute powder for making drinks; vegetable powders; coconut milk powder; compotes, oat-based and vegetable based dairy substitute products for slimming purposes; oat-based dietary supplement drink mixes [milk substitutes]; oat-based dietary supplemental drinks in the nature of vitamin and mineral beverages [milk substitutes]; soup powders; oat-based drinks in powder form (milk substitutes)’;
–        Class 30: ‘Oat-based cake mixes, oat-based biscuit mixes; coffee-based drinks and beverages containing milk substitutes; pancakes; waffles; pancake batter; liquid batter for making pancakes; oat-based pancakes; oat-based waffles; oat-based pancake batter; oat-based liquid batter for making pancakes; corn starch derivatives in powder form for making into drinks; powdered preparations containing cocoa for use in making beverages; food dressings [sauces]; sauces; cooking sauces; prepared foodstuffs in the form of sauces; oat-based sauces; oat-based custard, oat-based vanilla custard, oat-based vanilla sauce; ice cream substitute; ice cream; ice cream made from milk substitutes; non-dairy ice cream; oat-based ice cream; oat-based flavoured ice-cream; oat-based fruit ice-cream; flavoured ice-cream, fruit ice-cream; soy-based ice cream; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; fermented foodstuffs based on oats; acidified foodstuffs based on oat; oat-based grains and cereals products for slimming purposes; grain-based products for slimming purposes; oat-based food spread’;
–        Class 32: ‘Preparations for making beverages; non-alcoholic beverages; non-alcoholic drinks; oat-based beverages; oat-based natural energy drinks; oat-based breakfast drinks; oat-based fruit drink beverages; oat-based smoothie beverages; oat-based fruit and berry drinks and beverages; oat-based drinks and beverages for slimming purposes; energy drinks; energy drinks containing caffeine; recovery drinks; sports drinks; functional beverages; nut and soy based beverages; powders for the preparation of beverages, powders used in the preparation of fruit-based drinks and beverages; oat-based dietary supplement drink mixes [not milk substitutes]; oat-based dietary supplemental drinks in the nature of vitamin and mineral beverages [not milk substitutes]; powders for the preparation of beverages; powders for use in preparation of fruit based beverages’.
7        By contrast, the examiner allowed the mark applied for to proceed to registration in respect of the goods in Classes 18 and 25. She also allowed the mark to proceed to registration in respect of the following goods in Classes 29, 30 and 32:
–        Class 29: ‘Fruit and vegetable spreads; processed fruit, fruit snacks; fruit chips; fruit-based snack foods; fruit juices for cooking; vegetable juices for cooking; vegetable juice concentrates for food’;
–        Class 30: ‘Processed grains, starches, and goods made thereof, baking preparations and yeasts; flour, oat-based food and foodstuffs; oatmeal, rolled oats; cereals, processed cereals; food preparations and foodstuffs made from cereals; crisps made of cereals; breakfast cereals; breakfast cereals containing fibre; breakfast cereals containing a mixture of fruit and fibre; cereals flakes; muesli consisting predominantly of cereals; cereal bars and energy-bars; cereal powders; oat flakes; muesli; oat-based gruel; snack foods consisting principally of grain; snack foods consisting principally of extruded cereals; cereal snacks; snack foods and snack products made from cereals; snacks made from muesli; snack foods made of whole wheat; bread; wholemeal bread and bread mixes; wholewheat bread and crisps; whole wheat grains being cooked, precooked and preserved; biscuits; pastry and confectionery; coffee; decaffeinated coffee; instant coffee; coffee (roasted, in powder form); artificial coffee; coffee drinks and beverages; coffee-based drinks and beverages’;
–        Class 32: ‘Functional water-based beverages’.
8        On 30 October 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
9        By decision of 7 February 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal.
10      In the first place, the Board of Appeal found, in essence, that the goods at issue were aimed at the general public and stated that it would take into account the perception of the English-speaking public in the European Union.
11      In the second place, the Board of Appeal found, first, that the first part of the mark applied for (‘it’s like milk’) indicated that the goods marketed were or contained milk substitutes and, secondly, that the second part of that mark (‘but made for humans’) made clear that they were more apt for human consumption. It also found that there was no perceptible difference between the mark as a whole and the conjunction of both of its parts.
12      In the third place, the Board of Appeal stated that, perceived in the light of the goods at issue, the mark applied for would be understood as a laudatory promotional slogan, rather than as an indication of the commercial origin of those goods.
It highlighted the fact that some consumers suffered from lactose intolerance or an allergy to milk or were vegans. It stated that the mark indicated the positive aspects of those goods, namely the fact that they were very similar to milk and that they were, in contrast to cow’s, goat’s and sheep’s milk, specifically made and apt for human consumption.
13      In that regard, the Board of Appeal highlighted the fact that the goods at issue in Class 29 consisted of different foodstuffs and dairy products substitutes and that those in Class 30 consisted of various oat-based edible products, which might contain milk substitutes. It noted that the goods in Class 32 were drinks and beverages, or preparations for making beverages, which were of plant origin, could be consumed with milk substitutes and with regard to which the mark applied for gave the consumer the idea that those goods had the same characteristics as milk.
14      The Board of Appeal also noted, first, that the mark applied for contained no other elements that would be capable of endowing it with distinctive character and, secondly, that its length was liable to prevent it from being perceived as a mark.
15      The Board of Appeal deduced from all of those considerations that, beyond its promotional meaning, the expression ‘it’s like milk but made for humans’ was incapable of performing the function of a trade mark with regard to the goods at issue and that, consequently, the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
17      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
18      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001. It submits that the contested decision is vitiated by errors both as regards the identification of the relevant public and the assessment of the distinctive character of the mark applied for. It also complains that the Board of Appeal did not take into account the evidence which it had put forward in the course of the administrative proceedings and submits that the Board of Appeal did not examine the distinctiveness of the mark applied for with regard to the goods at issue.
19      Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered.
20      According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation 2017/1001 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgment of 5 December 2002, Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS), T‑130/01, EU:T:2002:301, paragraph 18; see, also, judgment of 21 March 2014, FTI Touristik v OHIM (BigXtra), T‑81/13, not published, EU:T:2014:140, paragraph 14 and the case-law cited).
21      The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of the mark (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34 and the case-law cited, and of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).
22      It is apparent from the case-law that a minimum degree of distinctive character is sufficient to preclude the application of the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 39, and of 30 April 2015, Steinbeck v OHIM – Alfred Sternjakob (BE HAPPY), T‑707/13 and T‑709/13, not published, EU:T:2015:252, paragraph 21).
23      The registration of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks is not excluded by virtue of such use (judgments of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraph 41, and of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35).
24      Furthermore, for the purposes of assessing the distinctive character of such marks, it is inappropriate to apply to those marks criteria which are stricter than those applicable to other types of sign (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36 and the case-law cited, and of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 25 and the case-law cited).
25      However, it is apparent from the case-law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and that it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 37 and the case-law cited, and of 9 March 2017, Puma v EUIPO (FOREVER FASTER), T‑104/16, not published, EU:T:2017:153, paragraph 18 and the case-law cited).
26      In that regard, it must be pointed out that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character (judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 45; see, also, judgment of 9 March 2017, FOREVER FASTER, T‑104/16, not published, EU:T:2017:153, paragraph 19 and the case-law cited).
27      Furthermore, an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation 2017/1001 (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 39 and the case-law cited, and of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 16).
28      Consequently, a trade mark consisting of an advertising slogan must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, and according to settled case-law, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (see, to that effect, judgments of 5 December 2002, REAL PEOPLE, REAL SOLUTIONS, T‑130/01, EU:T:2002:301, paragraph 20, and of 15 September 2005, Citicorp v OHIM (LIVE RICHLY), T‑320/03, EU:T:2005:325, paragraph 66).
29      It is in the light of those principles that the present case must be examined.
30      As regards the definition of the relevant public, it is apparent from paragraphs 23 and 25 of the contested decision that the Board of Appeal found that, since the mark applied for consisted of an expression in English, it was necessary to take into account the public in the English-speaking territories of the European Union, including Ireland and Malta. In view of the nature of the goods at issue, it found that that public displayed an average level of attention when purchasing them.
31      The applicant submits that the Board of Appeal should also have taken into account the perception of the mark by consumers in Denmark, the Netherlands, Finland and Sweden, who are deemed to be English speaking.
32      EUIPO contends that it was sufficient for the Board of Appeal to find that the mark applied for had no distinctive character with regard to the relevant public in the part of the European Union in which English is an official language and that it was not therefore required to take into account the territories of the European Union in which that language is widely understood. It deduces from that that the evidence which the applicant put forward relating to the perception of the mark applied for in those other territories is irrelevant.
33      In view of the nature of the goods at issue, the Board of Appeal was right in finding, in essence, that the relevant public corresponded to the general public and that its level of attention was average when purchasing those goods.
34      Furthermore, since, first, according to Article 7(2) of Regulation 2017/1001, it is sufficient that an absolute ground obtains in part of the European Union for a mark to be refused registration and, secondly, the mark applied for consists of an expression in English, the Board of Appeal was right in taking into account the perception of the English-speaking public.
35      It must, however, be borne in mind that the English-speaking part of the European Union does not only consist of the countries in which English is an official language, but also of those in which, at the very least, English is widely understood, which includes, in particular, Denmark, the Netherlands, Finland and Sweden (see, to that effect, judgments of 14 May 2019, Eurolamp v EUIPO (EUROLAMP pioneers in new technology), T‑465/18, not published, EU:T:2019:327, paragraph 27 and the case-law cited, and of 19 December 2019, Amazon Technologies v EUIPO (ring), T‑270/19, not published, EU:T:2019:871, paragraph 47). Consequently, since the consumers in those countries are deemed to be part of the English-speaking public, the evidence which the applicant put forward for the purposes of explaining their perception of the mark applied for is relevant and may, contrary to what EUIPO seems to be claiming, be taken into account.
36      As regards the distinctive character of the mark applied for, the Board of Appeal found, in paragraph 29 of the contested decision, that the first part of the mark (‘it’s like milk’) would be perceived as indicating that the goods marketed consisted of or contained milk substitutes which were like ‘real’ milk and that the second part of that mark (‘but made for humans’) would be perceived as indicating that they were more apt for human consumption than ‘real’ milk or goods containing ‘real’ milk. It also pointed out, in paragraph 30 of the contested decision, that there was no perceptible difference between the mark as a whole and the conjunction of both of its parts. In paragraphs 31 to 33 of the contested decision, it found that, perceived in the light of the goods at issue, the mark applied for would be understood as a laudatory promotional slogan, rather than as an indication of the commercial origin of those goods and highlighted the fact that some consumers suffered from lactose intolerance or an allergy to milk or were vegans.
37      The applicant submits that the Board of Appeal erred in taking into account consumers who were lactose intolerant or suffered from an allergy to milk or were vegans, whereas it should have taken into account the general public’s perception of the mark, since the goods at issue are everyday consumer goods. It adds that the average consumer in the general public is deemed to be reasonably well informed and reasonably observant and circumspect and does not therefore hold any extreme or minority opinions. It argues that that consumer perceives milk to be a healthy and nutritious staple food. It submits that the Board of Appeal erred in taking a small subsection of that public
into account.
38      The applicant adds that the initial perception of the relevant public will not be that cow’s milk is food for calves, but that it is produced for human consumption. It argues that it follows that the phrase ‘it’s like milk but made for humans’ calls into question the relevant public’s perception of milk as a substance intended for human beings by evoking the controversial idea that milk is not appropriate for human consumption.
It submits that, consequently, that phrase, taken as a whole, is original, imaginative, paradoxical, surprising, thought provoking and unexpected and is therefore capable of performing the essential function of a trade mark.
39      The applicant also complains that the Board of Appeal did not take into account the evidence which it had put forward in the course of the proceedings, showing the perception which the relevant public has of the mark applied for. It refers, first, to a judgment of a Swedish court which perceived the mark applied for as disparaging and discrediting milk and, secondly, to reactions on the part of the press in the Netherlands and the United Kingdom following the launch of the advertising campaign for the mark applied for.
40      EUIPO submits that the Board of Appeal took the perception of the general public into account and not only that of consumers who are lactose intolerant or suffer from an allergy to milk or are vegans, as the applicant claims. It maintains that those consumers would, in any event, form a non-negligible part of the relevant public. It adds that the average consumer does not consist of an ‘ordinary’ or ‘normal’ person, but is a median member of the relevant public.
41      EUIPO also submits that it is necessary to take into account the fact that the average consumer of the goods at issue knows that the primary function of milk is that of feeding animals and that he or she is aware of the ongoing debate regarding the aptness of milk of animal origin for human consumption. It deduces from that that the relevant public will perceive the mark applied for as informing it that the goods marketed do not contain milk of animal origin, but are nevertheless similar to milk and are therefore better apt for human consumption.
42      Consequently, according to EUIPO, the mark applied for is devoid of any distinctive character, since the relevant public will not consider it to be surprising, unexpected or thought provoking and will immediately grasp only the promotional message which it conveys. It takes the view that the prohibition of the slogan ‘it’s like milk but made for humans’ in Sweden confirms only that it conveys the message that milk is not suitable for human consumption and that the other items of evidence put forward by the applicant do not prove that the mark applied for can be understood as an indication of the commercial origin of the goods at issue. EUIPO also submits that the Board of Appeal did indeed examine the mark applied for as a whole.
43      The mark applied for consists of the phrase ‘it’s like milk but made for humans’.
44      As regards the meaning of the mark applied for, it must be stated that, on account of the presence of the coordinating conjunction ‘but’ in the middle of that mark, the consumer will perceive an opposition between the first part of the mark (‘it’s like milk’) and the second part of the mark (‘made for humans’). As a result, the mark applied for conveys not only the idea that the goods at issue, which are foodstuffs, are akin to milk and are intended for human consumption, but also the idea that milk itself is not.
45      By means of such a meaning, the mark applied for calls into question the commonly accepted idea that milk is a key element of the human diet, as is shown by the evidence which the applicant put forward before the Board of Appeal and then the Court, from which it is apparent that the launch of the mark applied for gave rise to controversy in the Netherlands, Sweden and the United Kingdom.
46      The mark applied for thus conveys a message which is capable of setting off a cognitive process in the minds of the relevant public making it easy to remember and which is consequently capable of distinguishing the applicant’s goods from goods which have another commercial origin. The mark applied for therefore has the minimum degree of distinctive character required by Article 7(1)(b) of Regulation 2017/1001.
47      That finding is not called into question by EUIPO’s claim that the aptness of milk for human consumption is the subject of debate. It is true that, as was stated, in essence, by the Board of Appeal in paragraph 32 of the contested decision, a non-negligible part of the relevant public, for ethical or physiological reasons, avoids consuming dairy products.
48      The fact, however, remains that that part of the relevant public, even though it does not share it, must be aware of the commonly accepted perception of milk as being essential to a human diet. In those circumstances, that part of the relevant public will perceive – and probably approve of – the message conveyed by the mark applied for, which calls that perception into question. For that reason, with regard to that part of the relevant public as well, the mark applied for is capable of setting off a cognitive process which is such as to confer distinctive character on that mark.
49      The Board of Appeal therefore erred in finding that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
50      Consequently, the applicant’s single plea in law
must be upheld and, as a result, so must the action.
Costs
51      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 February 2020 (Case R 2446/2019-5), regarding an application for registration of the word sign IT’S LIKE MILK BUT MADE FOR HUMANS as an EU trade mark;
2.      Orders EUIPO to bear its own costs and to pay those incurred by Oatly AB.
Tomljenović
Schalin
Nõmm
Delivered in open court in Luxembourg on 20 January 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.