Free From Infringement!

• Published date: 09 September 2021
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Law Firm: Hill Dickinson
• Author: Mr Jordan Davies

Family-run Glebe Farm Foods Limited (Glebe Farms) has very recently successfully defended allegations of trade mark infringement and passing off from oat milk giants, Oatly, in the Intellectual Property and Enterprise Court.

Judgment in this case was handed down on 5 August 2021 and was reported widely in the media. The action was brought by Oatly for alleged infringement of five of its registered trade marks (the 'Oaty Trade Marks') under S10(2) and 10(3) of the Trade Marks Act 1994 for Glebe Farm use of the mark 'PureOaty' on its oat-based drinks. Oatly also alleged passing off against Glebe Farm.

Trade mark infringement under S10(2)

In order for Oatly to prove trade mark infringement under this provision it needed to show that:

1. Glebe Farm had used PureOaty within the UK;
2. Such use was in the course of trade without the consent of Oatly;
3. PureOaty was a mark which is identical with or similar to the Oatly trade marks;
4. PureOaty must have been used in relation to goods and services which were identical with or similar to those for which the Oatly trade marks are registered; and
5. as a result of Glebe Farm use of the PureOaty sign, there is a likelihood that the average consumer would confuse PureOaty products as being associated with, or deriving from, Oatly itself.

The comparison of the Oatly Trade Marks and the PureOaty mark must be assessed globally taking into account all relevant factors (those include visual, aural and conceptual comparison of the mark against the trade mark as registered) and judged through the eyes of the average consumer of the goods in question.

Given the number of Oatly Trade Marks involved, there were many comparisons and assessments for the judge to make.

In fact, the judge held that there was no infringement under S10(2) due to the descriptive nature of the common term used in both the Oatly trade marks when making the visual, aural and conceptual comparison. The judge also held that there was therefore no likelihood of confusion.

Trade mark infringement under s10(3)

In order to establish infringement under this provision of the Trade Marks Act 1994, Oatly would have needed to prove that:

1. Glebe Farm had used PureOaty within the UK;
2. the Oatly Trade Marks have a reputation in the UK;
3. such use of the PureOaty mark was in the course of trade without the consent of Oatly in relation to goods and services and
4. the use of PureOaty must give rise to a link between the PureOaty mark and the Oatly Trade Marks in the mind of the average...