A recent trade mark infringement case has been popping up in the news lately (see below for a few links[1][2][3][4]) relating to Oatly taking legal action against Glebe Farm Foods in relation to their “PureOaty” oat drink product.

Glebe Farm Foods were successful in their defense, with Oatly ultimately losing the case. As Oatly are significantly larger than Glebe Farm Foods the phrase “David and Goliath” is getting thrown around a lot, hence the satisfying pun in this post’s title.

 

Facts of the Case

It is very easy to make snap judgements when reading these types of stories, particularly in evaluating the similarity of brands. However, it often helps to take a step back and consider the facts of the case, as this can be helpful in extracting lessons for your own trade mark strategy.

Rather handily, Oatly themselves have shared the case documents.

Oatly brought legal action for trade mark infringement in relation to five of their trade marks, in addition to action for “passing off”. Passing off relates to unregistered trade mark rights in the UK. It can be challenging to demonstrate passing off, however it shows another angle of attack put forward by Oatly.

The five registered trade marks relied on by Oatly in the case included three word marks (OATLY, OAT-LY! and OATLY) and two figurative marks corresponding to carton designs. In the assessment of trade mark infringement, each of these trade marks were considered in relation to Glebe Farm Foods’ activities with their PureOaty brand.

A significant portion of the case related to assessing whether there is a likelihood of confusion between OATLY and PUREOATY in the eyes of the average consumer. One interesting aspect in the discussions relates to the fact that the word “OAT” is present in both marks. OAT is descriptive (as they both relate to oat drinks) and, although different cases must be assessed on their own facts, shared descriptive elements are usually given a reduced weighting in the assessment of the likelihood of confusion. Ultimately, it was concluded that there was no likelihood of confusion and therefore no trade mark infringement.

 

Final Observations

From a very brief review of the UK trade mark register, Oatly appear to have over fifty registered trade marks and therefore appear to be taking their trade mark strategy seriously. Additionally, it is very clear that Oatly are willing to enforce their IP rights. Even though Oatly lost the case their registrations and willingness to enforce their rights, even against small competitors, may act as a deterrent to other companies.

That said, from a PR stand point, being the Goliath in a “David and Goliath” case may not give the best impression to consumers. This case simply highlights that there may be a benefit in considering trade mark infringement and its enforcement in the wider context of your brand identity.

I recall seeing a small band a few years ago. They were releasing their first EP which was named after a popular brand of crisps. The lead singer was unaware that the name was a brand, and simply believed it to be a “type of crisp”. He was shocked to receive correspondence from the company, but instead of an angry cease and desist letter they sent him a free box of crisps.

 

“At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!”

 

[1] https://www.bbc.co.uk/news/uk-england-cambridgeshire-58102252

[2] https://www.theguardian.com/business/2021/aug/06/alt-milk-maker-oatly-loses-trademark-case-against-family-run-uk-firm

[3] https://www.lexology.com/library/detail.aspx?g=1d01f924-8122-4ddf-9bc7-ed152a1ca63b

[4] https://www.adweek.com/brand-marketing/oatly-lost-its-trademark-battle-what-should-it-do-next/