NOT MILK IS NOT DISTINTICTVE, SAYS THE GENERAL COURT

 

By decision of 8 May 2024 (T-320/23, only available in Spanish), the General Court (GC) confirmed that the sign "NOT MILK" is descriptive of the products in classes 29 and 32, and that the graphical elements do not significantly alter its descriptive nature.

Background of the case

On 5 July 2021, the Chilean company The Not Company SpA (the Applicant) filed the application for trade mark registration no. 018508169 with the European Union Intellectual Property Office (EUIPO) for the figurative sign "NOT MILK" for products in classes 29 (milk substitutes) and 32 (beverages composed of a mixture of fruit and vegetable juices, vegetable juice beverages, vegetable drinks).

By decision dated 18 October 2022, the Examiner rejected the trade mark registration under Article 7(1)(b) and (c) EUTMR as the requested trade mark was deemed to be descriptive and lacked distinctiveness. The Examiner also noted that the Applicant did not prove acquired distinctiveness through use as per Article 7(3) EUTMR. The Applicant appealed.

The Board of Appeal of EUIPO (R 2233/2022) upheld the Examiner's decision, stating that the requested trade mark was descriptive for the specified products and devoid of distinctiveness, especially considering the public would understand "not milk" to mean that the products in classes 29 and 32 do not contain milk or dairy products.

The applicant appealed to the General Court of the European Union (GC).

The decision

The Applicant’s arguments primarily focused on contesting the descriptive nature of the trade mark and the importance of graphical elements in altering its perceived meaning. The applicant argued that the words "not milk" required cognitive effort by the public in its understanding and could not be considered descriptive. The EUIPO replied that the expression "not milk" has a straightforward meaning indicating that the products in question do not contain milk or dairy products, making it descriptive of the nature and type of those products. Furthermore, the graphic elements of the proposed trademark did not change its descriptive message.

The GC upheld the rejection of the trade mark application on the grounds of descriptiveness, since beverages intended for the public are likely to contain milk or milk products, an indication perceived as meaning that the products in question, which are such beverages, do not contain milk or milk products, refers to an objective characteristic inherent in those products.

That said, the GC agreed with the EUIPO that the message perceived by the public when reading the expression "not milk" could be conveyed, in the same way, by another synonymous and positively-turned expression, such as "milk free", which would indicate that the beverage in question is devoid of milk or dairy products.

The GC showed little sensitivity to the stylization of the sign, noting that the stylization and colours of the trade mark applied for are not likely to divert the attention of the relevant public from the expression “not milk”, which is descriptive of the goods in question.

An Italian cat reflecting on milk or not milk

Comment

Trade marks in the food industry, particularly those focusing on vegan characteristics, play a complex and often contested role. Given the increasing consumer demand for vegan and plant-based food products, companies strive to find the right balance between describing their products’ characteristics and maintaining distinctiveness of their trade marks.

Trade marks that merely describe the characteristics of a product, such as its ingredients or nature, generally lack distinctiveness and may not benefit of trade mark protection. Terms like “Vegan”, “Plant-Based” or “Dairy-Free” are often used to describe food products that align with a vegan lifestyle or dietary preference.

Descriptive terms may be eligible for trademark protection if they acquire a secondary meaning, indicating a strong association with a specific brand over time. This can occur through extensive use and marketing, leading consumers to link the term with a specific product or company.

In the food sector, combining descriptive terms with distinctive elements can help companies differentiate their products while still communicating the vegan characteristics to consumers. This approach can facilitate trade mark protection for specific designs or combinations while retaining the descriptive elements needed to inform consumers.

Nevertheless, the matter still seems to be evaluated on a case-by-case approach. We may recall word EU trade mark no. 1139253 “Beyond Meat” granted for products in class 29 (meat substitutes, vegetarian meat products, plant-based meat substitutes) and the figurative EU trade mark no. 018568780 “Meat Zero” granted for products in class 29 (formed textured vegetable protein for use as a meat substitute, namely ground meat, sausage, bologna, burger meat, steak, nuggets, dim sum, dumplings, ready-to-eat food, and ready-to-cook food). and more recently EUIPO refused an application for registration of the image of an inverted cow for products excluding the presence of meat, such as meat substitutes, protein for the use in industrial manufacturing of food products and related engineering services (see The IPkat here).

 

Photo by Umberto Maria Galante