from the oat-keepers dept
It seems that trademark shenanigans are becoming something of a corporate tradition for the folks over at Oatly. The Swedish oat-milk maker, backed by several celebrities, last made it onto our pages first for suing another oat-milk producer essentially for having the word “oat” in its brand name… and then for losing that lawsuit because of course. You might have thought that experience would have changed Oatly’s behavior surrounding trademark, specifically in it ceasing to try to enforce trademarks over generic or descriptive terms.
But noooooope. In September Oatly attempted to trademark the work “barista” in New Zealand, a term that is very, very generic. Fortunately, a food distributor called Bidfood successfully opposed the application.
Last month the plant milk company submitted an application to the Intellectual Property Office of New Zealand to register the trademark ‘barista’ but was successfully opposed by wholesale food distributor Bidfood. The word “barista” has been used on various plant milk products in the country for nearly a decade, however, no company had previously attempted to legally register it as their own.
Bidfood said registering the word would exclude other brands in New Zealand from using it for their own products, and even has its own brand of plant-milk milks under the brand name “Barista Federation”.
Now, on the one hand, you might think of this as a “no harm, no foul” situation. The application was opposed, the trademark not granted, so all is well. But I would suggest that this indicates we’re going to see more of this trademark nonsense from Oatly. The idea of trying to sue over descriptive terms or, in this case, trying to trademark an absolutely generic term that is already widely in use in the marketplace is the sort of thing normally reserved for the Monster Energy’s of the world.
Now, it appears that Oatly attempted to argue that “barista” isn’t generic for its purposes because it was specifically tying it to oat-milk as opposed to other dairy substitutes. The IPO and expert witness Dr. Valentyna Melnyk both disagreed.
The Intellectual Property Office ultimately agreed with Bidfood and with Melnyk and said consumers would expect “a word used for one type of dairy substitute (e.g. soy) to have exactly the same meaning when seen in the context of oat milk.”
“Dairy substitutes are to an extent competitive with each other, sold alongside each other, and may therefore be directly compared by consumers,” it said in its decision. “This is also consistent with Dr Melnyk’s observation that ‘dairy substitutes mimic the trends set by consumer demands in dairy,’ 82 which does not distinguish between different types of dairy substitutes.”
This stuff is painfully obvious. Which means it was obvious to Oatly prior to it submitting the trademark application. Which, again, indicates to me that Oatly sees playing the trademark bully as core to its business.
Final conclusion: this likely is not the last post we will write about Oatly’s behavior surrounding trademarks.