Oato Ltd to Register

O/155/21

TRADE MARKS ACT 1994

IN THE MATTER OF

TRADE MARK APPLICATION NO. 3442960 BY OATO LTD TO REGISTER:

Oato

AS A TRADE MARK IN CLASSES 29, 30 and 39

AND

IN THE MATTER OF OPPOSITION THERETO UNDER NO. 419647 BY OATLY AB

Background and Pleadings

1. On 10 November 2019 Oato Ltd (“the applicant”) applied to register the trade mark Oato in the UK. It was accepted and published in the Trade Marks Journal on 29 November 2019 in respect of the following goods and services:

Class 29: Oat milk; Oat-based beverages [milk substitute];Milk-based beverages flavored with chocolate; Almond milk for culinary purposes; Almond milk-based beverages; Beverages consisting primarily of milk; Beverages consisting principally of milk; Beverages having a milk base; Beverages made from milk; Beverages made from or containing milk; Milk based beverages [milk predominating];Milk based drinks [milk predominating];Milk beverages; Milk beverages containing fruits; Milk beverages with cocoa; Milk beverages with high milk content; Milk beverages, milk predominating; Milk drinks; Milk of almonds for culinary purposes; Milk products; Almond milk; Almond milk for culinary purposes; Almond milk-based beverages; Beverages consisting primarily of milk; Beverages consisting principally of milk; Beverages having a milk base; Beverages made from milk; Beverages made from or containing milk; Cocoa flavored milk beverages; Coconut milk; Coconut milk [beverage];Coconut milk for culinary purposes; Coconut milk used as beverage; Coconut milk-based beverages; Dried milk; Dried milk for food; Dried milk powder; Flavoured milk; Flavoured milk beverages; Flavoured milk drinks; Goat milk; Hemp milk used as a milk substitute; Kefir [milk beverage]; Kephir [milk beverage];Oat milk; Oat-based beverages [milk substitute];Organic milk; Peanut milk; Peanut milk for culinary purposes; Peanut milk-based beverages; Powdered goat milk; Powdered milk; Powdered soya milk; Rice milk; Rice milk [milk substitute];Rice milk for culinary purposes; Rice milk for use as a milk substitute; Soya bean milk; Soya milk; Soya milk [milk substitute];Soya-based beverages used as milk substitutes; Milk shakes; Milk-based beverages; Milk-based beverages containing coffee; Milk-based beverages containing fruit juice; Milk-based beverages flavored with chocolate; Milk-based snacks; Yoghurt made from goats milk; Hemp milk used

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as a milk substitute; Soya milk; Soya milk [milk substitute];Soya yoghurt; Soya- based beverages used as milk substitutes.

Class 30: Coffee based beverages; Coffee-based beverages; Aerated beverages [with coffee, cocoa or chocolate base];Aerated drinks [with coffee, cocoa or chocolate base];Beverages (Coffee-based -);Beverages based on coffee; Beverages consisting principally of coffee; Ice cream; Ice creams; Ice, ice creams, frozen yogurts and sorbets; Imitation ice cream; Non-dairy ice cream; Vegan ice cream; Chocolate beverages; Chocolate beverages containing milk; Chocolate beverages with milk; Beverages (Chocolate- based); Beverages based on chocolate; Beverages consisting principally of chocolate; Chocolate flavoured beverages; Chocolate-based beverages; Cocoa beverages with milk; Coffee beverages with milk; Coffee-based beverage containing milk; Ice lollies being milk flavoured; Ice lollies containing milk; Ice milk [ice cream];Ice milk bars; Tea (Iced -);Tea (Non-medicated -);Tea (Non-medicated -) consisting of cranberry leaves; Tea based beverages (Non- medicated -);Tea beverages; Tea

Class 39: Delivery [distribution] of goods; Delivery of food; Delivery of food and drink prepared for consumption; Delivery of food by restaurants; Delivery of goods; Delivery of groceries; Food delivery; Food delivery services.

2. Oatly AB (“the opponent”) opposed the application on the basis of Section 5(2)(b) of the Trade Marks Act 1994 (the Act). The opposition is based on the earlier European Union Trade Mark (EUTM) no. 016393977 for the trade mark OATADO which has an application date of 23 February 2017 and a registration date of 16 June 2017.

3. The opponent’s earlier mark is registered for the following goods:

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Class 29: Milk substitute-based beverages containing coffee; milk substitute- based drinks containing coffee; oat-based beverages and drinks for use as a milk substitute, containing coffee; dairy substitutes; dairy product substitutes; milk substitutes; skimmed milk substitutes; milk substitutes containing oats; skimmed milk substitutes containing oats; oat-based beverages and drinks for use as a milk substitute; non-dairy creamers; non-dairy coffee creamers; 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.

Class 30: Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules; artificial coffee; coffee concentrates; coffee extracts; coffee essences; coffee flavorings; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based beverages and drinks; beverages based on coffee substitutes; coffee beverages with milk substitutes; coffee-based beverages containing milk substitutes; prepared coffee; prepared coffee beverages; prepared coffee-based beverages; extracts of coffee for use as flavors in beverages; biscuits; pastry and confectionery; oat-based cake mixes, oat- based biscuit mixes; oat-based cake mixes, containing coffee; oat-based biscuit mixes, containing coffee; ice beverages with a coffee base; ice cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream; coffee flavored ice cream; preparations for making beverages [coffee based]; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes frozen yoghurt containing coffee.

4. The opponent submits that there is a likelihood of confusion, including a likelihood of association, because the respective marks are similar, and the goods and services are either identical or similar.

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5. The applicant filed a counterstatement. The main points emerging from the counterstatement are as follows:

• Although the applicant admits that the marks are visually and phonetically similar to a low degree, it denies that the marks are confusingly similar. In particular, the applicant argues that the sequence ‘AD’ in the middle of the opponent’s mark plays an independent distinctive role and makes the greatest contribution to the overall impression the mark conveys, which results in the competing marks being visually and phonetically dissimilar; • The applicant denies that the marks are conceptually similar. In relation to the conceptual aspects of the marks, the applicant contends that the opponent’s ‘OATADO’ mark will be perceived as a “play on words” alluding to a coffee- based beverage called ‘CORTADO’. As to the latter point, the applicant refers to other trade mark registrations in the opponent’s name, namely ‘CAPPOATCCINO’ (EUTM 16393944), ‘OAT LATTE’ (EUTM 16393951) and ‘MACCHIOATO’ (EUTM 16393969) and argues that since all of the opponent’s marks combine the word ‘oat’ with different types of coffee, i.e. cappuccino, latte and macchiato, the relevant public will understand the opponent ‘OATADO’ mark as an oat-base cortado drink; • The applicant argues that the shared element ‘OAT’ in the opponent’s ‘OATADO’ mark is descriptive of oat-based products and is weak in distinctive character reducing the likelihood of confusion; • The applicant admits there is an “overlap” between the respective goods in class 29 and 30 but denies any similarity or identity with the services in class 39.

6. The opponent is represented by Boult Wade Tennant LLP; the applicant represents itself. Both parties filed evidence and neither party filed written submissions. No hearing was requested; however, the opponent filed written submissions in lieu of a hearing. The decision is taken following a careful perusal of the papers.

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Evidence

The opponent’s evidence in chief

7. The opponent’s evidence consists of the witness statement of Catherine Ann Wolfe dated 28 August 2020 and eight exhibits.

8. Catherine Ann Wolfe is a trade mark attorney at Boult Wade Tennant LLP and in her witness statement she summarises the exhibits being presented as evidence. The evidence is related to milk and dairy delivery services in the UK and seeks to demonstrate that there is a connection between milk, inclusive of plant-based alternatives, and delivery services in the UK in the form of a “milk round”. Attached to Ms Wolfe’s witness statement are the following exhibits:

• Exhibit CW1 are print outs from the website dairyuk.org stating that their members collect and process 85% of the UK’s fresh milk and that 3% of the UK’s fresh milk is delivered by milkmen and women. • Exhibit CW2 are print outs from the website findmeamilkman.net demonstrating a search engine service that can be used to identify nearby milk and dairy delivery businesses. • Exhibit CW3 are print outs from the website modernmilkman.co.uk displaying how the service works, the motivation for its use and a selection of the products provided by the company. Ms Wolfe points out that the page contains the following text: “We started as a group of friends running our own local milkround, before expanding to a network of milkmen and women, connecting regional dairies and their communities” and that the company offers oat milk as well as dairy milk products; • Exhibit CW4 are print outs from the website dairydrop.com describing the smartphone milk delivery service for “dairy products”. The evidence contains the following text: “Local dairy producers are seeing a resurgence in demand

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for milk in the last 5 years with more people choosing to drink fresh milk over the longer life version found in the supermarkets. Working closely with regional milkman and technology companies like DairyDrop, dairy farmers are now able to cut out the middle man (the supermarket) and sell produce direct to the consumers. Led by trends the local dairies product range is become much more diverse with gluten & lactose free products also including some vegan friendly products”; • Exhibit CW5 are print outs from the applicant’s website oato.co.uk. This shows that the applicant’s oat milk is delivered via “an existing network of milkround” and demonstrates future products, namely Oato coffee and ice- cream. • Exhibit CW6 are print outs from the website milkandmore.co.uk displaying their range of products (inclusive of third-party branded dairy free and plant- based alternatives). It states that the milk delivery is a British icon and contains the following text: “At Milk & More, we are passionate about encouraging people to eat well and live sustainably. We do this by championing smaller suppliers who we trust to provide the very best products for us to deliver to your doorstep” and “Find out more about our wonderful suppliers, our dedicated farmers and our investment into their future, as well as how we are becoming even more environmentally friendly”. • Exhibit CW7 are print outs from the website creamline.co.uk displaying their product range of milks (inclusive of third-party branded plant-based alternatives) that are delivered by the service. • Exhibit CW8 are print outs from the website milkman.com which is described as UK based vegan milkman service displaying the plant-based milk provided under the mark ‘milkman’.

The applicant’s evidence

9. The applicant’s evidence consists of the witness statement of Carl Hopwood and eight exhibits. Carl Hopwood is the Managing Director of Oato Ltd. The purpose of

Page 6 of 33 the applicant’s evidence is unclear as no commentary has been provided to accompany the exhibits. He attaches the following exhibits to his witness statement:

• Exhibit CH1 is a print out from dictionary.com defining the word “oat”. • Exhibit CH2 is a print out from dictionary.com defining “oat milk”. • Exhibit CH3 is a print out from dictionary.com defining “coffee”. • Exhibit CH4 is a print out from costa.co.uk with a summary of menu items. • Exhibit CH5 is an extract from Wikipedia providing a description of cortado. • Exhibit CH6 is a print out from the EUIPO stating four trade mark registrations for the opponent made on 18 October 2020, listed above at paragraph 5 and inclusive of “OATADO”. • Exhibit CH7 is a print out from Instagram showing images that make reference to coffee. • Exhibit CH8 demonstrate that the webpages for “OATADO” were available for purchase as of 18 October 2020.

The opponent’s evidence in reply

10. The opponent’s evidence in reply consists of the second witness statement of Catherine Ann Wolfe and three additional exhibits. The opponent’s evidence is related to the opponent’s mark and seeks to demonstrate that OATADO is not a dictionary term. Attached to the statement are the following exhibits:

• Exhibit CW9: is a print out from the Collins Online Dictionary that has found no entry for the word OATADO. • Exhibit CW10 is a print out from the Urban Dictionary website that has found no entry for the word OATADO. • Exhibits CW11 is a print out from the Online Slang Dictionary that has found no entry for the word OATADO.

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Opponent’s written submissions in lieu of a hearing

11. The opponent filed written submissions in lieu of a hearing. The main points emerging from those submissions are as follows:

• The marks share the first three letters and the final letter, and they are similar visually, aurally and conceptually. • The marks are similar, and the goods and services are similar, therefore, there is a likelihood of confusion on the part of the public. • The goods and services are low value and frequently purchased, therefore, the purchasing decision will attract a low level of attention. • The average consumer is the purchaser of oat drinks and subscribers to the milk delivery service. • Neither of the marks are dictionary terms. The opponent’s mark is inherently distinctive. • Imperfect recollection will increase the likelihood of confusion.

Decision

12. Section 5(2)(b) of the Act is as follows:

(2) A trade mark shall not be registered if because –

(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

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there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”

13. An earlier trade mark is defined in Section 6 of the Act, the relevant parts state:

“6(1) In this Act an “earlier trade mark” means –

(a) a registered trade mark, international trade mark (UK) or Community trade mark or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks.

(2) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of subsection (1)(a) or (b) subject to its being so registered.”

14. The opponent’s mark qualifies as an earlier mark within the meaning of Section 6(1) of the Act because it has an earlier filing date than the contested application. The earlier mark completed its registration less than five years before the application date of the contested mark and, as a result, is not subject to proof of use provisions.

Section 5(2) - Case law

15. Although the UK has left the EU, Section 6(3)(a) of the European (Withdrawal) Act 2018 requires tribunals to apply EU-derived national law in accordance with EU law as it stood at the end of the transition period. The provisions of the Trade Marks Act relied on in these proceedings are derived from an EU Directive. This is why this decision continues to make reference to the trade mark case-law of EU courts.

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16. The following principles are gleaned from the decisions of the EU courts in Sabel BV v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case C-342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98, Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato & C. Sas v OHIM , Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P.

(a) The likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impression created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

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(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may be dominated by one or more of its components;

(f) however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i) mere association, in the strict sense that the later mark brings to mind the earlier mark, is not sufficient;

(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(k) if the association between the marks creates a risk that the public will wrongly believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.

Comparison of goods and services

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17. The goods and services to be compared are as follows:

Applicant’s goods and services Opponent’s goods Class 29 Class 29 Oat milk; Oat-based beverages [milk Milk substitute-based beverages substitute];Milk-based beverages containing coffee; milk substitute-based flavored with chocolate; Almond milk for drinks containing coffee; oat-based culinary purposes; Almond milk-based beverages and drinks for use as a milk beverages; Beverages consisting substitute, containing coffee; dairy primarily of milk; Beverages consisting substitutes; dairy product substitutes; principally of milk; Beverages having a milk substitutes; skimmed milk milk base; Beverages made from milk; substitutes; milk substitutes containing Beverages made from or containing oats; skimmed milk substitutes milk; Milk based beverages [milk containing oats; oat-based beverages predominating];Milk based drinks [milk and drinks for use as a milk substitute; predominating];Milk beverages; Milk non-dairy creamers; non-dairy coffee beverages containing fruits; Milk creamers; milk substitute powder, milk beverages with cocoa; Milk beverages substitute powder for food and with high milk content; Milk beverages, nutritional purposes; dried milk milk predominating; Milk drinks; Milk of substitute powder, cream substitute almonds for culinary purposes; Milk powder; flavored milk substitute powder products; Almond milk; Almond milk for for making drinks. culinary purposes; Almond milk-based beverages; Beverages consisting primarily of milk; Beverages consisting principally of milk; Beverages having a milk base; Beverages made from milk; Beverages made from or containing milk; Cocoa flavored milk beverages; Coconut milk; Coconut milk [beverage];Coconut milk for culinary purposes; Coconut milk used as

Page 12 of 33 beverage; Coconut milk-based beverages; Dried milk; Dried milk for food; Dried milk powder; Flavoured milk; Flavoured milk beverages; Flavoured milk drinks; Goat milk; Hemp milk used as a milk substitute; Kefir [milk beverage]; Kephir [milk beverage];Oat milk; Oat-based beverages [milk substitute];Organic milk; Peanut milk; Peanut milk for culinary purposes; Peanut milk-based beverages; Powdered goat milk; Powdered milk; Powdered soya milk; Rice milk; Rice milk [milk substitute];Rice milk for culinary purposes; Rice milk for use as a milk substitute; Soya bean milk; Soya milk; Soya milk [milk substitute];Soya- based beverages used as milk substitutes; Milk shakes; Milk-based beverages; Milk-based beverages containing coffee; Milk-based beverages containing fruit juice; Milk- based beverages flavored with chocolate; Milk-based snacks; Yoghurt made from goats milk; Hemp milk used as a milk substitute; Soya milk; Soya milk [milk substitute];Soya yoghurt; Soya-based beverages used as milk substitutes.

Class 30 Class 30 Coffee based beverages; Coffee-based Coffee; coffee beans; mixtures of coffee; beverages; Aerated beverages [with instant coffee; coffee capsules; artificial

Page 13 of 33 coffee, cocoa or chocolate coffee; coffee concentrates; coffee base];Aerated drinks [with coffee, cocoa extracts; coffee essences; coffee or chocolate base];Beverages (Coffee- flavorings; decaffeinated coffee; coffee based-);Beverages based on coffee; beverages; coffee drinks; coffee-based Beverages consisting principally of beverages and drinks; beverages based coffee; Ice cream; Ice creams; Ice, ice on coffee substitutes; coffee beverages creams, frozen yogurts and sorbets; with milk substitutes; coffee-based Imitation ice cream; Non-dairy ice beverages containing milk substitutes; cream; Vegan ice cream; Chocolate prepared coffee; prepared coffee beverages; Chocolate beverages beverages; prepared coffee-based containing milk; Chocolate beverages beverages; extracts of coffee for use as with milk; Beverages (Chocolate-based flavors in beverages; biscuits; pastry -);Beverages based on chocolate; and confectionery; oat-based cake Beverages consisting principally of mixes, oat-based biscuit mixes; oat- chocolate; Chocolate flavoured based cake mixes, containing coffee; beverages; Chocolate-based oat-based biscuit mixes, containing beverages; Cocoa beverages with milk; coffee; ice beverages with a coffee Coffee beverages with milk; Coffee- base; ice cream; ice cream made from based beverage containing milk; Ice milk substitutes; non-dairy ice cream; ice lollies being milk flavoured; Ice lollies cream, containing coffee, made from containing milk; Ice milk [ice cream];Ice milk substitutes; oat-based ice cream; milk bars; Tea (Iced -);Tea (Non- flavored ice-cream; oat-based flavored medicated -);Tea (Non-medicated -) ice-cream; coffee flavored ice cream; consisting of cranberry leaves; Tea preparations for making beverages based beverages (Non-medicated - [coffee based]; milk substitutes frozen );Tea beverages; Tea yoghurt; non-dairy frozen yoghurt; milk substitutes frozen yoghurt containing coffee.

Class 39 Delivery [distribution] of goods; Delivery of food; Delivery of food and drink prepared for consumption; Delivery of

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food by restaurants; Delivery of goods; Delivery of groceries; Food delivery; Food delivery services.

18. The applicant acknowledges in the counterstatement that there is “some overlap between the goods covered by the application in classes 29 and 30” but denies any identity or similarity between the applied for services in class 39 and the opponent’s goods. As the applicant does not clarify to what degree it considers the goods to be similar I will conduct a full comparison of the goods and services at issue.

19. When making the comparison, all relevant factors relating to the goods and services in the specifications should be taken into account. In the judgment of the Court of Justice of the European Union (“CJEU”) in Canon, Case C-39/97, the court stated at paragraph 23 of its judgment that:

“In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary”.

20. Guidance on this issue has also come from Jacob J. (as he was then) in the Treat case, [1996] R.P.C. 281, where he identified the factors for assessing similarity as:

(a) The respective uses of the respective goods or services;

(b) The respective users of the respective goods or services;

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(d) The respective trade channels through which the goods or services reach the market;

(e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and, in particular, whether they are or are likely to be found on the same or different shelves;

(f) The extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance, whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.”

21. In Gérard Meric v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) case T-133/05, the General Court (“GC”) stated:

“29 In addition, the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application (Case T-388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II-4301, paragraph 53) or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark”

22. In Kurt Hesse v OHIM (Case C-50/15 P), the CJEU stated that complementarity is an autonomous criterion capable of being the sole basis for the existence of similarity between goods. In Boston Scientific Ltd v OHIM, (Case T-325/06), the GC stated that “complementary” means:

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“...there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for those goods lies with the same undertaking”.

Class 29

23. Some of the goods at issue are identical. For example, oat-based beverages [Milk substitute] (mentioned twice) in the applicant’s specification is identical to oat-based beverages and drinks for use as a milk substitute in the opponent’s specification; powdered soya milk in the applicant’s specification falls within milk substitute powder in the opponent’s specification and so is identical (Meric); oat milk (mentioned twice) in the applicant’s specification either encompass or is encompassed by milk substitutes containing oats in the opponent’s specification and so is identical (Meric). In addition, the opponent’s specification in class 29 includes the terms dairy substitutes and dairy product substitutes. The Oxford English dictionary defines ‘dairy’ as an adjective meaning “containing or made from milk”. Dairy substitutes and dairy product substitutes are therefore plant-based milk alternative products to dairy food, and encompass, as a broad category, the following goods in the applicant’s specification: Oat milk; Oat-based beverages [milk substitute] (mentioned twice); Almond milk for culinary purposes (mentioned twice); Almond milk-based beverages; Milk of almonds for culinary purposes; Almond milk; Almond milk based beverages; Coconut milk; Coconut milk [beverage]; Coconut milk for culinary purposes; Coconut milk used as beverage; Coconut milk-based beverages; Hemp milk used as a milk substitute (mentioned twice); Peanut milk; Peanut milk for culinary purposes; Peanut milk-based beverages; Rice milk; Rice milk [milk substitute]; Rice milk for culinary purposes; Rice milk for use as a milk substitute; Soya bean milk; Soya milk (mentioned twice); Soya milk [milk substitute] (mentioned twice); Soya-based beverages used as milk substitutes (mentioned twice); Soya yoghurt. These goods are identical on the principle outlined in Meric.

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24. Further, the applicant’s Oat-based beverages [milk substitute]; almond milk- based beverages; Coconut milk [beverage]; Coconut milk used as beverage; Coconut milk-based beverages; Peanut milk-based beverages; Soya-based beverages used as milk substitutes are not limited in any way and could contain coffee; as such they would also fall within the opponent’s milk substitute-based drinks containing coffee in the opponent’s specification and would also be identical (Meric).

25. Goat milk; Organic milk in the applicant’s specification and milk substitutes; skimmed milk substitutes in the opponent’s specification will overlap as they have a similar nature and the same purpose, target the same users, have the same method of use and share distribution channels. They are also in competition, although I recognise that they may have different users as those with special dietary requirements may prefer the milk substitutes. I consider these goods to be highly similar.

26. Milk products; Milk-based snacks; Yoghurt made from goats’ milk; Kefir [milk beverage]; Kephir [milk beverage]. The opponent’s dairy product substitutes cover non-dairy products of the same nature as those in the applicant’s specification, e.g. milk products, milk-based snacks, yoghurt and kefir all made from milk substitutes. For similar reasons given in relation to Goat milk and Organic milk, these goods are similar to dairy product substitutes in the opponent’s specification as they have a similar nature and the same purpose, target the same users, have the same method of use, share distribution channels and might be competitive. However, they may have different users as those with special dietary requirements may prefer the dairy product substitutes. I consider the goods to be highly similar.

27. Dried milk; Dried milk for food; Dried milk powder; Powdered goat milk; Powdered milk. For similar reasons given in relation to Goat milk and Organic milk, these goods are similar to the opponent’s milk substitute powder as they have a similar nature, the same purpose, method of use and trade channels and might be competitive.

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However, they may have different users as those with special dietary requirements may prefer milk substitute powder. I consider the goods to be highly similar.

28. Milk-based beverages flavored with chocolate (mentioned twice); Beverages consisting primarily of milk (mentioned twice); Beverages consisting principally of milk (mentioned twice); Beverages having a milk base (mentioned twice); Beverages made from milk (mentioned twice); Beverages made from or containing milk (mentioned twice); Milk based beverages [milk predominating]; Milk based drinks [milk predominating]; Milk beverages; Milk beverages containing fruits; Milk beverages with cocoa; Milk beverages with high milk content; Milk beverages, milk predominating; Milk drinks; Cocoa flavored milk beverages; Flavoured milk; Flavoured milk beverages; Flavoured milk drinks; Milk shakes; Milk-based beverages; Milk-based beverages containing coffee; Milk-based beverages containing fruit juice; Milk-based beverages; Milk-based beverages flavored with chocolate; Once again, for similar reasons given in relation to Goat milk and Organic milk, these goods are similar to the opponent’s oat-based beverages and drinks for use as a milk substitute as they are all milk and milk substitute based beverages and drinks. I consider the goods highly similar.

Class 30

29. Non-dairy ice cream appears in both parties’ specifications and are self-evidently identical. Vegan ice cream is a non-dairy ice cream and is also identical to the opponent’s Non-dairy ice cream (Meric).

30. Coffee-based beverages (mentioned twice); Beverages (Coffee-based-); Beverages based on coffee; Beverages consisting principally of coffee; Coffee beverages with milk; coffee-based beverage containing milk; Aerated beverages [with coffee base]; Aerated drinks [with coffee base] in the applicant’s specification all fall

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within the wider category of coffee-based beverages and drinks in the opponent’s specifications. These goods are self-evidently identical.

31. Aerated beverages [with cocoa or chocolate base]; Aerated drinks [with cocoa or chocolate base]; Chocolate beverages; Chocolate beverages containing milk; Chocolate beverages with milk; Beverages (Chocolate-based -);Beverages based on chocolate; Beverages consisting principally of chocolate; Chocolate flavoured beverages; Chocolate-based beverages; Cocoa beverages with milk; Tea (Non- medicated -);Tea (Non-medicated -) consisting of cranberry leaves; Tea based beverages (Non-medicated -); Tea beverages; Tea in the applicant’s specification and coffee beverages and coffee in the opponent’s specification are all stimulating beverages of plant origin. They have a similar nature, purpose and method of use, target the same users, share distribution channels and they are in competition. They are similar to a medium degree.

32. Ice cream(s) appears in both parties’ specification and are self-evidently identical. Imitation ice cream is an ice cream made with less expensive ingredients and together with Ice milk [ice cream] in the applicant’s specification, it would also fall within the opponent’s ice cream. These goods are also identical (Meric).

33. Frozen yogurts and sorbets; Ice lollies being milk flavoured; Ice lollies containing milk; Ice milk bars. The applicant’s Frozen yogurts encompass the opponent’s non- dairy frozen yoghurt and so is identical (Meric). The remaining goods, namely sorbets, Ice lollies being milk flavoured; Ice lollies containing milk; Ice milk bars are highly similar to the opponent’s ice cream, as they have the same nature, namely frozen desserts, method of use, distribution channels, target public and they are in competition. They are highly similar.

34. Tea (Iced-) in the applicant’s specification and ice beverages with a coffee base in the opponent’s specification are similar to a medium degree because they have a

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similar nature, namely cold beverages, method of use, distributional channels, target public and they are in competition.

35. Ice in the applicant’s specification shares the same distribution channels and storage conditions as the opponent’s ice cream and frozen yoghurt. However, they will not overlap in purpose, use, or nature as the natural use of ice to the average consumer, in my opinion, is as a refrigerant and not a foodstuff or beverage. I find a low level of similarity between the goods.

Class 39

36. The applicant denies that there is any similarity between the opponent’s goods and the applicant’s services. The goods and services at issue have a different nature, purpose, use and method of use. They are not in competition. As to whether the goods and services are complementary, in order to find that they are, the case-law establishes that one must be indispensable or important for the use of the other in such a way that consumers may think that responsibility for the goods and services lies with the same undertaking.

37. Whilst I accept that, as demonstrated by exhibit CW1, it is common in the UK to have milk delivered daily to the customers’ doorstep by milkmen, it is also clear from the evidence that milk round services are traditionally linked to (and work in conjunction with) local farmers and dairy producers. Further, as the evidence shows, whilst some milk round services also offer milk substitute products, some of the examples presented in the evidence indicate that the milk substitute products are sold under third party brands (rather than the same brand offering the milk round services). Finally, there are only two examples of oat milk and milk round services being offered under the same brand, one from applicant’s website and the other from milkman.com. However, that evidence is dated some 10 months after the relevant date, which is the date when the contested application was filed, and there is nothing to suggest that at

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the relevant date the provision of oat milk and oat milk delivery services have converged in the market in such a way that the goods and services would be seen as complementary. Finally, whilst there is a strong link between the production of local dairy products and milk round services because of the connection they create between local farmers and their community, 1) no such a link exist between the production of oat milk (or other milk substitute products) and the delivery of such goods to consumers and 2) the opponent’s specification does not cover milk and dairy products. The goods are one step removed. I therefore consider that the opponent’s goods in classes 29, 30 and the applicant’s services in class 39 are dissimilar.

38. As some degree of similarity between the goods and services is necessary to engage the test for likelihood of confusion,1 the opposition must fail in respect of the following services in the applicant’s specification that I have found to be dissimilar to the opponent’s goods:

Average Consumer and the purchasing act

39. The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect. For the purpose of assessing the likelihood of confusion, it must be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question: Lloyd Schuhfabrik Meyer, Case C-342/97.

1 eSure Insurance v Direct Line Insurance [2008] ETMR 77 CA

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40. As the law above indicates, it is necessary for me to determine who the average consumer is for the parties’ goods. I must then determine the manner in which the goods are likely to be selected by the average consumer. In Hearst Holdings Inc, Fleischer Studios Inc v A.V.E.L.A. Inc, Poeticgem Limited, The Partnership (Trading) Limited, U Wear Limited, J Fox Limited, [2014] EWHC 439 (Ch), Birss J. described the average consumer in these terms:

“60. The trade mark questions have to be approached from the point of view of the presumed expectations of the average consumer who is reasonably well informed and reasonably circumspect. The parties were agreed that the relevant person is a legal construct and that the test is to be applied objectively by the court from the point of view of that constructed person. The words “average” denotes that the person is typical. The term “average” does not denote some form of numerical mean, mode or median.”

41. The goods at issue here are beverages and foodstuffs. The average consumer for these goods will be a member of the general public. The goods are most likely to be self-selected from the shelves of retail premises, primarily supermarkets, and from their online equivalents. The purchase is, therefore, predominately visual. That said, as such goods may also be the subject of, for example, word-of-mouth recommendations or oral requests, aural considerations must not be forgotten.

42. The applicant has not commented on the average consumer or the level of attention that s/he will display. With regard to the purchasing act, the opponent submits that the consumer will purchase the low value goods frequently and will pay a low level of attention during the selection process.

43. Although the goods are relatively inexpensive and everyday purchases, the consumer will select the goods taking into account individual taste, as well as quality,

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and type of the food or beverages. As a result, I consider that the average consumer will purchase the goods with a medium level of attention.

Comparison of the marks

44. The respective trade marks are shown below:

OATADO Oato

Earlier trade mark Contested trade mark

45. It is clear from Sabel BV v Puma AG (particularly paragraph 23) that the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details. The same case also explains that the visual, aural and conceptual similarities of trade marks must be assessed by reference to all the overall impressions created by the trade marks, bearing in mind their distinctive and dominant components. The CJEU stated, at paragraph 34 of its judgment in Case C-591/12P, Bimbo SA v OHIM, that:

“… it is necessary to ascertain, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion.”

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46. It would be wrong, therefore, to artificially dissect the trade marks, although, it is necessary to take into account the distinctive and dominant components of the marks and to give due weight to any other features which are not negligible and therefore contribute to the overall impressions created by the marks.

47. The opponents mark consists of the word “OATADO” written in capital letters and the applicants mark consists of the word “Oato” written in title case. There are no other elements that contribute to the overall impression of the mark.

48. The applicant admits that there is a low level of visual similarity between the marks, whereas the opponent argues that the similarity is high. In particular, the applicant argues that the sequence ‘AD’ in the middle of the opponent’s mark plays an independent distinctive role and makes the greatest contribution to the overall impression the mark conveys, resulting in the competing marks being visually and aurally dissimilar. However, as the opponent’s mark will be perceived as a single word and the element ‘AD’ is neither separated nor highlighted, it does not have an independent distinctive role within the mark, and I reject the submission.

49. Visually, there is some similarity between the marks because the marks share the first three letters OAT and the final letter O. Although the marks are presented in capital letters and title case respectively, as a matter of law,2 the registration of a word mark does not prevent its use in different scripts (fonts or typefaces) so the use of different typeface does not create a point of difference. Overall, there is a medium degree of visual similarity.

50. Aurally, the opponent’s mark will be pronounced OAT-AHH-DO and the applicant’s mark will be pronounced OAT-O. The opponent’s mark is made up of three syllables, whereas the applicant’s mark has two. The distinguishing factor between the marks is the ‘AHH-D’ element of the opponent’s mark. The applicant initially

2 Case T-364/04 Sadas SA v OHIM

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argued that the marks are ‘phonetically dissimilar’ before later admitting that there is a low degree of aural similarity between the marks, whereas the opponent argues there is a high degree of similarity. Overall, there is a medium degree of aural similarity.

51. Turning to the conceptual position, in Usinor SA v OHIM, Case T-189/05, EU:T:2008:39, the GC found that:

“62. In the third place, as regards the conceptual comparison, it must be noted that while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Lloyd Schuhfabrik Meyer, paragraph 25), he will nevertheless, perceiving a verbal sign, break it down into verbal elements which, for him, suggest a concrete meaning or which resemble words known to him (Case T-356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II-3445, paragraph 51, and Case T- 256/04 Mundipharma v OHIM –Atlana Pharma (RESPICUR) [2007] ECR II- 0000, paragraph 57)”.

52. The opponent has argued in its Form TM7 that OAT is a dictionary word and therefore the marks are conceptually similar, whereas the applicant denies any conceptual similarity. In particular, the applicant contends that the opponent’s ‘OATADO’ mark will be perceived as a “play on words” alluding to a coffee-based beverage called ‘CORTADO’. The applicant refers to other trade mark registrations in the opponent’s name, provided as evidence in exhibit CH6, namely ‘CAPPOATCCINO’ (EUTM 16393944), ‘OAT LATTE’ (EUTM 16393951) and ‘MACCHIOATO’ (EUTM 16393969) and argues that since all of the opponent’s marks combine the word ‘oat’ with different types of coffee, i.e. cappuccino, latte and macchiato, the relevant public will understand the opponent ‘OATADO’ mark as an oat-base cortado drink. The fact that the opponent has registered other marks which are not relied upon in this opposition is irrelevant because the average consumer would not, upon seeing the marks on the respective goods, proceed to check the Trade Mark register and identify the opponent’s other marks. Therefore, conceptual

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comparison is based on the relevant public’s perception of the marks OATADO and OATO.

53. Neither mark, in my view, lends itself to being broken down into its constituent parts. As indicated by the opponent’s evidence in reply, there is no dictionary definition for the opponent’s mark, this is the same with regard to the applicant’s mark. Both marks are invented words and no meaning will be attributed to the words “OATO” and “OATADO” as a whole, but I consider that when applied to oat-based goods, the word OAT will be perceived within the marks, so there is conceptual similarity to that limited extent.

Distinctive character of the earlier mark

54. In Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, Case C-342/97 the CJEU stated that:

“22. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee v Huber and Attenberger [1999] ECR I-0000, paragraph 49).

23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested

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by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee, paragraph 51).”

55. Registered trade marks possess varying degrees of inherent distinctive character through use, ranging from the very low, because they are suggestive or allusive of a characteristic of the goods and services, to those with a high inherent distinctive character, such as invented words which have no allusive qualities.

56. The opponent has not pleaded that its mark has acquired enhanced distinctive character through use. I have, therefore, only the inherent position to consider. The earlier mark consists of the word “OATADO”. OATADO is not an ordinary dictionary word, as illustrated by the evidence from the opponent. Invented words usually have the highest degree of inherent distinctive character, but the descriptive element of the mark should be considered.

57. The OAT element of the mark is descriptive dependent on the goods for which it is used. The OAT element can have a descriptive meaning in relation to some of the goods in the opponent’s specification, specifically the goods that contain oats, such as: oat-based beverages and drinks for use as a milk substitute, containing coffee; skimmed milk substitutes containing oats, and oat based ice-cream. Whilst this is true, I also found that the opponent’s goods to which the applicant’s goods are similar include milk substitutes which could be made from ingredients other than oat, for which the reference to the word ‘oat’ in OATADO would not be perceived. But even in circumstances where the mark OATADO were to be used in relation to oat-based goods (in the context of which the mark would give a strong allusion to the nature of the goods), it would still be perceived, in its totality, as an invented word and as such, it would still have a high degree of distinctive character.

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Likelihood of confusion

58. Confusion can be direct or indirect. Direct confusion involves the average consumer mistaking one mark for the other, while indirect confusion is where the average consumer realises the marks are not the same but puts the similarity that exists between the marks and the goods and services down to the responsible undertakings being the same or related. There is no scientific formula to apply in determining whether there is a likelihood of confusion; rather, it is a global assessment where a number of factors need to be borne in mind. The first is the interdependency principle, i.e. a lesser degree of similarity between the respective trade marks may be offset by a greater degree of similarity between the respective goods and services or vice versa. As I mentioned above, it is necessary for me to keep in mind the distinctive character of the opponent’s trade mark, the average consumer for the goods and services and the nature of the purchasing process. In doing so, I must be mindful to the fact that the average consumer rarely has the opportunity to make direct comparisons between trade marks and must instead rely upon the imperfect picture of them that he has retained in his mind.

59. I have found the marks to be visually and aurally similar to a medium degree, and conceptually similar to a limited extent. I have identified the average consumer to be a member of the general public who will select the goods primarily by visual means (although I do not discount an aural component). I have concluded that a medium level of attention will be paid during the purchasing process. I have found the earlier mark to have a high degree of distinctive character. I have found the parties’ goods and services to vary from dissimilar to identical.

60. Taking all of the above factors into account, in particular the fact that the marks are visually and aurally similar to a medium degree, the absence of any conceptual difference that could assist the customer in distinguishing between the marks, and the principle of imperfect recollection, I consider that the marks are likely to be misremembered or mistakenly recalled as each other at least in the context of

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identical or similar goods which are not related to oat and in relation to which the shared element OAT will be seen as a distinctive and random combination of letters positioned at the beginning of the parties’ respective marks.

61. However, when oat-based goods are involved, namely “Oat milk; Oat-based beverages [milk substitute]” (in class 29) the average consumer will perceive both marks as being based on the word OAT (which would be descriptive) and the suffixes -O and -ADO and would simply perceive the applicant’s mark as a competing brand in the field of oat-based alternative to dairy products. Consequently, my conclusion is that there is a likelihood of direct confusion in relation to all of the goods which I found to be identical or similar, with the exception of “Oat milk; Oat-based beverages [milk substitute]” in class 29.

Outcome

62. The opposition has succeeded for the following goods which will be refused:

Class 29: Milk-based beverages flavored with chocolate; Almond milk for culinary purposes; Almond milk-based beverages; Beverages consisting primarily of milk; Beverages consisting principally of milk; Beverages having a milk base; Beverages made from milk; Beverages made from or containing milk; Milk based beverages [milk predominating];Milk based drinks [milk predominating];Milk beverages; Milk beverages containing fruits; Milk beverages with cocoa; Milk beverages with high milk content; Milk beverages, milk predominating; Milk drinks; Milk of almonds for culinary purposes; Milk products; Almond milk; Almond milk for culinary purposes; Almond milk-based beverages; Beverages consisting primarily of milk; Beverages consisting principally of milk; Beverages having a milk base; Beverages made from milk; Beverages made from or containing milk; Cocoa flavored milk beverages; Coconut milk; Coconut milk [beverage];Coconut milk for culinary purposes;

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Coconut milk used as beverage; Coconut milk-based beverages; Dried milk; Dried milk for food; Dried milk powder; Flavoured milk; Flavoured milk beverages; Flavoured milk drinks; Goat milk; Hemp milk used as a milk substitute; Kefir [milk beverage]; Kephir [milk beverage]; Organic milk; Peanut milk; Peanut milk for culinary purposes; Peanut milk-based beverages; Powdered goat milk; Powdered milk; Powdered soya milk; Rice milk; Rice milk [milk substitute];Rice milk for culinary purposes; Rice milk for use as a milk substitute; Soya bean milk; Soya milk; Soya milk [milk substitute];Soya-based beverages used as milk substitutes; Milk shakes; Milk-based beverages; Milk- based beverages containing coffee; Milk-based beverages containing fruit juice; Milk-based beverages flavored with chocolate; Milk-based snacks; Yoghurt made from goats milk; Hemp milk used as a milk substitute; Soya milk; Soya milk [milk substitute];Soya yoghurt; Soya-based beverages used as milk substitutes.

Class 30: Coffee based beverages; Coffee-based beverages; Aerated beverages [with coffee, cocoa or chocolate base];Aerated drinks [with coffee, cocoa or chocolate base];Beverages (Coffee-based -);Beverages based on coffee; Beverages consisting principally of coffee; Ice cream; Ice creams; ice, ice creams, frozen yogurts and sorbets; Imitation ice cream; Non-dairy ice cream; Vegan ice cream; Chocolate beverages; Chocolate beverages containing milk; Chocolate beverages with milk; Beverages (Chocolate- based); Beverages based on chocolate; Beverages consisting principally of chocolate; Chocolate flavoured beverages; Chocolate-based beverages; Cocoa beverages with milk; Coffee beverages with milk; Coffee-based beverage containing milk; Ice lollies being milk flavoured; Ice lollies containing milk; Ice milk [ice cream];Ice milk bars; Tea (Iced -);Tea (Non-medicated -);Tea (Non-medicated -) consisting of cranberry leaves; Tea based beverages (Non- medicated -);Tea beverages; Tea

63. The opposition has failed in relation to the following goods and services which will proceed to registration:

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Class 29: Oat milk; Oat-based beverages [milk substitute];

Costs

64. Both sides have achieved a measure of success. In the circumstances, the opponent has had more success overall and is entitled to an award of costs, which are sought on the scale Tribunal Practice Note 2/2016. I will reduce the award by 10%, to reflect the overall balance of success. I will award costs to the opponent as follows:

Preparing a statement and considering the applicant’s statement: £200

Filing evidence and considering the other party’s evidence £500

Written submission in lieu of hearing £100

Official fee: £100

Less 10% -£90

Total £810

65. I therefore order Oato Ltd to pay Oatly AB the sum of £810. The above sum should be paid within twenty-one days of the expiry of the appeal period or, if there is an appeal, within twenty-one days of the conclusion of the appeal proceedings.

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Dated this 11th day of March 2021

A Klass

For the Registrar, the Comptroller - General

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