Arla v Oatly - milking it for all it’s worth?

Gokcen Uzer Cengelci / Lisa Wright / Olli Juuso,

The idea of a legally good trademark is different from that of the marketing structure and brand creation can occasionally lead to disagreement between clients, marketing and legal teams. If you want to emphasize to your clients, or marketing team, that trademark registration is important, here is a perfect example for you to use!

Marketing mayhem

Imagine if one day your marketing campaign slogan was used as a trademark by one of your competitors? This is actually happening right now in Sweden, in the dairy and oat-based industries, which are experiencing a Scandanavian ‘milk’ war between Danish dairy producer, Arla Foods and Swedish oat-based producer, Oatly. 

Trademarks in Sweden - primary legislation and rights

The trademark registrations are held by the Swedish Patent and Registration Office (PRV). The Trademarks Act (2010:1877) and the Trademarks Regulation (2011:594) are the primary legislation governing trademarks in Sweden. Moreover, as a Member state of the EU, the new EU Trademark Directive 2015/95/EC, which enables the registration of new types of trademarks, was implemented into the Trademark Act, which entered into force on January 1, 2019.  

In principle, trademark rights are obtained by registration as Sweden is a first-to-file country. However, the rights can also be established with extensive use.   

War of the words

In 2018 Arla Foods, a major Danish dairy products company, created an advertisement campaign in Sweden. The message of the campaign was “only milk tastes like milk” and for this campaign they had created variations of the Swedish word for milk (mjölk) such as pjölk, brölk, trölk etc. Arla Foods did not trademark these words though (although their use can be seen when running an AI clearance search on our platform, which includes common law results).

After the campaign, a Swedish oat-based products company, Oatly, came up with the same words and registered them as eight trademarks with the Swedish Patent and Registration Office (PRV) in class 29 (Meat and Processed Foods) for a large variation of goods, including milk products. Not only that, Oatly started using these words on its own “oat milk” or “oat drink” cartons.

Arla Foods is seemingly unhappy about this move and is in conflict with Oatly. In addition to this, we can now find pending applications by Arla for all of these Swedish word variations, with mark graphics, from the Swedish IPO. Arla’s applications cover classes 29, 30, 32, 35 and 41.

Rising tensions

The increasing popularity of plant-based milk alternatives has led to more choice for consumers over traditional dairy products. When looking at oat-based products, a ‘tasty and healthy alternative to a dairy product’ is now a commonly used strategy both for the purposes of marketing, as well as in building trademark portfolios. On the other hand, this ‘alternative-based’ strategy is commonly criticized in the media as being the cause of unnecessary tension between products in different industries. 

Tensions arise due to commonplace ‘detraction value’ marketing strategies used by the plant-based milk alternative industry over dairy products. This tactic has been utilized this year by Oatly who are using the slogan “ditch the milk” - arguing the sustainability and health benefits of drinking oat-based milk over dairy.

The slogan itself “ditch the milk” is also very close to another well-known tagline “ditch the booze”. This was previously used by the public sector to encourage a decrease in alcohol consumption, going back as far as the 1980s. 

Needless to say, the strategy of equating a dairy product to alcohol products and highlighting environmental and health effects creates friction between industries. The marketing strategy of calling out competitors and putting them down rather than promoting the product itself, oat milk, can be seen by some as an unrealistic and unnecessary tactic. However in the world of marketing it is argued that: there’s no such thing as bad advertising

Trademark portfolios

This tension is not only found in the marketing arena but it also directly affects the trademark portfolios of the two companies. 

Arla Foods

Arla use variations of Swedish words such as ‘trölk’, ‘pjölk’, ‘sölk’ or ‘brölk’ instead of the real Swedish word for milk, ‘mjölk’. 

Ⓒ Arla Foods

When running a preliminary trademark search using our ExaMatch tool we can see that Arla did not file a trademark application for these words until October 2019:

Oatly 

Oatly has actually filed a trademark registration application for the terms ‘trölk’, ‘pjölk’, ‘sölk’ and ‘brölk’ – the very words that Arla created for its campaign. Arla’s recent applications can be considered as a counterclaim to their competitor Oatly’s applications, which have already been filed in October 2018 and are registered now:

When monitoring Oatly’s trademarks within the PRV it can be seen that Arla have already filed objections to the trademarks in question and the dispute is still ongoing, with time extension requests. 

Arla and Oatly have their say

Currently Arla say that they will go ahead and launch new campaigns with the same concept. They are also claiming that Oatly has made their registrations in bad faith. 

Oatly state that these are good names for their products and that it remains to be seen what will happen to the use of those names once the conflict is resolved. They also say that they will not do any more specific promotions for this product as Arla has done a great job for them already. They also hope that no one in Finland will be confused by the names since they accidentally sent a small shipment of cartons with those names to Finland as well!

As these trademarks are newly filed, it will be interesting to see Oatly’s strategy against them. Putting aside Arla’s presumption that ‘only milk tastes like milk’, these milkish words seem to be leading to disputes between the companies. Stay tuned!

Save tension, time and money

Running a clearance search and registering any tagline or words that you plan to use in your advertising campaigns will save your business unnecessary tension and ultimately time and money! 

Clear your top marks and slogans across multiple regions and common law data sources within seconds. Review search reports ranked and analyzed by intelligent legal technology. 

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