What does the Oatly ruling mean for geisha coffee and generic names?
Oatly applied in September to register Barista as a trademark in New Zealand, and food wholesaler Bidfood opposed it. Bidfood argued the term has been used on plant milk products there for nearly a decade and is generic. The New Zealand Intellectual Property Office agreed, ruling Barista descriptive when used for dairy alternatives.
Oatly countered that consumers now associate Barista with its oat milk, but the office sided with Bidfood. The dispute echoes earlier fights over names in coffee, including preemptive registration of geisha coffee, the varietal name now widely used by roasters. The ruling raises questions about how far trademark protection should extend when a term describes coffee is a type of product rather than one company's brand.
Recently, Oatly, a giant in the oat milk industry, attempted to register the word "Barista" as a trademark in New Zealand, but faced strong opposition from local food wholesaler Bidfood. Bidfood argued that the term has long been a generic name in the plant milk sector and should not be monopolized by any company. The New Zealand Intellectual Property Office ultimately sided with Bidfood, ruling that "Barista" is descriptive when used for dairy alternatives. This incident not only highlights the challenges of determining generic names in international trademark registration but also brings to mind similar cases in China, such as the preemptive registration of "Geisha Coffee." Where exactly are the boundaries of trademark protection? What potential risks does the registration of generic names pose to the industry? This article will provide a detailed analysis for you.
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According to foreign media reports, the globally renowned oat milk company attempted to register "Barista" as a trademark in New Zealand in September this year, but was opposed by New Zealand's large food wholesale company Bidfood.
In September this year, Oatly submitted an application to the New Zealand Intellectual Property Office to register the "Barista" trademark, and Bidfood immediately opposed it. Bidfood stated that for nearly a decade, the term "Barista" has been used on various plant milk products in the country, making it a generic term, and no company had previously registered it as a trademark.
But Oatly said that "Barista" is not a generic term, because in recent years, when people see "Barista," they immediately think of the company's oat milk rather than other plant milk or dairy alternatives.
Bidfood believes this is sophistry! It might seem like a case of "no harm, no foul," but if this trademark registration is approved, it would pave the way for absurd trademark claims like Oatly's.
In trying to sue over a descriptive term, or attempting to register a generic term already widely used in the market as a trademark, only Oatly (the original text used "Monster Energy's") could pull off such a thing.
Ultimately, the New Zealand Intellectual Property Office agreed with Bidfood's view, stating that consumers would expect the term "Barista" when used on dairy alternatives (such as soy) to have exactly the same meaning as oat milk. Dairy alternatives are somewhat competitive with each other, and when sold together, consumers make direct comparisons.
IPO's expert witness Dr. Valentyna Melnyk, who acted as a "judge" in this case, also stated that dairy alternatives mimic consumer demand for dairy products, and the term Barista should not be used to distinguish between different types of dairy alternatives.
Not long ago, some domestic businesses were also registering the generic coffee term "Geisha Coffee" as their own product trademark, and some trademarks have already passed review by the Trademark Office.
The greatest significance of trademark registration lies in the trademark registrant having exclusive rights to the trademark, protected by law, so that others dare not counterfeit it, or else they can be sued for infringement and obtain economic compensation. Originally, was intended to protect the exclusive rights of trademark registrants, but now it has brought significant potential risks to various industries.
A generic name refers to the name of a certain commodity or service that is legally or customarily established within a certain scope and is widely used. Every industry has some generic names within it, but trademark examiners are not familiar with the generic names across every industry.
Therefore, even though Article 11 of the Trademark Law of the People's Republic of China stipulates that generic names cannot be registered as trademarks, it is still impossible to completely prevent the registration of trademarks for generic names that are not widely recognized by the public.
If "Barista" really passes trademark registration this time, what will baristas be called in the future?
Image source: Internet
The above content is compiled by CoffeeHunters, a coffee news website.
