ARTICLE
6 December 2022

Oatley Fails "Barista" Registration In New Zealand

The term "barista" is commonly used as a title to describe the person who prepares and serves coffee drinks behind a counter.
New Zealand Intellectual Property
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The term "barista" is commonly used as a title to describe the person who prepares and serves coffee drinks behind a counter. Can it be owned by someone as a trademark? In an attempt of registering "BARISTA" as a trademark in New Zealand, Swedish oat milk maker Oatly AB has met some obstacles.

One of Oatly's most popular products is "Barista Edition" oat drink which is dense and foam-able so that everyone can make a coffee latte like a barista.

In 2022, Oatly AB filed an application to register "Barista" as a trademark in New Zealand designating to goods under milk substitutes including oat-based drinks. The application was opposed by wholesale food distributor Bidfood Limited and the opposition has been supported by the Intellectual Property Office of New Zealand.

The opposer Bidfood Limited, who owns a brand named "Barista Federation", provides evidence to show that "barista" has been used on various soy and almond milk products in New Zealand for nearly a decade.

While no company has previously attempted to legally register the term as their own, Oatly's application was bound to prohibit many other companies in the country from using "barista". It also added that "Barista" is a generic and descriptive term that is commonly known as someone who prepares and serves coffee as a professional and cannot distinguish Oatly's products from those of the other companies.

Therefore, to associate such a purely descriptive term with one brand of milk substitute would potentially give that brand, i.e. Oatly, an unfair advantage in the market because the use of the word "barista" could imply that Oatly's milk is more suitable than other plant-based milk brands.

Oatly attempted to argue that "barista" isn't generic for its purposes as it was specifically tied to oat milk and submitted evidence related to the use of such mark outside of New Zealand, however, these evidences have not been considered as particularly helpful for Oatly to survive the opposition. The opposition has been upheld by the IP Office and the registration hasn't been granted.

It's worth mentioning that Oatly's two other trademarks "Barista Edition" and "Hey Barista" in New Zealand, which contains the word "barista" but are with additional elements, are considered as more distinctive and thus will not be influenced by this decision.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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