Moroccanoil Israel Limited (MIL) has lost its claim for passing off against supermarket chain Aldi Stores Limited (Aldi) in the Intellectual Property Enterprise Court. Both MIL and Aldi are retailers of argan hair oil under the names Moroccanoil and Miracle Oil respectively. Their products are both sold in turquoise packaging with vertical orange writing and in brown bottles of similar shape and size. Images of the products in question can be seen in the Annexes to the judgment.

MIL’s claim was that due to the distinctive combination of its product’s name and get-up, Aldi’s product and its similar combination, would result in a substantial number of consumers mistaking Miracle Oil for Moroccanoil or assuming that they shared a common manufacturer, thereby causing MIL damage.

To successfully claim passing off, MIL had to demonstrate the following “classical trinity”:

• goodwill through the sale of Moroccanoil in the UK, such goodwill being associated with the get-up and name of the product so that in combination the public would recognise them as distinctive of MIL; 
• a misrepresentation by Aldi (whether or not intentional) in relation to the source of Aldi’s Miracle Oil product; and
• damage to MIL’s goodwill due to that misrepresentation.

The Court had no doubt that MIL enjoyed goodwill in its business in Moroccanoil but concluded that the goodwill was attached primarily to the name Moroccanoil rather than the get-up. Judge Hacon did, however, accept that get-up did have some additional part to play (he here referred to the similarities in turquoise colour, orange graphics, vertical writing and shape and colour of bottle).

Judge Hacon discussed the rarity of successful passing off cases based solely on get-up because goods are usually referred to by their trade names. He emphasised that whilst get-up allows consumers to recognise products, a misrepresentation caused by get-up is likely to depend on the public not noticing the name on the product or on its label.

In this case, there was no direct evidence of any misrepresentation or that any identified individuals had assumed any trade connection or common manufacturer between the two products as a result of Miracle Oil’s name and get-up. There was no evidence of either company receiving any complaints in relation to price and quality. This was particularly relevant given the difference in price point between the products (£30 vs. £4).

It is particularly noteworthy that evidence was put forward in the case that Aldi had “lived dangerously” by deliberately intending to create a product with a get-up that would bring Moroccanoil to mind. Nonetheless, this evidence was irrelevant as such activities are not necessarily unlawful. Whilst the Aldi product had similarities that the public might think were “cheeky and might infringe rights relating to design” this did not constitute passing off.

Ultimately, the Court found that there was no evidence to lead to the conclusion that members of the public were likely to assume that the two hair oil products were the same thing or that they came from the same manufacturer. Even if there were any members of the public with that belief, they would be too few in number to damage MIL’s goodwill. MIL’s case was therefore dismissed.

The full judgment can be found here (Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC), 29 May 2014).

Comment

This is not the only difficulty Aldi has found itself in relating to lookalike products. The Saucy Fish Co. has recently secured an interim injunction by consent to prevent Aldi selling lookalike fish products, pending a full hearing in relation to the trade mark infringement matter.

As Judge Hacon noted in the Moroccanoil decision, there are in fact very few successful lookalike cases relating to get-up (the most well known being the Jif Lemon and Penguin v Puffin cases) as brand owners are often dissuaded from taking action against the supermarkets that can be their biggest customers. The Saucy Fish Co. case differs in this respect as Aldi is not a retailer of Saucy Fish products.

The Moroccanoil decision (which many will find surprising on viewing the two products side by side) serves as a reminder to brand owners to ensure get-up and packaging are protected as far as possible. This can be done by registration of trade marks and designs for the most distinctive aspects of the shape and appearance of packaging (in addition to trade mark protection for brand names). Registered protection of aspects of packaging appearance is particularly useful in these cases as often the lookalike product name is not confusingly similar to the brand name and so ‘typical’ brand name trade marks cannot be relied upon. It should be noted however that even with registered protection for packaging appearance, lookalike products may still be able to sufficiently differentiate their appearance to fall outside those registrations.

Brand owners will also be interested to hear the outcome of the Department for Business and Innovation & Skills consultation regarding the possibility of granting businesses a civil injunctive power in relation to lookalike packaging under consumer protection regulation (a right currently reserved to authorities such as Local Authority Trading Standards Services).

For retailers of lookalike products, the Morroccanoil decision will perhaps be a welcome reminder that the fact products are similar in appearance does not necessarily mean consumers are genuinely deceived into believing products originate from the same source or share a manufacturer. The decision is in this respect a practical one that reflects the consumer’s reality. Retailers should also be prepared for the BIS consultation outcome and be prepared to make changes to packaging if it is believed there is a risk of injunction. A full report from BIS is expected by September 2014.

Further information on the consultation can be found here.