Morrocanoil passing off claim fails in IPEC
The case of Moroccanoil Israel Ltd v Aldi Stores Ltd  EWHC 1686 (IPEC) demonstrates the importance of formally protecting the distinctive elements of a product, particularly in relation to its get-up and packaging.
Moroccanoil Israel Limited (MIL) sells hair products internationally. One of their most successful products "Moroccanoil" is an argan oil based hair product first sold in the UK in 2009.
Aldi Stores Limited (Aldi), a supermarket chain, began marketing an argan oil hair product in March 2012 under the name "Miracle Oil". Both products are contained in similar shaped bottles, both of which are a similar shade of brown and have a similar capacity. The bottles are both packaged in light blue square with orange logos and graphics. MIL brought a claim against Aldi for passing off.
The case was heard in the Intellectual Property Enterprise Court (IPEC). MIL alleged that as a result of Aldi using their distinctive combination, with particularly regard to its similar name and get-up, that a significant proportion of consumers would either assume that the products emanated from the same origin or that confusion could manifest between the two products, ultimately causing damage to MIL.
When assessing a claim for passing off the classic trinity of elements required in an action (as established in the case of Reckitt & Colman Products Ltd v Borden Inc  1 WLR 491) must be applied.
These elements when applied to the circumstances require: the demonstration of goodwill in MIL's business in the sale of Moroccanoil in the UK, which goodwill is associated with the get-up and name of the product such that they are in combination recognised by the public as distinctive of MIL's product; a misrepresentation on the part of Aldi (whether or not intentional) in relation to the source of Aldi's Miracle Oil product; and damage to the goodwill by reason of the misrepresentation.
The IPEC found that MIL's goodwill was associated with their product name "Moroccanoil" as opposed to the get-up of the product. Judge Hacon noted the difficulty in successfully claiming passing off based purely on the products get-up. This is because consumers tend to identify products by brand name as opposed to by the appearance of the product. As such, misrepresentation in this sense is difficult to prove, as it would have to be established that the consumer failed to read any part of the products label. Although evidence was presented in court demonstrating Aldi's willingness to "live dangerously" by marketing products with similar get-up and packaging to their expensive equivalents, this alone did not constitute passing off.
Thus, there was no evidence of misrepresentation. It was held that consumers would not assume that both products emanated from the same manufacturer or that the products were identical based on Miracle Oil's name and get-up alone. Consequently, MIL's case was dismissed.
This case illustrates the importance of protecting your brand particularly with regard to the get-up and packaging of your products and the problems that may occur if you do not. Protection can be achieved by applying for trade marks in respect of as many of the distinctive aspects of a product as practicable or by applying to register a design. Trade marks protect symbols and signs enabling consumers to distinguish the products of one undertaking from another. Registering designs protects the appearance of a product in part or as a whole which is a result from the arrangement of various features which include: colours, textures, contours, patterns and shapes.
For more information or advice in relation to brand protection, trade marks and registered designs please contact Blake Morgan's Intellectual Property team.