Oils well that ends well – Aldi vindicated in Miracle Oil versus Moroccanoil
IPEC dismisses Aldi's Miracle Oil as a clever marketing ploy rather than passing off.
Initial interest confusion requires clear evidence of confusion amongst the public leading to material damage.
What's it about?
Moroccanoil Israel Limited ("MIL") makes and sells hair products throughout the world. Its principal product, "Moroccanoil", was first sold in the United Kingdom in 2009. It is a high end product with a distinctive colour scheme of a turquoise label with orange writing on a brown bottle. Moroccanoil usually sells for around £30. It is a well established brand with experts attributing the rise of "Moroccan oil" in the English language to the launch of the product in the UK.
Aldi is a well known discounter supermarket. In March 2012, Aldi launched a hair oil called "Miracle Oil". It was also packaged in a brown bottle, with a turquoise label, and orange writing. This new product was sold exclusively in Aldi stores and was priced at around £3.
MIL issued proceedings against Aldi for passing off and trade mark infringement. The trade mark infringement claims were stayed pending a challenge to validity. The trial therefore proceeded on the basis of passing off alone. The Court dismissed MIL's claim for passing off. This was because:
MIL's best evidence did not demonstrate any real confusion among the public. To the contrary, it revealed that consumers were conscious of the similarities between the two products but quite explicitly recognised their separateness. At worst, the customer comments on cosmetic blogs branded Aldi as "cheeky" rather than deceptive.
His Honour Judge Hacon was unconvinced by MIL's argument that Miracle Oil's get-up and name caused 'initial interest confusion'. He insisted that a crucial ingredient of the tort of passing off was for material damage to be inflicted. MIL were unable to point to a single case of a consumer buying the product after first believing it was Moroccanoil. The necessary damage was therefore not made out.
The Judge rejected MIL's case that "living dangerously" was the same as passing off. An overt attempt by Aldi to bring Moroccanoil to consumers' minds with Miracle Oil's packaging was a legitimate tactic to compete with MIL. It did not amount to deception and therefore did not constitute passing off.
Why does it matter and now what?
When pursuing lookalike products for passing off you will need evidence that consumers assume that the infringer's product and your own product are the same thing, or that they assume that there is an economic connection (made by the same manufacturer or licensed by you). It is not enough to merely point to similarities in get up. This means that it will be hard to succeed in a claim for passing off against a lookalike product unless there is good evidence of a misrepresentation leading to confusion. A trade mark claim based on unfair advantage may be stronger. You should therefore review your trade mark portfolios to ensure that you have the best trade mark protection possible which ideally also covers labels and distinctive packaging.
Moroccanoil Israel Ltd v Aldi Stores Ltd  EWHC 1686 (IPEC)
For further information on this or any other IP related matter please contact Emma Armitage on +44 (0)20 7788 5521