Moroccanoil Israel Ltd v Aldi Stores Ltd
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
- HIS HONOUR JUDGE HACON
Areas of Law
- Intellectual Property Law
- Commercial Law
- Tort Law
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
AI Generated Summary
The claimant, MIL, which markets a successful hair oil product named 'Moroccanoil', brought a claim of passing off against Aldi, which had introduced a similar product labeled 'Miracle Oil.' MIL contended that Aldi's product had a similar name and get-up, likely causing consumers to confuse the two or assume a trade connection. The case primarily examined whether MIL had goodwill in the 'Moroccanoil' brand, whether Aldi’s 'Miracle Oil' led to a misrepresentation, and whether that caused damage to MIL’s goodwill. Despite similarities in packaging and intent to remind consumers of Moroccanoil, the court concluded that MIL did not establish passing off since the evidence did not demonstrate a likelihood of actionable misrepresentation by Aldi.
Judgment
Judge Hacon :
The claimant (“MIL”) makes and sells hair products throughout the world, of which the principal and most successful is a hair oil marketed under the name “Moroccanoil”. It was first sold in the United Kingdom in 2009 and, as elsewhere, it has attracted a good deal of favourable attention. An image of a bottle of Moroccanoil and the box in which it is sold appears as Annex 1 to this judgment.
The defendant (“Aldi”) is the well known supermarket. In March 2012 Aldi brought on to the UK market a hair oil sold under the name “Miracle Oil”. Annex 2 shows the bottle and box used for Miracle Oil. MIL alleges that these sales by Aldi constitute passing off. MIL’s case is that the get-up and name of Aldi’s product are in combination so similar to those of MIL’s product that a substantial number of consumers would mistake Miracle Oil for Moroccanoil or assume that they share a common manufacturer or that there is otherwise a trade connection between the two.
The letter before action from MIL’s solicitors dated 27 March 2012 referred to a Community Trade Mark (“CTM”) owned by MIL. Aldi counterclaimed alleging an unjustified threat of proceedings for infringement of the CTM. MIL sought to respond to this by an allegation that Aldi had infringed the CTM. There are invalidity proceedings before the Office for Harmonisation in the Internal Market (“OHIM”) so the allegation of trade mark infringement could not go forward at this stage, pursuant to art.104 of the Regulation (EC) 207/2009 (“the Trade Mark Regulation”). At the CMC on 20 March 2013 Morgan J also stayed the counterclaim for unjustified threat of infringement proceedings. The trial before me was only about passing off.
The Law
The classic trinity
It was common ground that MIL has to satisfy the classic trinity of elements in an action for passing off, see Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 ; [1990] RPC 34 (“ Jif Lemon ”). In the present case that means demonstrating:
(a) 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;
(b) a misrepresentation on the part of Aldi (whether or not intentional) in relation to the source of Aldi’s Miracle Oil product; and
(c) damage to the goodwill by reason of the misrepresentation.
The relevant date
The date for deciding whether a defendant’s c