In a case which underlined that even striking similarities in the name and packaging of products may not be enough to establish passing off, Aldi Stores Limited defeated a claim brought by the manufacturers of a market leading hair oil who fiercely objected to a rival product appearing on supermarket shelves.
Moroccanoil Israel Limited (MIL) achieved worldwide success with its ‘Moroccanoil’ hair product and launched proceedings after Aldi began marketing a competing product bearing the name ‘Miracle Oil’. Both products featured similarly shaped turquoise bottles and orange label graphics in similar typefaces.
The Intellectual Property Enterprise Court accepted that the name and get-up of both products were similar and that Aldi had consciously decided to package Miracle Oil in a way that was reminiscent of Moroccanoil. Whilst it was not suggested that Aldi had deliberately set out to exploit MIL’s goodwill, it was argued that the supermarket chain had ‘lived dangerously’ by adopting such similar packaging.
In dismissing MIL’s claim, however, the Court found that there was nothing unlawful in Aldi marketing a product which was designed to bring Moroccanoil to mind. Whilst some members of the public considered the similarities ‘cheeky’, there was no direct evidence of misrepresentation or customer confusion.
The judge concluded, “The evidence does not lead to the conclusion that members of the public are likely to assume either that Miracle Oil and Moroccanoil are the same thing or that they come from the same manufacturer or are otherwise linked in trade, such as by a licence. Even if there were any such members of the public, they would be too few in number to cause damage to MIL’s goodwill.
“I think that Aldi intended to make the public think of Moroccanoil when they saw Miracle Oil in its packaging and I think Aldi succeeded. But purchases of Miracle Oil have not been and are not likely to be made with any relevant false assumption in the mind of the purchasers. There is not even likely to be any initial interest confusion. There is no likelihood of an actionable misrepresentation.”