Our friends at Marks &
Spenser Clerk have reported an interesting case concerning the hair-slicking Israeli product Moroccan Oil.
Essentially, Moroccanoil Israel Limited (MIL) sued Aldi Stores Limited for packaging their Miracle Oil in a confusingly similar packaging, under the law of Passing Off. the case was heard in a specialist IP Court, the UK Intellectual Property Enterprise Court.
Morrocanoil Israel LTD charged that Aldi’s Miracle Oil packaging amounted to a misrepresentation calculated to deceive or confuse the public.
As can be seen in the images, the box shape and colour, the bottle shape and size, the colour of the term Miracle Oil is identical to the M in Morrocanoil’s logo.
They claimed three alternative grounds of misrepresentation:
- a substantial proportion of the public would take Aldi’s “MIRACLE OIL” product to be MIL’s “MOROCCANOIL”;
- although the public would distinguish between the products, they would assume there to be an association between them in the form of there being a common manufacturer; or
- the public would assume that Aldi’s “MIRACLE OIL” was being sold under licence from MIL.
Previous UK case law had drawn a clear distinction between an intent to take advantage of a claimant’s goodwill and an intent to “live dangerously” by inviting comparison. In this ruling the judge considered that the subjective intention of the defendant must be taken into account and, if the defendant’s intent is that the name and / or get-up of its product will bring to mind the claimant’s product but not lead to any false assumption on the part of the public as to any sort of trade connection, including common manufacturer or a licence, then this cannot be deemed to establish that a misrepresentation has been made.
The judge went on to rule that none of the evidence provided by MIL demonstrated that members of the relevant public had assumed there to be a trade connection between the two products as a result of the name and / or get-up of Aldi’s product. Evidence that certain individuals viewed Aldi’s packaging as “cheeky” was held to be insufficient as such remarks served to demonstrate an awareness that MIRACLE OIL was not MOROCCANOIL and did not come from the same manufacturer. Ultimately, while it was accepted that Aldi did intend to make the public recall MIL’s product when they saw MIRACLE OIL, it was held that purchase of Aldi’s product was not, and was not likely to be, made with any relevant false assumption in the mind of the purchasers.
There is also an IPKAT post on this case.
It seems that to be able to prevent this type of copying in the UK, claiming ‘passing off’ is insufficient. That type of doctrine is only good to prevent identically names goods. Perhaps brand leaders should consider using unique packaging and should register these as designs. In my view, this seems an expensive requirement. In copyright law, there is a long established defense for satire. I don’t think that satire should be available for cases like this.
If one labels, say, jeans, as ‘Levy’s Kosher 613’, and use the stitching and studs, etc. of the iconic 501’s, Would Levi Strauss have a case of passing off? I don’t know. I do know that an Israeli producer of modest skirts with a wavy pocket design was threatened by Wrangler’s local representative and settled out of court.
A couple of year back I wrote up a case concerning generic body warmers which the judge threw out. It seems that Israeli courts are taking a similar approach to that taken in the UK.
For some reason I am reminded of ‘The Sale of Two Titties’ by the Dutch author Dikkens.