A recent case in the Intellectual Property Enterprise Court ruled that Moroccanoil could not prevent Aldi’s sales of its own-brand lookalike product, because customers were not misled.  Spearing Waite’s IP specialist John Buckby gives his thoughts on the case here.

The Intellectual Property Enterprise Court recently considered whether Aldi’s use of packaging similar to the ‘Moroccanoil’ hair product amounted to passing off.

Aldi packaged its own-brand hair oil product in very similar colours and get-up to the well-known ‘Moroccanoil’ product. Many bloggers and beauty commentators spotted the striking resemblance between the two – and suggested it was rather cheeky of Aldi to make their product look so close to Moroccanoil, while selling at less than half the price.

Moroccanoil commenced proceedings against Aldi for passing off. Passing off takes place when a business misrepresents its goods or services as those of another – typically by using a similar name or packaging – making customers believe that the different products are the same or linked.

The Court’s view was that Aldi had deliberately made its product reminiscent of Moroccanoil, and that the product ‘brought to mind’ the Moroccanoil product. But it found no evidence that customers made false assumptions about Aldi’s product. Although the commentators and bloggers had seen the similarities, none of them actually believed the products were the same – they all realised Aldi’s product was merely a ‘lookalike’.

So, despite Aldi’s intention to make the customers of their product to think of Moroccanoil, no-one was actually misled into thinking the products were actually connected, and there was no passing off.

What does this case mean for you?

The decision will be welcomed by cut-price retailers who design products to have the same ‘look and feel’ of established branded products.

This practice, known as ‘living dangerously’ (as you’re basically asking for trouble) does not automatically amount to passing off. It’s one thing to use characteristics of another product, and quite another to deliberately try to deceive customers in order to benefit from the reputation of a better-known product.

As long as there’s not a misrepresentation that makes customers falsely assume that the products are actually connected, there’s no passing off.

The Department for Business, Innovation & Skills recently issued a call for evidence on copycat packaging, to assess whether more protection should be granted to brandowners.  The consultation recognised that supermarket ‘own brands’ often use packaging highly suggestive of a market-leading product, to suggest equivalent quality and to divert purchases to their own cheaper product. The results of the call for evidence are still pending.

The Moroccanoil decision would seem to suggest that the current laws aren’t enough to protect brandowners. On the other hands, would it be fair for such brands to have a monopoly on colours and packaging styles – even in situations where no-one is confused – or would this harm business freedom and consumer choice? The answer is likely to depend what side of the fence you’re on.

Passing off is decided on the facts of each individual case. Aldi were successful in this instance, but you should obtain specific legal advice before using lookalike packaging yourself.

Spearing Waite’s intellectual property team, based in Leicester, can advise you on issues relating to branding, passing off, and trade mark infringement.  Get in touch here: ip@spearingwaite.com

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