The claimant made and sold hair oil under the name Moroccanoil and the defendant, Aldi, sold hair oil called Miracle Oil. The claimant issued proceedings against the defendant for passing off. The Intellectual Property Enterprise Court, in dismissing the claim, held that the evidence did not lead to the conclusion that members of the public were likely to assume that Miracle Oil and Moroccanoil were the same thing.
Moroccanoil Israel Ltd v Aldi Stores Ltd: Intellectual Property Enterprise Court: 29 May 2014
Descriptive name – Misrepresentation – Claimant making and selling hair oil ‘Moroccanoil’ – Defendant selling hair oil ‘Miracle Oil’ – Claimant issuing proceedings against defendant for passing off
The claimant (MIL) made and sold hair products of which the principal and most successful was a hair oil marketed under the name ‘Moroccanoil’. In March 2012, the defendant (Aldi), a well-known supermarket, brought on to the UK market a hair oil sold under the name ‘Miracle Oil’.
MIL alleged that the sales by Aldi constituted passing off. It alleged that the get-up and name of Aldi’s product were, 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 shared a common manufacturer or otherwise a trade connection between the two.
It fell to be determined: (i) whether MIL had goodwill in the get-up and name of Moroccanoil; and (ii) whether Aldi had engaged in passing off. The application would be dismissed.
(1) On the evidence, the name ‘Moroccanoil’ was distinctive of MIL’s product in the UK. The get-up without the name could never have become distinctive because it had never been before the public. It was not a type of case in which the public would not notice the brand name. The name played the greater role, so the goodwill in MIL’s business in the product would primarily be attached to its name, but the get-up played some additional part (see , ,  of the judgment).
Reckitt & Colman Products Ltd v Borden Inc  1 All ER 873 applied; United Biscuits (UK) Ltd v Asda Stores Ltd  RPC 513 considered; Specsavers International Healthcare Ltd v Asda Ltd  EWCA Civ 24 considered.
(2) The evidence did not lead to the conclusion that members of the public were likely to assume either that Miracle Oil and Moroccanoil were the same thing, that they came from the same manufacture or were otherwise linked in trade, such as by a licence. Even if there had been any such members of the public, they would be too few in number to cause damage to MIL’s goodwill. Aldi had intended to make the public think of Moroccanoil when they had seen Miracle Oil in its packaging and it had succeeded.
However, purchases of Miracle Oil had not been and were not likely to be made with any relevant false assumption in the mind of the purchasers. There was not even likely to be any initial interest confusion. There was no likelihood of an actionable misrepresentation (see ,  of the judgment).
MIL had failed to establish passing off because the evidence had not supported any likelihood of a misrepresentation on the part of Aldi (see  of the judgment).
Amanda Michaels (instructed by Sibley Germain LLP) for MIL; Michael Edenborough QC and Thomas Elias (instructed by Freeth Cartwright LLP) for Aldi.