Aldi victorious in Moroccan oil passing off case

Aldi has successfully seen off a legal challenge from a company that accused it of passing off its hair oil product.

In a judgment released yesterday, May 29, the UK’s Intellectual Property Enterprise Court said Aldi’s Miracle Oil brand was not confusingly similar to a product called Moroccanoil.

The case was brought by Moroccanoil producer Moroccanoil Israel Limited (MIL) against the German-owned supermarket chain.

Moroccanoil was first sold in the UK in 2009 and, according to the judgment, has attracted a “good deal” of favourable attention.

Aldi, which has hundreds of branches throughout the UK, brought its "Miracle Oil" to market in the UK in 2012.

Trademark invalidity proceedings are currently being considered at the Office for Harmonisation in the Internal Market (OHIM) so allegations of trademark infringement could not go forward, leaving MIL with just passing off claims to rely on.

MIL said the packaging and name of Aldi's product were “so similar” to its own that a “substantial number of consumers” would mistake Miracle Oil for Moroccanoil or assume that there is a trade connection between the two.

Both products come in turquoise packaging with orange and white writing.

MIL said the shape and colour of the bottle and cap would also cause confusion.

However, Judge Richard Hacon ruled against MIL.

“Purchases of Miracle Oil have not been and are not likely to be made with any relevant false assumption,” Hacon wrote.

“There is not even likely to be any initial interest confusion. There is no likelihood of an actionable misrepresentation.”

The judgment pointed to examples submitted by MIL of comments on cosmetic blog websites that highlighted the similarities between the products.

But Hacon said he did not think there was “anything unlawful” in Aldi creating a product with get-up which brought the get-up of Moroccanoil to mind.

“I think Aldi intended to do so and succeeded, to the point that some of the public interested in hair oil thought that the similarities were cheeky and might infringe rights relating to design,” Hacon wrote.

But “that is not passing off,” he added.

Tony Baines, managing director of corporate buying at Aldi, said it fought the claim on “behalf of customers”, who it believes are “entitled to have access to great value, high quality products like Miracle Oil”.

MIL did not respond immediately to requests for comment.