Moroccanoil Israel Ltd v Aldi Stores Ltd

Passing off requires the classic trinity of goodwill, a material misrepresentation and damage. Misrepresentation means an assumption by the relevant public of a relevant trade connection, not mere recognition, wondering or similarity. The assessment is global and may take account of the defendant’s intention, market conditions, channels of sale and the cogency of the evidence.

There is no useful fixed minimum percentage for a substantial proportion of the public. Initial false interest is insufficient where it is dispelled before being acted upon and causes no damage. Similar get-up may lawfully remind consumers of another product without creating passing off, unless it leads to a false assumption of common origin, licensing or another trade connection.

Moroccanoil Israel Ltd marketed a successful hair oil under the name Moroccanoil. Aldi Stores Ltd launched a cheaper product called Miracle Oil, using packaging with similarities in colour, graphics, writing and bottle design.

The claimant alleged that the name and get-up, considered together, caused consumers to believe that Aldi’s product was Moroccanoil, came from the same manufacturer, or was produced under licence. The trial concerned passing off only. A trade mark infringement allegation and an unjustified-threat counterclaim had been stayed because of pending proceedings before OHIM.

The central issues were whether the claimant had goodwill associated with the name and get-up, whether Aldi’s product created an actionable misrepresentation, and whether any such misrepresentation was likely to damage that goodwill.

1. The claim was dismissed. The claimant established goodwill in Moroccanoil and in the combination of its name and get-up, but failed to establish an actionable misrepresentation.
2. Passing off required the classic trinity identified in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491; [1990] RPC 34: goodwill, a misrepresentation and damage. The relevant date was 29 March 2012, when Aldi first marketed Miracle Oil.
3. The relevant question was whether consumers would assume that Miracle Oil was Moroccanoil, came from the same manufacturer, or was otherwise linked by trade, including through a licence. Mere wondering, or bringing Moroccanoil to mind, was insufficient. A global assessment was required, including consideration of the evidence, market and sales channels, and Aldi’s intention.
4. There was no useful fixed percentage for determining a substantial proportion of the public. The court should assess the cogency of the evidence and whether enough consumers were likely to make the relevant false assumption to cause material damage.
5. Initial interest confusion did not itself establish passing off. Och-Ziff Management v OCH Capital [2010] EWHC 2599 (Ch); [2011] FSR 11 and Woolley v Ultimate Products Ltd [2012] EWCA Civ 1038 were consistent: a preliminary false assumption could suffice only where it was material and caused damage. No such evidence existed here.
6. Aldi intended its packaging to remind consumers of Moroccanoil and succeeded to that extent. The evidence showed recognition and criticism of Aldi’s similarity, but no relevant false assumption. The similarities therefore did not amount to passing off, and there was no need for a separate finding on damage.