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How much protection is there for “get-up” in the UK?

Unlike in many other European countries, the UK does not have a law of unfair competition to protect against the copying of “get-up” or, as our American cousins would say, “trade dress”. Instead, the law of passing off in the UK provides limited protection if the relevant public is likely to make an erroneous connection between the two products. However, as the public is often more likely to focus on the brand name of a particular product, it is often possible to avoid a finding of passing off if the third party’s sign is clearly distinguishable from that of the other brand.

In a recent decision the Intellectual Property Enterprise Court (“IPEC”) has found that Aldi’s “Miracle Oil” hair product did not “pass off” the Claimant’s “Moroccanoil” hair product (Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (29 May 2014)) notwithstanding the clear similarities in the get-up.

This case clearly demonstrates the limitations of the law of passing off and the importance of securing registered trade mark and design rights. The Courts have previously confirmed that despite the ever evolving nature of the law of passing off it has not morphed into a general “unfair competition” right akin to the rights that our European compatriots enjoy and this case represents a further illustration of the difficulties in relying on passing off.

The Claimant makes and sells hair products throughout the world, including a hair oil marketed under the name “Moroccanoil”. It was first sold in the UK in 2009.

The Defendant, Aldi, is a well known discount supermarket chain. In March 2012, it brought onto the UK market a hair oil product under the name “Miracle Oil”.

The Claimant pursued a claim for passing off against the Defendant.

The relevant products were:

The Moroccanoil product Aldi’s Miracle Oil
The Moroccanoil product Aldi’s Miracle Oil product

The two products clearly had very similar trade dress including: (i) the turquoise colour; (ii) the orange graphics; (iii) the shape of the bottle; and (iv) the colour of the bottle and cap.

To succeed in a passing off action, Moroccanoil needed to show:

  1. Goodwill in the get-up of the Moroccanoil product such that it was recognised by the public as distinctive of the Claimant’s product; and
  2. Misrepresentation on the part of Aldi (whether or not intentional); and
  3. Damage to the Claimant’s goodwill by reason of the misrepresentation.

The Court considered the evidence submitted by the Claimant and found that the Claimant enjoyed goodwill in the “Moroccanoil” product at the date the Defendant commenced its activities. In particular, up to April 2012, the Claimant had sales of £6m and had spent £667,000 on marketing. It also accepted that damage would follow if a misrepresentation was found because it would damage the Claimant’s goodwill and erode the distinctiveness of the get-up.

The key issue in this case was whether or not a misrepresentation had occurred.

Most of us would agree that there are similarities between the two products. This, however, was not enough, the Court said, to amount to passing off.

Mere “confusion”, which may suffice in a trade mark infringement case, is not enough for a passing off claim. To establish passing off, deception or misrepresentation is required. The difference between mere “confusion” and “misrepresentation” has been described in a previous case as “the difference between an assumption on the part of the relevant public on the one hand (misrepresentation) and mere wondering on the other (confusion)”. Therefore, the relevant question in this case was whether or not the public would assume, because of the get-up and name of Miracle Oil, that it either it was Moroccanoil or was made by the same manufacturer of Moroccanoil (or was licensed by them). This is to be distinguished from the public merely wondering whether the Defendant’s products are the same or are made by the same manufacturer. Simply bringing another product to mind would not be sufficient.

The Court stated that “initial interest confusion” which could be enough to trigger a trade mark infringement claim, would not suffice in a case based on passing off where the initial interest confusion was dispelled before any purchase was made and, as a consequence, the Claimant suffered no damage.

The Court identified the major problem for the Claimant in this case when it quoted the following paragraph from a leading practitioner text on passing off:

“The difficulty confronting the Claimant in all actions for passing off based on get-up is that it is unusual for one trader’s goods to be distinguished from those of his competitors exclusively, or even primarily, by their get-up. Normally a brand name or other mark is chosen and given prominence and it is this on which consumers are expected and encouraged to rely. To make out a case based solely on similarities of get-up the Claimant must show that deception is likely…notwithstanding the absence of his own brand name on the Defendant’s goods and the likely presence there of the Defendant’s brand name…”

The judge agreed with this paragraph and highlighted that “….if the respective names of the Claimant’s and Defendant’s goods are distinctive, a misrepresentation by reason of similar get-up is likely to depend on the relevant public not noticing the name on the Defendant’s product, or on a label attached to it…”.

After considering the evidence, the judge found that the goodwill was attached primarily to the name “Moroccanoil” (and not the get-up alone). He stated that the evidence did not lead to the conclusion that members of the public were likely to assume that the products were the same product, that they came from the same manufacturer or that they were otherwise linked in trade. In fact, the Claimant’s best evidence taken from a number of blogs was held to show that there was no confusion because the bloggers clearly understood that Miracle Oil did not come from the Claimant. Further, the judge mentioned that if a significant proportion of the public believed that Aldi’s product was Moroccanoil there was a fair chance that at least one or two people would have made complaints about something, possibly its quality or the divergence in price. As there were no such complaints this highlighted that there was no misrepresentation. Whilst the judge thought that Aldi intended to make the public think of “Moroccanoil” when they saw “Miracle Oil”, a purchase of the latter product was unlikely to be made on any false assumption. Thus, there was no misrepresentation and therefore no passing off.

The Saucy Fish Co –v– Aldi

Aldi has enjoyed significant recent growth employing its “Like Brands – Only Cheaper” business model and at the same time attracted the attention of a number of brand owners whose get-up they have looked to mirror for their own products.

The Moroccanoil case is not the only passing off action Aldi has recently been involved in. Proceedings have also been issued against Aldi by The Saucy Fish Co. in relation to the following packaging:

Aldi’s product The Saucy Fish Co. product
Aldi’s salmon fillet product The Saucy Fish Co. product

In that case, Aldi voluntarily agreed to an interim injunction and, in doing so, exposed The Saucy Fish Co. to considerable potential damages by virtue of the cross-undertaking in damages which the recipients of interim injunctions must give. In light of the Moroccanoil judgment, The Saucy Fish Co. may feel a lot less confident in the strength of their position and the benefits of having obtained an interim injunction.

Roy Crozier, a partner in the Intellectual Property Group said that “This case demonstrates that a successful claim in a passing off case based solely on a similar get-up is a rare beast. The public are more accustomed to rely on a brand name than purely the get-up of a product in order to identify a product. Cases which have succeeded in this area are few and brands should not underestimate the burden which they have to discharge in order to succeed. It is also important that brands consider registering trade marks and design rights for the packaging and get-up of a product in order to further strengthen their position.”