ALDI FOODS PTY LTD V MOROCCANOIL ISRAEL LTD [2015] ATMO 97

Aldi Foods opposed the registration of Moroccanoil’s MOROCCANOIL trade mark in respect of hair care products in Class 3.

The opponent pressed section 41 at the Hearing on the basis that ‘Moroccan Oil’ is a generic term used to describe, or as an alternate name to, ‘argan oil’. The applicant’s counter was that this was not the case and, in any event, its oil is cultivated in Israel and not Morocco.

The Hearing Officer first noted that the trade mark MOROCCANOIL was not a coined phrase, but a clear conjunction of two readily recognised English words. Then, referring to an earlier decision in relation to a related matter, the Hearing Officer noted that the applicant’s own advertising included statements that the argan oil contained within its products are ‘…found growing only in Southwest Morocco’.

On the basis that the Hearing Officer was satisfied that ‘the trade mark is indicative of…products feature[ing] Moroccan oil, which is understood…to be synonymous with argan oil’, the trade mark was deemed to have no inherent adaption to distinguish.

The applicant then sought to rely in evidence of use to argue for acceptance, but the Hearing Officer took the view that the use in evidence was always in conjunction with other branding, which served to emphasise that MOROCCANOIL was not acting as a trade mark on its own.

The applicant was refused registration.

To view the Office decision, click here.