In recent years, an increasing number of supermarkets have introduced own-branded products whose external appearance closely resembles that of the market leaders. Despite this trend, brand owners have been rather wary of taking action against supermarkets for encroaching on their intellectual property rights. This is understandable, given that the supermarkets in question are often major, or potential, customers of the relevant brand owners.

In a recent case heard in the UK Intellectual Property Enterprise Court, Moroccanoil Israel Limited (MIL) took a stand by bringing an action against Aldi Stores Limited under the law of passing off. MIL sold its "MOROCCANOIL" hair oil in packaging which was turquoise blue in colour and branded with orange graphics and vertical writing. All of these features were also present in Aldi's "MIRACLE OIL" hair oil product and it was the resemblance between the respective "get-ups" that led Moroccanoil to bring the action. MIL also relied upon the shape and colour of the bottles and their respective caps.

The key issue before the court was whether Aldi’s packaging amounted to a misrepresentation calculated to deceive or confuse the public given its similarities to the MIL packaging. MIL relied upon three alternative forms of misrepresentation:

  1. a substantial proportion of the public would take Aldi's "MIRACLE OIL" product to be MIL's "MOROCCANOIL";
  2. although the public would distinguish between the products, they would assume there to be an association between them in the form of there being a common manufacturer; or
  3. the public would assume that Aldi’s "MIRACLE OIL" was being sold under licence from MIL.

MIL tried to convince the Court that there may be passing off even if the misrepresentation had been dispelled by the time the purchase of Aldi’s product was completed. The judge rejected this contention and was unwilling to accept that a misrepresentation had occurred at all, either as a consequence of initial interest confusion or otherwise. It was found that, while get-up may play a greater role than a product name in the recall and recognition of that product, if the respective names are distinctive then 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. 

Previous case law had drawn a clear distinction between an intent to take advantage of a claimant's goodwill and an intent to "live dangerously" by inviting comparison. The judge considered that the subjective intention of the defendant must be taken into account and, if the defendant's intent is that the name and / or get-up of its product will bring to mind the claimant's product but not lead to any false assumption on the part of the public as to any sort of trade connection, including common manufacturer or a licence, then this cannot be deemed to establish that a misrepresentation has been made.

None of the evidence provided by MIL demonstrated that members of the relevant public had assumed there to be a trade connection between the two products as a result of the name and / or get-up of Aldi's product. Evidence that certain individuals viewed Aldi's packaging as "cheeky" was held to be insufficient as such remarks served to demonstrate an awareness that MIRACLE OIL was not MOROCCANOIL and did not come from the same manufacturer. 

Ultimately, while it was accepted that Aldi did intend to make the public recall MIL's product when they saw MIRACLE OIL, it was held that purchase of Aldi's product was not, and was not likely to be, made with any relevant false assumption in the mind of the purchasers. 

The decision has some interesting implications for brand owners wishing to stem the growth of the "lookalike" products trend. When two products are branded with differing distinctive names, it is likely to be very difficult for brand owners to bring successful passing off actions through reliance on the get-up only. Consequently, it shall be necessary for brand owners to explore alternative options in order to adequately protect the appearance of their products. For example, registering the design of the bottle itself should be considered. Furthermore, acquiring trade mark protection not only for the brand name but for other distinctive graphical elements of the packaging, and perhaps the bottle shape itself, may be possible. While these forms of registered protection will not safeguard the appearance of the product packaging in its entirety, protecting the most distinctive elements of the packaging ought to go some way towards keeping strikingly similar lookalikes at bay.

For brand owners relying solely on passing off in order to tackle lookalike products, it is clear that the notion of initial interest confusion requires further guidance in the context of passing off.  It is conceivable that a potential consumer may catch a glimpse of a lookalike product at a distance on a supermarket shelf and be lured towards it due to the striking resemblance it bears to a recognised brand, to the extent that it not only brings the brand to mind but initially confuses the consumer. Once the product is viewed from a close proximity, confusion is likely to be dispelled before a purchase is made. However, the consumer may then decide to purchase that product at the expense of the brand owner's competing product. In such instances, it is arguable that both actionable misrepresentation and damage through loss of sales, erosion of the distinctiveness of the trade mark and harm to the reputation of the trade marked goods has occurred. 

In light of the present decision, further developments in the “initial interest confusion” debate are awaited with interest.