Manufacturers and retailers have long battled the problem of competitors, often deliberately, designing products with the same ‘look and feel’ (or ‘get up’) as their established products, in order to get the attention of customers and draw them to rival products.

Customers are used to seeing competitors’ products side by side in a shop or on a supermarket shelf, and are well versed in the idea of opting for the supermarket ‘own’ product, rather than the ‘branded’ product.

When it becomes a real problem for brands is when the similarity in the packaging crosses the line, confuses the customer, and creates the danger that a customer will buy the product in the mistaken belief that the third party product is associated with the brand owner.

When action is taken in court, these lookalike cases are notoriously difficult to win, as the similarity between the packaging is often not enough to outweigh the fact that a different trade mark or brand name is used on the competitor’s product.

Moroccanoil Israel Limited v Aldi Stores Limited

The latest decision on this issue demonstrates, once again, the difficulties brand owners face when trying to prevent copycat packaging by relying on the law of passing off.

The claimant, Moroccanoil Israel Limited, manufactures and sells hair products throughout the world, including their famous Moroccanoil range of hair products, which includes Moroccanoil hair oil. The Moroccanoil hair oil (and much of the Moroccanoil range), is packaged using a distinctive colour scheme of turquoise, white and orange, with the sign MOROCCANOIL in white running up the left hand side of the box, and with the letter ‘M’ in orange at the top. The label on the bottle reflects that of the box.

Since March 2013, the defendant, the supermarket Aldi, sold a product called Miracle Oil. Miracle Oil is also sold in distinctive packaging, notably using the same shade of turquoise , but this time with the words Miracle Oil running up the side of the box and the word Carino in white lettering at the top. Again, the label on the bottle itself reflected the packaging. Due to an ongoing invalidity action at the Office for Harmonisation for the Internal Market (OHIM), the only issue for the judge at that time was the question of passing off.

In order to succeed in a claim of passing off, it is necessary to demonstrate that there is goodwill in the product in question, that there has been a misrepresentation on the part of the defendant and that this misrepresentation has led to damage to the goodwill. In a case dealing with alleged copycat packaging, it is also necessary to demonstrate that the goodwill is associated with the packaging and the name of the product, such that together they are recognised by the public as distinctive of, in this case, Moroccanoil’s product.

It is important to bear in mind that what mattered was whether the public would assume (as opposed to a mere wondering) that because of the get up and name of Miracle Oil, that it was either:

  1. Moroccanoil; or
  2. made (or licensed) by the same manufacturer.

The judge held that if a customer were to make an initial false assumption as to a trade association between Moroccanoil and Miracle Oil, but that assumption was dismissed before any purchase was made and as a consequence Moroccanoil suffered no damage, there was no passing off. A recognition on the part of the relevant public that the Moroccanoil name and/or packaging looks similar, even strikingly similar, to that of Miracle Oil, would not by itself translate into an actionable misrepresentation on the part of Aldi.

Overall, the judge found no direct evidence of a misrepresentation on the part of Aldi. There was not anything unlawful in Aldi’s creation of a product with packaging which brought the packaging of Moroccanoil to mind (which, in his view, was what had Aldi intended to happen, and had succeeded in doing). Purchases of Miracle Oil had not been made with any false assumption in the mind of the purchasers; there was no misrepresentation, and therefore, no passing off.

Saucy Fish Co.

Despite the result in the Moroccanoil case being disappointing for brand owners, following fast on its heels is a glimpse of something more positive. According to their legal representatives, another action has recently been brought against Aldi for selling a range of fish products with packaging which, they allege, is highly similar to that of their clients, the Saucy Fish Co. Aldi has recently submitted to an interim injunction not to sell products in this similar packaging, and it will be interesting to see whether the Saucy Fish Co. will be successful in this action overall.

Additional protection for brand owners

As noted, brand owners would usually rely on the law of passing off in relation to copycat packaging; however it is possible to obtain trade marks for packaging in the form of a three dimensional mark, meaning a brand owner may have an additional cause of action (depending on the facts of the case) in trade mark infringement, which would remove the necessity to prove misrepresentation in passing off. Examples of these marks include the Coca-Cola bottle, the Bic biro and the comparethemarket.com meerkat.

While three dimensional marks provide brand owners with an additional weapon in their armoury, they will only be of assistance if a brand owner does not change their packaging on a regular basis.

In order to obtain a registration for a three dimensional mark, it is important that the mark not be devoid of distinctive character, and it can be more difficult to establish distinctiveness for a three dimensional mark as the registry, when examining the mark, takes into account that the average consumer does not make assumptions about the origin of products based on their shapes. If brand owners are not able to obtain protection via a three dimensional mark, it may be possible for them to obtain protection by way of a two dimensional mark, that covers the label of the product, or the front of the packet. For example, Intercontinental Great Brands LLC has a trade mark for their Oreo biscuit pack, and their label for Maxwell House coffee. It is likely that brand owners will also own the copyright in these type of two dimensional trade marks, allowing them additional protection.

The future

It appears this issue has been recognised by the law makers. Some further comfort may be on the way for brand owners as the government has recently announced a review of the enforcement provisions of the Consumer Protection for Unfair Trading Regulations (CPUTRs) in respect of copycat packaging.

The CPUTRs, originally brought in to enact European law, contain provisions to protect consumers (but not businesses) by prohibiting misleading commercial practices that may cause a consumer to take a different transactional decision. The regulations are currently enforced through criminal prosecutions, as well as some civil sanctions, enforced by the Competition and Markets Authority and Local Authority Trading Standards Services.

The CPUTRs do not, however, currently include provisions that provide businesses with the ability to take action to stop copycat packaging and the Department for Business Innovation and Skills has recently sought the views of businesses and retailers on whether businesses should be granted civil injunctive power in relation to copycat packaging. The final report of the consultation is expected to be released in September 2014.

Useful links

The Consumer Protection from Unfair Trading Regulations 2008.