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Cheeky Packaging or Unfair Competition?

In many businesses, products are distinguishable not just by their name but also the way they look, this is known as get-up. Often a business may feel that a competitor’s product looks too similar to their product, such that consumers may be confused. But when does an annoyingly similar looking product overstep the boundary and become a serious and unlawful misrepresentation, actionable under the tort of passing off?

In a recent decision a UK court has looked at the many facets of passing off in particular in relation to the packaging of hair products sold by Moroccanoil Israel Limited and Aldi Stores Limited. Images of these products are shown below.

An initial reaction is that these products look very similar – they both include a brown bottle with a blue label and orange lettering. However, in order to successfully establish passing off, the decision considered the following questions:

i) Would a substantial proportion of the public believe that Miracle Oil is Moroccanoil?

ii) If not, then would the public assume there is a connection between the two products?

iii) If not, then would the public assume that Miracle Oil is produced under licence from Moroccanoil?

If one of these questions was answered in the affirmative, then this would amount to an unlawful misrepresentation.

Importantly, however, even if a purchaser is initially misled or confused, if this confusion no longer exists when the product is purchased, then there is no claim for passing off.

The decision concludes that, in this case, although Aldi had designed their packaging to bring Moroccanoil into the mind of the purchaser, this was not unlawful. Because the public did not believe that the Aldi product (Miracle Oil) was the same as Moroccanoil, or originated from the same manufacturer - perhaps due to the significantly different price tags attached to the products, with Moroccanoil typically costing around 7 or 8 times as much as Miracle Oil –there was no misrepresentation, and the action for passing off failed.

Moroccanoil Israel Limited still has the opportunity to appeal this outcome, but this decision does highlight the difficulty in clearly establishing the line between a ‘cheeky’ product and a unlawful misrepresentation.

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