A recent case involving Aldi has once again highlighted the difficulty a brand owner faces in legally preventing a competitor from adopting 'unnecessarily similar' packaging to that used by the brand owner.
In the case in question, the brand owner sells a successful hair oil under the name "Moroccanoil". The bottle and the box in which it is sold look like this:
As the judge hearing the case held, Aldi made "a conscious decision" to sell its own competing product (called "Miracle Oil") in packaging "reminiscent of Moroccanoil to some real extent, in particular with regard to colour". The packaging in question looks like this:
Upset by this, the brand owner sued Aldi for passing off. Unfortunately, the claim failed. There was no evidence that a substantial proportion of relevant consumers assumed or would assume that, because of the packaging and name of the Aldi product, it either was the brand owner's product, or was made or licensed by the brand owner. As the judge remarked: "A recognition on the part of the relevant public that the name and/or packaging of the [brand owner's product] looks similar, even strikingly similar, to the name and/or packaging of the [competitor's product] would not of itself translate into an actionable misrepresentation on the part of Aldi". He also added "..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…then…this is neutral…I do not think there is anything unlawful in Aldi creating a product with get-up which brought the get-up of Moroccanoil to mind. I think Aldi intended to do so and succeeded…That is not passing off."
In other words, a competitor is allowed to produce a rival product whose name and/or packaging 'winks at' an earlier branded product, provided the public don't then assume a trade connection between the two parties. Yet, surely even 'winking at' the brand owner's product means the competitor is looking to take unfair advantage of and to 'free-ride' off the reputation and goodwill that the brand owner has spent time and money developing amongst the public? The competitor is looking to take advantage of and to exploit for its own gain (and without any effort on its own part) the marketing efforts expended by the brand owner, in order to benefit from the branded product's power of attraction, its reputation and/or prestige. Members of the public may well be influenced to buy the competitor's product, even though they don't think it has come from or is associated with the brand owner, by (perhaps only subconsciously) mentally associating it and endowing it with the same qualities, characteristics, image, performance, feel-good factor and/or overall experience as the brand owner's product (i.e. because it looks so similar and/or is sold under a similar name). If that is the case, perhaps the law should step in and stop that happening? Or perhaps it should not? Where should we draw the line between 'fair' and 'unfair' competition? The debate rages on….