Trade Mark Opposition: Aldi involved in trade mark battle with Moroccan Oil

You can oppose a trade mark registration that has been advertised or accepted. Common reasons for opposition include: that deception or confusion is likely because of the reputation of another trade mark in Australia, the trademark is identical or very similar to another trade mark, or the trade mark applicant is not the true owner of the trade mark.

In 2015, German supermarket chain Aldi opposed Moroccanoil Israel Ltd’s (MIL) ‘MOROCCANOIL” trademark, landing the company in a lengthy legal battle. The case was decided in August 2017.

Moroccanoil Israel Ltd v Aldi Foods Pty Ltd

MIL sells a product called ‘Moroccan Oil’ (bottled argan oil) which has become a well-known hair treatment in the Australian market. Aldi started making a product with similar branding called ‘Moroccan Argan Oil.’ Aldi also sold other products that claimed to be ‘infused’ with argan oil, such as hair brushes and hair dryers.

Aldi opposed the registration on the basis of section 41 of the Trade Marks Act 1995 (Cth), which requires that a trade mark must be capable of distinguishing the applicant’s goods or services. Aldi argued that “Moroccan oil” is a generic term used to describe argan oil that is naturally found in Morocco. The trade mark application was refused.

MIL subsequently appealed the Trade Mark Office’s refusal to registr the trademark. The appeal was heard with MIL’s application against Aldi for trade mark infringement and breaches of the Australian Consumer Law.

Deceptively similar?

MIL argued that Aldi’s products were deceptively similar to their registered marks. As outlined in section 10 of the Trade Marks Act 1995 (Cth), a mark is “deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.”

The proceedings went on to consider Aldi’s practice of identifying ‘on trend’ products then introducing its own imitation product. Justice Katzmann held that ignoring the similarities between the products (e.g. colour scheme and packaging) except for the name, the Aldi mark was not deceptively similar to the MIL trademarks.

Breach of Australian Consumer Law?

MIL alleged that the use of the word ‘naturals’ in Aldi’s packaging and advertising was misleading or deceptive, breaching the Australian Consumer Law. Aldi argued that the word ‘naturals’ appeared as part of a brand name, and that the products did contain at least one natural ingredient.

As Aldi’s products were predominately made from synthetic ingredients, Justice Katzmann held that the representation that these products were ‘natural’ was misleading or likely to mislead consumers. Key to this finding was the fact that Aldi’s products did not meet the Australian Society of Cosmetic Chemists’ definition of a natural product or the dictionary definitions of ‘natural.’

It was also held that the small amounts of argan oil in the brushes, hair dryers and straighteners would not make a material contribution to their performance. These products had swing tags attached which attested to the role of the argan oil. For example, the swing tag attached to the brushes read:

Bristles are infused with Argan Oil to aid in delivering shine and hydration – perfect for dry to normal hair.

Justice Katzmann ordered that Aldi be restrained from “exhibiting, offering for sale, selling, supplying, advertising and/or promoting” the offending products.

Result of the appeal

Justice Katzmann decided to set aside the Trade Mark’s Office’s decision to refuse to register the “MOROCCANOIL” word mark. She did not accept that ‘Moroccan Oil’ has any ordinary meaning in Australia in relation to argan oil.

How can you oppose a trademark registration?

You can oppose a registration or protection of a trade mark by filing a notice of intention to oppose within two months from the day on which acceptance of the trade mark application was advertised in the Official Journal. A statement of grounds and particulars must then be filed by the opponent within one month from the day the notice of intention to oppose was filed. If someone opposes the registration of your trademark, you will need to gather evidence proving that you have the right to use the trademark. Drafting each of these stages is very technical, and requires a specialised knowledge of the legislation.

Want to know more about trade mark oppositions? Looking for an experienced solicitor in Newcastle, Sydney or the Hunter to assist you with your intellectual property law matters? Call us on (02) 4929 7002, email us or complete an enquiry form.

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Image from The Phamly.