Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823

Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823

Aldi's use of 'Moroccan Argan Oil' was use as a trade mark, but was not deceptively similar to Moroccanoil Israel Ltd's registered marks, considering the whole of the marks and trade context; thus there was no trade mark infringement. MIL's marks were capable of distinguishing its goods and were not removed in entirety, although removed for some goods for non-use. Aldi's use of 'naturals' and performance claims about argan oil were misleading or deceptive for certain products under the ACL. The 'moroccanoil' word mark was to some extent inherently adapted to distinguish and entitled to registration.

Jurisdiction
Australia
Judgment Date
31 August 2017
Procedural Posture
Judgment After Trial and Appeal From Registrar's Decision / Final Determination With Interlocutory Aspects and Appeal
Outcome
Trade mark infringement claim and first ACL claim dismissed; partial success for MIL on misleading or deceptive conduct and false representation (second/third ACL claims); cross-claim for rectification/partial removal allowed in part; appeal from Registrar allowed; costs orders as per judgment; various injunctive...
Legal Topics
['trade Marks' 'trade Mark Infringement' 'rectification/removal of Trade Mark' 'misleading or Deceptive Conduct' 'false/misleading Representations' 'passing Off' 'trade Mark Registration/opposition' 'use as a Trade Mark' 'descriptive Use' 'evidentiary Issues']
['intellectual Property' 'consumer Law'] ['trade Marks' 'trade Mark Infringement' 'rectification/removal of Trade Mark' 'misleading or Deceptive Conduct' 'false/misleading Representations' 'passing Off' 'trade Mark Registration/opposition' 'use as a Trade Mark' 'descriptive Use' 'evidentiary Issues']

Case Brief

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Procedural Posture

Judgment After Trial and Appeal From Registrar's Decision / Final Determination With Interlocutory Aspects and Appeal

Legal Issues

  1. 1 ["Whether 'Moroccan Argan Oil' as used by Aldi was used as a trade mark and/or is deceptively similar to registered marks" "Whether Aldi's use infringed MIL's registered trade marks or was likely to deceive or cause confusion" "Whether Aldi's goods (hair brushes/tools) were 'goods of the same description' as registered goods" "Whether MIL's registered trade marks were inherently adapted to distinguish its goods and should remain registered" "Whether Aldi's get-up and branding constituted misleading or deceptive conduct, false/misleading representations or passing off" 'Whether Aldi made false representations as to natural ingredients or product performance' "Whether MIL's application for the 'moroccanoil' word mark should proceed to registration"]

Ratio Decidendi

Aldi's use of 'Moroccan Argan Oil' was use as a trade mark, but was not deceptively similar to Moroccanoil Israel Ltd's registered marks, considering the whole of the marks and trade context; thus there was no trade mark infringement. MIL's marks were capable of distinguishing its goods and were not removed in entirety, although removed for some goods for non-use. Aldi's use of 'naturals' and performance claims about argan oil were misleading or deceptive for certain products under the ACL. The 'moroccanoil' word mark was to some extent inherently adapted to distinguish and entitled to registration.

Court Disposition

Trade mark infringement claim and first ACL claim dismissed; partial success for MIL on misleading or deceptive conduct and false representation (second/third ACL claims); cross-claim for rectification/partial removal allowed in part; appeal from Registrar allowed; costs orders as per judgment; various injunctive...

Orders

  • ["Aldi permanently restrained from selling, advertising, promoting specified products with misleading 'naturals' or argan oil representations, as set out in schedule." 'Application otherwise dismissed, save for quantum of damages/compensation and costs.' 'Registrar directed to remove specified goods from Trade Mark...