Three Aldi “own label” products under attack

Who: Aldi, the Saucy Fish Co, Moroccan Israel Ltd and the Comité Interprofessionnel du Vin de Champagne

Where: UK and Germany

When: May 2014

Law stated as at: 4 June 2014

What happened:

Three unhappy brand owners have recently alleged, with mixed results, that retailer Aldi has been applying its slogan “Like brands, only cheaper” rather too literally.

Hair oil hostilities

In May 2014, Aldi successfully defended a claim brought by Moroccan Israel Ltd, the owners of the hair oil brand Moroccanoil, for alleged passing off in relation to the get up and name of Aldi’s Miracle Oil product.

Although the court found that Aldi had “intended to make the public think of Moroccanoil when they saw Miracle Oil in its packaging and succeeded [in doing so]”(Moroccan Israel Limited v Aldi Stores Limited [2014] EWHC 1686 (IPEC), para. 61), the evidence before the court did not, in its judgment, lead to the conclusion that members of the public were likely to assume either that Miracle Oil and Moroccanoil were the same product, that they came from the same manufacturer or that they were closely linked in trade, for instance by way of a licence.

Therefore, given the finding that there had been no likelihood of a misrepresentation by Aldi, an essential ingredient of the tort was not present and the action failed.

Salmon spat

Separately, the Saucy Fish Company (“SFC”) issued proceedings against Aldi for passing off and trade mark infringement in respect of Aldi’s Saucy Salmon Fillets product. SFC has a collection of Community Trade Marks and UK Trade Marks for the mark THE SAUCY FISH COMPANY and for variations of their bi-coloured fish mark.

Also in May 2014, SFC obtained an injunction by consent requiring Aldi to stop selling its Saucy Salmon Fillets product. The injunction was granted with cross-undertakings from SFC that, should the court find in Aldi’s favour, SFC will pay damages to Aldi to compensate it for incorrectly forcing it to withhold the product from sale.

Having compared the protagonists’ branding and packs, it is interesting that Aldi consented to the interim injunction, but there is no telling what strategic or commercial reasoning lay behind the decision and for the court’s ultimate view on the merits we will have to wait until final judgment, assuming of course that this ever occurs.

“Champagner” skirmish

Aldi’s sorbets were next in the dock, in the Münich regional court

Here the court found that Aldi’s Champagner Sorbet was an illegitimate exploitation of the region of Champagne’s reputation for exceptional quality sparkling wine.

As Champagne is a ‘Protected Designation of Origin’, the court was able to prevent the use of Aldi’s brand name, believing that it sought to take advantage of Champagne’s reputation. This was all despite the fact that Aldi’s Champagner Sorbet contained real Champagne.

The decision is likely to be appealed and it will be interesting to follow this case as there are clear ramifications for any product that contains a food stuff which has a protected designation of origin (e.g. Blue Stilton sauce or Cornish Clotted Cream Ice-cream).

It is also worth noting that the party bringing the claim against Aldi was the Comité Interprofessionnel du Vin de Champagne (the “CIVC”) who are the union of the Champagne houses and Champagne winemakers. The CIVC are notorious for adopting a highly aggressive approach in defence of Champagne’s Protected Designation of Origin and so it is perhaps no surprise that they have pursued Aldi so vigorously.

Why this matters:

In passing off proceedings, where consumer perception is key, Aldi may well place reliance on high consumer awareness that it stocks few, if any, name brand products. However, “lookalike” products are very much a hot topic at present, with the Coalition Government consulting on a possible direct right for brand owners to seek injunctions against knock-off products under the Consumer Protection from Unfair Trading Regulations 2008.

It is possible that this has been fuelled in part by the inexorable rise of discount retailers like Aldi and one suspects these cases are unlikely to be the last we shall see involving the increasingly successful discount supermarket brands, in the UK and beyond.

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