You can't register that as a trade mark! A win from the discount bin for Aldi

By Dean Gerakiteys, Charis Chan

30 Aug 2018

The more descriptive a trade mark, the greater the chance that it will be found to have no inherent adaptation to distinguish the goods of any singular trader.

While not breaking any new ground, Full Federal Court's recent decision to disallow the registration of MOROCCANOIL as a trade mark is a good reminder of the difficulties associated with seeking to register a trade mark that has no inherent adaptation to distinguish (Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93).

The products competing to care for your hair

Since 2009, Moroccanoil Israel Ltd has produced and distributed "luxurious" or "high end" hair and skin care products, some of which include argan oil as the principal ingredient under the name "MOROCCANOIL".

In 2011, Aldi Foods Pty Ltd, the operator of a well-known supermarket chain specialising in less expensive household products, started selling hair care products under its house brand "PROTANE" and sub-brand "NATURALS", together with the sign "moroccan argan oil".

In response, Moroccanoil sued Aldi, claiming that a "naturals claim" was misleading or deceptive, and that the manner in which Aldi sold some of its hair care products constituted infringement of the following registered trade marks:

Imagesof Moroccan Oil

Around the same time, Moroccanoil also filed an application to register the word MOROCCANOIL as a trade mark, which Aldi opposed. The Registrar of Trade Marks ultimately refused registration and Moroccanoil appealed. Those appeal proceedings were dealt with at first instance, at the same time as the infringement proceedings.

The trial judge found that Aldi's use of Moroccan Argan Oil as a trade mark was not deceptively similar to either of the registrations above but overturned the Registrar's decision to refuse registration of MOROCCANOIL. This decision was the subject of Aldi's appeal to the Full Court.

Should the trade mark have been registered?

The Full Court overturned the trial judge's decision, finding that the word MOROCCANOIL was not to any extent inherently adapted to distinguish Moroccanoil's hair care products from the goods of other traders. This was because:

  • the words MOROCCAN, MOROCCO and OIL were all being used extensively by other traders in connexion with argan oil hair care products prior to the date of application for the trade mark;
  • there were legitimate reasons for a trader to market an argan oil hair care product as Moroccan oil or by reference to the fact that it was an oil sourced  from Morocco; and
  • as at the date of application, argan oil was at least associated with, if not, actually derived from Morocco and descriptive of an ingredient in hair care products.

Having found the word MOROCCANOIL was not to any extent adapted to distinguish the Applicant's product, the Full Court then considered whether the trade mark might in fact have come to distinguish Moroccanoil's goods from the goods of other traders as at the application date. The Full Court held that it had not because:

  • most of the marketing activities undertaken by Moroccanoil prior to the date of application were directed at members of the trade rather than customers;
  • as noted above, as at the date of application, "Moroccan Oil" was understood in English to be a descriptive term for an ingredient in some hair care products;
  • even though there had been use of MOROCCANOIL's distinctive get-up, that use did not prove that the word MOROCCANOIL had become distinctive of Moroccanoil's products to the exclusion of all other traders; and
  • the two year period between the product's launch and the application date was too short for the public to have come to associate the word MOROCCANOIL with Moroccanoil exclusively, especially when there were other products on the market referring to themselves in various ways as Moroccan oil.

Lessons for litigants and right holders

The decision is a reminder of the significant difficulties associated with registering trade marks that might be considered to be descriptive. The more descriptive a trade mark, the greater the chance that it will be found to have no inherent adaptation to distinguish the goods of any singular trader. If a trade mark has no inherent adaptation to distinguish, then a trader must be prepared to establish that as at the date of application it has in fact come to be associated with the trade mark to the exclusion of all other traders.

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