Douglas McLachlan: Pomegranate pipped at the post in advert wars

Douglas McLachlan is a partner, Anderson Strathern, and specialises in intellectual property law.
Douglas McLachlan is a partner, Anderson Strathern, and specialises in intellectual property law.
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As budget supermarkets Lidl and Aldi continue their offensive against the UK ‘Big Four’ for increased market share, competition among supermarket retailers is fiercer than ever. In recent years, the main players have sought to expand ‘own-brand’ product ranges and develop luxury lines to sell alongside their traditional budget offering. Worryingly for non-supermarket brands, it is becoming increasingly commonplace for own-brands to mimic ‘big ticket’ branded products.

The latest example is Aldi’s recent release of a new range of luxury scented candles. In a press release, Aldi said the candles were “comparable to Jo Malone … for a fraction of the price.” The candles were available in three scents, one of which was branded “Pomegranate Noir” – which is the same name and scent of a Jo Malone best-seller. Importantly, Jo Malone holds an EU registered trade mark for the words “Pomegranate Noir” in relation to perfumes and scented candles.

Not surprisingly, Aldi’s range of candles received extensive media coverage, with many online news outlets particularly highlighting the similarity between the Aldi and Jo Malone versions. The candles sold out in-store on the day of release and have since sold out online - good news for Aldi but possibly a concern for Jo Malone.

The question is: what can brand owners do to prevent this? The common law principle of ‘passing off’ protects the ‘goodwill’ accumulated in relation to a brand and prevents it from being exploited by other parties passing off their goods and services as somehow being the same or associated with the brand’s goods or services. Goodwill can be described as the favourable perception by consumers of a brand. The essential components to a successful claim for passing off are: the existence of goodwill, misrepresentation, and damage.

It is unlikely that a passing off claim could be brought in these circumstances as arguably there is no misrepresentation. Whilst the packaging and branding of the Aldi candles are suggestive of Jo Malone’s, they are not so similar that consumers would mistake Aldi’s product for Jo Malone’s. Indeed, a passing off claim concerning a look-a-like hair oil product failed on this exact point in Moroccanoil Israel Ltd v Aldi Stores Ltd [2014].

Comparative advertising is commonplace among supermarkets and own-brand products are regularly advertised alongside rival brands. Particular attention is drawn in such adverts to the similarity between the products in terms of quality and, of course, to the difference in price. Comparative advertising is permissible as long as it is compliant with the principles set out by the EU Comparative Advertising Directive. For example, the comparative advert must not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing mark of a competitor.

The EU Trade Marks Directive expressly provides that comparative advertising which falls foul of the Comparative Advertising Directive can amount to trade mark infringement. It could be argued Aldi’s use of “Pomegranate Noir” in the branding and advertising of one of its candles may be said to be a trade mark infringement in its own right. A trade mark is infringed if, in the course of trade, a sign which is identical with the trade mark is used in relation to goods or services which are identical with those for which it is registered (in this case scented candles). At this time, it is not clear whether or not Jo Malone has objected to Aldi’s use of the “Pomegranate Noir” mark.

Where a trade mark has been diluted, the prospect of raising any further infringement actions becomes limited. Branding can be the most valuable asset a company possesses, and the importance of a proactive approach to trade mark protection and enforcement should never be underestimated.

Douglas McLachlan is a partner, Anderson Strathern, and specialises in intellectual property law.