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

FEDERAL COURT OF AUSTRALIA

Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823 File number: NSD 613 of 2015 NSD 1297 of 2015

Judge: KATZMANN J

Date of judgment: 31 August 2017

Catchwords: TRADE MARKS — trade mark infringement — whether respondents' use of Moroccan Argan Oil in relation to hair care products and tools is use as a trade mark — whether Moroccan Argan Oil deceptively similar to either or both of applicant's registered marks — whether hair brushes and hair tools are goods of the same description as the goods in respect of which applicant's trade marks are registered — whether use of Moroccan Argan Oil not likely to deceive or cause confusion TRADE MARKS — cross-claim for rectification of Register — whether either or both of applicant's registered trade marks inherently adapted to distinguish its goods from the goods or services of other persons — whether either or both of applicant's registered trade marks to some extent inherently adapted to distinguish its goods — whether, because of extent to which the registered trade marks are inherently adapted to distinguish designated goods, their use or intended use and any other circumstances, they do or will distinguish designated goods as applicant's goods TRADE MARKS — appeal from decision of delegate of Registrar of Trade Marks — opposition to registration of word mark moroccanoil — whether mark inherently adapted to distinguish applicant's goods at time of application — ordinary signification of mark — whether mark merely descriptive — whether mark to some extent inherently adapted to distinguish goods — whether, because of extent to which mark inherently adapted to distinguish designated goods, their use or intended use and any other circumstances, it does or will distinguish designated goods as applicant's goods CONSUMER LAW — misleading or deceptive conduct — get-up and packaging of hair care products and tools — extent of applicant's reputation — whether name and get-up of respondents' goods misleading or deceptive or likely to mislead or deceive consumers — significance of evidence of confusion or deception CONSUMER LAW — misleading or deceptive conduct — false or misleading representations — naturals — whether use of naturals in branding of hair care products amounts to a representation that products contain substantially natural ingredients — whether representation false, or misleading or deceptive or likely to mislead or deceive CONSUMER LAW — misleading or deceptive conduct — false or misleading representations — argan oil — whether references to argan oil on product packaging amount to representation that argan oil makes a material contribution to alleged product benefits — whether representation made that argan oil infused in hair brushes and hair tools makes a material contribution to alleged product benefits — if so, whether representation false, or misleading or deceptive or likely to mislead or deceive EVIDENCE — tendency evidence — whether reasonable notice given of intention to rely on tendency evidence — whether evidence of significant probative value