In all likelihood, only Novak Djokovic logs more court time than the corporate counsels of beauty brands in possession of a true rarity; an original idea. Breaking ground in a new category of product? Be prepared to spend your days fending off a slew of increasingly shameless copycats.
Flashback to 2006: An obscure “hair oil” – created not by an A-list coiffeur, but by under-the-radar Montreal salon owner Carmen Tal – starts trickling into the public consciousness. It’s derived from the nuts of argan trees, which are indigenous to Morocco, and is laced with hair-soothing fatty acids. Sure, argan oil is good for other stuff, like preventing heart attacks. But who cares about that when it can deliver livelier, lusher locks?
Dubbed Moroccanoil, it’s piped exclusively into the salon distribution channel and quickly explodes though other sales platforms. And over the next five-plus years, a steady parade of shockingly similar products tumbles into the market. Some of these copycats co-opt the “Moroccan” idea, some push the argan angle, and still others – the most egregious of the lot – hijack the real McCoy’s signature turquoise blue packaging along with the Moroccan idea and the argan angle.
Designer Imposters: Not Just a 70s Thing
Members of the Moroccanoil Wholesale Hijacking Club include Rusk Deepshine Oil, Organix Renewing Argan Oil of Morocco, Avon Advanced Techniques 360 Nourish Moroccan Argan Oil, and Carino Miracle Oil with Argan Oil.
The makers of the latter two imposters – Avon and Aldi, a UK supermarket chain that manufactures the Carino Miracle Oil – recently found themselves in court for their efforts.
After Moroccanoil Israel Limited (MIL) challenged its trademark and too-close-for-comfort overall look and packaging for its Advanced Techniques argan products – dead ringers for Moroccanoil — last November, Avon, in full-tilt Goliath mode, smacked back hard.
Its Advance Techniques line was launched waaay back in 2000, Avon stated in its Defendant statement. Fair enough. But when were the Advance Techniques Moroccan Argan Oil products launched? After Moroccanoil blew up, of course. (Not much blows up in the cosmetics industry anymore; when something does, everyone takes note.)
Another Avon legal tack: MIL didn’t invent argan oil. Or Morocco, for that matter. Again, fair enough. But wasn’t MIL the first to put the whole she-bang together? And wrap it up with a perky turquoise bow?
Because Bigger Is…Better?
Avon also trotted out this nugget, although it isn’t abundantly clear what this has to do with anything: “Since long prior to the acts of defendant complained of herein, Avon has earned a reputation as one of the world’s most reputable products and distributors of cosmetics, fragrances, toiletries, jewelry, clothing and related beauty and wellness products. Avon is renowned both for the quality of its products and its unparalleled customer service.”
The net-net of the struggling direct sales giant’s argument against the (much smaller) Plaintiff: We’re Avon. Get over it.
And guess what? It worked. After back-and-forthing in the US District Court for the Southern District of New York, and plenty of pow wows in global trademark offices, the two parties settled this past July for an undisclosed amount.
The June 2014 outcome of the MIL vs. Aldi suit — for those of us who like to see the creative, prescient “little guys” come out on top – is even sadder.
Although the judge in London’s Intellectual Property Enterprise Court (IPEC) ruled that Aldi had made the conscious decision to mimic Moroccanoil’s packaging – with the express intent of making customers think about Moroccanoil when they saw the Carino product parked on store shelves – the public wouldn’t confuse the two products, nor think that Moroccanoil actually manufactured the Carino product.
So, in other words, Aldi was pretty good at copying Moroccanoil, but not brilliant enough to actually trick Jane Q. Wants-Better-Hair.
Coming at roughly the same time as the Avon dust-up, this turn of events didn’t go down well with Team Moroccanoil. “We were obviously dismayed by, and furthermore fundamentally disagreed with, the IPEC’s initial ruling,” says Anthony Wilson, the company’s General Counsel for the Americas. (After considering an appeal, MIL settled with Aldi.)
Picking Your Beauty Litigation Battles
Unfortunately for MIL, fending off Moroccanoil copycats is just one legal front on which it fights; from the brand’s inception, it has battled, big-time, against diversion.
Ask Wilson which is the bigger priority — stemming the tide of wannabes or protecting salon owners from seeing Moroccanoil everywhere it isn’t supposed to be – and he’s reluctant to choose.
“Both lay at the heart of Moroccanoil’s brand protection strategy, and so we focus on each as much as possible,” he says. “Thankfully, each are the result of being a brand in high demand, and neither will abate so long as such is the case. That said, given the resources that we have invested in aggressively fighting diversion, and the length of time that we have been doing so, we are starting to see a slowdown in the rate of diversion of our products. Time will only tell whether our strong commitment to fighting these knockoff artists will meet with the same kind of success.”
At the risk of sounding the death knell on originality, that’s unlikely to happen. One need only take a quick glance at the shelves in a cosmetics department – in either the mass or prestige channel — to know that copycatting is getting much worse. A fall 2014 case in point: all the Clarisonic-wannabe skin brushes hitting the market right now. Even Clinique, a path-breaker if ever there was one, is getting into the skin brush act.
Still, you have to hand it to the pioneers for continuing to raise a ruckus when their hard work gets co-opted lock, stock and barrel. And for logging all that time in court when they probably like to be just about anywhere else.