Charlotte Tilbury’s company, Islestarr Holdings Ltd, brought proceedings for copyright infringement against Aldi in the recent case of Islestarr Holdings Ltd v Aldi Stores Ltd .
Islestarr Holdings Ltd v Aldi Stores Ltd
Charlotte Tilbury, recognised as make-up artist to the likes of Meghan Markle, Kate Moss and Amal Clooney, launched her Filmstar Bronze and Glow palette in 2013. She developed the design with a company called Made Thought Limited, who assigned their IP rights in the product to Islestarr.
In July 2018, Islestarr discovered that Aldi, famous for its slogan “Like brands, only cheaper”, was selling its own version of the palette. The product, retailing at £6.99 and later reduced to just £4.99, was over £40 cheaper than the original. Aldi sold more than 20,000 units before proceedings were issued and the palette was discontinued.
Islestarr argued that Aldi had copied two significant elements of the palette’s design. The first was the starburst design, which decorated the lid of the palette with rays emanating from a centrally positioned diamond. The second was the powder design, which consisted of rays and single capitalised words imprinted into each of the palette’s two make-up powders. The powders in both products were also displayed in square trays with rounded corners.
High Court decision
The Court ruled that the design of the Filmstar palette was original and contained creative choices. He stated that the similarities between it and Aldi’s Lacura Broadway palette were “substantial”.
Aldi also admitted that their designers were aware of Islestarr’s design when creating their own palette. This, along with the substantial similarities, showed copying and Aldi was found to have infringed Islestarr’s copyright.
Not duped by ‘dupes’ – could copyright succeed where passing off fails?
The Islestarr claim is not the first time that Aldi has found itself embroiled in allegations that it has infringed a third party’s intellectual property.
MIL argued that the name and overall design of Miracle Oil were, when combined, so similar to Moroccanoil that the public would confuse the two, thereby causing consumers to mistake Miracle Oil for Moroccanoil or to assume a common manufacturer or trade connection
The Judge acknowledged that there were significant similarities between the products and that Aldi had succeeded in its intent to “make the public think of Moroccanoil when they saw Miracle Oil in its packaging”. In spite of this, MIL’s claim failed.
It was held that whilst Aldi intended to make the public think of Moroccanoil when they saw Miracle Oil in its packaging, purchases of Miracle Oil had not been, and were not likely to be, made with any false assumption in the mind of the purchasers.
The contrast between the Charlotte Tilbury and Moroccanoil decisions is an interesting one. Both involve ‘dupes’ of well-known beauty products but the result of each of the cases is very different, due to the intellectual property rights invoked by the claimant in each case.
Whether Islestarr owned goodwill in the design of the Filmstar palette was not considered in the Tilbury case. Whilst an allegation of passing off was raised in pre-action correspondence, it was not included within the issued claim. We can only speculate but would anticipate that the outcome of the Moroccanoil persuaded Islestarr not to pursue that allegation. No doubt this was the right decision. Even putting the evidential challenges of proving goodwill in product design or ‘get up’ to one side, Moroccanoil emphasises the difficulties faced by brands in proving a misrepresentation, when there is no direct evidence of confusion by those who purchased the allegedly infringing product.
In contrast, Islestarr’s copyright claim succeeded by way of summary judgment application, thereby avoiding the need for a full trial, with the time and expense that this would entail – it’s interesting to note that in Moroccanoil, the Judge commented that that Miracle Oil “might infringe rights relating to design.” Had copyright infringement been pleaded instead of passing off, the outcome of that case may have been very different.
Dupes of well-known beauty products are not a new phenomenon. A quick Google search for “Aldi Lacura Dupes” confirms that many perceive Aldi’s beauty range to mimic popular, but more expensive, products.
What remains to be seen is how Aldi, and those who may feel aggrieved by what Aldi do, react to the Islestarr decision. We may see Aldi exercise greater caution in its product design phase, alongside a greater appetite for litigation by those who feel that Aldi still go too far.
Kristina Ford is a Trainee Solicitor at Nelsons.
If you would like any advice in relation to the subjects discussed in this article, please contact Kristina or another member of our Intellectual Property team in Derby, Leicester or Nottingham on 0800 024 1976 or via our online form.