Court of Appeals lifts ban on sale of Argan oil

Posted on May 05, 2015

THE COURT of Appeals has lifted the Intellectual Property Office’s (IPO) order barring the sale of Bench/Fix Salon’s Moroccan Argan Oil products, saying that the company that accused it of violating its intellectual property right failed to justify its issuance.

In a 15-page decision dated April 15, the court’s Twelfth Division voided the June 2014 writ of preliminary injunction against Suyen Corp. -- the mother company of popular lifestyle brand, Bench/ -- which was issued by the IPO’s Bureau of Legal Affairs (BLA) Hearing Officer Z’sa May B. Subejano-Pe Lim while the case filed against it was ongoing.

The court through Associate Justice Mariflor P. Punzalan Castillo said that MoroccanOil Israel Ltd. failed to “clearly and unmistakably demonstrate” its right to use the term “Moroccan Argan Oil” exclusively, noting that Ms. Subejano-Pe Lim admitted in an order that its right to do so would still need to be determined “after a full-blown hearing.”

It also set aside the BLA-IPO’s reasoning that the plaintiff in the case had registered the name “MoroccanOil,” that gave it the right to be issued an injunction in its favor. The court noted that no registration existed for the words “Moroccan Argan Oil” or any variation of it.

Questioning whether MoroccanOil really had the right to the term, the court noted that numerous other products carried the phrase in order to generically describe their products.

“If [MoroccanOil] has a clear and unmistakable right to exclusively use the term ‘Moroccan Argan Oil,’ why are there still several products out there using ‘Moroccan Argan Oil’ without being subjected to an injunctive writ?” the court asked. “Plus, why does it seem that petitioner Suyen is being singled out?”

It added that the term merely described the kind or quality of the oil and its geographical origin.

Also debunking MoroccanOil’s claim that it would suffer grave injury without the issuance of an injunction, the court noted that its products, sold in higher-end salons, cater to a different market than that of Bench/Fix Moroccan Argan Oil, which is sold exclusively in its namesake salons.

It noted that MoroccanOil failed to submit proof that it would be harmed if Suyen Corp. continued marketing the product pending the resolution of the case before the BLA-IPO.

Still, the court said it could not pass on the actual merits of the intellectual property right violation case because of the ongoing case before the BLA-IPO.

Concurring with the decision were Associate Justices Florito S. Macalino and Zenaida T. Galapate-Laguilles. -- Vince Alvic Alexis F. Nonato