ASA Roarrrss in favour of trade marks

04 Apr 2016

Trade mark owners continue to successfully use the Advertising Standards Authority (“ASA”) as a forum for resolving what are essentially trade mark disputes.

The latest case, Simba (Pty) Ltd v Gatbro International Manufacturing (Pty) Ltd (25 January 2016), involved what is probably South Africa’s best-known potato chip (crisp) brand, Simba. The Simba brand is huge in South Africa – it’s been around since 1957, it has a 67% market share, the company has  sold 42-million cases of chips in South Africa since 2013, and its ad-spend for the period 2012 – 2015 was R132-million. Simba’s highly distinctive packaging comprises, inter alia, the brand name Simba, a crown device, a device of a lion wearing a crown, and the slogans “King of Snacks” and “Roarrrs with Flavour”.

Simba complained about the fact that Gatbro used certain marketing features in connection with its chips, in particular the slogan “The King of Flavour”, and a yellow crown device above the brand name Krunch. Simba’s complaint was that the Krunch packaging contravened clause 8 of the ASA Code, in that it involved an exploitation of advertising goodwill. The company also claimed that the packaging contravened clause 9, in that it comprised imitation of an advertisement. Finally, it argued that the slogan “The King of Flavour” was misleading and unsubstantiated in terms of Clauses 4.1 and 4.2.1 of the ASA Code because it wrongly implied that its product had the best flavour.

Gatbro raised some interesting defences. It argued that the ASA complaint was “an attempt by the complainant to obtain leverage in relation to primarily trademark issues.” It argued that “trade marks in themselves do not receive protection” under the ASA Code. It argued that the crown devices used by the two parties were “wholly dissimilar” and it argued that the slogan “The King of Flavour” is hyperbole or puffery, and something that therefore cannot be interpreted literally.

The ASA started by making a number of important points. It said that the promotional content of packaging clearly constitutes “advertising” as defined in the ASA Code, with the term “advertisement” being defined as “any visual or aural communication, representation, reference or notification of any kind, which is intended to promote the sale, leasing or use of any goods or services; or which appeals for or promotes the support of any cause.”

The ASA then dealt with the trade mark issues. It said this: “While the respondent is correct in noting that the ASA is not an appropriate forum to dispute trade marks, a complaint in relation to advertising goodwill associated with trade marks and/or other distinctive advertising properties falls squarely within the ambit and jurisdiction of the ASA … similarly, disputes about alleged imitation of such distinctive advertising properties, veracity of claims and potential deception also fall within the purview of the ASA.”

The ASA went on to deal with the complaint of the slogan “The King of Flavour” being misleading and unsubstantiated. Unsurprisingly, it rejected the complaint, describing the slogan as permissible puffery or hyperbole. It said this: “The claim is not a statement of fact, but an exaggerated expression of opinion. A hypothetical reasonable person reading the claim would understand this, and would not be misled into thinking that it is an objective statement. As such, the claim cannot be regarded as misleading or unsubstantiated as alleged by the complainant.”

The ASA finally dealt with the claim of imitation. Clause 9.1 states, inter alia, that an advertiser should not copy an existing advertisement, or any part thereof, in a manner that is recognisable or evokes the existing concept and which may result in the potential loss of advertising value. It further states that the following factors will be considered when deciding whether imitation took place: the extent of exposure, period of usage and advertising spend, and whether the concept is central to the theme, distinctive or crafted as opposed to in common use. The competitive sphere must also be taken into account.

The ASA referred to an earlier ASA decision that said that clause 9.1 seeks to punish “conscious copying of original intellectual thought, and that it was not sufficient for an advertisement that merely contains coincidental similarities to be regarded as imitation.”

The ASA discussed the fact that Simba’s crown device has been used since the 1960s, that it has been registered as a trade mark, that the slogan “Roarrrs with Flavour” has also been registered as a trade mark, and that it has been used on the packaging and in the advertising of Simba chips for many years. It also referred to the fact that there are no other “king” or crown device chip trade marks in South Africa.

The ASA then referred to its earlier decision in the case of Amos Glue Stick/Pritt Glue Stick (15030; 31 August 2010), in which it approved this passage from the high court passing-off case of Adcock Ingram Products Ltd v Beecham SA (Pt) Ltd 1977 4 SA 434 (W): “Apart from monopolies conserved by patents, and apart from protection afforded by registration, it is open to anyone to adopt the idea or the devices of his neighbours and apply them to his own goods provided that he clearly distinguishes his goods from those of his neighbour.”

The ASA held that Gatbro had intentionally set out to imitate Simba’s get-up and had not seen fit to distinguish it. It held that “the image of a crown, and taglines King of Snacks and Roarrrs with Flavour constitute original intellectual thought on the part of the complainant.” It said that there can be unlawful imitation, even where there is no likelihood of confusion or deception. It also cited the earlier ASA decision of Lipsano Lip Balm/Carma Laboratories (8259; 16 July 2007), where the Final Appeal Committee held that in considering issues relating to imitation, this question needs to be asked: “Why did the respondent in this case adopt the particular get-up?”

The ASA concluded as follows: “The adoption and execution of the crown together with the reference to a ‘KING’ of flavour cannot be regarded as coincidence and it is reasonable for the Directorate to infer a conscious decision to copy, especially in the absence of a reasonable explanation as to why the respondent adopted this particular get-up.”

The ASA therefore ordered Gatbro to change its packaging. There was no need for it to even consider the claim of exploitation of advertising goodwill under clause 8.

Trade mark owners will be pleased by this decision.

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)

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