trade mark and advertising law: some overlaps
In South Africa, the Advertising Standards Authority (“ASA”) is often used as a forum for trade mark-style disputes. As a recent decision shows, however, success isn’t guaranteed.
Regular readers of our IP ENSight newsletters will know that companies are quite fond of using the ASA for what are essentially trade mark or passing off-type disputes. One reason for this is that ASA proceedings are far cheaper and quicker than court proceedings. It’s worth knowing that, although an ASA ruling doesn’t have the force of law that a court judgment has, it does have huge practical significance, because once an advert has been declared to be in conflict with the ASA Code, it’s difficult to do much with it. Another reason why companies go to the ASA is that certain clauses in the ASA Code lend themselves very well to trade mark-type matters. In fact, they pretty much use the language of trade mark law.
The recent case of Hennessy and Jameson – Société JAS Hennessy & Co and Pernod Ricard South Africa (Pty) Ltd 23 (November 2015) – involved the three clauses of the ASA Code where the overlap between trade mark and advertising law is most apparent. These clauses, which are to be found in section II of the ASA Code, are:
Clause 8: Exploitation of advertising goodwill. This clause is the most relevant and it provides that an advert “may not take advantage of the advertising goodwill relating to the trade name or symbol of a product or service”. It says further that factors to be considered include “the likelihood of confusion, deception and the diminution of advertising goodwill”. A further factor to be considered is whether the advertising “device” constitutes the “signature” of the product or service, and whether it has been extensively used. Lastly, it provides that a parody – “the intention of which is primarily to amuse” and which is “not likely to affect adversely the advertising goodwill of another” – will be permissible.
Clause 9: Imitation. This clause provides that an advert must not copy an existing advertisement “in a manner that is recognisable or clearly evokes the existing concept and which may result in the likely loss of potential advertising value.” This will apply “notwithstanding the fact there is no likelihood of confusion or deception.” Factors to be considered include the extent of the usage of the earlier advertisement, as well as the question of whether the concept is “distinctive or crafted as opposed to in common use”.
Clause 6: Disparagement. This clause says that an advert should not “attack, discredit or disparage” other products. It goes on to say that a comparison “highlighting a weakness in an industry or product” will not necessarily be regarded as disparaging if the comparison is “factual and in the public interest”. The ASA is entitled to consider the intention of the advertiser.
The TV adverts in question are ones that many South Africans will know. The first is for Hennessy brandy, and involves what the ASA decision describes as a “handsome, successful, black male”. The man, who’s wearing a tuxedo and who’s accompanied by a glamorous lady, is driven in a luxury German car to an awards ceremony, where he goes on to win an award. He poses for photographs and he gets to drink a glass of Hennessy. A voice-over then makes it clear what the message is – striving for success is what life’s all about. The product’s pay-off line is: “Never stop. Never settle.”
The second advert also involves a “handsome, successful, black male”. The man, who’s wearing a tuxedo and who’s accompanied by a glamorous lady, is driven to an awards ceremony in a luxury German car. He also wins an award and he gets to drink a Jameson. It then becomes apparent that this is a film set, and that the award winner is simply an actor playing a role. The voice-over reveals that the message here is a very different one – character is what really counts, something that Jameson whiskey apparently has. The product’s pay-off line is: “Real character is what’s inside”.
Hennessy claimed that the Jameson advert contained breaches of the three clauses of the ASA Code. It failed in its case. The ASA was unpersuaded that there was any advertising goodwill to speak of. It said that the storyline wasn’t a “signature”, because it was a common story or theme. On the issue of originality, the ASA said that alcohol brands often target “successful and aspirational emerging black middle class males in South Africa” and that “the luxury German car is a common tool to appeal to the aspirational black middle class in South Africa.”
The ASA also said that the parody related to “the genre or theme of advertising that success is manifested by material possessions”, and not to the brand Hennessy. There was no disparagement because there was no suggestion in the Jameson advert that Hennessy is an inferior product.
A gentle reminder, perhaps, that the ASA is no soft touch!