Companies often take what are basically trade mark issues to the
ASA because it's quick and cheap. But as yesterday's ruling
in the Frankie's v Woolworths case shows, advertising and trade
mark issues are not always identical. The ruling deals with
Woolworths' use of the term 'Good Old Fashioned' in
relation to its range of 'vintage' sodas. The problem
– Frankie's has been using the same term for its vintage
drinks since 2006. (Frankie's in fact claimed that its entire
get-up had been copied, but the ruling simply deals with the
phrase). Woolworths raised defences aplenty. You haven't used
the term as a trade mark but rather in a descriptive way - it
hasn't appeared on your bottle but rather on point of sale
material like posters and 'table talkers' (dunno either!),
and your trade mark is actually Frankie's and your slogan is
'The taste of yesteryear'.
You can't claim exclusivity to the term, it's common.
You're a lightweight and your usage has been small – no
TV, radio or print advertising. These issues might have been
relevant to Frankie's claim that Woolworths had exploited its
advertising goodwill (Article 8 of the ASA Code), but they
didn't affect the claim that Woolworths had imitated
Frankie's advertising in a manner that was recognisable or
evoked the existing concept (Article 9). That's because under
Article 9 no confusion is required, nor any extensive usage.
What's relevant here is the issue of copying, and the ASA will
consider whether the concept that's been copied is central to
the theme, and whether it is distinctive or crafted as opposed to
being in common usage. The ASA noted that Frankie's had used
the term in quotation marks and in bubbles, which suggested that it
wasn't a descriptor. And the ASA noted that Woolworths was in
fact able to show little or no other usage of the term in SA. So
'Good Old Fashioned' was a crafted advertising property.
And it was clearly copied. Woolworths didn't admit or deny
copying, but the evidence did show that, as far back as April 2011,
Frankie's told Woolworths that it regarded the phrase as its
advertising property. And a confidential 'Design Concept
Brief' showed that, although Woolworths had a different phrase
in mind in June 2011, it then switched to 'Good Old
Fashioned' for reasons that weren't explained. It's all
so typical – a little'un takes on a big'un, and the
response is 'bring it on'. And when the little'un does
just that and the public mood turns against the big'un,
there's a sudden volte face. A bit like playground bullies!
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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