Most Read Contributor in South Africa, September 2016
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 –
SociétéJAS 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,
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
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
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!
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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