South Africa: Trade Mark And Advertising Law: Some Overlaps

Last Updated: 21 January 2016
Article by Gaelyn Scott

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, 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!

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.