ARTICLE
10 December 2024

The Appeal Of Nutriwomen

E
ENS

Contributor

ENS is an independent law firm with over 200 years of experience. The firm has over 600 practitioners in 14 offices on the continent, in Ghana, Mauritius, Namibia, Rwanda, South Africa, Tanzania and Uganda.
We have written about the Advertising Regulatory Board (ARB) case of L'Oréal South Africa (Pty) Ltd (L'Oreal) and Nutriwomen (Pty) Ltd before. In this update we discuss the appeal that was lodged...
South Africa Media, Telecoms, IT, Entertainment

We have written about the Advertising Regulatory Board (ARB) case of L'Oréal South Africa (Pty) Ltd (L'Oreal) and Nutriwomen (Pty) Ltd before. In this update we discuss the appeal that was lodged against the earlier decision - this appeal went to the Advertising Appeals Committee (AAC) of the ARB, where it was considered by advocate Nasreen Rajab-Budlender SC and others.

The complaint

L'Oréal lodged a complaint under Clauses 8 and 9 of the ARB Code, and it related to the packaging and get-up used in relation to Nutriwomen's DERMACARE range of skincare products.

The complaint submitted that the DERMACARE packaging 'substantially copies the get-ups of the Complainant's various CERAVE products and...exploits the advertising goodwill attaching to the Complainant's packaging and goodwill'.

1553274a.jpg

* Image credit: Taken directly from the complaint filed

The get-up

The CERAVE brand has a get-up comprising of the following:

  • specific colour codings for its various product categories (white and light blue, white and dark blue, white and lime green, white and sea green, white and purple);
  • a V-shaped colour block over the letters VE in CERAVE;
  • a font called DinPro;
  • a sequence of information covering brand name, skin type and product description.

L'Oréal's claims

L'Oréal claims included the following :

  • the current packaging for its CERAVE brand has been in use since 2022;
  • there have been substantial sales of the products;
  • the packaging has acquired a significant reputation in a short time;
  • there have been reports of consumer confusion on social media, and consumers were commenting that the DERMACARE product packaging imitated the CERAVE packaging;
  • Nutriwomen was 'deliberately trying to ride on the coattails'of CERAVE.

The response by Nutriwomen

Nutriwomen denied any copying or contraventions of the ARB Code. Instead it...

  • argued that the colour combinations used on the respective packaging are common to the industry;
  • claimed that L'Oréal's packaging had not been used to the extent that it could be said to have protectable goodwill;
  • argued that the packaging is 'vastly different' and that the packaging architecture' is not unique in the skincare industry, locally and abroad;
  • argued that L'Oréal was seeking to 'stifle legitimate competition' via the ARB's processes.

The ARB's findings

The ARB held that:

  • the ARB will consider a matter and issue a ruling for the benefit of its members even if the company Nutriwomen is not a member;
  • the tests under Clauses 8 and 9 of Section II are not the same as the test for passing off, although passing off decisions may be useful; and
  • in this case there was a breach of Clauses 8 and 9 of Section II, relating to exploitation of advertising goodwill and imitation.

An appeal to the Advertising Appeals Committee (AAC)

On appeal, the AAC made the following findings:

Jurisdiction: The ARB is entitled to consider complaints involving a party which is not a party to the ARB - this has been confirmed by the Supreme Court of Appeal (SCA).

Similarities between the marks: The CERAVE and DERMACARE products are'substantially similar in colour, wording, design and actual container shapes used... it is difficult to accept that Nutriwomen would not know or consider what their competitors' products looked like... it is also implausible that their creative agency did not look at CERAVE or see any similarities between the products .. Nutriwomen did extensive market research to determine what their customers were looking for, such as larger containers or skin type specific products.'

Combination of elements: Although it'may be common for certain colours to be used in the skin care industry, CERAVE argues that it is not one element that makes the product packaging unique – but the combination of all the different elements raised in their complaint. We agree.'

Intention: The fact 'that Nutriwomen didn't use the 'V' in CERAVE is not determinative... when one compares the previous packaging of the Dermacare range with the current packaging – the change is not simply a gradual evolution but a dramatic change to look substantially similar to the Cerave range.'

Taking advantage: It is 'difficult to conclude that Nutriwomen did not seek to take advantage of the advertising goodwill of L'Oréal's Cerave products.' This was a contravention of Clause 8 of Section II of the Code.

Existing concept: There was also a contravention of Clause 9, 'which precludes an advertiser from copying an existing advertisement or any part thereof in a manner that is recognizable or clearly evokes the existing concept and may result in the likely loss of potential advertising value... this applies even if there is no likelihood of confusion or deception'.

Consternation and confusion: It is 'clear from social media users who remarked on the similarities between the two products that Dermacare's packaging is sufficiently similar to cause consternation and confusion in the market.'

The affidavit submitted by the design agency of Nutriwomen

During the hearing of the matter, the AAC provided an opportunity for Nutriwomen to submit a further affidavit from its design agency, New Media Design Agency, to advise the AAC of the considerations it took into account in redesigning the DERMACARE packaging. The original packaging is set out below.

1553274b.jpg

* Image credit: Taken directly from the complaint filed

The AAC held the following in respect of the affidavit submitted by the design agency:

  • 'It appears to us that if tasked with a revamp of a product range one of the main issues which an agency would begin with would be to gain some market knowledge of competitor products. Had New Media done so, they would immediately have noticed that what they had in mind for DERMACARE was substantially similar to the CERAVE range. Had this been done, one would imagine that they would immediately have flagged the similarities for their client and suggested something different;
  • 'In the present case, even if New Media did not undertake this exercise (which is hard to believe for an agency with 21 years of extensive experience in the industry), once they had presented their proposal to Nutriwomen, one would have expected Nutriwomen to spot the similarities and ask New Media to amend their proposal'and
  • 'None of this took place according to the affidavit and according to the oral submissions on behalf of Nutriwomen'.

The outcome

The AAC agreed with the Directorate that there had been a copying of get-ups and exploitation of goodwill, and therefore a contravention of Clauses 8 and 9 of Section II of the Code.

The ruling of the AAC is an important reminder to brand owners that look-a-like products can, and should, be addressed as a reputation in product packaging separately from the brand name of a product. This was particularly evident in the social media evidence presented by L'Oréal where consumers commented on the similarities between the respective packaging despite different brand names being used.

Brand owners should also consider a strategy of protecting their product packaging through trade mark filings.

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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