Cheaper than going to court
Companies are fond of turning to the Advertising Standards Authority to settle trademark and passing-off disputes
IN SA, the Advertising Standards Authority (ASA) is often used as a forum for trademark-style disputes. As a recent decision shows, however, success is not guaranteed.
Companies are fond of using the ASA for what are essentially trademark or passing-off type disputes. One reason for this is that ASA proceedings are cheaper and quicker than court proceedings. It is worth knowing that, although an ASA ruling does not have the force of law of a court judgment, it does have huge practical significance. Once an advertisement has been declared to be in conflict with the ASA Code, it is difficult to do much with it.
Another reason why companies go to the ASA is that certain clauses in the ASA Code lend themselves well to trademark-type matters. In fact, they use the language of trademark law.
The case in November last year of Hennessy and Jameson — Société JAS Hennessy and Pernod Ricard — involved three clauses of the ASA Code where the overlap between trademark and advertising law is most apparent. These clauses are:
Clause 8: Exploitation of advertising goodwill. This clause is the most relevant and it provides that an advertisement “may not take advantage of the advertising goodwill relating to the trade name or symbol of a product or service”.
It says 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. Finally, 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 advertisement 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 states that an advertisement should not “attack, discredit or disparage” other products.
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 television advertisements in question are ones that many South Africans will know. The first is for
The ASA said alcohol brands often targeted ‘successful and aspirational emerging black, middle-class males in SA’