Cheaper than go­ing to court

Com­pa­nies are fond of turn­ing to the Ad­ver­tis­ing Stan­dards Au­thor­ity to set­tle trade­mark and pass­ing-off dis­putes

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW - GAE­LYN SCOTT

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’

Pic­ture: iSTOCK

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