ASA Protects Trade Dress
In a recent ruling by the Advertising Standards Authority (ASA) of South Africa, Emirates Industries was ordered to withdraw the packaging of its Mister Bean Baked Beans product. The ASA Directorate found that the packaging contravened Clause 8 and 9 of the ASA Code, in that it exploited the advertising goodwill, and imitated the packaging of, Tiger Brands’ Koo Baked Beans.
In its complaint, Tiger Brands submitted that certain features of the packaging of its Koo Baked Beans, as apart from the well known KOO brand, had been crafted specifically for the product, and had, over nearly 70 years of use, become the signature of the product. These features distinguished the product from competing products on the market, and it was these features which the Complainant sought to imitate in the packaging of its Mister Bean Baked beans.
The features in question include the yellow oval shape bearing the trade mark KOO which appears against a dark background on the upper half of the can, and the photograph of baked beans in tomato sauce which appears on the lower half of the can beneath a straight yellow line.
In support of its contention that enormous advertising goodwill subsists in these signature features of its Koo Baked Beans, Tiger Brands submitted evidence relating to inter alia the advertising expenditure and sales performance of the product; the product’s status as market leader in the baked beans market in South Africa; and the rating of the product as second most favourite brand in the category for “Brands of food kept in the pantry or on the shelf” in the 2006/2007 Markinor Sunday Times Top Brands Survey.
Considering the similarities between the packaging of its Koo Baked Beans and the Respondent’s Mister Bean Baked beans, Tiger Brands submitted that the only conclusion to be drawn was that Emirates’ had sought to leverage off the advertising goodwill enjoyed by Koo Baked Beans, by imitating the packaging of the product in the packaging of its Mister Bean Baked Beans.
In response, Emirates denied that its packaging was designed with the intention of copying Tiger Brand’s packaging, and submitted that the yellow and blue colouring used on the packaging was selected for the contrast it provides. Emirates also submitted that, apart from the different brands names of the products, there were clear differences between the packaging, such as the use of a bean shape in which the brand name appears as opposed to the oval shape used by Tiger Brands and the difference in background colour and shading of the respective product packaging.
On the evidence placed before it, the Directorate accepted that goodwill subsists in the KOO brand. However, as the complaint related to the packaging of Tiger Brands’ product and not the brand name as such, the first issue for determination was whether goodwill subsisted in the packaging. Whether this was the case was dependent on whether or not the packaging constituted “original intellectual thought” which was “crafted” in a manner which sets the product apart from its competitors “to such an extent that its packaging becomes a unique and recognisable concept”. Having considered the packaging used by competing baked bean products on the market, as well as previous ASA rulings to the effect that colour combinations and combinations of features on packaging can indeed amount to original intellectual thought, the Directorate found that the unique combination of features used by Tiger constituted “crafting of a generic concept”, and the packaging as a whole was original intellectual thought.
Having established this, the Directorate went on to consider whether the Respondent had imitated Tiger Brands’ packaging in a manner that clearly evokes the Koo Baked Beans product, and/or whether the Respondent had exploited Tiger Brands’ goodwill for commercial gain. Upon examination of the respective product packaging, the Directorate concluded that the similarities between the packaging were indeed striking, and appeared to be unique to the products concerned. The minor differences in the Respondent’s packaging did not negate these similarities. In the circumstances, the Directorate ruled that the Respondent’s packaging was an imitation of Tiger Brands’ packaging, was likely to evoke that packaging, and appeared to exploit the advertising goodwill therein.