JURISDICTION REPORT: SOUTH AFRICA
ALTERNATIVE AVENUES FOR LITIGATION IN SOUTH AFRICA
Christine Kalibbala DM Kisch Inc
Te Advertising Standards Authority of South Africa (ASA), has proved to be one of the most expedient and cost-effective forums for dealing with contentious issues pertaining to trademarks, trade names or symbols, rather than launching proceedings in the High Court.
More oſten than not, trademark proprietors or individuals/entities who have common law rights in a trademark, trade name or symbol opt to utilise the ASA to obtain the requisite relief, where appropriate.
Frankies Olde Soſt Drinks CC (Frankies) v Woolworths (Pty) Limited (Woolworths) is one case that comes to mind. Frankies opted to utilise the ASA by lodging a competitor complaint against Woolworths over its use of the phrase ‘Good Old Fashioned’ on soſt drinks for sale at its establishments throughout South Africa.
Frankies and Woolworths both sell/distribute soſt drinks at various retail outlets throughout South Africa. Woolworths in particular sells a range of products, from foods to household utilities, and has numerous stores around South Africa.
Frankies is a soſt drink company the products of which are sold by retail outlets in various provinces in South Africa. It contends that it has used the phrase ‘Good Old Fashioned Soſt Drinks’ since 2006 and has acquired advertising goodwill in the phrase. It is important to note that the phrase appeared on Frankies’ point of sale and advertising material (such as posters, table talkers and fridge wobblers), and not on the product itself.
Woolworths launched a range of vintage sodas which, Frankies alleged, copied its packaging and flavours. Frankies lodged a competitor complaint against Woolworths with the ASA. It is interesting to note that Frankies pursued the matter with the ASA only with regard to the use of the phrase ‘Good Old Fashioned’ on Woolworths’ packaging (pictured opposite, leſt. Te Frankies product is on the right).
Te ASA was requested only to consider whether Woolworths exploited any advertising goodwill in, and/or imitated, the phrase ‘Good Old Fashioned’.
Woolworths argued that, inter alia, the phrase did not appear on Frankies’ packaging, was not used as a trade name and that a soſt drink manufacturer could not claim exclusivity or originality in the phrase. In addition, Woolworths adduced evidence attempting to prove that the phrase was widely used in relation to soſt drinks.
Te ASA ruled that Frankies’ use of the phrase was not merely descriptive and was found to be a craſted advertising property. Te ASA did, however, note that although the concept of ‘vintage’ sodas may not be as new in other countries, it appears to be a relatively unexplored territory in South Africa.
62 World Intellectual Property Review March/April 2012
While the ASA did not make a ruling on the complaint with regard to whether or not Woolworths exploited the advertising goodwill in the phrase ‘Good Old Fashioned’, the ASA ruled that because Woolworths provided no explanation as to how it had come up with the idea to use the phrase, the only reasonable conclusion to be drawn from the evidence was that Woolworths had deliberately and intentionally copied the phrase ‘Good Old Fashioned’.
Te ASA held that Woolworths’ packaging in its current form must be withdrawn and that it may not be used again.
As Woolworths is an entity significantly larger than Frankies, and bearing in mind the relief Frankies sought and the facts of the case, the ASA was an appropriate forum and continues to be utilised by many entities who seek specific relief and do not wish to proceed before the High Court.
It is clear from this ruling that, although a specific phrase may appear to be somewhat descriptive in relation to the specific product or common in the trade, if one cannot adduce sufficient evidence to prove it, companies must be cautious before adopting the phrase. In this regard, common law searches and searches at the Trade Marks Registry can be conducted to minimise the risk.
Christine Kalibbala is an associate at DM Kisch Inc. She can be contacted at:
christinek@dmkisch.com
www.worldipreview.com
“THE ASA RULED THAT THE ONLY REASONABLE CONCLUSION TO BE DRAWN FROM THE EVIDENCE WAS THAT WOOLWORTHS HAD DELIBERATELY AND INTENTIONALLY COPIED THE PHRASE ‘GOOD OLD FASHIONED’.”
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