Saturday, 29 August 2009
Wednesday, 26 August 2009
At the risk of over-simplifying, the law on comparative advertising goes something like this:
Trade mark law says that you can use a competitor's registered trade mark in a comparative ad provided that you don't imply that your product is associated with your competitor. This has seemingly been the case since 2007, when the Appeal Court ruled that Verimark's use of a BMW car in a TV ad for a car polish was kosher because there was no suggestion of any connection between the products (there is a possibility that our law will change following a recent European decision, but we'll have to wait and see).
Advertising law agrees, but imposes further requirements, for example the comparison made must be sustainable, and the ad must not be disparaging of the competitor.
The ASA recently dealt with a comparative ad where there was in fact no direct mention of the competitor. The ad was for Sunlight dishwashing liquid and it said that Sunlight 'washes twice as many dishes as its nearest competitor.' The ASA accepted that this was a reference to Ajax – not only is Ajax in fact Sunlight's nearest competitor, but the ad showed a bottle which looked remarkably like an Ajax bottle.*
The ASA also accepted that the claim was true (so remember which liquid to buy thrifty Scottish readers!). But it went on to find that the ad was disparaging and therefore contrary to the Code. Why? Because Sunlight dissed Ajax. Oooh! Turns out the ad was one of those deep, thought-provoking cinematographic masterpieces, so typical of this product sector - in one particularly poignant scene Sunlight lady refers to Ajax as 'that stuff', and in another pathos-filled moment Ajax chick looks a little disappointed with her choice of product. This, said the ASA, went beyond claiming a factual superiority to being disparaging.
Bit precious what! Surely a little robustness is part and parcel of advertising? What are you supposed to say - 'Your toothbrush is noticeably inferior to ours, but our respect for your product is undiminished!'
*It was the bottle that did it. In another recent ASA case involving arch rivals I & J and Sea Harvest, the ASA held that a reference by one company to Brand X was not sufficient to identify the competitor's product.
Saturday, 22 August 2009
Wednesday, 19 August 2009
I just discovered Hans's articles in the NoseWeek... buy it - great magazine!
Issue 15, 19 August 2009
AN UNWANTED ALLIANCE
Alliance Property Group’s recent failure to stop fellow property company Alliance Group from trading under the name Alliance should come as no surprise. Although it took the court a full 57 pages to do so, all it really had to say was that the name Alliance is inherently weak, there are loads of businesses out there called Alliance, and Alliance Property Group waited far too long before it tried to assert itself. So there was no way it could claim exclusivity. Not even in its own space - property (property / space, they say it’s a gift!). And just to remind you why Distinctive IP is your preferred source of IP law (and to give this some semblance of respectability), how about a short quote from the judgment, which itself comes from an earlier English judgment: ‘The plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action.’ Right!
What this case does do is reinforce what that grey-suited, grey-haired and occasionally grey-mattered attorney has been droning on about for years - you’re either distinct or extinct! Yes, I know that smooth-talking, Gap-wearing, Jack Daniels-sipping, Mini Cooper Coupe-driving ponytail from the advertising agency with the really deep name (no of course I’m not jealous!) has been telling you that a descriptive mark’s great because it tells people what you do, and it makes your initial marketing so much easier and cheaper, but you know what - you’ll forever be in an alliance with your competitors. Instead of standing out from the crowd!
Yes you may eventually get a trade mark registration when you’ve been in business for years, but even then you’ll find it difficult to enforce your rights. Consider this - our national carrier may possibly have a registration for South African Airways, but it might still struggle to stop someone else from taking to the skies as Southern Africa Airlines. My favourite local airline on the other hand, Kulula, just can’t wait for someone to try it on as Kolola. Or Mooloola! Or Luluka!
So remember boys and girls, made-up words like Kodak are good, as are dictionary words used out of context like Google for search thingies (yes I know it comes from the maths term ‘googol’, but ‘google’ does have a meaning, it means to deliver a googly, which is something you do on a cricket pitch not in a maternity ward!). Ordinary words used descriptively are poor, however, as are clichéd words like Perfection, geographical names and surnames. If that’s too much to retain, just remember this - Mortgage SA Bad, Ooba Good. The Mosabob rule.
Friday, 14 August 2009
Thursday, 13 August 2009
I was amused to find this display in the bank that had not been working for 2+ weeks.
Maybe this will inspire you to get some motivation to get involved and fix the damn thing – or just go full screen and show Barney to your clients... at those who can’t read will also enjoy laughing at your TVs!
Wednesday, 12 August 2009
Hans publishes it weekly - sign up by mailing [email protected]
Issue 15, 12 August 2009
WE DON’T DO COLOUR
It’s becoming increasingly common for companies to use the ASA as a forum for resolving what are basically trade mark disputes. And why not - the ASA Code has provisions which deal with the central issue in trade mark cases, consumer confusion. And the ASA works. And the proceedings are cheap and cheerful. And quick. (Reverse the last three sentences, and you have an accurate description of High Court proceedings).
Two recent ASA decisions, however, show that the outcome of an ASA case may not always be the same as a court case. A few months back, iBurst failed in its attempt to stop Neotel from using the colour orange in what can roughly be called the telecoms sector - in that case the ASA seemed almost appalled at the suggestion that a company can monopolise a colour. Last week, Tiger Foods - which manufactures that beverage so loved by Distinctive IP readers, King Korn sorghum beer - failed to stop a competitor from using the colour yellow. In both cases the ASA said that, although the Code does provide that a company cannot take unfair advantage of another company’s advertising goodwill or imitate its advertising, these provisions are basically aimed at protecting original intellectual or creative thought. And deciding to use a certain colour, it seems, does not require much intellect or creativity (that high-pitched scream you hear now is the sound of hundreds of extremely well-remunerated advertising gurus voicing their outrage!)
IBurst’s claim seems to have been a bit dodgy, but Tiger seems to have made out a pretty good case. Certainly the company said all the right things in its papers - it has used the colour for 45 years, no-one else in that sector used the colour until the cheeky competitor came along, the colour isn’t in any way functional or generic, many consumers of the product are illiterate and therefore very dependent on packaging, and the company enjoys a 79% market share (earth to Competition Commission, are you out there?). And, for good measure, Tiger even threw in a little bit of intention or sharp practice – the competitor apparently uses the same packaging supplier as Tiger.
Even if Tiger doesn’t have a trade mark registration for the colour, it could, methinks, have brought a fairly convincing passing off case. That’s because in a passing off case the issue would simply have been a factual one of consumer confusion, with intellect and creativity not coming into the equation at all (no that’s not a reference to the fact that the case would’ve been run by lawyers, and yes it is ironic that it’s the intellectual property law case that requires no intellect or creativity, thank you so much for your participation!)
Looks like you’re back in business, High Court judges!
Hans Muhlberg LLM MITMA
SA Attorney, UK Solicitor, UK and EU Trade Mark Attorney
Consultant to Moore Attorneys
Post: P O Box 60, The Woodlands, 2080, South Africa
Tel: + 27 (0) 83 9470 903, Fax: +27 (0) 86 616 7979 Email: [email protected]