Wednesday, 12 August 2009

Distinctive IP - WE DON'T DO COLOUR

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Issue 15, 12 August 2009

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]

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