The popularity of the Advertising Standards Authority as an alternative forum for what are essentially trade-mark and unlawful competition disputes is growing steadily. This is understandable from a practitioner’s point of view – it is much quicker, much less expensive, and tedious legal formalities can be dispensed with. From a more general perspective, two issues stand out.
The first is that the decrease in trade-mark litigation results in fewer decisions which could be valuable future precedents (understandably, this is not a point to run past a client when discussing which route to take).
The second is more important for all concerned – the possible conflation of legal precepts with a non-binding code of practice. A perfect illustration of this is the recent Henkel AG v Trefoil Manufacturing (Pty) Ltd ruling by the ASA final appeal committee (available here).
Trefoil has marketed a glue stick for about ten years, first in a green/yellow colourway, but for the past two years in a red colour. According to the ruling, this is not the only similarity between the two glue sticks. The general get-up is similar, as both have similar packaging, are the same shape and size and contain characters (Mr Pritt? and an equivalent). Paragraph 9 of the ruling identifies three prominent visual features; the red cap, the red tubular packaging and a character. Paragraph 13 also refers to intentional copying of ‘in-store point of sale pillar boxes’. The committee was clearly correct in finding that clauses 8.1 Exploitation (advertisements may not take advantage of the advertising goodwill relating to the trade name or symbol of the product or service of another … ) and 9.1 Imitation (an advertiser should not copy an existing advertisement, local or international, or any part thereof in a manner that is recognisable or clearly evokes the existing concept and which may result in the likely loss of potential advertising value…) of the ASA code had been breached.