Aunt Caroline image is protectable, says ASA
In Tiger Food Brands Intellectual Property Holding Company (Pty) Ltd v Jadwats Wholesalers (Pty) Ltd (October 16 2008), the Advertising Standards Authority (ASA) has ruled that the Aunt Caroline image on Tiger Food Brands Intellectual Property Holding Company (Pty) Ltd's Aunt Caroline rice product was worthy of protection.
Tiger filed a complaint before the ASA against Jadwats Wholesalers (Pty) Ltd's Golden Magic product. While the marks AUNT CAROLINE and GOLDEN MAGIC are clearly distinguishable, Tiger complained that the image of a smiling spectacled lady with white hair on the packaging of Golden Magic was too close to its well-known Aunt Caroline image.
The complaint was lodged in terms of Clauses 8 (exploitation of advertising goodwill) and 9 (limitation) of the ASA Advertising Code. The ASA ruled that the Golden Magic packaging contravened Clause 9 of the code and did not consider the question of whether Clause 8 was also contravened.
The ASA examined evidence to the effect that:
- the Aunt Caroline image has been used in South Africa for approximately 40 years;
- it was specifically designed and crafted for Tiger's Aunt Caroline product;
- it enjoys a considerable market share in South Africa; and
- it was rated eighth 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.
The ASA also examined advertising expenditure and sales figures. Based on this evidence, it ruled that the Aunt Caroline image:
- constituted “original intellectual thought”;
- was central to the theme of the advertisement; and
- was distinctive and crafted.
According to the ASA, it is not only a product’s brand name which distinguishes a product; other elements, such as the Aunt Caroline image in this case, can also act as distinguishing features.
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