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.

Clause 9 of the code provides that an advertiser should not copy an existing advertisement or any part thereof in a manner that is recognizable or clearly evokes the existing concept and which may result in the likely loss of potential advertising value. This will apply notwithstanding the fact that there is no likelihood of confusion or deception or that the existing concept has not been generally exposed.

The ASA ruled that Clause 9, in essence, protects against the copying of “original intellectual thought”. Consequently, it needed to establish whether the Aunt Caroline image constitutes “original intellectual thought”.

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.

With regard to the question of similarity or imitation, the ASA emphasized that in disputes such as these, the onus is on the respondent to prove how its advertising concept came to be. In the absence of such proof, it is proper to draw an inference from what has not been said. In the present case, Jadwats had failed to explain why it had used an image which was so similar to Tiger's well-known image. In its response to the objection, Jadwats had submitted that it would amend its packaging by changing the colour orange to the colour yellow and removing the utensils in the image. However, the ASA ruled that this would not address Tiger’s main concern, which was the use of an image similar to its Aunt Caroline image.

In the circumstances, the ASA ruled that it was satisfied that Jadwats had imitated the packaging of the Aunt Caroline rice product to an extent likely to result in a loss of advertising value. The fact that Jadwats appeared to trade only in a small market was not held to have a significant impact.

Megan Reimers, Spoor & Fisher, Pretoria

Aunt Caroline image is protectable, says ASA

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