Glue stick decision stretches ASA Code's established principles

South Africa
In Henkel AG & Co KGaA v Trefoil Manufacturing (Pty) Ltd (August 31 2010), the Final Appeal Committee of the Advertising Standards Authority of South Africa (ASA) has issued a decision protecting the get-up of the Pritt glue stick.
Henkel AG & Co KGaA is the proprietor of the Pritt glue stick:

Henkel’s Pritt glue, which was invented in 1969, was apparently the first solid adhesive to be sold in a twist or push-up tube. Since then, 2.4 billion Pritt glue sticks have been sold worldwide, making it the market leader in many countries.
Trefoil Manufacturing (Pty) Ltd is the proprietor of the Amos glue stick: 
Henkel submitted a complaint to the ASA against Trefoil, claiming that the colour red:

  • had become distinctive of its Pritt glue stick;
  • was exclusively associated with Pritt glue by the public; and
  • was in fact a 'signature' of the product. 
Henkel claimed that Trefoil’s use of the colour red on its Amos glue stick and promotional materials amounted to an imitation of Henkel’s advertising and exploited its advertising goodwill in the colour red. This amounted to a contravention of the ASA Code.
The argument is an interesting one. Historically, the ASA has found consistently that a colour, as used in product packaging, cannot acquire a protectable goodwill. A colour cannot be a crafted or creative concept, and cannot be protected as one in isolation from the other elements which make up a product’s packaging. Consequently, while Henkel may have had an argument to make based on passing off (provided that it could meet the other tests for passing off), it seemed unlikely that it would have a case in terms of the ASA Code.
Trefoil pointed this out in its arguments and also led evidence of the use by other glue manufacturers of the colour red:
Both the ASA Directorate and, on appeal, the ASA Tribunal, ruled in favour of Trefoil on this aspect, holding that a colour is not a protectable advertising concept in terms of the application of the ASA Code and cannot, on its own, constitute original and intellectual thought.
In particular, it was found that, because Henkel always uses the colour red in combination with the name Pritt, because the product always has a black base and because much of the advertising material features a character called Mr Pritt, the advertising goodwill resided in the combination of all of these elements. There was no evidence to suggest that consumers separated the colour red from the other elements and that they identified the Henkel glue stick by the colour red alone. In the circumstances, the colour red could not be found to be a 'signature' of the product.
Henkel appealed to the Final Appeal Committee of the ASA. The committee emphasised that the purpose of the particular clauses of the ASA Code which Henkel was relying on was:
“to protect crafted, creative concepts and ideas which have found expression in a particular advertisement. It is the element of original or intellectual or creative thought behind an advertisement which is the property that is protectable”

Only in very exceptional circumstances could the committee come to a conclusion that the adoption and use of a single colour is a creative advertising concept which will result in advertising goodwill.
The committee then ruled in favour of Henkel. It did not, however, rule that the colour red qualified, in these circumstances, as a creative advertising concept. Rather, it found that Henkel’s red tubular packaging, with a character on it, qualified as protectable advertising concept. The committee then found, based on various trademark and passing off principles, that confusion between the two products was likely. The committee stated that:

  • the products were both aimed at children and were displayed on the same shelves; and
  • the shape and size of the products, the red stick and the red tubular packaging, as well as the characters on the tubes, would most likely all lead to confusion. 
The committee also questioned why Trefoil had not explained why it had changed the colour of its packaging from green and yellow to red in the past two years. The previous packaging is shown below:
Finally, the committee reached the conclusion that Trefoil had changed its packaging with the intention to filch the goodwill created by Henkel and had intentionally imitated Henkel’s product. The committee thus ruled that Trefoil was in breach of the ASA Code.
Arguably, the committee stretched the established principles of the ASA Code to reach its preferred decision. It is a stretch to hold that the protectable get-up of the Pritt packaging is in the combination of the colour red of the tubular packaging and a character appearing on the tube. Implicitly, it is the colour red that was in fact being protected by the committee. In reality, while Pritt’s red colour may have been entitled to protection under the laws of passing off or under trademark principles, this did not turn it into a protectable, crafted concept in terms of the ASA Code.
In any event, it seems that the position before the ASA has not changed - it remains difficult for any party to obtain protection of a single colour in terms of the ASA Code.
Megan Reimers, Spoor & Fisher, Pretoria

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