Koo baked beans’ packaging worthy of protection, says ASA

The Advertising Standards Authority of South Africa (ASA) has ordered Emirates Industries to withdraw the packaging of its Mister Bean baked beans product on the grounds that it exploited the advertising goodwill, and imitated the packaging of, Tiger Food Brands Intellectual Property Holding Company (Pty) Ltd's Koo baked beans (December 17 2008).

In its complaint, Tiger submitted that certain features of the packaging of its Koo baked beans had been crafted specifically for the product and had, over nearly 70 years of use, become the signature of the product. These features distinguished the product from competing products on the market.

The features in question included:

• the yellow oval shape bearing the trademark KOO, which appears against a dark background on the upper half of the can; and
• the photograph of baked beans in tomato sauce which appears on the lower half of the can beneath a straight yellow line.

In support of its contention that significant advertising goodwill subsisted in these features of the Koo baked beans, Tiger submitted evidence relating to, among other things:

• the advertising expenditure and sales performance of the product;
• the product’s status as market leader in the baked beans market in South Africa; and
• the rating of the product as second-favourite brand 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.

Considering the similarities between the packaging of its Koo baked beans and Emirates’s Mister Bean baked beans, Tiger submitted that the only conclusion to be drawn was that Emirates sought to leverage off the advertising goodwill enjoyed by Koo baked beans by imitating the packaging of the product.

In response, Emirates denied that its packaging was designed with the intention of copying Tiger's packaging and submitted that the yellow and blue colouring used on the packaging was selected for the contrast that it provides. Emirates also submitted that, apart from the different brands names of the products, there were clear differences between the packaging, such as:

• the use of a bean shape in which the brand name appears, as opposed to the oval shape used by Tiger; and
• the difference in background colour and shading of the respective product packaging.

On the evidence placed before it, the ASA accepted that goodwill subsisted in the KOO mark. However, as the complaint related to the packaging of Tiger’s product and not the brand name as such, the first issue for determination was whether goodwill subsisted in the packaging. Whether this was the case was dependent on whether the packaging constituted “original intellectual thought” which was “crafted” in a manner which sets the product apart from its competitors “to such an extent that its packaging becomes a unique and recognizable concept”. Having considered the packaging used by competing baked bean products on the market, as well as previous ASA rulings to the effect that colour combinations and combinations of features on packaging can amount to original intellectual thought, the ASA found that the unique combination of features used by Tiger constituted “crafting of a generic concept” and that the packaging as a whole was original intellectual thought.

The ASA went on to consider whether:

• Emirates had imitated Tiger’s packaging in a manner that clearly evoked the Koo baked beans product; and/or
• Emirates had exploited Tiger’s goodwill for commercial gain.

Upon examination of the respective product packaging, the ASA concluded that the similarities between the packaging were striking and appeared to be unique to the products concerned. The minor differences in Emirates's packaging did not negate these similarities. In the circumstances, the ASA ruled that Emirates's packaging:

• was an imitation of Tiger’s packaging;
• was likely to evoke that packaging; and
• appeared to exploit the advertising goodwill therein.

Lauren Frizelle, Spoor & Fisher, Pretoria