Sweet victory for Master Foods in packaging row

South Africa

In Master Foods (Pty) Ltd v Tiger Brands (Pty) Ltd (Case 1581, February 17 2005), the Advertising Standards Authority (ASA) has held that the packaging of the respondent's range of sweets called Indulgent Sparkles was an imitation of the complainant's packaging for its Streamers range of confectionery and exploited the goodwill of the Streamers product.

The Streamers range was reintroduced on to the South African market by Master Foods (Pty) Ltd, a local division of Mars Incorporated, in July 2003. Streamers sweets are aimed at consumers with a more discerning taste. Some of the flavours include Irish coffee, lemon meringue, strawberries and cream, chocolate mint and butterscotch.

Beacon Sweets, a division of the respondent Tiger Brands (Pty) Ltd, is the force behind the popular Sparkles brand in South Africa. It re-launched its Sparkles range in June 2004 with the addition of Indulgent Sparkles through the same distribution channels as the Streamers products. Beacon's various flavours in its new range include strawberries and cream, chocolate mint, chocolate mousse and Peach Melba.

Master Foods lodged a complaint with the ASA that the Indulgent Sparkles packaging was an imitation of that used for its Streamers product. An ASA tribunal compared the two sets of packaging and listed the following features that were common to both:

Streamers
Indulgent Sparkles
Blue colour background fading from the edges to the centre Purple colour background fading from the edges to the centre
STREAMERS trademark in white across the top of the packaging INDULGENT SPARKLES trademark in white across the top of the packaging
Flavour description horizontally centred beneath the trademark Flavour description horizontally centred beneath the trademark
Lower right-hand side of the package featuring a representation of the type of confectionery relating to the flavour Lower right-hand corner of the packaging featuring a representation of the type of confectionery relating to the flavour
Lower left-hand side of the packaging depicting a cluster of sweets (usually three) whole and open indicating the flavour Left-hand corner of the packaging depicting a cluster of sweets whole and open indicating the flavour

The tribunal takes guidance from the Code of Advertising Practice, which deals specifically with exploitation of names or goodwill, and imitation in advertising. Packaging is regarded as a form of advertising as it includes advertising claims. The tribunal stated that the issues to be determined were whether (i) Tiger Brands through its packaging took advantage of the goodwill acquired by Master Foods' product having regard to the possibility of a likelihood of confusion or deception, and (ii) the copying by Tiger Brands of an existing advertisement (ie, the packaging of the Streamers product) or part of it was in a manner that clearly evoked an existing concept and which resulted in Master Foods losing potential advertising value.

The tribunal rejected Tiger Brands' defence that although there were similarities between the two sets of packaging, these features were not distinctive to Master Foods and were in common use in the trade sector. The tribunal held that the features for comparison could not be taken in isolation. Rather, the two parties' packages had to be assessed in their entirety. On this basis, the packages for Streamers and Indulgent Sparkles were strikingly similar. It held that the average consumer looking at these products on a packed shelf would not be able to make a distinction between the two products, irrespective of the differences in the flavours and depiction of the confectionery on the packaging. It concluded that Tiger Brands directly copied Master Foods' concept, which it had invested time and money in creating, and in so doing misappropriated and wrongfully capitalized on the goodwill already established by Master Foods.

Accordingly, it ordered Tiger Brands to withdraw its packaging within three months from the date of the ruling.

Shamin Raghunandan, Spoor & Fisher, Centurion

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