In this case, we discuss a recent finding of the South African Advertising Regulatory Board ("ARB").
The facts
In South Africa, there is a mayonnaise that is very well-known, namely Hellmann's. South Africans know this name, and they know just what the product looks like. The product is depicted below
In 2023, Hellmann's discontinued the Hellmann's product due to high importation costs. However, due to consumer demand for the product, it was reintroduced in the market during May/June 2023. When the product was reintroduced by Hellmann's, it made a slight change to its packaging, as depicted below:
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The competitor
Hellmann's became aware that a competitor, Epic Foods (Pty) Ltd, was selling a mayonnaise product called Bellisima under an arguably similar get-up. Here are the two products side-by-side.
*Image taken from ARB ruling
Hellmann's took the matter to the Advertising Regulatory Board (the ARB).
Submissions
Hellmann's made a number of submissions to the ARB:
- Trade dress: Hellmann's has 'distinctive packaging', namely a container with a blue lid and a label that features numerous design elements, which combined make up the product's trade dress and/or get-up.
- Extensive use: The trade dress has been used in South Africa on a very significant scale and over a considerable period of time. It has acquired a significant reputation and goodwill.
- Look and feel: Consumers have come to know Hellmann's mayonnaise, based on the 'look-and-feel' of the packaging. The product packaging has developed to the extent that consumers associate the get-up with the Hellmann's product.
- Guarantee of origin: The get-up has become a guarantee of the origin of the Hellmann's product. The reputation and goodwill in the trade dress constitute common law rights and an advertisement in its own right.
The ARB's ruling
The relevant clauses of the ARB Code in this matter are those dealing with goodwill and imitation.
Goodwill - Clause 8
The ARB made the following points:
Advertising goodwill: The ARB said that its'first consideration is whether advertising goodwill subsists in the Complainant's advertising concept, in this case its packaging' . It went on to say that it was 'convinced that goodwill exists in the packaging, both internationally and in South Africa. Such goodwill is in the combination of elements.'
The nature of goodwill: The ARB pointed out that in a previous case involving Securex and Protex the following was said:
'various aspects of packaging which may individually be considered merely descriptive or unprotectable, when combined in a particular or unique way can become protectable advertising concepts...these can acquire advertising goodwill. If this were not the case, then distinctive packaging, which is almost always made up of separate non-distinctive elements, would never be protectable as advertising.'
The 'secret sauce': The ARB went on to say referring to the Final Appeals Committee ruling in Securex and Protex:
'If the pioneer succeeds in capturing a lion's share of the market, their strategies become the winning formula of the category or as some call it, the secret sauce. This secret sauce is made up of individual ingredients which... are mixed to form a distinctive recipe which results in a successful secret sauce, this secret sauce enjoys protection both by intellectual property law as well as the Code.'
Defences: The ARB indicated that "What can act as a defence in a situation like this is that the elements that are used are in fact common to the market". Having considered this, and after conducting its own due diligence investigation into the state of the marketplace, the ARB came to the conclusion that "The Directorate is satisfied that the packaging currently before it is not commonly used commercially and it can therefore be monopolised by a single brand owner, the Complainant, in the mayonnaise category. The Directorate believes that the packaging is the "signature" of the product".
Confusing similarity: Having considered whether the respective packaging is confusingly similar and the ARB stated that packaging is "startlingly similar" and that the use of the Bellisima packaging would lead to consumer confusion.
Imitation - Clause 9
The ARB went through this step-by-step:
Imitation: Clause 9 of Section II says this - 'an advertiser should not copy an existing advertisement...in a manner that is recognisable or clearly evokes the existing concept and which may result in the likely loss of potential advertising value.' This applies even where 'there is no likelihood of confusion or deception.'
Extent of use: A tribunal charged with deciding if there has been infringement must consider 'the extent of exposure, period of usage and advertising spend, whether the concept is central to the theme, distinctive or crafted as opposed to in common use'.
The test is 'whether the advertiser's product copies an existing advertisement or any part thereof in a manner which is clearly recognisable.'
Evoking an existing concept: The 'many similarities' between the two products 'amount to a clear case of evoking an existing advertising concept'.
Distinctive get-up: The packaging of Hellmann's 'stands out in the mayonnaise category and is not at all commonplace or in common use...it's 'distinctive get-up is unique in the category'.
Clear copying: It is 'completely impossible that the Advertiser in this matter came to the Bellisima packaging independently, and without knowledge of the Hellmann's packaging...(there was)... a clear and undefendable attempt to imitate the Hellmann's packaging... this is against the very essence of Clause 9 of Section II.'
Timeframes: The ARB pointed out that "It is also important to note that Clause 9 applies for a period of 2 years from the date of last use of the advertising in question. For the sake of completion, it is therefore important to note that the advertising concept exists in both the prior packaging as well as the current packaging".
Egregious: The Directorate described this case as 'a particularly egregious example of imitation and exploitation of advertising goodwill'
The ruling of the ARB is another important reminder to brand owners that look-a-like products can, and should, be addressed based on the reputation in product packaging separately from the brand name of a product.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
