"Advertising Standards Authority of South Africa - Protecting Your Standards

Knorr / Royco / 10646
Ruling of the : ASA Appeal Committee
In the matter between:
Unilever South Africa (Pty) Limited	Complainant(s)/Appellant(s)
Mars Consumer Products (Pty) Limited	Respondent

02 Apr 2009

The Appellant appealed to this Committee against the whole of the ruling of the Advertising Industry Tribunal (AIT) dated 17 December 2008, in which the AIT, on appeal from a ruling of the Directorate, found that the Appellant was in breach of clause 8 of Section II of the Code, but found it unnecessary to consider whether the Appellant had been in breach of clause 9 of Section II of the Code, which had also been alleged by the Respondent.

In response to the notice of appeal, the Respondent confirmed that it had not abandoned its complaint in regard to an alleged breach of clause 9 of the Code. Both parties proceeded to argue the matter before this Committee on the basis that the Committee was vested with jurisdiction to consider clauses 8 and 9, notwithstanding that the AIT had made no ruling in regard to clause 9 of the Code. Consequently, argument was addressed on both issues and both issues were considered by this Committee.

Clause 9 of Section II of the Code dealing with imitation provides as follows :

“9.1 An advertiser should not copy an existing advertisement, local or international, or any part thereof 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 will apply notwithstanding the fact that there is no likelihood of confusion or deception or that the existing concept has not been generally exposed …. In considering whether or not an infringement has taken place consideration will be given to, inter alia, 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. Furthermore, the competitive sphere will also be taken into account.”

Clause 8 deals with taking advantage of the advertising goodwill of another advertiser and it provides as follows :

“8.1 Advertisements may not take advantage of the advertising goodwill relating to the trade name or symbol of the product or service of another, or advertising goodwill relating to another party’s advertising campaign or advertising property, unless the prior written permission of the proprietor of the advertising goodwill has been obtained.
“Such permission shall not be considered to be a waiver of the provisions of other clauses of the Code.
”8.2 … In considering matters raised under this clause consideration will be given to inter alia, the likelihood of confusion, deception and the diminution of advertising goodwill. Furthermore, whether the device or concept constitutes ‘the signature’ of the product or service, is consistently used, expended throughout media and is prominent in the mind of the consumer.”

In regard to clause 9, this Committee has held that clause 9 seeks to protect an advertiser against the conscious copying of original intellectual thought. It is not sufficient for an advertisement to contain coincidental similarities (see National Brands Limited v Quality Biscuits Limited 20 June 2003 and Uthingo Management v Nando’s 7 November 2001).

The issues before this Committee were therefore whether there was imitation by the Appellant of the Respondent’s television commercial and whether the Respondent has advertising goodwill arising out of its television commercial which falls to be protected under clause 8.

The central question in the appeal is whether the Appellant was entitled to advertise one of its ready-made meal products using a television commercial which relied on a thought bubble device to communicate a solution or inspiration to the question of what to cook for dinner, when the Respondent had already developed and used that concept to advertise one of its own ready-made meal offerings.

The Respondent submitted a complaint to the ASA on 13 February 2008 against the Appellant’s “Fresh Ideas” television commercial (TVC) on the basis that it exploited the Respondent’s advertising goodwill and that it imitated its existing “Meal Inspiration” TVC. The Directorate dismissed these complaints on 9 April 2008, but the AIT, on 17 December 2008, upheld the Respondent’s appeal that the “Fresh Ideas” TVC exploited the Respondent’s advertising goodwill in breach in clause 8 of the ASA Code. It made no finding on imitation.

The facts established on the papers were that the Respondent’s “Meal Inspiration” TVC, which used thought bubbles to illustrate meal inspirations through interaction with the product offering, was first aired on 9 May 2007. This TVC was developed as part of the Respondent’s communication platform, which was introduced in 2003. The pay-off line, “Your meal inspiration”, was introduced in 2006 and the thought bubble was added in 2007.

The Appellant introduced its “What’s for dinner?” communication platform in 2007. It first used a thought bubble through the device of plates in its “Fresh Ideas” TVC on 4 February 2008 to communicate the idea of “how to answer the vexed question of ‘what’s for dinner’?” by the consumer by showing an empty plate and the options of what to deliver at mealtime by suggesting the alternatives available from the Appellant’s Knorr range.

The Appellant and the Respondent are the two major key offerings in the food enhancing category and sell alternatives to each other’s product offerings in 22 out of 26 product categories.

The essential elements of the two commercials are as follows :

The Respondent’s advertisement consists of a woman with the empty thought bubble above her head, which illustrates the problem of the meal to be provided. Secondly, there is the interaction with the product, which provides a solution or inspiration and then the meal inside the thought bubble, which illustrates the solution.
In the Appellant’s commercial, the empty bubble device is depicted as a dinner plate, illustrating the problem of what to have for dinner. Secondly, the woman, who appears to be a mother in the commercial, is seen interacting with the Appellant’s product, which provides the solution and the meal is illustrated inside the thought bubble in its packaging, rather than as a finished product.

The AIT held, and we agree, that the idea and the message communicated through its invocation of the thought plate, are virtually identical to that already invoked by the Respondent through the use of the thought bubble. Both were intended to and in fact serve to illustrate the idea of meal inspiration. Nor, in our view, is the fact that in the Appellant’s TVC, the pack is shown (as opposed to a meal) of any moment.

While the thought bubble itself is a generic and does not constitute original intellectual thought, the use of the thought bubble to illustrate the aforesaid problem and providing the inspiration with an illustration of the solution, amounts to original intellectual thought. This Committee recently held that the use of a balloon in the advertising of nappies was a generic, but using the balloon to illustrate the contraction and expansion of a baby’s tummy in the context of advertising a nappy, was original intellectual thought. Similarly, in this case, the generic combined with the aforesaid factors, amounts to original intellectual thought.

For there to be a breach of clause 9, however, there has to be a conscious copying of the original intellectual thought. In this regard, the Appellant filed an affidavit by one John Russo, which had not been filed before the Directorate or the AIT. In it, he describes that the Appellant’s commercial is of international origin, something that had not previously been mentioned by the Appellant. According to Russo’s affidavit, the Appellant’s commercial was developed in New York. Mr Morley SC, who appeared for the Appellant, said that the commercial was filmed in Cape Town. Miss Goodman, on behalf of the Respondent, submitted that the inference from the request by the Appellant addressed to the President of the ASA to suspend the AIT ruling, dated 24 December 2008, that the “development of thought plates TVC to be pulled from the air would cost R1,5 million” indicates that the TVC was developed in South Africa, solely for South Africa at a Rand based cost. Miss Goodman went on to submit that the request for suspension was misleading or the Committee was itself being misled.

We have concluded that there is not sufficient evidence to entitle us to go behind the oath of Mr Russo. We have consequently concluded that the Respondent failed to establish a breach of clause 9 of the Code as it failed to establish conscious copying.

In regard to the alleged exploitation of advertising goodwill, a complainant must establish goodwill in its products, distinctiveness in its advertising and that the reasonable consumer is likely to be confused or misled by the advertisement viewed as a whole. The factors that are listed in clause 8 are relevant to determining whether a breach of the clause has been established, but are not decisive. We have concluded that the AIT was correct in its finding that the Respondent’s brand enjoyed substantial goodwill. This is evident inter alia from its share of the product category in which the Appellant is its competitor.

While Mr Morley was critical of the evidence about the consistent use by the Respondent of its “Meal Inspiration” concept, the evidence establishes that the thought bubble/problem-solution concept was distinctive. It had been conceived as part of the larger “Hungry for new ideas” communication platform and was flighted over an extended period of time. There were 304 flightings of the Respondent’s TVC between May and November 2008. These flightings were done during popular programming with high ad reach. It was also flighted across a number of stations. Its share of use is sufficient in our view to warrant the conclusion that the concept must have become recognised by a substantial section of reasonable viewers as distinctive of the Respondent’s product.

The two commercials under consideration are strikingly similar. The products are those of two competitors in the same market, with an appeal to the consumer to use the parties’ sauces as a matter of convenience for a meal solution. Consequently, we have concluded that there is a likelihood of confusion by the hypothetical reasonable viewer in regard to these two commercials.

We concur with the AIT that the Respondent has advertising goodwill relating to the TVC and that the Appellant breached clause 8 of the Code by taking advantage of that goodwill.

Miss Goodman asked for attorney and client costs on the basis that the Appellant was attempting to mislead in regard to its request for suspension of the AIT ruling, but we make no finding in that regard. On the question of costs, we have concluded that both parties have had a measure of success and that consequently an apportionment on costs would be equitable.

We make the following order :

The Appellant’s “Fresh Ideas” TVC in its current format is to be withdrawn.
The Appellant is to pay half of the Respondent’s taxed costs, as if the matter had been heard in the High Court as between party and party.