By Megan Reimers partner at Intellectual Property law firm Spoor & Fisher
The Advertising Standards Authority (“ASA”) has ruled that retailer Woolworths must stop using the phrase GOOD OLD FASHIONED as it imitates beverage manufacturer’s “GOOD OLD FASHIONED SOFT DRINKS” advertising slogan.
In 2006, beverage manufacturer Frankie’s Olde Soft Drinks (“Frankies”) launched its FRANKIES range of drinks, as illustrated below:
The range was based on “vintage” flavouring, which was emphasised in all promotional material through the use of the slogan “GOOD OLD FASHIONED”. The slogan appeared on all point of sale and advertising material, such as posters, table talkers and fridge wobblers but did not appear on the product packaging itself.
In 2011, Woolworths, a prominent South African retailer, launched a range of drinks bearing the phrase “GOOD OLD FASHIONED”, as shown below:
Frankies lodged a complaint before the ASA in terms of clauses 8 and 9 of the ASA Code, in effect claiming that the GOOD OLD FASHIONED slogan is its advertising property and that Woolworths was copying it and exploiting the advertising goodwill which it had built up in the slogan.
Woolworths submitted that Frankies was not using the slogan GOOD OLD FASHIONED SOFT DRINKS as a trade name or symbol as it did not appear on the packaging of its product. It claimed that it itself was not using the phrase in a trade mark or advertising sense but rather as a descriptive term to connote an old fashioned flavouring. Woolworths argued that the phrases OLD FASHIONED or GOOD OLD FASHIONED are descriptive and don’t qualify as advertising property.
In its ruling, the ASA Directorate emphasised that it had only been called upon to consider whether Woolworths had exploited any advertising goodwill in and/or imitated the slogan GOOD OLD FASHIONED. The ASA had not been called upon to consider other aspects – such as whether or not the Frankies products’ labels and/or bottle shapes had been copied.
The Directorate first considered the question of whether the slogan GOOD OLD FASHIONED constituted an advertisement and whether, if so, this slogan had been copied by Woolworths. As it ultimately found that Woolworths had in fact imitated the Frankie’s slogan, it did not deem it necessary to consider the issue of exploitation of advertising goodwill.
In determining whether or not Woolworths had imitated Frankie’s slogan within the context of the ASA Code, the Directorate concluded that Frankies was in fact using the slogan GOOD OLD FASHIONED in a trade mark or advertising property sense and not descriptively. The phrase always appears in quotation marks or in a speech bubble, which gives the impression that the words are attributed to the lady appearing on all of the Frankie’s advertising. An example of the Frankies’ promotional material is shown below:
Woolworths did not show that the phrases OLD FASHIONED or GOOD OLD FASHIONED are commonly used by other beverage manufacturers in South Africa and are not original to Frankies. Woolworths did give examples of companies and products which allude to the theme of “vintage” sodas but most of these examples are international products and even these don’t necessarily support Woolworths’ argument that the phrase is widely used. The one South African entity which uses the phrase “OLD FASHIONED CREAM SODA” does so differently from Frankies and uses the phrase in a much more obviously descriptive manner. The Directorate concluded that the phrase GOOD OLD FASHIONED SOFT DRINKS is indeed a crafted advertising property.
In turning to the question of whether Woolworths in fact imitated the Frankie’s advertising, the Directorate pointed out that Woolworths did not deny that it had copied the Frankie’s advertising but only denied that the phrase GOOD OLD FASHIONED was original and worthy of protection. Woolworths did not explain how it had come up with the idea of using the phrase GOOD OLD FASHIONED on its product labels. Despite being aware of Frankie’s claimed rights in the slogan GOOD OLD FASHIONED, (Frankies had notified Woolworths in writing that it considered the slogan to be its advertising property) Woolworths still went ahead and used the phrase GOOD OLD FASHIONED on its packaging. Woolworths offered no explanation for its choice to the Directorate.
The Directorate concluded that the only reasonable inference was that Woolworths had deliberately and intentionally copied the phrase GOOD OLD FASHIONED from Frankie’s advertising. In the circumstances, Woolworths was required to withdraw the packaging in its current form.
Interestingly, Woolworths has, as a result of the widespread press coverage on this challenge by Frankie’s, announced that it would withdraw the product altogether.