Woolworths / Frankies / 19254 Ruling of the : ASA Directorate In the matter between: Frankies Olde Soft Drinks cc (Complainant) and Woolworths (Pty) Ltd (Respondent)

01 Feb 2012

Zeiler Jankey attorneys lodged a competitor complaint on behalf of Frankie's Olde Soft Drinks against the packaging of Woolworths' "Good Old Fashioned" soft drinks range.

The packaging contains, inter alia, the words "GOOD OLD FASHIONED".

COMPLAINT

The complainant submitted, inter alia, that it commenced using the phrase "Good Old Fashioned Soft Drinks" in 2006, and that it appeared on all its point of sale and advertising material such as posters, table talkers and fridge wobblers. At the time no soft drink company in South Africa used the advertising concept "Good Old Fashioned Soft Drinks". By 2008, the complainant's products had extended from KwaZulu-Natal to retail outlets in Johannesburg and the Western Cape. All the time, the concept of "Good Old Fashioned Soft Drinks" continued to be emphasised on point of sale material. The distribution of point of sale material (posters and table talkers) increased dramatically in 2009, and was kept consistent during the following years. 

The respondent causes manufacturers of branded products to also produce these products for sale under the Woolworths brand, and manufacturers of branded products package products for and on behalf of Woolworths. Having regard to the advertising goodwill attaching to "Good Old Fashioned Soft Drinks", it is likely that a customer who sees the same soft drink in Woolworths bearing "Good Old Fashioned" will be confused into believing that the Woolworths product has been bottled by the complainant for Woolworths.

The respondent wilfully imitated the phrase "Good Old Fashioned Soft Drinks".

RELEVANT CLAUSES OF THE CODE OF ADVERTISING PRACTICE

The complainant identified the following clauses of the Code as relevant:

• Section II, Clause 8 - Exploitation of advertising goodwill
• Section II, Clause 9 - Imitation

RESPONSE

Attorneys Adam & Adams, on behalf of Woolworths, submitted, inter alia, that the phrase "Good Old Fashioned Soft Drinks" does not appear on the packaging of the complainant's product, and is not used as a trade name or symbol.

It further submitted examples of other companies and soft drinks that make use of the theme of "vintage" sodas to show that the complainant cannot claim exclusivity or originality in the phrase "good old fashioned". It argued that it does not use the phrase in a trade mark or advertising property sense, but rather as a descriptive term to denote that the soda flavour is in fact old fashioned. Frankie's is, just as Woolworths, a follower of the vintage soda trend in the world.

The respondent submitted confidential minutes of a presentation meeting with its supplier, Chill Beverages. It also submitted a confidential Design Concept Brief that it prepared on 4 June 2011. The respondent pointed out that neither of these documents make any mention of Frankie's.

The respondent submitted the results of a trade mark search to show that no one trade mark proprietor can claim exclusive rights to use of the phrase "old fashioned" or even "good old fashioned". 

The respondent argued that the numbers of posters, table talkers and fridge wobblers distributed by the complainant are relatively small, and pointed out that there have been no television, radio or print advertisements for the complainant's products.

The respondent further argued that the distinctive features on the complainant's advertising materials are the trade name Frankie's and/or the full name Frankie's Olde Soft Drink Co. The next most discernable feature is the blonde lady image. The slogan is "The Taste of Yesteryear". The descriptor "good old fashioned soft drinks" is non-distinctive matter which describes the style of drinks.

ASA DIRECTORATE RULING

The ASA Directorate considered the relevant documentation submitted by the respective parties.

Preliminary comments

In light of the media attention that this matter has garnered, the Directorate wishes to emphasise that it was only called upon to consider whether the respondent exploited any advertising goodwill in, and/or imitated, the words "Good Old Fashioned".

The Directorate was not called upon to decide whether:

• the respondent copied/exploited the idea to sell soft drinks with "vintage" flavours;
• the respondent copied the specific flavours sold by the complainant; 
• the respondent copied the complainant's labels and/or bottle shapes.

Having clarified this, the Directorate will proceed to consider the merits of the matter.

Merits
The Directorate notes that the parties submitted several arguments and pieces of evidence that are not strictly relevant to the matter at hand. This is not in line with the requirements of Clause 5.1.1 of the Procedural Guide. The Directorate will therefore only deal with that which is strictly relevant to the complaint being considered, i.e. did the respondent exploit any advertising goodwill in, and/or imitate, the words "Good Old Fashioned"?

Clause 9 of Section II states, inter alia, that an advertiser may not imitate an existing advertisement, or any part thereof, in a manner that is recognisable or evokes the existing concept and which may result in the potential loss of 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. It further states that the following factors will be considered when deciding whether imitation took place: 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 competitive sphere will also be taken into account.

According to the complainant, it has used the phrase "Good Old Fashioned Soft Drinks" on its point of sale advertising material since 2006. The Directorate notes that the phrase is always used in quotation marks, and sometimes even appears in a speech bubble. This gives the impression that the words are attributed to the lady that appears on all the complainant's advertising. It is therefore not used merely as a descriptor of the complainant's products as the respondent suggests. 

The respondent gave examples of other companies and products that make use of the theme of "vintage" sodas to show that the complainant cannot claim exclusivity or originality in the phrase "good old fashioned". Most of the examples are from the USA, the UK, and Australia. The Directorate notes that although the concept of "vintage" sodas may not be as new in other countries, it appears to be relatively unexplored territory in South Africa. The respondent was only able to produce two examples of other companies in South Africa that make "vintage" sodas. From these two examples, there is only one instance where a soft drink is described as "old fashioned", and that is Innesense Cream Soda, which is described as "Old Fashioned Cream Soda". The difference between this example and the complainant's use of "Good Old Fashioned Soft Drinks" is that the latter phrase is consistently used on the point of sale material, regardless of which specific product is advertised. On the other hand, of the five flavours of Innesense soft drinks, it is only the cream soda that is referred to as "Old Fashioned". This use is therefore more likely to be viewed as descriptive.

It is also interesting to note that of all the international examples of "vintage" sodas submitted by the respondent, only three make use of the term "old fashioned". The one, an Australian product, says "Old Fashioned Flavour" on the label, and also has some references to the term on its website. One American product has a single reference to the term on its website. The third product, also from the USA, has "old fashioned" on the label.

This is hardly enough evidence to support the argument that the term "old fashioned" is widely used in relation to sodas, or that it is common.

Even if one were to accept that it does not take much of an intellectual leap to refer to a "vintage" product as "old fashioned", it does not, as the respondent would suggest, automatically follow that the term "good old fashioned" is similarly lacking in crafting, or that it is indistinctive. Not one example of the use of "good old fashioned" by anyone else could be produced, least of all by a producer of soft drinks. The respondent has not motivated its argument that if the term "old fashioned" is not crafted, the term "good old fashioned" is similarly not crafted. The evidence, or perhaps the lack of evidence to the contrary, appears to suggest that "Good Old Fashioned Soft Drinks" is indeed a crafted advertising property.

As for whether the respondent imitated the complainant's advertising, the evidence favours the conclusion that it did. The respondent does not deny that it imitated or copied the phrase "Good Old Fashioned" from the complainant's advertising. It merely denies that it copied "any original thought or original concept or original design or trade marks", and then argues why the phrase "Good Old Fashioned" is not original. This argument has already been dealt with above.

In Lipsano Lip Balm / Carma Laboratories / 8259 (16 Jul 2007), the Final Appeal Committee held that in considering issues relating to imitation, the question needs to be asked why the respondent adopted its particular get up. The Committee stated that this is a question to be asked and answered.

The respondent submitted confidential minutes of a presentation meeting with its supplier, Chill Beverages. It also submitted a confidential Design Concept Brief that it prepared on 4 June 2011. The respondent pointed out that neither of these documents make any mention of Frankie's.

The Directorate notes, however, that these documents do not explain where or how the respondent came up with the idea to use the phrase "Good Old Fashioned" on its product labels. These documents show that the respondent had a different phrase or phrases in mind for its packaging as late as 4 June 2011, approximately five months before it launched the packaging in dispute. It is not clear what happened in those five months. 

What is clear is that on 15 April 2011, the complainant's attorneys wrote a letter to the respondent's supplier indicating that the complainant considers the phrase "Good Old Fashioned Soft Drinks" to be its advertising property. This letter was responded to by the respondent's attorneys on 12 May 2011. What is important to note from this is that the respondent was aware, at least as early as April/May 2011, that the complainant considered the phrase "Good Old Fashioned Soft Drinks" to be its advertising property. Yet even though its design brief shows that it had a different phrase or phrases in mind for its packaging after this correspondence took place, it ended up using the phrase "Good Old Fashioned" on its packaging. No explanation for this was given.

In light of this, it appears that the only reasonable conclusion to be drawn from the evidence before the Directorate is that the respondent deliberately and intentionally copied the phrase "Good Old Fashioned" from the complainant's advertising.

Accordingly, the respondent's use of the phrase "Good Old Fashioned" is an imitation of the complainant's "Good Old Fashioned Soft Drinks", and it is therefore in breach of Clause 9 of Section II.

Given the above:

The packaging in its current format must be withdrawn;

The process to withdraw the packaging must be actioned with immediate effect on receipt of this ruling;

The withdrawal of the packaging must be completed within the deadlines stipulated by Clause 15.3 of the Procedural Guide;

The packaging may not be used again in its current format in future.

The respondent's attention is drawn to Clause 15.5 of the Procedural Guide.

The complaint is upheld.

In light of the above decision, it is not necessary for the Directorate to consider the complaint in terms of Clause 8 of Section II at this time.

Issued by the The Advertising Standards Authority of South Africa, February 1 2012

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