The Advertising Standards Authority (ASA) handed down an interesting decision recently in the case of South African Breweries Ltd v Brandhouse Beverages (Pty) Ltd. Interesting because it’s a rare example of the ASA acknowledging that colour can play a trade mark or source-indicating role – the ASA has, in a number of previous cases, scoffed at the suggestion that it should protect colours, saying that the ASA Code is concerned with protecting original intellectual or creative thought rather than colour.
Having said that, this case really was a bit of a slam-dunk: SAB has been selling Castle Lite in South Africa for over 20 years; it’s been a really big seller; it was the first light beer in SA and, until recently, the only premium light beer; for many years it was one of only three light beers in SA, the others being Windhoek Light and Bavaria Light; it’s consistently been sold under the name Lite and in a colour combination of silver and green; it’s the only light beer to have used this colour combination in SA, a combination that is, in fact, very rare even in the international light beer market.
In August 2014 Amstel Lite hits the market. Despite the fact that it’s sold in a colour combination of brown, red and gold in the rest of the world, in SA it’s sold in a silver and green colour combination, with the silver being the exact shade used for Castle Lite, the green being almost the exact shade, and the colour ratios being very similar. And yes, it’s called Amstel Lite, not Amstel Light!
SAB’s complaint was in terms of Clause 8 of Section II of the ASA Code, that very broad passing off-style clause which says that a company’s advertising must not take advantage of the advertising goodwill relating to the trade name or symbol of another company. It also says that the ASA must consider the likelihood of confusion, deception and the diminution of advertising goodwill, and whether the device or concept in issue constitutes the ‘signature’ of the product, is consistently used, and is prominent in the mind of the consumer.
The ASA Directorate, referring to the previous colour red decision of Amos Glue Stick v Pritt Glue Stick, found that SAB had built up an advertising goodwill in the colour combination, together with the word Lite. This goodwill had been exploited and damaged by Amstel Lite. So the ASA ordered Brandhouse to change the packaging material. Which is as much as SAB could have hoped for had it brought a passing off case in the High Court!