Articles

Frankies v Woolies: lessons for entrepreneurs

by Steve - Posted 07 February 2012

On 1 Feb 2012 the Advertising Standards Authority (ASA) ruled that Woolworths’ use of the term “Good Old Fashioned” on the packaging of its new range of vintage cool drinks was a deliberate and intentional copying of the phrase “Good Old Fashioned Soft Drinks” which Frankies had used on all its point of sale and other advertising material since 2006.

Reports in the media suggest that Frankies approached Woolworths to carry its product range in Woolworth stores before the current dispute arose. Nothing appears to have come of this and Woolworths proceeded to carry its own range of vintage sodas in December 2011.  

Before the launch of the new Woolworths’ range, Frankies got wind of the packaging and advertising material being used. Frankies sent a lawyer’s letter to the supplier contracted by Woolworths stating that it considered the phrase “Good Old Fashioned Soft Drinks” to be its advertising property.

Although it had been put on notice, Woolworths continued with the release of its new range with the phrase ‘’good old fashioned’’ being used. Woolworths maintains that it did not copy from Frankies but has decided to abide by ASA’s ruling to withdraw its current packaging that carries the phrase.

ASA relied on clause 9 of Section II of its Advertising Code, which states 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.

The factors taken into account when deciding whether imitation had taken place were:
a)    the extent of exposure;
b)    period of usage and advertising spend;
c)    whether the concept is central to the theme, distinctive or crafted as opposed to in common use; and
d)    the competitive sphere that the complainant and respondent operated in.

Woolworths’ main lines of defence were:

a)    that it had not used the phrase “Good Old Fashioned Soft Drinks” on the packaging of its vintage cool drink range. It had instead only used the phrase ‘’Good Old Fashioned’’ which was not the same;

b)    that Frankies could not claim exclusivity or originality in the phrase ‘’Good Old Fashioned’’ with regard to vintage cool drinks as the phrase was a descriptive term denoting that the drink was in fact old fashioned;

c)    that the quantity of advertising material distributed by Frankies was relatively small and no large scale television, radio or print advertisements for the Frankies range of cool drinks had been launched; and

d)    that the distinctive features of the Frankies brand was not this phrase but rather its trade name and the blonde lady image which is used on its packaging.

ASA held that the phrase, which was used in quotation marks or in a speech bubble was not used merely as a descriptor of Frankies’ products. It did its own comparative exercise to determine whether the phrase was generally linked to other vintage sodas in SA and around the world and it found that it was not.

Our R0.02:

1.    Before exposing a new idea, concept or product to potential investors, partners or suppliers, make sure you know beforehand what you need to do to protect and maintain your competitive advantage. E.g. In the Frankies case it wasn’t just the phrase ‘’Good Old Fashioned Soft Drinks’’ that had to be protected. The flavours used, the get-up of its labels and the shape of its bottles were also under threat.
 
2.    Once you know what needs to be protected, you can use a combination of common sense, caution and the correct intellectual property laws to protect you.  

3.    Copy cats will almost always deny that they have copied from you. It is important that you let them know by written notice before launching any legal action exactly what has been copied. It helps to actually provide examples of the original and the copied version so there can be no pleading ignorance later.

4.    Trade mark litigation is often expensive and time consuming. The ASA complaint route can often serve as a cheaper and quicker alternative.

5.    Jealously guard your IP even if it means standing up to bigger competitors. If you don’t, you could be diluting the competitive advantage you have worked so hard to build up.