“Tiger Brands submitted that certain features of the packaging of its Koo Baked Beans, as apart from the well-known Koo brand, had been crafted specifically for the product, and had, over nearly 70 years of use, become the signature of the product,” says Lauren Frizelle, an intellectual property law specialist at Spoor & Fisher. “These features distinguished the product from competing goods on the market; it was these features which Emirates Industries was imitating in the packaging of Mister Bean Baked Beans.”
The features in question include the yellow oval shape bearing the trademark Koo which appears against a dark background on the upper half of the can, and the photograph of baked beans in tomato sauce which appears on the lower half of the can beneath a straight yellow line. Together, these constitute the trade dress of the product - its visual appearance and packaging.
Contending that enormous advertising goodwill subsists in these signature features of its Koo Baked Beans, Tiger Brands submitted evidence relating to the advertising expenditure and sales performance of the product; the product's status as market leader in the baked beans market in South Africa; and the rating of the product as second favourite brand in the category for “Brands of food kept in the pantry or on the shelf” in the 2006/2007 Markinor Sunday Times Top Brands Survey.
Considering the similarities between the packaging of the two products, Tiger Brands said the only conclusion to be drawn was that Emirates had sought to take advantage of the advertising goodwill enjoyed by Koo Baked Beans, by imitating the packaging of the product.
Emirates denied this and submitted that the yellow and blue colouring used on the packaging was selected for the contrast it provides. Emirates also submitted that, apart from the different brand names of the products, there were clear differences between the packaging, such as the use of a bean shape in which the brand name appears as opposed to the oval shape used by Tiger Brands and the difference in background colour and shading.
The ASA accepted that goodwill subsists in the Koo brand, says Frizelle. “What is important to note, however, is that the complaint related to the packaging of Tiger Brands' product and not the brand name. The ASA therefore had to determine whether goodwill subsisted in the packaging.”
This was dependent on whether or not the packaging constituted “original intellectual thought” which was “crafted” in a manner which sets the product apart from its competitors “to such an extent that its packaging becomes a unique and recognisable concept”.
Having considered the packaging used by competing baked bean products on the market, as well as previous ASA rulings to the effect that colour combinations and combinations of features on packaging can indeed amount to original intellectual thought, the Directorate found that the unique combination of features used by Tiger constituted “crafting of a generic concept”, and the packaging as a whole was original intellectual thought.
The Directorate went on to consider whether Emirates had imitated Tiger Brands' packaging in a manner that clearly evokes the Koo Baked Beans product, and whether the company had exploited Tiger Brands' goodwill for commercial gain.
“The ASA examined the packaging for both products and concluded that the similarities were striking, and appeared to be unique to the products concerned, with the differences being minor,” says Frizelle. “It found that Emirates' packaging imitated that of Tiger Brands' product, was likely to evoke that packaging, and appeared to exploit the advertising goodwill inherent in the product.”
