Woolworths' "Good old fashioned" imitation

The Advertising Standards Authority of South Africa ("ASA") handed down a ruling on 1 February 2012 in terms of which Woolworths' use of the phrase "Good Old Fashioned" on the packaging of its new soft drinks range was found to be an imitation of Frankie's Olde Soft Drinks' phrase "Good Old Fashioned Soft Drinks".

The dispute between Frankie's Olde Soft Drink's ("Frankie's") and Woolworths' has received plenty of media attention after it erupted in December last year following Woolworths' launch of its new "Good Old Fashioned" vintage soft drink range. Frankie's alleged that Woolworths had copied its product line after it approached Woolworths about selling its product in Woolworths' stores.

It is important to point out that, in the present matter, the ASA was not called upon to decide whether Woolworths had copied and/or exploited the idea to sell soft drinks with "vintage" flavours; copied the specific flavours sold by Frankie's; copied Frankie's labels and/or bottle shapes; or is passing off its soft drink as being that of Frankie's. Although it is generally accepted that there can be no intellectual property right in an idea or concept (such as producing or selling "vintage" flavoured soft drinks, it is possible to obtain intellectual property rights in the get-up (packaging) of a product, but this issue was not in dispute before the ASA.

This ruling only dealt with whether or not Woolworths' use of the phrase "Good Old Fashioned" constituted an imitation of Frankie's existing advertisements to the extent that the phrase is recognizable and that the use thereof may result in the potential loss of advertising value.

What the ASA did find, is that Frankie's has established goodwill in the phrase "Good Old Fashioned Soft Drinks", which it has used on point-of-sale advertising material since 2006. Woolworths' argument to the effect that the term "old fashioned" and accordingly "good old fashioned" is not a crafted phrase failed, and the ASA found that the evidence, or rather the lack thereof, suggested that phrase "Good Old Fashioned Soft Drinks" is indeed crafted advertising property to which Frankie's has a proprietary right.

Woolworths has accordingly been ordered by the ASA to pull the particular products from its shelves "with immediate effect on receipt of this ruling" and told that "the packaging may not be used again in its current format in future." The ASA has accordingly ordered Woolworths to withdraw the packaging containing the "Good Old Fashioned" claim from the trade.

Although this ruling is a small victory for Frankie's, it does not mean that Woolworths may never again sell its vintage-flavoured soft drinks. Woolworths must simply remove the phrase "Good Old Fashioned" from its product packaging within a three month period.