Trade Marks, Passing Off, Advertsiging Goodwill – Those Are Not My Concern... Or Are They?
So you have landed that major account and once the celebrations are over, it’s time to get down and actually realise the client’s advertising campaign. You are, after all, the expert so it should come naturally.
What may not come so naturally however, is considering the legal issues which surround advertising campaigns, and which could make or break the entire campaign, cost your client’s hundreds of thousands of Rands and lose that account for you.
Now, selling an argument entirely on fear should be left to the insurance companies. Hence, one would be remiss to not note that, whilst there are many possible negative ramifications, there are also numerous professional positive implications in regarding the legalities.
1. Creating The Advertising Concept:
Once you are through brainstorming and have settled on a concept, you should ensure that the concept has not been borrowed from someone else. Ask the hard question – how did you come up with that? Very few ideas are truly unique, but so long as the concept cannot be attributed to one single campaign (in South Africa), it is not likely to be a problem. It is advisable to record how and when the concept was developed.
If it is found that the concept has already been used by another (and it is unique to the South African market) copying of that concept could be taking advantage of the other party’s advertising goodwill, in terms of the Advertising Standards Authority (ASA) code.
The argument that the concept is used by another advertiser but in relation to a different industry holds little significance. The ASA Directorate found, in January 2009, that Audi SA’s advertising took advantage of Bidvest’s advertising goodwill. The ASA Directorate held that the concept of using human bodies to create shapes through acrobatic movements was unique in South Africa, and ordered that Audi SA immediately withdraw its advertising campaign which also used human bodies to form shapes through acrobatic movements.
The execution of the parties’ advertisements did differ, however the ASA Directorate found that those differences were not so significant as to detract from the fact that the basic creative concepts of the commercials were the same.
2. Avoid Trade Mark Infringement:
Other than the client’s own trade marks (which should already be protected), the campaign may yield new marks and/or slogans which are pertinent to the theme of the entire campaign. It is vital at the outset, once these marks and/or slogans have been identified, to conduct clearance searches of the Trade Mark Register so as to ensure the marks or slogans do not belong to anyone else, in that, or a related, industry. The marks and/or slogans may have not been used yet, but if registered as trade marks in respect of the same or a related industry to your client, your client may be prevented from using them in its advertising.
You definitely do not want our client to have to withdraw its campaign after it has only recently been launched, wasting all that advertising spend and incurring substantial cancellation costs in broadcasting and publication spaces
3. Protecting The Campaign:
On the flip side, once the campaign is a complete success, your client will want some exclusivity to those marks and slogans, especially if the campaign is going to be running for several years. Accordingly, you should suggest that your client register the marks and slogans as trade marks, and this should be done as soon as possible, preferably before the campaign is launched.
You will appreciate that many of these issues fall within the client’s responsibility, but it can only make the advertising agency look enormously professional, if you are reminding the client of the various issues without being prompted. As for the rest of the legal concerns and, in particular, those relating to the conceptualisation of the campaign, these fall squarely on you.
Publication Name: Advertising Guidelines
Date: May, 2013
