Frankies vs Woolworths, “the David and Goliath battle“ has attracted much media attention and placed the spotlight on the importance of Intellectual Property (IP).

Woolworths launched a range of vintage sodas which Frankies alleged copied its packaging and flavours and which resulted in Frankies filing a complaint with the Advertising Standards Authority ("ASA"). Although much of the talk in the media concerned the similarity of the packaging of the products, Frankies only pursued the matter with the ASA with regard to the use of the term "Good Old Fashioned". The ASA was therefore not called upon to decide whether Woolworths copied the idea to sell sodas with "vintage flavour", whether they copied Frankies'™ labels nor that the specific flavours were copied. The ASA ruled that Woolworths provided no explanation as to how it had come up with the idea to use the phrase and consequently held that the only reasonable conclusion to be drawn from the evidence was that Woolworths deliberately and intentionally copied the phrase "Good Old Fashioned" from Frankies'™ advertising. Woolworths has been ordered to withdraw the packaging.

Trade marks form an essential part of any business as they identify and distinguish your business and products from your competitors. Prior to adopting and using a mark, a search of the trade mark registries should be carried out to ascertain whether the mark is available and this will also indicate whether the use of the mark will constitute trade mark infringement. Due to the fact that the manufacture, branding and advertising of a new product or service can run into millions, it is advisable to first conduct the relevant searches. The worst case scenario is that large amounts of time, effort and money are spent in relation to a new product or service, only to be faced with a demand to remove the goods or cease rendering the service under that mark. Once trade marks are registered they provide protection for the identical or similar mark for the same or similar goods or services and can be relied on to prevent third parties infringing on your rights.

Our experienced team of IP attorneys can assist with a full range of trade mark services including conducting searches of the trade mark registries, attending to filing of trade mark applications and securing the registration thereof, management of your trade mark portfolio, IP litigation and ASA matters. Werksmans also uses software which enables clients to access their trade mark portfolio online via our website.

Contact

Janine Hollesen, director at Werksmans Atorneys
Direct line: +27 (0)21 809 6011
Email: jhollesen@werksmans.com

Stuart Gardiner, director
Direct line: +27 (0)21 809 6010
Email: sgardiner@werksmans.com

Donvay Wegierski, director
Direct line: +27 (0)21 809 6009
Email: donvayw@werksmans.com