Commenting on the ruling, Megan Reimers, a partner at intellectual property law firm, Spoor & Fisher, says "Henkel claimed that the colour red is distinctive of its glue stick, that it is exclusively associated with the Pritt glue stick by the public and that it is a signature of the product."
The Final Appeal Committee of the ASA reached the conclusion that Trefoil had changed its packaging with the intention of filching the goodwill created by Henkel and had intentionally imitated its product and the committee then ruled that Trefoil was in breach of the ASA Code. However, the committee did not deliver its ruling based on the colour red alone but rather a number of elements that constitute the Pritt product, its packaging, and advertising material.
The committee determined that brand's red, tubular product design, with the Mr Pritt character, qualifies as a protectable advertising concept. It also found, based on various trademarks and passing off principles, that confusion is likely between the two products.
"The ASA's Final Appeal Committee stated that both products are aimed at children, were displayed on the same shelves and that the shape, size of the products, the red stick and the red tubular packing, as well as the characters on the tubes, would most likely all lead to confusion. The committee questioned why Trefoil had not explained why it had changed the colour of its packaging from green to yellow to red in the past two years," adds Reimers.
According to the committee, the brand's final appeal relied on a particular clause of the ASA Code: "to protect crafted, creative concepts and ideas, which have found expression in a particular advertisement. It is the element of original or intellectual or creative thought behind an advertisement which is the property that is protectable."
"Only in very exceptional circumstances could the committee come to a conclusion that the adoption and use of a single colour is a creative advertising concept which will result in advertising goodwill," says Reimers.
The case was originally put to the ASA Directorate, which has never before ruled that a colour is a protectable aspect that can constitute original and intellectual thought. "One of Trefoil's arguments was that other glue manufacturers also use the colour red on their products or in their packaging," says Reimers. "The ASA Directorate and Tribunal agreed and found there was no evidence to suggest that consumers separate the colour red from the other elements and that they identify the Henkel glue stick by the colour red alone and that, in the circumstances, red is not a signature of the product."
However, the Final Appeal Committee ruled that the red colour, together with the Mr Pritt character and the tubular packing, do contain advertising goodwill.
"The committee may have stretched the established principles of the ASA Code to reach its preferred decision," says Reimers. "It is a stretch to hold that the protectable get up of the brand's packaging is in the combination of the colour red, the tubular packaging, and a character appearing on the tube. Implicitly, it is the colour red that was in fact being protected by the committee. In reality, while the brand's red colour may have been entitled to protection under the laws of passing off, or under trade mark principles, this did not turn it into a protectable, crafted concept in terms of the ASA Code.
"In any event, officially, the position before the ASA has not changed - it remains difficult for any party to obtain protection of a single colour in terms of the ASA Code," she concludes.
