Existing food trademarks could be compromised

The aim is to ensure that companies convey information on food labels and advertising in a standard manner and with accurate, factual information to help consumers make more informed and healthier choices in their brand purchases.

The result is that almost every food package in South Africa will have to be redesigned by 1 March 2012. All brand owners will need to examine and modify their trademark portfolios to ensure they are compliant.

New legislation

The Foodstuffs, Cosmetics and Disinfectants Act 54 of 1972 was enacted to control the sale, manufacture, importation and exportation of foodstuffs in South Africa.

In terms of Section 15 of this Act, the Minister of Health introduced Regulation 146 in 2010 governing the labelling and advertising of foodstuffs. In particular, the nature of the information that may or may not be on the label and the manner in which such information is reflected or arranged on the label. These regulations will come into effect on 1 March 2012 and are the Department of Health's response to the World Health Organisation's Global Strategy on Diet, Physical Activity and Health.

The Consumer Protection Act 68 of 2008, which came into force on 01 April 2011, also safeguards the consumer insofar as the labelling and advertising of foodstuffs. The Act prohibits false, misleading or deceptive representations, or the use of exaggeration, innuendo or ambiguity as to a material fact in relation to the marketing of goods.

Relevant provisions for brand owners

Regulation 13 (covering prohibited statements) and Regulation 47 (covering misleading descriptions) of the regulations will have the biggest impact on brand owners.

Regulation 13 states that the following information or declarations shall not be reflected on a label or advertisement of a foodstuff:
(a) (i) words, pictorial representations, marks, logos or descriptions which create an impression that such a foodstuff is supported or endorsed by a health practitioner (e.g. dentists, doctors and dieticians);
(ii) words, pictorial representations, marks, logos or descriptions which create an impression that such a foodstuff is supported or endorsed by an organisation or entity, unless certain conditions are met;
(b) an endorsement or testimonial of an individual that implies a nutrition claim;
(c) an endorsement of a manufacturer or seller in the form of a logo, mark, symbol, written or verbal statement or any other manner of communication with regard to the nutritional or safety properties of the foodstuff, unless it is valid and can be substantiated;
(d) the words "health" or "healthy" or other words or symbols implying that the foodstuff or a substance of the foodstuff has health-giving properties;
(e) the words "wholesome" or "nutritious" or any other words with a similar meaning;
(f) a claim that a foodstuff provides complete or balanced nutrition;
(g) the word "cure" or any other medicinal claim.

Regulation 47 states that the following descriptions are permitted on a food label or advertisement, subject to certain conditions:

(1) Any word, statement, phrase, logo or pictorial representation which implies a message of being healthy or healthier or additive-free or veterinary medicine-free or which indicates the more humane treatment/rearing of food animals (for example "grain fed", "grass-fed", "Karoo lamb", "natural lamb, "country reared", "free range", "pure", "organic"), are permitted on such products but only if it is linked to specific protocols registered with the Department of Agriculture, or legislation such as the Agricultural Products Standards Act 1990 (Act 119 of 1990) and National Regulator for Compulsory Specifications Act 2008 (5 of 2008);
(2) Statements to the effect of being "fresh", "natural", "nature's", "pure", "traditional", "original", "authentic", "real", "genuine", "homemade", "farmhouse", "hand-made", "selected", "premium", "finest", "quality" or "best", or any other any words, statements, phrases, logos or pictorial representations which show or imply similar concepts, are permitted but only if compliant with Guideline 7 of the regulations.

Guideline 7 states that the United Kingdom document entitled Criteria for the Use of the Terms Fresh, Pure, Natural Etc. in Food Labelling, last revised in July 2008, shall apply to misleading claims in South Africa. This document was written by the UK Food Standards Agency to provide informal, non-binding best practice advice on labelling food with certain marketing terms.

Regulation 47 states that the following descriptions are not permitted on a food label or advertisement:
(3) The statement "wild" is not permitted on fish or other marine foodstuffs unless it is qualified as "wild caught".
(4) Food products that were frozen and then thawed for subsequent sale shall not be labelled "fresh" and shall indicate the words "PREVIOUSLY FROZEN" clearly on the label in bold upper-case letters.

Therefore, when the regulations come into force, companies will need to reconsider using untruthful, misleading, ambiguous or over-exaggerated claims regarding the characteristics of foodstuffs on sale in South Africa. Similarly, brand owners will need to reassess using trademarks that contain certain adjectives, superlatives, laudatory and descriptive words, unless such words are permitted.

Put into perspective, a brief search of the records at the South African Trade Marks Office revealed more than 101 trademarks filed in classes 29, 30 and 31 contain the word "original" in relation to food products. According to Guideline 7, "original" can only be used to indicate a product that was the first of its type to be placed on the market, where the original form or flavour has remained essentially unchanged over time. The term "original" cannot be used to convey "plain" or "unflavoured" where other variants are offered, such as potato chips. Many of the trade marks currently on the register will therefore not conform to the new guidelines. Similarly, many of the 231 trademarks containing the word "health" or the 587 trademarks containing the word "fresh" in classes 29, 30 and 31 will not conform to the best practice advice in the guidelines.

Impact on brand owners

In terms of the Trade Marks Act 194 of 1993, it is a long established principle in South Africa that laudatory or descriptive words are not registrable, or are vulnerable to opposition or removal from the register, unless they have become capable of distinguishing through extensive use prior to the application for registration. This is specifically outlined in Section 10(2) of the Act.

With the introduction of the regulations, trademarks containing any prohibited word would fall foul of Section 10(12) of the Trade Marks Act, which covers trademarks that are contrary to law. As such, and even if the mark contains a laudatory or descriptive term that has become distinctive through use, if it is prohibited by the regulations then it is prohibited in terms of the Trade Marks Act.

Furthermore, Section 10(13) of the Trade Marks Act covers trademarks which, as a result of the manner in which they have been used, would be likely to cause deception or confusion. Any form of trademark used on the labelling or advertising that causes deception or confusion is likely to offend against this section.

The impact of the regulations is that brand owners must review their existing trade mark portfolios and all trademarks must comply with the regulations, otherwise such trademarks are not registrable, or are vulnerable to opposition, or may be cancelled on the basis that it is an entry wrongly made or remaining on the Trade Marks Register.

The penalties on conviction of an offence under the regulations are outlined in the Foodstuffs, Cosmetics and Disinfectants Act and include a fine and/or imprisonment for 6-24 months (depending on the number of convictions). In addition, the court may declare the foodstuffs in respect of which the labelling or advertising offence has been committed to be forfeited to the State to be destroyed or otherwise dealt with.