A second bite at the orange proves unsuccessful for iBurst

The ASA's ruling on 27 May 2009 makes for interesting reading and brings into play what will almost certainly arouse lively debate, in trade mark law and branding circles anyway, around businesses that try and monopolise single colours for themselves.

In lodging its complaint based on Clause 8 of Section II of the Code of Advertising Practice (‘The Role of the Directorate in regard to Contraventions of the Code'), iBurst sought to lay a general claim to the colour orange, disregarding the importance of several other brand components such as design, pantone, logotype, strategy, lay-out and name, that make up the totality of an original, crafted advertising brand. It is in that totality or brand combination that an advertiser has a protectable interest as against other advertisers who try to copy or pass off that brand combination, in the advertisement of their goods and services.

The ASA Appeal Tribunal's judgment again emphasises the main purpose of Clause 8 being to protect crafted, creative advertising concepts or ideas which have found expression in a particular advertisement or advertising campaign. The ‘advertising property' or ‘protectable goodwill' is really the element of original intellectual or creative thought that goes into the advertisement or advertising concept. The message is clearly made that colour alone does not make a brand protectable.

iBurst's complaint against Neotel was found not to have shown that any particular creative thought or crafting adhered to its use of the colour orange in its advertising and accordingly, iBurst could not assert that any advertising goodwill or protectable advertising property attached to its use of the colour orange. The ASA went on to say that even assuming that advertising goodwill could arise out of the widespread and sustained use of a colour, it would have to be shown by an advertiser that it had exclusively made use of the colour and had through such exclusivity of use, acquired protectable property in such use.

Neotel was successful in showing that a number of other entities in the telecommunications and related industries widely make use of the colour orange in their advertising and that by implication, no single advertiser could claim to own the colour orange. iBurst's assertion that the colour orange, in and of itself, has become the “badge of origin” or “signature” of its services was therefore unfounded and without qualification resulting in the ASA dismissing iBurst's appeal against the ASA Directorate's ruling in January 2009.

Sara-Jane Pluke

Moore Attorneys (Representing Neotel in the ASA complaint lodged by iBurst)

© Moore Attorneys 2009