Did Woolworths South Africa Private Brand Infringe Copyrights?

Frankie’s Olde Soft Drink Company has caused a stir this week alleging that major South African retailer, Woolworths, has plagiarized their packaging and flavors. Take a look at the side-by-side comparison above, although there are certainly similarities, they seem easily distinguishable, and arguably the Woolworths bottle is a better design.

Mike Schmidt, co-owner of Frankie’s, which was founded in 2006, said his company was the first to re-introduce root beer into South Africa since the 1960s. He also said several unique flavors, such as cinnamon cola and fiery ginger beer, were “directly and blatantly” copied by Woolworths.

Infuriated, he has filed a complaint with the Advertising Standards Authority (ASA).

In November, Woolworths introduced their Private Brand line to stores around South Africa, which are packaged in near-identically shaped bottles with candy-striped labels.

Schmidt said the products bear design elements of such close resemblance “even regular Frankie’s consumers could not be criticized for their confusion between the beverages”.

But the primary bone of contention, he said, is that Woolworths’ new line includes the phrase “Good Old Fashioned” — one which is firmly associated with Frankie’s and has been used in its marketing for years. The complaint to the ASA asks only that this phrase be removed from the Woolworths Private Brand products.

But Zyda Rylands, Woolworths managing director of food, said the allegations against Woolworths are unfounded. “We have not infringed any copyright, intellectual property nor registered trade mark.”

Old fashioned drinks are not a new concept, she said. “Flavors such as creme soda, ginger beer and cola are used by a number of soft drink manufacturers and no one company owns the rights to these flavors, and therefore the use of these names.”

Rylands said the shape of the bottle is different. “We do not believe that Woolworths range (Private Brand) resembles Frankie’s soft drinks.”

Woolworths claim to have used the nostalgic or vintage design concept for many years in a range of products. “Our designs were inspired by a retro feel, which is a growing trend internationally in retail. We were also inspired by Woolworths products from the mid-20th century.”

But Owen Dean, partner at Spoor & Fisher, a leading South African intellectual property legal firm, said Frankie’s could be successful under a branch of common law known as passing off, which is often used to enforce unregistered trademarks. “If Frankie’s can show that it has a reputation [built around its packaging and flavors] and that Woolworths has copied it, they could be successful.”

The ASA is another avenue as its code also embraces the principles of passing off. “If they can show that the shape of the bottle, the flavour or the slogan of the Woolworths product has caused people to think there is some link or association with Frankie’s, then they have a case,” Dean said.

Source: Mail & Guardian Online



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Christopher Durham

Christopher Durham is the president of My Private Brand and the co-founder of The Vertex Awards. He is a strategist, author, consultant and retailer who built brands at Delhaize-owned Food Lion, and lead strategy and brand development for Lowe’s Home Improvement. He has consulted with retailers around the world on their private brand portfolios including: Family Dollar, Petco, Staples, Office Depot, Best Buy, Metro (Canada), TLW (Taiwan) and Hola (Taiwan).

Durham has published five definitive books on private brands, including his first book, Fifty2: The My Private Brand Project. In 2017, he will debut his newest book, Vanguard: Vintage Originals, a visual tour of innovation and disruption in private brand going back to the mid-1800’s.
Dynamic in his presentation while down to earth and frank in his opinions, he has presented at numerous conferences, including FUSE, The Dieline Conference, Packaging that Sells, Omnishopper and PLMA’a annual trade show in Chicago.

Durham lives in Charlotte, NC with his wife, Laraine, and two daughters, Olivia and Sarah.