Y’ello Who? MTN succeeds against Nando’s ads

In a recent decision, the Advertising Standards Authority (“ASA”) Directorate ruled that a combination of seemingly generic elements, when used together in a certain way, was the exclusive advertising property of a mobile telecommunications provider and that these had been imitated by a fast-food chain in its advertising. 

Mobile Telephone Networks (Pty) Limited and MTN Group Management Services (Pty) Limited (“MTN”) lodged a competitor complaint against a series of advertisements placed by Nandos Brand Corporation (Pty) Limited and Chickenland (Pty) Limited (“Nando’s”) for its Nando’s chicken fast food outlets. 

MTN submitted that Nando’s had copied various elements of its advertising, which have become well-known. These include the colour yellow, which dominates all of MTN’s advertising; the word Y’ello; the slogan Y’ello Summer; the registered trade mark “everywhere you go”; the font used in its advertising; and the term “top up”. In addition, MTN submitted that the Nando’s advertisements copied the white keyline around the logo, as well as the positioning of the logo and the terms and conditions appearing at the bottom of the page which were set out in a specific manner in MTN advertisements.

The Nando’s radio commercials, it was submitted, also used a jingle which sounded similar to the MTN Y’ello Summer jingle. 

MTN submitted that these elements are prominently used in its advertising and challenged the Nando’s advertisements in terms of Clauses 8 and 9 of Section II of the ASA’s Code of Advertising Practice (“the Code”). 

The complaint was decided in terms of Clause 9 of Section II, which deals with imitation and reads as follows:

“9.1 An advertiser should not copy an existing advertisement, local or international, or any part thereof in a manner that is recognisable or clearly evokes the existing concept and which may result in the likely loss of its potential advertising value. This will apply notwithstanding the fact that there is no likelihood of confusion or deception or that the existing concept has not been generally exposed. 

9.2 The provisions of clause 9.1 above shall apply for a period of two years from the date of last usage of the advertising, packaging or labelling concerned.

In considering whether or not an infringement has taken place consideration will be given to, inter alia, the extent of exposure, period of usage and advertising spend, whether the concept is central to the theme, distinctive or crafted as opposed to in common use. Furthermore the competitive sphere will also be taken into account.

In considering international campaigns, consideration will be given to, inter alia, the undue imitation thereof by local advertisers. This, however, will only apply if the advertiser is committed to start trading in the local market within a reasonable period of time.”

Nando’s denied that its advertising had breached the Code.  It submitted that the elements are not uniquely those of MTN; that MTN had not proven consistent use of the elements; that the parties are not competitors; that MTN had not proven the likely loss of potential advertising value (as required by Clause 9); that the elements were not copied; and that it had regard to MTN’s advertising for the purposes of parody only.

It is trite that the central issue in considering complaints under Clause 9 of Section II is whether there has been conscious copying of crafted elements. 

In dealing with the parody aspect, the ASA Directorate held that the fatal flaw in Nando’s parody argument was that a parody is useless if the object of your parody is unknown to the public.  It held that “It is an inherent requirement for successful parody that the public must be aware what you are referring to.”

The ASA Directorate therefore held that it was nonsensical for Nando’s to argue that the elements of the MTN advertising were not unique or original, as, were that the case, Nando’s would have had nothing to parody.

By its own admission, therefore, the MTN advertising elements were unique and distinctive of MTN and, in this regard, Nando’s was hoist by its own petard.

The ASA Directorate therefore ruled that the parody defence had to fall away, also because the Nando’s advertisement was not overtly humourous or exaggerated, which is a requisite for a defence of parody to succeed. The Directorate furthermore commented that parody is not necessarily a defence to a Clause 9 complaint. 

The ASA Directorate went on to say that it accepts that certain elements of an advertising campaign might be commonplace or generic in themselves.  What had to be decided is whether, in this instance, the combination of generic elements in a particular way could amount to original intellectual thought, which is what is protected by Clause 9 of Section II of the Code.

The short answer, in this case, is yes.

The ASA Directorate held that, in the present matter, the combination of all elements in MTN’s advertising “has become a signature of the complainant’s advertising in relation to its Y’ello Summer concept.” It furthermore said that the combination of certain elements in the particular manner used by Nando’s recalls the MTN advertisements and that Nando’s had deliberately copied MTN’s advertising in a recognisable manner. 

What had to be decided next was whether this would result in a likely loss of advertising value for MTN.

In essence, the ASA Directorate’s ruling was that Nando’s was not, in this campaign, creating its own unique advertising concept, but had rather copied that of MTN, which would inevitably lead to the loss of advertising value for MTN, as the unique combination of elements it had created would now no longer be associated solely with MTN.

Nando’s print and radio advertising was therefore found to be in breach of Clause 9 of Section II of the Code and Nando’s was ordered to withdraw the advertising, within stipulated time periods.

Lindie Serrurier
lindie-s@adamsadams.co.za
Adams & Adams
22 January 2008