Companies generally delegate their marketing requirements to their in-house marketing department or out-source it to an agency.  Proposals are presented to the directors and, once approved, the campaign is rolled out, new stationary is printed, water bottles are branded and the website is updated.  However, was it vetted from a legal perspective?

Management like to see projected return-on-investment (“ROI”) before allocating budget to a specific project and the one area for which it is more difficult to determine the ROI than marketing expenditure, is legal expenditure.

When considering whether to vet marketing campaigns and material from a legal perspective, it is important to understand the considerations involved and so some of the more common issues are dealt with in this article.

1.Creating the Concept:

Once you have settled on a concept for the advertisements, you should ensure that the concept has not been borrowed from someone else.  Ask the hard question – how did you come up with that?  Very few ideas are truly unique, but so long as the concept cannot be attributed to one single campaign (in South Africa), it is not likely to be a problem.  It is advisable to record how and when the concept was developed.

If it is found that the concept has already been used by another (and it is unique to the South African market), copying of that concept could be taking advantage of the other party’s advertising goodwill, in terms of the Advertising Standards Authority (ASA) code.

The argument that the concept is used by another advertiser but in relation to a different industry is not relevant when it comes to an advertising complaint.

2.Avoid Trade Mark Infringement

Other than your own trade marks (which should already be protected), the campaign may yield new marks and/or slogans which are pertinent to the theme of the entire campaign.  It is vital at the outset, once these marks and/or slogans have been identified, to conduct clearance searches of the Trade Mark Register so as to ensure the marks or slogans do not belong to anyone else.  The marks and/or slogans may have not been used yet, but if registered as trade marks in respect of the same or a related industry, you may be prevented from using them in this advertising campaign.

You definitely do not want to have to withdraw your campaign after it has only recently been launched, wasting all that advertising spend and incurring substantial cancellation costs in broadcasting and publication spaces.

3.Protecting the Campaign

On the flip side, once the campaign is a complete success, you will want some exclusivity to those marks and slogans, especially if the campaign is going to be running for several years.  Accordingly, you should consider registering the marks and slogans as trade marks, and this should be done as soon as possible, preferably before the campaign is launched.

There are a number of role players involved in developing and implementing an advertising campaign or marketing of the company or a specific brand, but it will be management who will have to deal with the consequences of any potential legal issues which may pop up.  Management should make sure that someone has considered the legalities, so the only thing popping up from advertising, is higher revenues.