Ads & Brands Law Digest: July 2021

Advertising & Marketing

ASA steps up sanctions on influencers

The ASA has announced that it is launching a dedicated page on its website to highlight individual influencers who, despite being put on notice that they would face further sanctions if they did not follow the advertising rules, have repeatedly failed to disclose when their Instagram posts are ads. In March 2021 the ASA released its Influencer Monitoring Report, examining levels of ad disclosure on Instagram through 122 UK-based influencer accounts. It discovered inconsistent disclosure through Stories, posts and Reels, with CAP rules being followed (when posts were ads) only 35% of the time.

Named influencers will be on the webpage for three months and subject to a period of enhanced monitoring spot checks. Other influencers who similarly break rules repeatedly will be added over time.

If named influencers continue to break the ASA’s rules around non-disclosure, it has further sanctions it can implement, including taking out ads against them, working with social media platforms to have their content removed or referring them to statutory bodies for possible fines.

The ASA will also be looking to take action against brands that repeatedly fail to disclose ads or do not provide assurances that they will properly label ads in future.

For more information, see here.

CAP issues checklist on how to avoid misleading claims

Complaints about potentially misleading advertising make up around 70% of the total number of complaints made to the ASA every year. To help advertisers avoid misleading consumers and make sure ads aren’t contributing to this number, CAP has created a simple checklist of some of the key things to consider.

• Do not omit material information;

• Hold evidence for all objective claims;

• Present qualifications clearly;

• Do not exaggerate;

• Make sure your price claims are accurate; and

• Make any limitations on availability clear.

For more information, see here.

CAP issues guidance on “hard seltzers”

Hard Seltzers (alcoholic sparkling waters) have taken off this year, and drinks manufacturers are piling in to bring us their own unique twist. But, as with any new product, it is very important that marketers ensure that their ads are compliant.

Ads for Hard Seltzer drinks have often associated them with a modern, conscious consumer who cares about what they put into their bodies. So marketers should be especially cautious not to make unauthorised health or nutrition claims about Hard Seltzers, or to mislead about the amount of alcohol they contain. The guidance sets out four things to watch out for: alcohol strength claims, eg don’t say they are low alcohol, health claims, nutrition claims and ensuring advertising is responsible.

For more information, see here and here.

Regulatory 

UK government confirms plans to restrict HFSS advertising

The UK government has confirmed that it plans to regulate the advertising of foods high in fat, sugar and salt more strictly:

• At the end of 2022, it will simultaneously introduce a 9pm TV watershed for HFSS products and a total restriction of paid-for HFSS advertising online

• All on-demand programme services (ODPS) under the jurisdiction of the UK, and therefore regulated by Ofcom, will be included in the TV watershed for HFSS advertising

• Non-UK regulated ODPS will be included in the restriction of paid-for HFSS advertising online because they are outside UK jurisdiction

• These restrictions will be legislated for via the Health and Care Bill which has been introduced to parliament and will come into force at the end of 2022.

• There will be exceptions for SMEs with fewer than 250 employees, radio and podcasts, brand advertising and B2B advertising.

• Ofcom and the ASA will be the regulators

The rules accompany the planned restrictions on sales promotions that are due to come into force on October 2022.

For more information, see here and here.

ICO fines pizza company for spam emails

The ICO has fined Papa John’s (GB) Limited £10,000 for sending 168,022 nuisance marketing messages to its customers without the valid consent required by law. The ICO received 15 complaints from Papa John’s customers about the unwanted marketing they were receiving by text and email. The complaints noted the distress and annoyance the messages were causing.

The ICO’s subsequent investigation found that between 1 October 2019 and 30 April 2020, Papa John’s sent over 210,000 marketing messages with 168,022 confirmed as received.

The ICO investigation found that Papa John’s was relying on the ‘soft opt in’ exemption in order to send marketing texts and emails.

This exemption allows organisations to send electronic marketing messages to customers whose details have been obtained for similar services, but offers a simple way for people to refuse or opt out. The ICO ruled that Papa John’s could not rely on this exemption for customers that had placed an order over the telephone, as they were not given the option to opt out at point of contact nor were they provided with a privacy notice.

For more information, see here.

Government plans more regulation for video on demand services

The government is consulting on further regulation for video on demand services, pending the publication of a broadcasting white paper later in 2021.

Video-on-demand services available in the UK are not regulated to the same level as “linear” television channels and some services such as Netflix and Apple TV+ are not regulated in the UK at all.

Only content on the BBC iPlayer is subject to Ofcom’s Broadcasting Code, which includes enhanced protections to audiences from harmful or offensive material and rules on accuracy and impartiality.

Existing audience protections on UK-regulated video-on-demand services are primarily focused on children and rules preventing content which incites hatred. Some services have introduced their own voluntary procedures - such as Netflix’s voluntary age ratings partnership with the British Board of Film Classification (BBFC).

The current landscape makes for an inconsistent, ad-hoc and potentially harmful gap in regulation between video-on-demand services alongside a potential competitive disadvantage between UK broadcasters and their internationally-funded online counterparts.

It is also almost twenty years since the UK broadcast sector’s regulatory framework was introduced in the Communications Act 2003, which was designed before the arrival of online companies such as Apple+, Amazon Prime and Netflix in their current form.

The government will also take forward existing commitments to legislate to strengthen public service broadcasters’ “prominence” online so that their video-on-demand content can easily be found and accessed on smart TVs and other platforms and devices.

For more information, see here.

Trade marks

EU General Court ruling on “Miley Cyrus” trade mark application

Regular readers of this Digest may recall the ruling of the EU Court of Justice last year, permitting the registration of the word mark MESSI on behalf of the famous footballer of that name. It had been opposed by the proprietors of an existing MASSI mark, but despite the visual and phonetic similarities the Court found that the footballer’s reputation was so well established that it would counteract any potential for confusion between the two marks.

The MESSI case has now been reinforced by a similar ruling from the EU’s General Court in respect of an application to register the mark MILEY CYRUS on behalf of the famous singer and actress. The application had been rejected by the EU Intellectual Property Office Opposition Division and by its Board of Appeal on the grounds that it was confusingly similar to an earlier figurative mark containing just the word CYRUS.

The General Court agreed that there were clear similarities in terms of the visual and phonetic comparison between the two marks (the addition of “Miley” helped differentiate, but this could not wholly outweigh the fact that the “Cyrus” elements were basically identical). When it came to the conceptual comparison of the marks, however, the fact that “Ms Miley Cyrus is a public figure of international reputation known to most well-informed reasonably observant and circumspect persons” (in the Court’s words) meant that the two words “MILEY CYRUS” taken together would have a strong conceptual meaning to the relevant public (i.e. as being a reference to the famous singer and actress), whereas the single word “CYRUS” on its own would not have that meaning. The two marks were thus found to be conceptually dissimilar, and so the MILEY CYRUS mark should now be able to proceed to registration as an EU trade mark.

This confirms that for celebrities with a genuinely international reputation, the “conceptual power” of the names by which they are known will often weigh heavily in favour of them being registrable as EU trade marks. The Miley Cyrus case is useful as an example of this principle being applied to a first name and surname combination, rather than just a surname.

For more information, see here.

Shape of Guerlain lipstick deemed sufficiently distinctive to be registrable as 3D trade mark

The EU case-law regarding the registrability of 3-dimensional trade marks is probably better known for examples of rejected applications rather than successful ones, particularly when it comes to registering the shapes of products or their packaging as trade marks. It is worth noting examples which buck this trend, therefore.

Guerlain had applied to register a 3D EU trade mark for the shape of one of its lipsticks, but the EUIPO Examiner had refused registration based upon a lack of distinctive character, and this decision had been upheld by the Board of Appeal. Guerlain appealed the decision to the EU General Court which looked again at the question of distinctive character – i.e. whether the shape of the Guerlain lipsticks was such as to allow consumers to distinguish them from lipsticks originating from other manufacturers. The Court emphasised that the correct test in such cases is to ask whether the product’s shape “departs significantly from the norm or customs of the sector concerned.” Looking at the Guerlain lipstick design, which it described as “reminiscent of… a boat hull or a baby carriage” and being unusual in that it could not be placed upright on one end, the Court concluded that the public would find the design surprising and memorable. It departed significantly from the “norm and customs” of the lipstick sector and so was capable of indicating the origin of the goods as coming from Guerlain – it was thus distinctive, and registrable.

For more information, see here (including image of the 3D mark in question).