ASA rules on trademark transition measure and the role of goodwill in health claims

The Advertising Standards Authority (ASA) has ruled on a case which pivoted on whether simply establishing trading or, the generation of sufficient goodwill to provide for a passing off action, was the test to decide if the transitional measures within Regulation 1924/2006 on nutrition and health claims made on foods (the Regulation), had been established. 

A website for Pukka Herbs, a tea and food supplement seller, stated "Detox ... detox tea".  Two complainants challenged whether the claim "detox” breached the Regulation requirement that only health claims listed as authorised on the EU Register of health claims made on foods were permitted in marketing communications. The Regulation and CAP Code defined health claims as those that stated, suggested or implied a relationship between a food and drink or ingredient and health. References to general benefits of a nutrient or food for overall good health or health-related well-being were acceptable only if accompanied by a specific authorised health claim.

Pukka Herbs Ltd argued they had been using 'Detox' as part of their brand and product range since 2004. There is a transitional measure within the Regulation where “Products bearing trade marks or brand names existing before 1 January 2005 which do not comply with this Regulation may continue to be marketed until 19 January 2022 after which time the provisions of this Regulation shall apply”. Pukka said their local Trading Standards had confirmed they could keep the name until the transitional period expired. A judgement of the European Court of Justice in 2013 (Green Swan Pharmaceuticals) confirmed that the transitional period applied to trade marks protected by national law even if they were not formally registered as trade marks. They believed the Detox tea name did not need to be accompanied by a relevant authorised health claim until 2022. In 2003/4, when the product was launched, it was not possible for them to register the name as a trade mark for several reasons: financial, because they were a small business at the time; trademark, because it was not possible to register it as such; and legislative, because it was not necessary to gather evidence and protect the name under transitional measures because the Regulation was not in force.

The ASA considered the following:

1. The reference to “detox” was likely to be understood as relating to the general benefits of the product or its ingredients for overall good health or health-related well-being. As such, we considered the claim “detox” was a general health claim.
2. Neither “Detox” nor “Pukka Detox” had been registered as a trade mark before 1 January 2005, and therefore were not covered by that exemption on that basis.
3. The ASA further held the trademark transition had not been established as insufficient goodwill in the descriptive term had been established.

The ASA summarised that in the absence of a pre-2005 registered trade mark, advertisers could nevertheless still fall within the transitional exemption if they established that the relevant trade mark or brand name, in this case “Detox”, would have been protected by the common law action of passing off in the UK prior to 1 January 2005. To justify such protection, they would need to provide evidence to show that the trade mark or brand name in question was used in the UK before 1 January 2005 on (or in relation to) the product in question such as to establish, on the balance of probabilities, that a goodwill existed at that date in the mind of the purchasing public by association with the trade mark or brand name in question.

Although evidence showed that Pukka had used the name 'Detox' in 2004, including: trading schedules and a trade catalogue; product specification forms and order forms; a stock valuation file; flyers; a poster; and an archived page of a website showing the product for sale. The ASA considered that the evidence we had seen was not sufficient to establish the requisite goodwill i.e.  level of trade experienced by Pukka, with particular reference to sales up to 31 December 2004. In any event, the ASA found that "detox" was a descriptive term rather than a distinctive word, that was how it appeared primarily to have been used by Pukka prior to 2005, and in the view of the ASA it was unlikely that the advertiser would have established sufficient goodwill and recognition in it to give rise to a meaningful passing-off right.

The ASA therefore found that Pukka Herbs Ltd were not to make references to general benefits of food for overall good health or health-related well-being in brand names unless those claims were accompanied by a permitted health or nutrition claim.