With a market presence since 2009, RCL’s Number 1 Smooth has built up a rich, creamy reputation. But when Berkley’s Shake Shake Smooth debuted its new look, RCL claimed it was a blatant sip off their style, accusing Berkley of imitation, unfair competition and exploiting its advertising goodwill.
Berkley, on the other hand, insisted that similarities in flavours, colours, and descriptors were just part of the natural recipe of competition, rather than a deliberate attempt to milk RCL’s brand equity. Their response? A firm shake-off, stating they had no intention of playing copycat and had merely followed industry norms.
The complaint – a blended battle
RCL is the manufacturer and advertiser of the Number 1 Smooth mageu range, which was launched in 2009 as a "creamy, smoother texture" mageu. The following product packaging and design were adopted in 2018, with only minor changes made in 2019:
RCL and Berkley compete directly, as their Number 1 Smooth and Shake Shake Smooth products are the only "smooth" mageu options available on the market.
Over the years, Berkley made several changes to its product packaging, as shown below:
However, at the end of 2023, Berkley introduced significant updates to the packaging of its Shake Shake Smooth product, as follows:
Shake Shake Smooth packaging
The packaging change prompted RCL to file a complaint with the Advertising Regulatory Board (ARB), alleging that Berkley’s Shake Shake Smooth packaging “made use of a combination of certain elements identical (or substantially similar) to that of RCL’s”. RCL contended that Berkley’s design changes were not accidental, but a deliberate attempt to capitalize on RCL's established brand recognition and advertising goodwill.
RCL’s complaint was based on the ARB Code which prohibits advertisers from exploiting another product or service’s trade name, symbol, or advertising campaign without prior permission; and from copying an existing ad or concept in a way that could erode its advertising value, even if no confusion or deception is likely.
RCL submitted that there was a “conscious placement” by Berkley of key elements of the Shake Shake Smooth packaging to align with the distinctive features of the Number 1 Smooth packaging, thereby inching closer to RCL’s “packaging architecture”. RCL broke down the similarities between the products as follows:
RCL clarified that it does not seek exclusivity over specific colours or flavours but rather the unique combination of elements and architectural design of the Number 1 Smooth packaging. RCL argued that these features constitute original intellectual property, and that Berkley had improperly exploited and imitated this design in its Shake Shake Smooth packaging.
RCL further emphasised that these distinctive features are not used by any other mageu product on the market, making them uniquely identifiable as part of RCL’s branding.
RCL argued that a reasonable consumer, when encountering the products on shelves, would likely identify a mageu product based on its visual features. Given the similarities in packaging design, RCL asserted that there is a significant risk of confusion, with consumers potentially mistaking Berkley’s product for RCL’s or assuming they are from the same brand.
Berkley’s response: Healthy or unfair competition?
Berkley, not being a member of the ARB, refused to recognise the ARB’s jurisdiction over the matter. Nevertheless, it argued that RCL was simply “aggrieved by normal competition” and that the resemblances between the Number 1 Smooth and Shake Shake Smooth products “are limited to the flavours, the genus of colours associated with those flavours and the descriptors used”, with the trade marks being “perfectly adequate to distinguish the goods”.
Nishaat Slamdien 26 Nov 2024
The ARB’s findings – a bitter sip for Berkley
The ARB was not convinced by Berkley’s arguments and found that:
- Certain colours, containers, and descriptors are commonly used in the mageu market, and Berkley cannot claim exclusive rights to specific design aspects, such as the association of particular colours with flavours. However, the overall combination of elements – including colour pairings, fonts, the placement of design features, bottle shape, and general look and feel – creates a distinctive product identity.
- RCL accrued significant advertising goodwill in this unique packaging, making it synonymous with the Number 1 Smooth brand and eligible for protection under advertising regulations.
- The similarities between Berkley’s Shake Shake Smooth packaging and RCL’s Number 1 Smooth packaging were more than coincidental, raising legitimate concerns about consumer confusion. There was a real risk that hurried consumers might mistake one product for the other, suggesting that Berkley’s packaging could exploit RCL’s goodwill.
- RCL’s distinctive combination of elements qualifies the Number 1 Smooth packaging for protection. Due to the significant overall similarity between the two competing product designs, it was determined that Shake Shake Smooth’s packaging was an imitation of Number 1 Smooth.
As a result of the above, the ARB determined that Berkley had contravened the ARB Code and ruled that it should withdraw its packaging.
Rachel Sikwane 21 Apr 2021
Next steps: Will Berkley shake things up with redesign or resign?
While the ARB’s ruling is binding only on its members, it holds significant influence in the advertising and retail industries. Since Berkley is not an ARB member, it is not legally required to comply.
However, market realities may leave it with little choice. Major retailers – many of whom are ARB members – could still opt to remove Shake Shake Smooth’s current packaging from their shelves, potentially forcing Berkley to undertake a swift redesign to remain competitive.
Conclusion: A lesson in brand identity
This ruling serves as a stark reminder of the importance of maintaining a distinct brand identity. Companies that stray too close to their competitors’ branding risk more than just legal challenges; they may face commercial consequences, including loss of retailer support and consumer trust.
While healthy competition fosters innovation, direct imitation – particularly when it misleads consumers – can be costly. The ARB’s decision reaffirms that packaging is a powerful tool in shaping consumer perception and brand recognition.
For consumers, the ruling ensures clearer brand differentiation on the shelves. For businesses, it highlights the value of originality – because in the competitive marketplace, differentiation is the key to long-term success.
