Woolworths' recent promotional campaign featuring renowned chef Margaret Fulton and the phrase "Honest To Goodness" has sparked a claim of trade mark infringement by a Sydney-based organic food store, with a Federal Court hearing commencing yesterday.
Organic Marketing Australia Pty Limited, trading as Honest To Goodness since 2003, also claims that Woolworths' promotions, including television, internet and in-store advertising, impinge on the reputation established by its use of the Honest To Goodness trade mark.
Woolworths defends its use of the phrase, arguing that "honest to goodness" is a commonly used phrase which "describes something which is essentially simple and genuine, and in the context of Margaret Fulton's family meals, also nutritious", and cross claims for removal of Organic Marketing's registration.
The Honest To Goodness business was developed in 2003 by husband and wife Matt and Karen Ward, and today imports, exports, retails, wholesales and distributes its organic and wholefoods under the Honest To Goodness brand1.
While nine years of reputation in the Honest To Goodness brand in relation to food, beverages and retailing of these, establishes common law rights, its registered trade mark rights are limited. Organic Marketing owns a single trade mark registration2 in a form not used since 2009, for the words "Honest to Goodness" in a hand-written font, with a stylised flower device:
Woolworths' own logos incorporate the image of Margaret Fulton and the words "Margaret Fulton" and "Family Meals":
Woolworths' use of the words, however, extends beyond its logo, to the written and spoken words "Honest To Goodness" and "Honest To Goodness Family Meals". An issue is whether Woolworths has used Honest To Goodness as a trade mark on its own or as part of a composite trade mark, or whether the use of the phrase is descriptive use.
A case such as this reminds us of the importance of:
Conducting comprehensive searches before adopting a trade mark;
Obtaining adequate protection of trade marks by way of trade mark registration;
Ensuring correct and consistent use of trade marks and using trade mark notices, especially where an element is used as part of a composite trade mark;
Conducting regular trade mark audits to ensure the trade mark registrations reflect current use of the trade mark.
The questions this case will raise no doubt include:
- How far will Organic Marketing's reputation, and its registration, provide rights in the words Honest To Goodness?
- Has Woolworths used "Honest To Goodness" as a trade mark in isolation or as part of a composite trade mark, or in a purely descriptive sense?
- Did Woolworths conduct any searches before embarking on its promotional campaign to ensure no prior rights would be infringed?
For each party it is likely to be a lesson in how to protect, correctly use, and avoid infringing trade mark rights.
UPDATE: On 25 March 2011 the Federal Court refused Organic Marketing's application for an injunction. The parties have been ordered to mediation, to commence on Monday 4 April 2011, with a hearing set down for July 2011.
If you have any questions or require any assistance in relation to this topic, please email Rebecca Schiller.
2 Registration number 956076, dated 2 June 2003