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Woolworths' trademark battle continues
Judgment in on ASIC application against Aussie firm:

Woolworths' trademark battle continues

A Sydney organic food supplier went up against supermarket giant Woolworths yesterday in a fight over the supermarket's latest marketing campaign.Launched in the Federal Court of Australia on 16…

A Sydney organic food supplier went up against supermarket giant Woolworths yesterday in a fight over the supermarket's latest marketing campaign.

Launched in the Federal Court of Australia on 16 March, Organic Marketing Australia, which trades as Honest to Goodness, has alleged that Woolworth's Honest to Goodness Family Meals campaign that features the prominent cook Margaret Fulton infringes its intellectual property, objecting to the use of the phrase "honest to goodness".

Honest to Goodness was founded by Matthew Ward in 2002 and operates as an importer, exporter, wholesaler, distributor and online retailer of organic and natural foods.

In Woolworths' Honest to Goodness campaign, the supermarket's "fresh food chef" Margaret Fulton states, "I'm proud as punch to be bringing my Honest to Goodness Family Meals to Woolworths" and promises honest prices and fresh food.

In the wake of this week's interlocutory hearing, a Woolworths spokesperson said the supermarket strongly denies the allegations made by Organic Marketing Australia.

"We maintain that 'honest to goodness' is a commonly used term which Woolworths and other parties should be free to use," the spokesperson said.

"The phrase 'honest to goodness' describes something which is essentially simple and genuine and in the context of Margaret Fulton's family meals, also nutritious. We will continue to work with the parties involved to resolve this matter."

Discussing the case, Griffith Hack's Sally Nicholson explained that in order to infringe a registered trademark, the words or phrase "as a trademark" must be used rather than just being used as a normal English phrase.

Nicholson noted the 1999 Federal Court decision Registrar of Trade Marks re Woolworths in which Woolworths successfully appealed against a decision by the trademarks office to disallow the supermarket's application for the registration of "Woolworths Metro" on the basis that it was likely to mislead or confuse consumers.

"The court held that when considering a trademark which includes a word that is notorious - Woolworths is a notorious word - you're entitled to take into account the level of notoriety of that mark as a factor which may reduce the likelihood that consumers would be confused or deceived," she said. "The court found in that case that Woolworths was a word inherently likely to be noted and remembered," she added.

"In the current situation, Woolworths appears to be using 'honest to goodness' in conjunction with the words Margaret Fulton," Nicholson said. "Margaret Fulton is not only the name of a well-known person but it's also a registered trademark."

Briana Everett

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