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Intellectual property

Woolworths, Honest to Goodness: Alleged Infringement On IP

Woolworths faces IP fight with small retailer

By Michelle Hammond
Tuesday, 22 March 2011

An independent food retailer will go up against supermarket giant Woolworths today over use of the phrase “honest to goodness” in its latest advertising campaign, arguing it infringes intellectual property.

 

Organic Marketing Australia, which trades as Honest to Goodness, alleges Woolworths’ latest marketing push – starring celebrity chef Margaret Fulton – infringes its intellectual property.

 

Based in NSW, the family-owned business was started by Matt Ward and his wife in their home eight years ago, and also trades as a wholesaler and online retailer with around 30 staff.

 

It’s believed Ward sent a letter to Woolworths objecting to use of the term “honest to goodness”, alleging it infringes on his company’s trademark.

 

Ward claims this was followed up by a letter from his solicitor, stating that while Woolworths acknowledged receipt of the letter, it had not officially responded.

 

Woolworths has denied the allegations, maintaining the term “honest to goodness” is a common phrase that can be used freely.

 

“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,” a Woolworths spokesperson says.

 

“We will continue to work with the parties involved to resolve this matter.”

 

A spokesperson for IP Australia says Organic Marketing Australia has registered an ‘Honest to Goodness’ trademark and it is their choice as to how they manage it.

 

“They’ll choose whether to try to reach an outcome with Woolworths directly or whether the issue will be played out in the courts,” the spokesperson says.


However, he says businesses should research existing trademarks before entering the market to ensure they don’t inadvertently infringe on someone else’s trademark.

 

“That’s not to say this is the case in this instance, but searching the trademarks database is an important step for all businesses looking to enter a market with a newly branded product or service,” he says.


“If you’re looking at expanding overseas, you also need to think about how your trademark will work and look overseas; you'll want to register your trademark in key markets straight away.”

 

Trademark lawyer James Omond says a trademark infringement only occurs if someone else uses the words as a trademark.

 

“If it’s a descriptive phrase and the second user can show that they’re actually only using it describe their goods or services, it’s not going to be a trademark infringement,” he says.

 

Omond says small businesses should also be wary of taking on corporate giants.

 

“If you’re coming up against the 800 pound gorilla, they might have deeper pockets than you. You might have a good legal case but you don’t have the wallet to see it through,” he says.

 

“And even if you do win, the cost orders that you get mean that you’re still a loser; it costs a lot of money… not to mention the huge stress that goes with that.”

 

Comments (1)

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James Omond
The last comment attributed to me in this article is not correct. It is up to businesses to protect their own IP - but where you feel that you are the victim of unconscionable conduct, or a breach of the "anti-competition" laws, you may be able to take your case to the Australian Competition & Consumer Commission (ACCC).
To expand on my thoughts on this case - just because an [removed]such as "honest to goodness") is an everyday expression, does not mean that everyone can use it in their marketing campaigns. In this case, my interpretation of this is that "honest to goodness" is an exclamation, rather than a description.
If you then look at the Woolworths press release [http://www.australianwomenonline.com/woolworths-launches-the-margaret-fulton-honest-to-goodness-recipe-series/], you see that they use the expression in quote marks, and in a different colour. To me, that indicates that it is being used AS A TRADE MARK, rather than in its natural meaning.
So it looks like the little guy has a case here - the question is whether they have the bottle and the wallet for the fight, if Woolies doesn't back down.
Cheers,
James
James Omond , March 22, 2011
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