The Federal Court has refused an application for an interlocutory injunction against Woolworths Limited, in an action brought by Organic Marketing Australia Pty Limited (Organic Marketing) in the Federal Court of Australia. Organic Marketing alleged that Woolworths infringed its trade mark by using the words ‘Honest to Goodness’ in its advertising campaign featuring well known chef Margaret Fulton. The campaign includes a television commercial, newspaper and magazine advertisements, in-store marketing, a catalogue and on the Woolworths website.
Organic Marketing is the owner of the registered trade mark which includes the words ‘Honest to Goodness’ and the image of a tulip, and trades as ‘Honest to Goodness’. Organic Marketing had sought the injunction to restrain Woolworths from using the ‘Honest to Goodness’ and to require them to remove all references to those words from its website. The injunction would also have required Woolworths to cancel the registration of its domain name ‘woolworthshonesttogoodness.com.au’.
Organic marketing claimed they had first used the mark in 2003, and provided evidence that the business name appears on uniforms, invoices, product catalogues and other items, indicating the development of a reputation in the name and brand. Organic Marketing also claimed that Woolworths was aware of the business and ought to have known about the registration of its mark from at least 2009, when Woolworths had considered Organic Marketing as a supplier of certain products.
Woolworths accepted that the sign it used was a combination of the words ‘Margaret Fulton’s Honest to Goodness Family Meals’, but argued that the phrase ‘honest to goodness’ could not be separated from Ms Fulton or her recipes. Woolworths claimed the words were used in a purely descriptive sense, and that the phrase is an ordinary English expression which is not distinctive of goods or services.
Justice Katzmann held that there was a serious question to be tried in relation to the trade mark infringement under section 120(1) of the Trade Marks Act. But she held that the balance of convenience lay heavily against the granting of an interlocutory injunction due to the likely damage to Woolworths associated with ending the campaign, and the ability of Woolworths to meet an award of damages. The case will now proceed to a final hearing.
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