Honest to Goodness - Organic Marketing Australia Pty Ltd fighting Woolworths over their use of the phrase 'Honest to Goodness'
Honest to Goodness - ANOTHER trademark dispute?
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Trademarks
The most effective way to safeguard you against people "trading off" your business name, product or service, is to register a trademark. For more information, including about the justweb® trade mark, please read our
trademark registration article.
Yet again, another David versus Goliath fight looms over a trademark issue.
But, rather than it being a case of a big corporation throwing their weight
around against a mere speck on the business horizon, this time it's the small
organic food company Organic Marketing Australia Pty Ltd with their
branding "Honest to Goodness", located in Artarmon, Sydney,
versus the huge Woolworths company.
It seems that Woolworths are using the phrase "Honest to Goodness" to promote
their new family meals, with Margaret Fulton as the face of the line.
Organic claims a monopoly legal right since 2004 to the Honest to Goodness
brand. Now in 2011 in the court case it started it is using lawyers like
firemen, i.e. people to call AFTER a fire starts.
I've read last week's
court decision in which Organic failed to get an
injunction against Woolworths. To understand the failure, I've also reviewed
Organic's first Honest to Goodness logo trademark registration, its failure to
consistently use that same trademark, how it failed to use prudent intellectual
property notices in association with its brand to indicate to others their claim
to IP, and how this month it raced in to file a word trademark application for
HONEST TO GOODNESS.
Too much, and possibly too late (the case is ongoing). I'm informed Organic's
legal fees so far are probably approaching or well in excess of $20,000.
Woolworths has spent much more - it had six people from Freehills Lawyers attend
the court hearing. Woolworths has put in evidence that it has already spent $3
million in direct costs in its Honest To Goodness marketing campaign.
The Woolworths decision to use "Honest to Goodness" could have come about in one
of two ways (in my opinion):
1) Their lawyers checked out the logo trademark registered in 2004 by Organic
Marketing Australia Pty Ltd, and decided it was not strong enough to hold up if the owner
ever decided to legally challenge them. Note it was a logo trademark, not a word
trademark.
2) Someone may have screwed up on the Woolworths side and didn't do the required
trademark and domain name searches.
To be honest, it is unlikely the reason was #2, especially looking at the various
trademark filings earlier in March (2011).
Several things to note here are that it looks like Organic Marketing Australia
Pty Ltd
may have prepared and filed their logo trademark on their own to get
registration in 2004. Yet in early March 2011 they employed the services of a
well known law firm to register their word trademark (HONEST TO GOODNESS) and
this time they also slightly changed their description of services.
This evidence suggests their lawyers are seeking to improve the quality of legal
rights claimed by Organic Marketing Australia Pty Ltd and their branding, Honest To Goodness, in the earlier registration so it more
accurately represents what Organic Marketing Australia Pty Ltd (http://www.goodness.com.au/) do, rather than what they
intended to do when they first established.
I'm a big advocate of trademarks, and often they are your best form of
protecting the name of your business, products, or services. But things are not
always black and white: there are dark greys and light greys as well!
An example of a straight forward situation (black and white) might be perhaps if
a company decided to build a line of retail stores called "Honest to Goodness".
It might also be a straightforward case if a company decided to create a food
product (or something else covered by the "Honest to Goodness" 2004 registered
trademark).
Dark grey might be using the "Honest to Goodness" phrase as a tagline, and light
grey might be simply referencing the expression "Honest to Goodness" in text or
spoken word in an advertisement.
One test here is, whether the present dispute involves trademark use by Woolies,
or alternatively, mere use by Woolies of "Honest to Goodness" as a description
of their services.
"High value marketing campaigns should always involve a greater level of caution
in trade marks search work and general IP law checks. TV advertising campaigns
are an example of when this caution is prudent.
"There is in these cases an economic imperative. It is that so much money is
spent in such a short time period and it flies or dies on the availability for
use of an image, name, tag line or other identifier.
"Intellectual property law case books are strewn with examples of advertisers
caught in impending mid-air collisions. On the one side the company with an ad
to run has already sunk costs for preparing and scheduling a major ad campaign.
On the other side, an opponent suddenly enters the radar screen claiming greater
or prior monopoly legal rights to a trade mark, common law supporting a
reputation or goodwill or copyright in an image. The opponent typically sends an
initial demand letter and, failing compliance with it, seeks an injunction in
court action.
"The company with an ad to run is usually on the back foot and must make
immediate judgement calls. There's little time to make a decision. They have at
least three unhappy options. First, stop the marketing campaign and waste the
dollars spent. Second, negotiate to run the ad in return for money and other
conditions required by the opponent. Third, rely on its economic muscle and
defend with claimed legal rights.
"These unhappy options can be avoided if high value marketing campaigns are
designed and undertaken only after thorough trade mark searches and general IP
law checks.
Summary
My advice is, register a trademark. If you can't afford the services of a
competent and experienced IP Attorney, by all means, register a TM yourself.
BUT, as soon as you have the funds, get an IP Attorney to look it over and check
for "leaks" and areas for improvement. Legal costs are always going to be much
greater if you do this after your competitor's horses have bolted.
Your self-registered trademark may look fine to you, and it may pass initial
scrutinisation, but without expert advice you may be leaving big holes in your
protective legal armour.
Finally, if you do register a trademark, make sure it is CLEAR that it is registered
on your website, stationery and packaging - use the ® symbol to make it
known. You must also ensure that the trademark you registered matches what you
use in your business. Otherwise, any action you decide to bring will be more
complex and costly.
At justweb®, we use and recommend the services of:
Dilanchian Lawyers & Consultants
The University Centre, 210 Clarence Street
Sydney NSW 2000 Australia
Tel (02) 9269 0229
Email Noric Dilanchian
Web www.dilanchian.com.au
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21.03.2011
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A good copywriter knows which words
trigger the feelings that compel people to make decisions. They write with
flair, making it easy for people to be drawn into what they are saying about
your business, services or products. Read an an example of good copywriting for a
fictitious Sydney Mercedes Dealer, or
just "ok"
website copy for a Used Mercedes dealer.
The most effective way to safeguard you against people "trading off" your business name, product or service, is to register a trademark. For more information, including about the justweb® trade mark, please read our
trademark registration article.
My advice is, register a trademark. If you can't afford the services of a
competent and experienced IP Attorney, by all means, register a TM yourself.
BUT, as soon as you have the funds, get an IP Attorney to look it over and check
for "leaks" and areas for improvement. Legal costs are always going to be much
greater if you do this after your competitor's horses have bolted.
