Don't Forget to Register Your Trade Mark
Current proceedings in the Federal Court are a stark reminder to all businesses, no matter how big or small, to obtain legal advice before using any trade mark and also to register any trade marks that they are using or intend to use.
Supermarket retail giant Woolworths could face losses of $3 million if the Federal Court agrees with an independent organic food supplier that Woolworths’ latest product range and campaign featuring Australia’s much loved cooking and food guru, Margaret Fulton infringes its intellectual property. The claim filed by Organic Marketing Australia Pty Ltd centres around its trading name “Honest to Goodness”. Luckily, the little organic food supplier also had its trading name registered as a trade mark. Its not certain whether Woolworths obtained legal advice prior to launching their new “Honest to Goodness” product range and million dollar marketing campaign, but it was already registered by the little food supplier in 2003. Had it not been registered, it might have been difficult for Organic Marketing to establish any rights in relation to it. The benefit of registration is that even if Organic Marketing only used the trade mark on tents at farmers' markets, it cannot be used by a competitor – no matter how big or small - and gives the registered trade mark owner the right to seek an injunction against a competitor from using their trade mark.
The process would not be so straightforward if the trade mark was not registered. Had the organic supplier not registered, their claim against Woolworths would be less certain and more expensive. This is because rights in an unregistered trade mark only arise where a substantial reputation has been developed in that trade mark. In this instance, display at the local farmers’ market would have been difficult to rely on. Generally proof of unregistered trade marks are expensive and time-consuming. Against this background, a simple registration will over come all these obstacles.
The lesson that all businesses can draw from this matter are:
1. If you are using or about to use a word and/or logo in association with your goods or services, make sure you obtain legal advice first to check that it is not similar to an already existing trade mark. Otherwise, you might be infringing an existing trade mark and be required to withdraw your use of it from the market.
2. If you have established that no one else has rights to the trade mark that you are using or intend to use, make sure you register it so as to:
- deter others from using it and benefiting from your own brand reputation; and
- allow you to enforce your protected rights against anyone who uses it.
Jonathan Casson
Partner
T: +61 2 9390 8316
E: jonathan.casson@holmanwebb.com.au