Organic food SME loses bid to stop Woolworths ad campaign, but trademark trial to proceed

A small organic foods business has failed in its attempt to stop Woolworths from using the phrase “honest to goodness” in its latest advertising campaign, but its founder says the company can still put a strong case in an upcoming trial that will test whether Woolworths has infringed the SME’s brand.

Organic Marketing Australia, which trades as Honest To Goodness and has trademarked the name, asked the Federal Court last week for an injunction to stop the company running its new marketing campaign fronted by well-known cook Margaret Fulton.

The supermarket giant’s campaign, which features a logo with the words “Margaret Fulton’s Honest to Goodness Family Meals”, has been supported by an advertising spend that Woolworths general manager of marketing, Luke Dunkerley, estimated to be worth $3 million.

However, Justice Anna Katzmann refused the interlocutory injunction on Friday, meaning Woolworth can continue with its campaign.

Katzmann said that stopping the campaign would have a bigger impact on Woolworths than it would on Organic Marketing Australia.

“I appreciate that damage to a small business may have a greater impact than the same amount of damage to a large enterprise.”

“On the evidence before me, however, the damage to Woolworths far outweighs any damage to the applicants’ business that the continuation of the campaign may cause in the period until final judgment.”

The case will now move forward to a full Federal Court trial in three weeks time, unless the parties can come to mediated agreement in the coming weeks.

But the founder of Organic Marketing Australia, Matt Ward, says the fight is not over.

“We are disappointed but not totally surprised that the injunction was not granted,” he says.

“Woolworths have spent a great deal of money on their Honest to Goodness marketing campaign, and a great deal of money defending it as well.”

“However the fact the full trial has been pushed forward is a positive outcome. We believe we have a strong case and remain committed to the belief that Woolworths is using Honest to Goodness as a brand to promote their business.”

Ward remains concerned that the advertising spend around the Woolworths campaign is so prolific that customers could become confused as to the association between the two companies.

“We believe that our reputation, which has honesty and integrity at the core, will be seriously tarnished by any assumed association with Woolworth,” Ward says.

“In the natural and organic food industry reputation is everything, if people don’t trust you they simply won’t buy from you.”

Woolworths spokeswoman Clare Buchanan told reporters outside court that the company remains “strongly of the view ‘honest to goodness’ is a commonly-used term which Woolworths and other parties should be free to use.”

“But we continue to be open to discussion with the applicant to resolve this issue.”

Katzmann’s judgement on the application for an injunction suggests the outcome of the trial remains very much up in the air.

While Katzmann wrote that “on the question of trademark infringement I am therefore persuaded that there is a serious question to be tried” she did say losses on the part of Organic Marketing Australia would be “very difficult to quantify”.

Woolworths marketing boss Luke Dunkerley told the court that the campaign was conceived without the knowledge of Organic Marketing Australia and was designed in part to attack a campaign from Coles in which celebrity chef Curtis Stone promotes family meals for under $10.

He said the use of the phrase “honest to goodness” had “resonated with him as one his mother and grandmother often used”.