In essence, this case concerns the competing interests of two long established businesses, both of which had used marks which contained the element “...GOLDEN...” in relation to various foodstuffs in Australia for over 60 years.

George Weston Foods Limited v Golden Circle Limited [2013] ATMO 41 (11 June 2013)

An opposition was filed by George Weston Foods Limited (‘GWF’) against Golden Circle Limited’s (‘GCL’) application for “pastries, cakes, fresh biscuits, bread sticks; pastry, snack foods in the nature of bakery products” (‘Opposed Goods’). The application was however filed for a variety of food products and beverages in classes 5, 29, 30 and 32.

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Establishing reputation

A great volume of evidence was filed by both sides as to the reputation of the GWF GOLDEN series of trade marks and the GCL GOLDEN CIRCLE series of trade marks. Evidence was also filed on the descriptive use of the word GOLDEN for bakery products, the number of concurrently registered trade marks in classes 29 and 30 (183) containing the word GOLDEN and the prior registrations of each of the parties.

GCL had 25 registrations for trade marks containing or consisting of the words “GOLDEN CIRCLE” covering goods in Classes 5, 29, 30, 31 and 32 (five of these in Class 30, of which three covered the Opposed Goods) such as:

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GWF relied on 24 registrations covering various bakery products in Class 30 for trade marks containing or consisting of the word “golden” such as:

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The evidence also showed that both parties had used their respective marks in red/yellow colour schemes, as did many other food and beverage companies in Australia.

The grounds pressed at the hearing were 44(1), 59 and 60 of the Trade Marks Act 1995 Cth (the Act).

Section 44: trade mark identical or similar to a prior registration or pending application

Holding that there was no deceptive similarity, Hearing Officer Thompson stated that for bakery products in particular, the element CIRCLE turns the word GOLDEN into a phrase of a "significantly different character” from the word “golden” per se.

Section 60 – Trade mark similar to a trade mark that has acquired a reputation in Australia

The Hearing Officer concluded that based on the parties’ evidence and based on his own knowledge as a consumer of the parties’ goods bearing the GOLDEN and GOLDEN CIRCLE trade marks over more than 30 years, he was satisfied both brands would be very well known.

The extensive and longstanding reputation of not only the Golden Marks, but also that of the GOLDEN CIRCLE “house mark” (albeit in another segment of the grocery market), led the Hearing Officer to conclude that use of the trade mark for the Opposed Goods was not likely to deceive or cause confusion.

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Section 59 – Applicant not intending to use trade mark

The Opponent had not by its evidence displaced the Applicant’s presumed intention to use the Trade Mark for the Opposed Goods.

The Hearing Officer stated that in principle the Applicant may, unbeknownst publicly, have plans to expand, or to acquire and re-brand a business which is already operating in the relevant field, but he did not believe it was obliged to disclose the scope of any such plans in these proceedings.

The opposition was dismissed.