Brand giants George Weston Foods (GWF) and Golden Circle battled it out in the Australian Trade Marks Office, in a dispute about the use of trade marks containing the word GOLDEN in respect of various foodstuffs in Australia.
GWF filed a trade mark opposition against Golden Circle’s trade mark application for GOLDEN CIRCLE. The application was filed for pastries, cakes, fresh biscuits, bread sticks, pastry, snack foods in the nature of bakery products amongst other goods.
GWF relied on 24 trade mark registrations comprising the word GOLDEN registered in respect of various bakery products. Golden Circle relied on 25 trade mark registrations containing the words GOLDEN CIRCLE (three of which were registered in respect of bakery products).
Both parties filed substantial evidence to establish their reputation in their respective trade marks.
Evidence was also filed in respect of the descriptive use of the word GOLDEN for bakery products, the number of concurrently registered trade marks in classes 29 and 30 containing the word GOLDEN and the prior registrations of each of the parties. The evidence also showed that both parties used red and yellow colour schemes, as did many other Australian food and beverage companies.
The hearing focused on sections 44(1), 59 and 60 of the Trade Marks Act 1995.
Trade mark identical or similar to a prior registration or pending application: section 44
Hearings Officer Thompson held that there was no deceptive similarity between the GOLDEN and GOLDEN CIRCLE trade marks. He took the view that the word CIRCLE turns the word GOLDEN into a phrase that is of “significantly different character” from the word GOLDEN.
Applicant not intending to use trade mark: section 59
GWF did not submit evidence which displaced Golden Circles’ presumed intention to use the GOLDEN CIRCLE trade mark in respect of the bakery goods.
Golden Circle may have had plans to expand or to acquire and rebrand a business which is already operating but Hearings Officer Thompson found that Golden Circle was not obliged to disclose the scope of any such plans.
Trade mark that is similar to a trade mark that has acquired a reputation in Australia: section 60Hearings officer Thompson concluded that given the extensive and longstanding reputation of the GOLDEN and GOLDEN CIRCLE trade marks, it was unlikely that the application to register GOLDEN CIRCLE in relation to a range of bakery products would deceive or cause confusion to consumers.
Both trade marks had been used in the Australian market for over 30 years and Hearings Officer Thompson was satisfied that both brands were very well known.
GWF’s opposition was dismissed.