Dick Smith Successfully Appeals Against Deregistration Of “Ozemite” Trade Mark

Thursday 18 August 2016 @ 12.37 p.m. | IP & Media

Australian entrepreneur Dick Smith has won a Federal Court appeal that overturned a prior decision that would have seen him stripped of his trade mark for his yeast-based spread, “Ozemite”.  Rival brand “Aussie Mite” was initially successful in an attempt to remove Mr Smith’s trade mark for “non use”, but Justice Katzmann found that Dick Smith had successfully established “use” of the trade mark over the necessary period, even though there was no actual sale of the product until years after the mark was registered.  TimeBase has previously written about the case and Mr Smith’s decision to appeal to the Federal Court.

Mr Smith welcomed the decision, telling ABC News the court battle cut into profits from the sale of OzEmite that would otherwise be given to charity:

“We've spent over $500,000 on this court case, which is $500,000 less for the charity… But now I think, we'll give $1 million away this year.  Hopefully we'll be able to go on giving more away to important causes.”

However, Aussie Mite managing director Elise Ramsay told The Sydney Morning Herald that she would appeal the decision and “take it to the High Court if necessary”, saying the decision has implications for other small businesses because it “shows that a big company can come along, take over the business name, push them out and drain them”.

The Decision

Dick Smith’s registration of the Ozemite trade mark dates from 28 October 1999.  While initially he thought the spread would be available within six months, the product did not launch until 2012. Mr Ramsey launched his yeast spread, “AussieMite”, in 2001, and applied to register the name as a trade mark on 7 May 2001.  Both parties filed notices of opposition to the other’s trade mark.  Mr Ramsey withdrew his initial objection and “Ozemite” was registered on 23 October 2003.  Mr Smith’s opposition to Mr Ramsey’s trade mark for “Aussie Mite” failed, and the trade mark was registered on 29  March 2010.  On 1 June 2011, Mr Ramsey applied to remove the “Ozemite” trde mark, relying on section 92(4)(b) of the Trade Marks Act 1995:

(4)          An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: …

(b)          that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)            used the trade mark in Australia; or

(ii)           used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

However, Justice Katzmann found that Mr Smith’s trade mark had been used over the relevant period, as Mr Smith had continued to promote the trade mark throughout this time, including during a Chaser skit televised by the ABC.  He concluded that this promotion evidenced “a genuine intent to use the mark for commercial purposes”, saying the purpose was “to revive, if not maintain, interest in the OZEMITE product amongst potential purchasers so that there would be a viable market for the product once it was released” [at 157]. 

Justice Katzmann rejected an alternate argument from Dick Smith that there were trade obstacles that prevented the use of the mark, including difficulties procuring spent brewer’s yeast and achieving the taste and texture desired by Mr Smith.

However, he accepted a separate argument in the alternative and said that even if he was not satisfied there was use, he would have exercised his discretion to order the mark to remain on the Register of Trade Marks, arguing that removing the “Ozemite” trade mark would actually increase public confusion [at 236]:

“The extent of publicity generated by Mr Smith over many years, including the extraordinary publicity given to the Ozemite name at the time of its conception, suggests that for many years to come a product which has the identical sound will be associated, at least in the minds of a not insignificant number of people, with Mr Smith.  The best way of dispelling the notion that AUSSIE MITE is a Dick Smith product is to enable the two products to compete for attention on the supermarket shelves where consumers can see clearly which is the Dick Smith product and which the Ramsey one.”

His Honour allowed the appeal, and ordered costs to follow the event.

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