Promotional media for a product can be use of a trade mark, even
if it is not on sale yet.
Business celebrity Dick Smith has, at least for now, won the
right to keep his OZEMITE trade mark registration.
On 12 August 2016, the Federal Court overturned a Trade Marks
Office decision to remove the OZEMITE trade mark from the Register
because of non-use, giving guidance on what activities will qualify
as "use" of a trade mark (Dick Smith Investments Pty Ltd
v Ramsey  FCA 939).
Aussiemite vs Ozemite: first to market vs first to Trade Marks
Dick Smith had been fighting for over 15 years with his rival,
Roger Ramsey, who produced a similar product under the AUSSIEMITE
From 1999, Dick Smith Foods promoted Australian alternatives to
popular overseas food items, including OZEMITE which was intended
to compete with Vegemite, then owned by a US company. The trade
mark registration dated from 1999.
Despite much publicity, problems with the product's taste
meant it did not come to market until 2012.
In the meantime, Roger Ramsey had been selling a competing
yeast-based spread called AUSSIEMITE since 2001, and had registered
the AUSSIEMITE trade mark in 2006, over protests from Dick Smith
In 2011, Roger Ramsey applied to have the OZEMITE trade mark
cancelled, alleging it had not been used for in good faith in the
three years prior to 2011.
Dick Smith Foods relied unsuccessfully on two instances of
a skit on the ABC's satirical "Chaser" television
program where Mr Smith wore a t-shirt featuring the OZEMITE logo;
an Adelaide radio segment where Mr Smith reiterated his intent
to launch an Australian OZEMITE product.
Dick Smith Foods appealed the Trade Marks Office decision to the
Media can be "use" of the mark in relation to the
There were three issues before the Court:
Was the Trade Marks Office wrong to find there had been no
If the trade mark had not been used, were there obstacles that
excused the non-use?
Should the Court exercise the discretion not to cancel the
Justice Katzmann held that "use" did not require that
any goods had actually been sold or offered for sale, but there
must have been an "objective intention to use the mark in
relation to the goods. She accepted that the purpose of Dick
Smith's media appearances was to "revive, if not maintain,
interest in the OZEMITE product" and so constituted an
"expression of a genuine intent to use the mark for commercial
purposes". This was sufficient to establish good faith
"use" of the trade mark.
In the event that she was wrong about there being
"use", she held that the production delays would not
excuse the non-use. The unavailability of necessary ingredients was
not the reason OZEMITE had not been brought to market. The reason
was Dick Smith's Foods' quest to achieve a particular taste
and this was not referrable to external trading
factors, which previous case law held were necessary.
On the third issue, Justice Katzmann considered that even if
there had been no "use" of the mark, she would have used
the available discretion to leave the mark on the Register. A range
of considerations led to this conclusion, including the way in
which Roger Ramsey had sought to trade off Dick Smith's
reputation in OZEMITE over the years. The equities between the
parties and the lessen of public confusion favoured the OZEMITE
mark remaining on the Register.
Ramsey has said that an appeal to the Full Federal Court will be
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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