Australian entrepreneur Dick Smith has been successful in a
trade mark dispute between his brand OzEmite, and family owned
brand AussieMite, which have competed in the Australian marketplace
Mr. Smith lodged a trade mark application for the mark OzEmite
in October of 1999 before its phonetic namesake, but did not launch
the mark for the sale of goods for eight (8) years, long after
AussieMite had made its way in to the market. AussieMite owner
Roger Ramsey sought to have OzEmite struck from the trademark
register to protect his company from its belated launch.
In 2014 the Australian Trade Marks Office removed the OzEmite
trademark from the Register of Trade Marks following an application
for removal to IP Australia on the basis of non-use. An applicant
can remove a trade mark from the Register if the trademark has not
been used for a continuous period of three years ending one month
before the day on which the non-use application is filed. Mr.
Ramsay filed an application for removal under section 92(4)(b) of
Under this section of the Act, the party opposing removal bears
the onus of establishing that the trade mark was used in good faith
in Australia during the relevant period. In a practical sense, this
translates to a genuine intent to use the mark for commercial
Dick Smith Investments Pty Ltd provided evidence of actively
publishing an intention to produce goods for sale using the trade
mark since it was registered, but IP Australia found the delay
between registration of the trademark and launch of the product was
Dick Smith Investments appealed the decision to have the OzEmite
mark removed from the Register of Trade Marks. The issues argued on
appeal were these:
Whether at any time during the statutory period (a continuous
period of three years ending one month before the day on which the
non-use application is filed) the OzEmite mark was used in relation
to the goods;
If not, whether there were circumstances that were an obstacle
to the use of the mark during the statutory period; and
Whether the court was satisfied that it is reasonable that the
trade mark should not be removed.
The Registrar and the Court have a discretionary power not to
remove a trade mark from the register even where the grounds for an
application are made out. One basis for this is that obstacles
preventing the use of a trade mark can legitimize its non-use, if
these obstacles are not brought about by the voluntary act of the
Dick Smith Investments claimed sales were delayed by
complications sourcing yeast, and that yeast substitutes had
limited success. This argument was advanced at first instance, but
it was there held that the obstacle was not sufficiently
established to overcome the application. On appeal, the Court held
that although there were development problems, these related to the
appellant's desire for a particular flavour to the product: a
delay that was internal, rather than caused by external
Despite this, the court accepted that publications relating to
OzEmite were undoubtedly made with the intent to promote interest
in the product after the registration date. It was held that the
trademark, at the time of particular publications, was being used
as a trademark to distinguish the prospective product from others,
and therefore satisfied use of the trademark in good faith under
The Court used its discretion to order that the mark remain on
the register, giving consideration to the notion that more
confusion would be caused if the OzEmite mark were removed.
Effectively, this means that both products will continue to
coexist, with the party applying for the initial removal bearing
the costs. This case accordingly demonstrates some of the dangers
in aggressively filing to deregister marks on the basis of
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Full Court has now given further guidance as to what will constitute an effective exclusive licence of a patent.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).