Dick Smith Investments Pty Ltd (Dick Smith) was the applicant for and is the former registered owner of the subject trade mark, which is now owned by Ozemate Pty Ltd (Ozemate). Roger John Ramsey (Ramsey) applied to remove the trade mark from the register on the basis of non-use. This judgment of the Federal Court (Katzmann J) relates to an appeal by Dick Smith and Ozemate from the original decision by the Registrar of Trade Marks to remove the trade mark from the register.
The Trade Mark
The Australian trade mark in issue was OZEMITE (No. 811789), registered in class 29 for "Spreads and snack foods in this class" and in class 30 for "Yeast; yeast extracts; spreads and snack foods in this class".
Background and Issues
For around 20 years, Dick Smith and predecessors in title have promoted and sold various Australian-made food products intended to compete with similar foreign owned products. On 28 October 1999, Dick Smith applied to register the trade mark OZEMITE with the intention of using the brand for a spread similar to the popular Vegemite product. OZEMITE was subsequently registered on 23 October 2003, but Dick Smith's OZEMITE product was not made available for purchase until 2012.
After Dick Smith registered OZEMITE, Ramsey began selling a similar yeast-based spread under the brand "AussieMite" and applied to register AUSSIE MITE on 7 May 2001 for "spreads" and "spreads and snack foods containing yeast and yeast extracts". AUSSIE MITE was subsequently registered as a trade mark on 8 November 2006, despite opposition by Dick Smith.
Under section 92 of the Trade Marks Act 1995, a trade mark registration may be removed if the trade mark owner has not used the trade mark in Australia, or used the trade mark in good faith, in relation to the goods for which it is registered for a continuous period of 3 years.
In 2011, Ramsey applied to remove the registration of Dick Smith's OZEMITE trade mark on the basis that the mark had not been used by Dick Smith in relation to "spreads and snack foods", "yeast" and "yeast extracts" during the 3 years preceding Ramsey's removal application.
Dick Smith conceded that it had not sold or offered for sale any OZEMITE products during the relevant 3 year period, as the product was still in development and was not brought to market until 2012. However, Dick Smith relied on the following two promotional uses of the mark as evidence of use:
- an appearance on the "Chaser" television program on ABC in August 2010, during which Dick Smith (the well-known man of that name behind Dick Smith) wore a t-shirt featuring the OZEMITE mark; and
- a radio interview on 28 March 2011 during which Dick Smith indicated his intention to launch OZEMITE as part of expanding his Australian owned and made product range.
At first instance, the Registrar of Trade Marks upheld Ramsey's application and directed removal of the OZEMITE trade mark registration. Dick Smith appealed to the Federal Court.
The Federal Court (Katzmann J) upheld the appeal, deciding that Dick Smith had made sufficient use of OZEMITE in good faith during the relevant 3 year period.
Referring to Gallo and Estex, Katzmann J confirmed that the required use of the trade mark for the purposes of section 92 need not be limited to goods actually sold or to physical use in respect of a tangible object. Rather, the use must show a genuine intention to use the mark for commercial purposes in respect of the goods in the course of trade. This may include use in the context of merchandising, advertising or other promotional activities prior to the sale of the goods. In support of her view, Justice Katzmann also referred specifically to the definition of "trade mark" in section 17 of the Trade Marks Act 1995, which states that "a trade mark is a sign used, or intended to be used, to distinguish goods".
Considering both instances of promotional use relied on by Dick Smith, Katzmann J held that the television and radio appearances featuring the OZEMITE mark constituted an "expression of a genuine interest to use the mark for commercial purposes", noting that "they reveal uses of the mark in association with the goods in the course of their production and preparation for the market and in this way were uses of the mark in connection with goods in the course of trade. Their objective 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".
Interestingly, Katzmann J also indicated that she would have exercised her discretion to allow the mark to remain on the register even if Dick Smith was unable to show sufficient use. Justice Katzmann's belief that Ramsey was seeking to trade off Dick Smith's reputation in OZEMITE, by adopting a phonetically identical mark (AUSSIE MITE) which he must have realised was likely to cause consumer confusion or deception, was one of the various factors leading Katzmann J to that conclusion. Allowing both marks to co-exist on the register and both products to compete for attention in the market was considered the best means of alleviating the risk of AUSSIE MITE being mistaken as a Dick Smith product.
Justice Katzmann allowed the appeal and Dick Smith's OZEMITE registration remains on the register.
This decision reinforces the position established by the High Court in Gallo that very little evidence of use is required to defend an application to remove a trade mark for non-use.
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