On 11 February 2016, the Federal Court handed down its judgment in the case of Dick Smith Investments Pty Ltd v Ramsey  FCA 939. The decision marked the end of the latest chapter in the trade mark battle between Dick Smith’s OzEmite and AussieMite. While this dispute has been in the media through its various stages, the Federal Court’s decision highlights the requirements for the use of registered trade marks.
Parts of this drawn out saga have featured in the media for well over a decade. In 1999, Dick Smith Investments (DSI) registered the name “OzEmite” as a business name in New South Wales, with the intention of creating an Australian owned and made yeast spread product to rival the now American owned Vegemite. DSI then applied to register OzEmite as a trade mark.
In January 2001, Roger Ramsey released his own yeast spread to combat Vegemite, under the name “AussieMite”. Ramsey filed an application in 2011 for the removal of the OzEmite trade mark for non-use, since the trade mark had not been used since its application in 1999. In mid-2012, OzEmite was made commercially available for the first time, but in February 2014, the Registrar of Trade Marks upheld Ramsey’s application to remove the OzEmite trade mark. DSI appealed the removal in the Federal Court.
Issues Before the Court
Under the Trade Marks Act 1995 (Cth) (the Act), a non-use application may be made to remove a trade mark, if that trade mark has remained registered continuously for a period of 3 years, and has not been used during Australia in that period (the statutory period). The two issues before the Court were:
- Whether DSI used the OzeMite trade mark in Australia during the statutory period; and
- If the trade mark was not used during the statutory period, whether the OzeMite trade mark was not used because there were circumstances that were an obstacle to the use of the trade mark.
DSI argued that the trade mark had been used during the statutory period for the purposes of the Act, during what they described as two “pre-launch publicity” instances. While the Judge doubted that the term “pre-launch publicity” was accurate, she agreed with this argument, stating that the purpose of the publicity “was to revive, if not maintain, interest in the OzeMite product.”
The Judge also found that DSI showed “an objectively ascertainable commitment” to producing a “vendible” product which would carry the mark, and that OzEmite remained under development during the statutory period.
With regard to the second issue of whether there was an obstacle to the use of the trade mark, DSI claimed that they suffered setbacks due to difficulty in sourcing “spent brewer’s yeast,” a key ingredient in vegemite and other yeast spreads. The Judge said in response to this “I am satisfied that for some time the Dick Smith companies did have trouble finding spent brewer’s yeast, but I am not satisfied that that difficulty presented itself as an obstacle to the use of the mark during the statutory period.” The Judge continued on to state that to qualify as an obstacle within (the meaning of the Trade Marks Act), the circumstances had to meet three conditions:
- First, they had to be “of a trading nature”.
- Secondly, they had to “arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner”; and
- Thirdly, there must be events “capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded”.
Although the objective of creating a product similar in taste and texture to Vegemite was of fundamental importance to OzEmite, the obstacle created did not arise from or comprise events that were external to the owner or independent of its will. While DSI was not successful in establishing that there was a sufficient obstacle, they were still successful in overturning the removal of the trade mark by establishing sufficient use of the trade mark during the statutory period.
As this case shows, the law of trade marks can be difficult to navigate, and disputes over trade marks can be costly and time consuming. Our Intellectual Property team has the knowledge and expertise to assist businesses, government, and not for profits in making trade mark applications a cost-effective and smooth process.