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 Office
Dick Smith had been fighting for over 15 years with his rival, Roger Ramsey, who produced a similar product under the AUSSIEMITE trade mark.
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 Foods.
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 "use":
- a skit on the ABC's satirical "Chaser" television program where Mr Smith wore a t-shirt featuring the OZEMITE logo; and
- 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 Federal Court.
Media can be "use" of the mark in relation to the goods
There were three issues before the Court:
- Was the Trade Marks Office wrong to find there had been no use?
- 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 registration?
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 filed.