In the recent decision of Dick Smith Investments Pty Ltd v Ramsey, the Court was called on to determine a dispute between the owners of two homophonic product names “OzEmite” and “AussieMite” and their respective trade mark registrations for those words in relation to yeast spread products. One interesting aspect of this case is that the Court found that the Dick Smith parties had used their trade mark during the relevant period, even though the commercial release of the product did not occur until almost a year later.

The case in more detail

The latest chapter of this long-running dispute started when Mr Ramsey was successful in his application to remove the OzEmite trade mark for non-use in the 2008-2011 period. The Dick Smith Parties appealed this finding to the Federal Court on three bases:

  1. that even without a product until 2012, the Dick Smith Parties had still “used” the OzEmite mark;
  2. they had faced obstacles to bringing their product to market; and
  3. that in the circumstances, the court should exercise its discretion not to remove the OzEmite mark from the trade marks register.

The Court found that despite the Dick Smith Parties having no actual product to sell, it was sufficient that the Dick Smith Parties had a fixed and existing intention to revive, if not maintain, interest in their OzEmite product among potential purchasers. This, when combined with the use of the trade mark to distinguish the prospective product from those of others, was enough to constitute use of the trade mark in good faith.1

The following conduct of the Dick Smith Parties – namely wearing a shirt featuring the “OzEmite” trade mark when on TV and also by talking on radio about the OzEmite product in a 26 second segment – was held by the Court to be valid bona fide use of the OzEmite trade mark once combined with extensive evidence of the investment in developing the product over an 8 year period.

The Dick Smith Parties were unsuccessful in showing that they had any relevant “obstacle” to bringing their products to market, as much of the difficulties faced were events internal to the Dick Smith Parties and not independent of its will.

While, the Court found that the OzEmite trade mark had in fact been used in the relevant period, the Court also found that even if use had not occurred the court would not exercise its discretion in favour of removal in light of all the circumstances of the case, taking into account the following:

  • the ongoing development of the OzEmite product over the years, reflecting a continuous genuine intention to use the mark in relation to the relevant class of goods;
  • the marketing efforts that generated a consumer awareness for OzEmite despite there being no vendible product in existence;
  • that Mr Ramsey had selected “AussieMite” in a deliberate attempt to misappropriate the reputation in “OzEmite”; and
  • the fact that the status quo with both marks on the register avoided a state of affairs that would lead to subsequent infringement claims and public confusion.

Lessons learned

For a rights holder facing difficulties getting a product to market, there are still prospects of preserving a prior registered trade mark. As this case makes clear, it is important to maintain good contemporaneous records of development efforts to evidence a genuine intent to use the trade mark. This evidence was crucial to the Court’s findings in this case.

The other recommendation flowing from this case is to consider investing in advertising and marketing for a product that has experienced delays in getting to market. If there is a concern that a non-use application may be made, “bona fide” use of the trade mark to generate an awareness among consumers that the origin of the product (or its prototype) is the rights holder’s organisation may be sufficient to defend against the non-use application or at least convince the court to exercise its discretion not to remove the trade mark.