Aussie icon, Dick Smith, has resisted attempts to remove his OZEMITE trade mark registration after winning his appeal in the Federal Court against a Trade Marks Office decision to remove his OZEMITE trade mark for non-use. Dick Smith registered his brand in 2003 for his “all Australian” spread to rival the iconic Vegemite now owned by the US based Kraft company. However, production difficulties ensued and his registered trade mark was threatened by a removal action brought by a competing Adelaide family business, Natural Foods, that makes the AUSSIEMITE branded spread.

Although OZEMITE was not available for sale until 2012 (it took Dick Smith years to recreate the elusive flavour/ texture of Vegemite), he garnered public support for the product through extensive media promotion and memorable marketing (eg. the OZEMITE hat below) and the Court found that promotion and the development steps was sufficient to establish trade mark use in this case.

Justice Katzmann held that the High Court in Gallo was not saying that a single act of sale was necessary to defeat a removal application, rather, that a single act of sale was sufficient to establish trade mark use. Her Honour concluded that use as a trade mark may be demonstrated in other ways and include the steps taken to produce a product prior to an offer for sale. Her Honour noted the sustained attempts and expenditure on developing a marketable product showed the necessary commitment to producing a marketable product under the brand. Further that the promotion and advertising was use of the mark in association with the production or preparation of goods for market and therefore use in the course of trade. The decision is consistent with the pre-Gallo case law that steps preparatory to sale or an offer of sale can amount to “trade mark use” provided the necessary intention exists to use the trade mark on the goods.

Her Honour also commented that whilst the get up for the OZEMITE/AUSSIEMITE spreads was quite different, the marks were very similar and the evidence showed that OZEMITE was much more well-known. If Dick Smith’s product disappeared from supermarkets, consumers might wonder whether AUSSIEMITE was associated with or produced by Dick Smith. Allowing the products to compete side by side on supermarket shelves and the OZEMITE trade mark to remain on the Register was the best way to dispel any consumer confusion. Her Honour also noted the registration should be retained so Dick Smith didn’t lose his protection against an action for trade mark infringement.

The case highlights that whilst owners need to use or lose their trade marks, a lack of commercial sales of products may not be fatal to retaining a trade mark registration.