Australian entrepreneur Dick Smith is famous for supporting Australian businesses that grow and produce products. One of the products he is associated with is ‘OZEMITE’, which was supposed to be a yeast based product similar to the Australian icon ‘Vegemite‘ (for our U.S. based readers, it is said that no Australian will travel anywhere in the world without a jar of Vegemite in their luggage – it is a national icon, like the kangaroo).
The problem for Dick Smith was that, despite registering the trade mark in 1999, by 2011 his company had still never sold any product in Australia by reference to the OZEMITE trade mark. It had a stated intention to supply goods, but had never actually done so.
In 2011, Roger Ramsey filed an application to remove the OZEMITE trade mark from the register on the basis of non use. Ramsey owns a business that also supplies a Vegemite-like product, called ‘AussieMite’, in Australia and the United Kingdom.
Following the filing of the non use application, Dick Smith Investments sold many hundreds of thousands of products under the OZEMITE trade mark. The Hearings Officer removed the trade mark from the register, choosing not to use his discretion to leave the trade mark registered.
Dick Smith Investments has filed an appeal in the Federal Court of Australia and the first directions hearing is listed for 2 May before Justice Buchanan.
This case shows that use of a trade mark outside the non use period will not stand in the registrant’s favour. This is where there is a compelling reason to remove the mark from the register, such as the existence of a similar trade mark and evidence of actual confusion.
Read the decision of the Court here.