Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 – Case Summary

Author: Jasmine Burrows, Progressive Legal

Facts

The Applicant, Dick Smith Investments Pty Ltd (Dick Smith), is a company that promotes and sells different Australian-made food products.  

In 1999, Dick Smith applied to trade mark the name “OZEMITE” to use it for a spread similar to Vegemite. The trade mark was officially registered in 2003, but the actual Ozemite product wasn’t available until 2012. The trade mark was registered in class 29 for “Spreads and snack foods” and in class 30 for “Yeast; yeast extracts; spreads and snack foods”. 

After registering “OZEMITE,” the Respondent, Roger John Ramsey (Ramsey) started selling a similar yeast-based spread called “AussieMite” and also tried to register the name “AUSSIE MITE” in 2001 for spreads and snacks containing yeast. He managed to get the name registered in 2006, even though Dick Smith opposed it.  

According to Section 92 of the Trade Marks Act, 1995 (The Act), a registered trade mark can be removed from the Trade Mark Register if the owner hasn’t used it for the specified goods or services claimed for at least 3 years. 

In 2011, Ramsey attempted to take away Dick Smith’s registration for the name “OZEMITE” because he believed Dick Smith hadn’t used it for spreads and yeast-related products in the 3 years before Ramsey’s request.   

Dick Smith admitted that they didn’t sell or offer any Ozemite products during that 3-year period because the product was still being developed and wasn’t available until 2012. However, Dick Smith used two instances to show they had used the name: 

• In August 2010, Dick Smith appeared on the TV show “Chaser” wearing a t-shirt with the word “OZEMITE” on it.
• On March 28, 2011, Dick Smith talked on the radio about wanting to launch Ozemite as part of his range of Australian-made products. 

At first instance, the Court agreed with Ramsey and said the OZEMITE trade mark should be taken away. But Dick Smith appealed this decision and took the case to the Federal Court.

Issues

Did the OZEMITE trade mark actually get used during the period when it should have been used according to the law? 

Were there any valid reasons that could excuse the lack of use of the trade mark? 

Did the Court believe that the trade mark should remain in place and not be taken away? 

Decision

The OZEMITE trade mark actually was used during the period when it should have been used according to the law.  

It was concluded that there were no valid reasons that could excuse the lack of use of the trade mark.  

The trade mark should remain in place and should not be taken away.

Reasoning

Did the OZEMITE trade mark actually get used during the period when it should have been used according to the law?

Justice Katzmann confirmed that using a trade mark as required by section 92 does not have to be limited only to physically selling products or using the trade mark on tangible items.  

What’s important is that the use must genuinely show an intention to use the trade mark for business purposes related to the products within the industry.  

This can include using the trade mark in things like advertising, promotions, or merchandise even before the actual sale of the products.  

This interpretation is supported by the definition of “trade mark” in section 17 of The Act, which says a trade mark is a sign used or meant to be used to distinguish products.  

Looking at the instances where Dick Smith used the trade mark for promotional purposes, Justice Katzmann decided that the appearances on television and radio featuring the OZEMITE trade mark indicated a real intention to use the trade mark for business purposes.  

These instances showed that the trade mark was used in connection with the products during their production and preparation for the market. The goal was to generate interest in the OZEMITE product among potential buyers, making sure there would be a demand for the product when it was finally released. 

Were there any valid reasons that could excuse the lack of use of the trade mark?

Justice Katzmann’s decision that the Ozemite trade mark had been used effectively secured a win for Ozemite. However, Her Honour also looked into whether Dick Smith had valid points about there being obstacles to using the trade mark and if it was reasonable for the Court to decide that the trade mark shouldn’t be removed from the official list. 

Dick Smith had claimed that he couldn’t use the trade mark because certain circumstances were making it difficult. Specifically, he couldn’t get a key ingredient, which is spent brewer’s yeast used to make spreads like Vegemite. He said this was because Kraft had taken control of the market through agreements with major Australian breweries. 

Justice Katzmann noticed that the challenge of getting enough spent brewer’s yeast became even harder because Dick Smith was trying to recreate the original taste of Vegemite. Her Honour pointed out that these two challenges were connected because the original Vegemite was made using this type of yeast. 

However, there was a problem with Dick Smith’s argument. He himself admitted that the reason for the delay in releasing the product was his team’s relentless pursuit of perfection. On the other hand, Ramsey managed to release his similar product within the same time frame because he wasn’t aiming for the exact same taste. 

Given this, Dick Smith couldn’t effectively argue that he couldn’t launch his product due to factors beyond his control. Essentially, his own decisions and priorities in trying to perfect the product were the main reasons for the delay, rather than the external circumstances he claimed were obstacles. 

Did the Court believe that the trade mark should remain in place and not be taken away?

Justice Katzmann emphasised that the Court has a wide range of decision-making powers under section 101(3) of The Act. This section states that if the Court believes it’s reasonable, they can choose to keep a trade mark registered, even if the reasons for removing it are met. 

According to this section 101(3), Katzmann J said that even if the Ozemite trade mark didn’t meet the requirements for use as outlined in section 92(4)(b), Her Honour would have decided to keep it registered in order to prevent confusion among the public. 

Katzmann J explained that due to the well-known history of the Ozemite brand, it had a “residual reputation.” Removing it from the register might have led consumers to confuse it with its competitor, Aussiemite. In other words, people might mix up the two brands because they are similar. So, to prevent this confusion, the decision was made that it would be better if both the Ozemite and Aussiemite brands were allowed to remain. 

Need Trade Mark Help?

Please get in touch with us today via phone or the contact form on this page.

1800 820 083