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A mite too late: Dick Smith loses OzEmite
The trade mark battle of the ‘mites’ between Dick Smith and Roger Ramsey in Dick Smith Investments Pty Ltd v Roger John Ramsey  ATMO 16 serves as a reminder of the importance of actively using a trade mark to ensure its protection.
We often say that dates are critical when it comes to trade mark protection. This was especially so in this case.
In 2001, Roger Ramsey applied to IP Australia to register his trade mark ‘Aussie Mite’. Ramsey’s mark was for a yeast based spread food that bore similarities both in name and substance to Vegemite. Ramsey’s mark was eventually accepted for registration in 2006.
However, prior to Ramsey’s application, entrepreneur Dick Smith had applied and registered his own trade mark ‘OzEmite’ for a similar product.
On 7 May 2011, Ramsey applied to IP Australia to have Smith’s mark removed for non-use on the basis that it had not been used in the previous 3 years. Smith opposed the non-use application and (some say in response to it) launched his OzEmite brand in 2012.
The opposition to the non-use application was heard in December 2013. Although he supplied evidence, Smith did not attend or make submissions on the hearing of the non-use application, famously stating that he was “not going to spend one cent on lawyers”.
What was decided?
The delegate noted that the onus was on Smith to rebut the allegations of non-use. The evidence supplied by Smith failed to do so. Importantly, the delegate held that while Smith had publicised his intention to use the mark, he had not actually commercially used it during the relevant 3 year period (or indeed in the preceding 9 years). All commercial use had commenced only after Ramsey’s non-use application.
Accordingly, the delegate ordered that Smith’s OzEmite mark be removed from the register.
Despite his earlier refusal to use lawyers, Smith has appealed the Trade Mark Office’s decision. The matter will now be heard again by the Federal Court.
- This decision highlights our standard advice to clients is that registration of a trade mark is not the end of the process. A trade mark registration is susceptible to removal if it is not actually used commercially.
- Flooding the market with a trade marked product in response to a non-use application will not necessarily save a trade mark as the use will have commenced after the relevant non-use period.
- The decision to remove a trade mark is a discretionary one. The Trade Marks Office has in the past exercised its discretion not to remove a mark in certain circumstances despite lack of use. So, a removal opponent does itself no favours by not attending or making submissions to the Trade Marks Office.
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