Trademarks Ruling in OzEmite Matter or AussieMite Can but Dick Can't?
Friday 28 February 2014 @ 10.05 a.m. | IP & Media | Legal Research | Trade & Commerce
Well known Australian entrepreneur Dick Smith is reported (on Wednesday 27 February 2014) to have lost his trademark battle to keep his "true blue" spread, OzEmite's brand name. Intellectual Property Australia (IP Australia) has ruled in favour of "a small family owned company located in Adelaide, AussieMite." IP Australia has ruled that AussieMite owns the brand name and taken the view that the Dick Smith version of the brand name is too familiar and must be removed from sale immediately.
Background
Dick Smith's OzEmite trademark was registered in October 1999, but did not receive trade mark approval until 2003 and, following that, Dick Smith took until 2012 to launch the actual OzEmite product. AussieMite's trademark was registered a few years after Dick Smith's in 2001 and was approved in 2006. This time frame is important because under the trademark laws, the owner of a trademark has an obligation to use the trade mark within five years of registration or a third party is then able to have it removed from the trade marks register. Thus when Dick Smith eventually launched his OzEmite product eight years after the trademark had been registered, AussieMite founder Rodger Ramsay had already filed in 2011 to have the trademark removed from the trade marks register.
The Result
IP Australia decided that because the OzEmite brand had not been used in the three years prior to 2011, the trademark should be removed. Having established entitlement to the brand, IP Australia's ruling was then that "OzEmite" as a brand sounded too similar to "AussieMite" and must be removed from sale.
As SmartCompany reports quoting Principal trademark lawyer with Callinans, John Carroll:
". . .the case was decided because the OzEmite trademark hadn’t been used, irrespective of the fact it was registered first . . . There is a small caveat in the legislation that you can plead special circumstances and explain why the trademark hasn’t been used, but Dick Smith presumably never ran such an argument, . . . It’s simply a case where one trademark owner didn’t meet the requirements to show the trademark had been in use, while the other did.”
As SmartCompany reports further, Dick Smith had two possible defences he could have used against the removal of the OzEmite trademark form the Register:
- to say there had been barriers to using the trademark which prevented it from being used in the three years prior to the motion to remove it, or
- to argue that there had been special circumstances which meant it should be maintained.
The reason why these defences were not pursued by Dick Smith might be found in the reports by both The Age and SmartCompany that Mr Smith told media he was not going to be present at the case and was "not going to spend one cent on lawyers" and that "[I]f they [IP Australia] settle on striking it out, we’ll just come up with a new name”.
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