Dick Smith Investments Pty Ltd v Ramsey

The parties involved in the case, Dick Smith Investments Pty Ltd and Ramsey, contested the decision of the delegate of the Registrar of Trade Marks to remove the Ozemite trade mark from the Register due to non-use. The dispute hinged on whether the use of the Ozemite name during the non-use period constituted sufficient use of the trade mark, despite no sales of goods under the Ozemite name and none being available for sale at that time. Additionally, the Dick Smith parties argued that there was an obstacle to the use of the mark within the meaning of s 100(3)(c) of the Trade Marks Act 1995 (Cth), which contributed to the delay in launching the OzEmite product. They contended that the obstacle was the difficulty in sourcing spent brewer’s yeast, a key ingredient in Vegemite, which they aimed to replicate. This difficulty arose from Kraft, the American purchaser of Vegemite, cornering the market on spent brewer’s yeast through contracts with major Australian breweries. The court was required to determine whether the publicity generated by Dick Smith during the non-use period constituted use of the trade mark, whether the alleged obstacle justified the delay in product launch, and if the court should exercise its discretion to allow the Ozemite trade mark to remain on the Register.

The court reasoned that it was likely there would be less confusion if the Ozemite mark remained on the Register. The extensive publicity generated by Dick Smith over many years, including significant attention at the time of the Ozemite name's conception, suggested that for years to come, a product with an identical sound would be associated with Dick Smith. The court believed that the best way to dispel the notion that Aussie mite was a Dick Smith product was to enable the two products to compete for attention on the supermarket shelves, allowing consumers to distinguish between the Dick Smith and Ramsey products. The court concluded that DSI used the Ozemite mark in Australia during the statutory period in relation to the goods to which the non-use application related. Even if the court were not convinced of this, it would exercise its discretion to order that the mark remain on the Register. The court also ordered that costs follow the event, and that Ramsey pay the Dick Smith parties’ costs of both the appeal and the application to the Trade Marks Office.

The orders of the court were as follows: 1) the appeal be allowed; 2) the directions of the delegate of the Trade Marks Registrar made on 25 February 2014 be set aside; and 3) the respondent pay the applicants’ costs of the appeal and of the application to the Australian Trade Marks Office. The entry of orders was governed by Rule 39.32 of the Federal Court Rules 2011.