Dick Smith has lost the name rights to his version of the popular Australian spread Vegemite, as yesterday Intellectual Property Australia ruled OzEmite products must be pulled from sale.
Adelaide small business AussieMite has emerged victorious from the legal battle which commenced in 2011, with IP Australia ruling OzEmite sounded too familiar and must be removed from sale.
AussieMite founder Rodger Ramsay filed to have the OzEmite trademark removed in 2011. Last year, when the case hit the courts, Smith commented to Mumbrella that he wouldn’t appear in court and he wouldn’t “spend one cent on lawyer”. At the time, he also said if he lost the case he’d just come up with a new name.
The OzEmite trademark was registered in October 1999, but it wasn’t approved until 2003 and Smith didn’t launch the product until 2012.
The AussieMite trademark was registered a few years later in 2001 and approved in 2006.
Under Australian trademark laws the owner of a trademark has the obligation to use it within five years, or a third party is able to have it removed from the register.
When Smith eventually launched the OzEmite product eight years after the trademark had been approved, Ramsay had already filed to have the trademark removed.
IP Australia decided that because the OzEmite brand had not been used in the three years prior to 2011, the trademark should be removed.
Principal trademark lawyer with Callinans, John Carroll, told SmartCompany 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 assumedly never ran such an argument,” Carroll says.
“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.”
In arguing against the removal of the OzEmite trademark, Smith had two possible defences – to say there had been barriers to using the trademark which prevented it from being used in the three years prior to the motion or to argue there were special circumstances which meant it should be maintained.
Carroll says when the OzEmite trademark was first filed in 1999, two other applications were also made for the same trademark; however, they lapsed.
“Kraft also tried to file for it back in July 1999 and a Mr Robert Telford also tried around the same time. These trademarks were not refused, but they did not complete the process and so they lapsed.”
AussieMite has been sold in Australia and the United Kingdom since 2001 and is made from predominantly Australian ingredients.
In response to the verdict, Rodger Ramsay posted a YouTube video about the trademark victory.
“Having won that battle we’re now backed by IP Australia and the decision that our trademark AussieMite is the only true Australian product to be sold under that name,” Ramsay says.
“He’s [Dick Smith] a multimillionaire and we’re not. We’re just workers with a small family Australian business.”
Ramsay says he hopes this is the end of the lengthy legal battle.
“We would hope he [Dick Smith] will respect the umpire’s decision, which has backed our brand,” he says.
“We would like for it to grow and for it to be in every household within Australia.”