On 12 August 2016, Justice Katzmann of the Federal Court allowed Dick Smith Investments Pty Ltd (Dick Smith) to appeal the decision to remove his Ozemite trade mark from the Trade Mark Register for non-use. Mr Roger Ramsey, the owner of Aussiemite trade mark, applied to remove the mark asserting that Dick Smith had not used the mark for a continuous period of three years (the statutory period). We unpack this decision below, the circumstances of the dispute and what the court said about the use of a trade mark for the purposes of the Trade Marks Act 1995 (Cth).

Use of a Trade Mark

One of the issues on appeal was whether, at any time during the statutory non-use period, Dick Smith used the Ozemite trade mark in Australia. Ozemite was registered as a business name in 1999 and accepted for registration as a trade mark in 2003. It did not, however, reach supermarket shelves until mid-2012. At no time during the statutory period was the product on sale or offered for sale.

Mr Ramsey relied on E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (Gallo) to argue that using the trade mark required a single act of sale. The applicant drew on two observations from the Court in that matter, namely: 

  • The phrase ‘the course of trade’ encompasses the idea that the use of a trade mark is use in respect of ‘vendible articles’; and
  • A mark is only used in ‘the course of trade’.

Justice Katzmann, however, held that the reference to vendible goods should not be read in a way that limits the scope of trade mark use to goods that are actually sold. The phrase also did not imply that articles must be vendible at the time the mark is used. Vendible implies capable of being marketable as well as sold. Her Honour also noted that the Act itself contemplates the registration of trade marks for goods before they are physically traded. Justice Katzmann also later cited authority for the proposition that the term ‘the course of trade’ includes more than placement of goods on the market. It includes the steps necessary to produce goods and can include steps taken before the sale itself.

Did Dick Smith ‘Use’ the Trade Mark?

In her reasons, Justice Katzmann rejected this proposition, going on to say that Gallo did not provide authority for the idea that a single act of sale was necessary to defeat an application to remove a trade mark. A party may still use a trade mark in other ways without an act of sale.

Her Honour held that a party could either demonstrate the use of its trade mark through the following:

  • Preparatory steps coupled with actual trade or offer to trade; or
  • Preparatory steps and an existing intention to offer or supply goods in trade.

Such intention must be objective rather than subjective. Her Honour accepted that the Dick Smith parties did have an objective intention to use the trade mark, evidenced through two instances of publicity. The first was Mr Smith’s presence in a skit on The Chaser in August 2010 wearing at times a T-shirt bearing the Ozemite logo and surrounded by Dick Smith Foods products. The second was an interview with Dick Smith on Adelaide radio station 5AA in March 2011 discussing the decision of Woolworths to continue stocking Dick Smith food products. These instances used the trade mark in such a way to distinguish the prospective product from others. Their objective purpose was to revive and maintain interest in the product among potential purchasers once the product was released.

The Court ordered the respondent to pay the applicant’s cost of appeal and the application to the Australian Trade Marks Office

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The Federal Court’s decision offers guidance over what constitutes use of a trade mark under the Trade Marks Act 1995 (Cth). If you have questions or need help making an application to declare non-use of a competitor’s trade mark, get in touch with our intellectual property lawyers on 1300 544 755.

Carole Hemingway

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