The Federal Court of Australia recently overturned a decision of the Trade Marks Office to remove OZEMITE from the Trade Marks Register on the basis of non-use.

The Court decided that use of a trade mark can include promoting a product before it is available for purchase. The outcome is encouraging for traders with a registered trade mark that face a long lead-up time to launch.

'Concentrated yeast extract' may sound unpleasant - but it's truly delicious. In Australia, VEGEMITE is the most famous kind, but other brands include MARMITE, OZEMITE and AUSSIE MITE. 

In 1999, businessman Mr Dick Smith coined the term OZEMITE for an all-Australian concentrated yeast extract. After registering OZEMITE as a trade mark, Mr Smith took the brand to the media, spreading the word (excuse the pun) that 'a new yeast extract was in town'. However, supply setbacks meant OZEMITE was not available for purchase until 2012. 

In 2001, Mr Roger Ramsay began selling a concentrated yeast extract product called AUSSIE MITE. In 2011, Mr Ramsay successfully applied to have OZEMITE removed from the Register on the basis of "non-use". This decision was appealed to the Federal Court of Australia, which overturned the original decision.

Mr Ramsay argued that use means an "occasion of trade" in respect of "vendible articles", meaning there must be "at least a single act of sale". Given the first jar of OZEMITE was not sold until 2012, Mr Ramsey argued that OZEMITE should be removed.

The Court did not agree. Justice Katzmann stated that "vendible" does not mean sold, rather it means "capable of being sold" and that the very definition of a trade mark is "a sign used or intended to be used, to distinguish goods...". Justice Katzmann held that there was a genuine intention to use OZEMITE and the marketing expenditure and promotional efforts demonstrated this.

Supply setbacks should not mean that the trade mark had not been put to "genuine use". If "a single act of sale" were indeed the relevant test, it would leave traders who put goods on the market but fail to make a sale vulnerable to having their marks removed.

Authors

Oliver Smith

Oliver Smith

Associate
Australia

Call me on: +61 2 9226 9888

Shehana Wijesena

Special Counsel
Australia

Call me on: +61 2 9226 9888