Dick Smith Loses IP Battle
Published on April 12, 2014 by Patricia Monemvasitis
In a real life David and Goliath story, an
Richard Ramsay, the owner of the product and trademark known as ‘AussieMite’ became involved in trade mark litigation with one of Dick Smith’s entities which owns ‘OzeMite’. Some proceeds from the sale of the OzeMite products are donated to charities.
The OzeMite trademark application was lodged in October 1999, approved in 2003 and the product bearing the trademark as launched in 2012 whereas the AussieMite mark application was lodged in 2001 and approved in 2006.
Mr Ramsay commenced proceedings against Dick Smith in 2011 to ensure that consumers did not get confused between the two marks. Mr Smith’s OzeMite product was in fact launched nine years after the ‘OzeMite’ trademark had been approved and after Mr Ramsey’s application was filed.
Mr Ramsay contended that ‘OzeMite’ had not been used for three continuous years prior to the date of filing of the application and accordingly, Mr Smith’s trade mark registration should be removed from the register.
The law states that a third part may apply to the removal of a trademark registration where the owner has not used the trademark as a trademark for a continuous period of three years since registration. Such an application cannot be filed prior to five years after registration of the trademark.
Mr Ramsay, with IP Australia having found in his favour, states “We would hope he [Dick Smith] will respect the umpire’s decision, which has backed our brand”.
Mr Smith has 28 days to appeal the decision.