The “Aussie Mite” trade mark has emerged successful in the first round of what might be a lengthy legal battle with the Dick Smith “Ozemite” trade mark.
In the trade mark battle between Roger & Elise Ramsey’s “Aussie Mite” and Dick Smith’s “Ozemite”, Collison & Co were delighted to represent Roger & Elise Ramsey in a successful application for removal of the Ozemite trade mark at IP Australia.
In short, both Aussie Mite and Ozemite had been on the Australian Trade Marks Register as registered marks for several years.
Whereas the “AussieMite” product had been on supermarket shelves for many years, the Dick Smith “Ozemite” product was only launched in 2012. This was despite an application in 2011 by Roger Ramsey to have the “Ozemite” mark removed from the Register on the basis of non-use.
And this is really the critical lesson for all trade mark owners. Any mark that is not in use (and the relevant period is three years) is vulnerable to a removal action on the grounds of non-use. Whilst there is an initial period of five years from date of application to put your mark into use, once that time period has elapsed, any mark that has not been used in a three year period is vulnerable to a third party seeking its removal on non-use grounds.
This is the avenue chosen by Roger Ramsey to seek removal of the Ozemite mark which, despite a registration dating from 1999 had, by mid 2011 never been used. Despite much fanfare by Mr Smith himself, no product bearing the “Ozemite” trade mark had been brought to market.
In a Removal Action the three main considerations are:
- Has there been use in the relevant (three year) period immediately prior to the application for removal?
- Were there valid obstacles that prevented use?
- Should the Registrar exercise her discretion to leave a mark on the Register despite there being no use and no valid obstacles to use?
These were the issues examined in the non-use removal action filed by Roger Ramsey against the “Ozemite” trade mark registration. We were delighted to represent Mr Ramsey in that matter and achieve a favourable decision at IP Australia: Dick Smith Investments Pty Ltd v Roger John Ramsey [2014] ATMO 16 (26 February 2014)
Rather than accept the decision of IP Australia, Dick Smith Investments have lodged an appeal with the Federal Court, so in that sense the battle continues.
We will report the outcome of that appeal when the matter is heard by the Federal Court.