Alright for OZEMITE in the battle of the spreads

Despite taking more than a decade to put his OZEMITE product on supermarket shelves, entrepreneur Dick Smith has successfully defended his rights to his Australian trade mark.

In 1999, the well-known Australian adventurer, philanthropist and businessman proposed a product, OZEMITE to rival Vegemite, an iconic yeast spread that was made in Australia, but owned at the time by the US company, Kraft Foods Limited.

Less than two years later, Roger Ramsey, launched a yeast spread called AUSSIE MITE which kicked off a long-running, bitter feud over rights to the AUSSIE MITE/OZEMITE marks.

In the latest face-off between the pair, Ramsey tried to remove the OZEMITE mark from the Trade Marks Register on the grounds that it had not been used between 1 May 2008 and 1 May 2011. In fact, there had been no sales of the OZEMITE spread until 2012. Under Australian trade mark law, a mark that has not been used during the relevant non-use period will be removed from the Register unless certain circumstances apply.

During the hearing in the Federal Court, Katzmann J heard evidence of the difficulties Smith had faced in developing a yeast spread with all-Australian ingredients that also met his stringent requirement to ‘capture the taste and texture of the Vegemite he had known as a child’. During the 10-plus year product development period, Smith endured a shortage of brewer’s yeast, a key ingredient which had largely been tied up by Kraft. He also had trouble finding an all-Australian company with the expertise to develop the product to his exacting standards.

However, despite the lack of sales, there was no lack of publicity surrounding OZEMITE during the non-use period. Smith, a champion of Australian products and business, had regularly appeared in the media spruiking his goods including OZEMITE.

To rebut the non-use allegations, Smith relied on just two instances of ‘pre-launch publicity’. He claimed that the first ‘use of the trade mark’ was an appearance on the satirical news and current affairs show, The Chaser, in August 2010 during a 30-second skit where he wore a t-shirt with the OZEMITE trade mark. The second ‘use’ was during a radio interview in March 2011 where Smith, in less than 30 seconds, spoke of his commitment to releasing OZEMITE:

SMITH: We’ve got … I’ve been talking to Spring Gully down in Adelaide, they are a fantastic manufacturer, they have been manufacturing for us in the past. We’re also looking … you remember we were going to bring out Ozemite?

ANNOUNCER: Yes.

SMITH: The Ozemite, to compete with Vegemite, because Vegemite should be called Yankeemite because it’s owned in America, you know they try and make out it’s Australian … no, it’s American, and I’ve been trying to work on Ozemite well I am now committed, we are going to bring out Ozemite because, see, Vegemite has now changed; they’ve got Cheesy-Bite, … they’re making all these changes, well I want to go back to the original taste.

The Court found Smith had an ‘objectively ascertainable commitment’ to produce a ‘vendible’ product that would carry the OZEMITE trade mark. Smith’s two media appearances were found to be a use of the mark in ‘association with the goods in the course of their production and preparation for the market and were uses of the mark in connection with the goods in the course of trade’. Considerable funds had been expended and Katzmann J was satisfied the product remained under development during the non-use period:

I find that at the time of the broadcasts Mr Smith (the controlling mind and will of DSI, the then owner of the mark) had a genuine expectation that his intentions would shortly be realised. It just took longer than he predicted.

Currently, the OZEMITE mark remains on the Register and the spread on supermarket shelves. For the moment at least, Smith is a happy Vegemite!

BA LLB MIPLaw

Anita is a member of our trade marks team and has more than 10 years’ experience in trade mark clearance work, prosecution, oppositions and enforcement, both locally and internationally. She has also been involved in proceedings before the Australian Trade Marks Office and the Federal Court of Australia.