This is a story of what not to do in a trade mark dispute: refuse to turn up.

Since 2003, well-known Australian businessman Dick Smith has held a trade mark registration for the word OZEMITE. Smith is known for his fierce nationalism and opposition to foreign acquisitions of Australian companies. Since 1999, Smith has operated Dick Smith Foods, and marketed his products as a crusade against foreign ownership of Australian food producers.

For the uninitiated, Dick Smith Foods focuses on selling foods produced in Australia by Australian-owned companies. Smith himself has made his parochialism well known in the media saying things such as the following after the launch of his Redheads parody match stick brand “D***heads”:

We would have to be complete d***heads to let most of our famous Australian brands be taken over by foreign companies. Brands such as Vegemite, Aeroplane Jelly, Arnott’s, Speedo and Redhead Matches are in overseas hands. This means the profit and wealth created goes overseas and robs our children and grandchildren of a future.

The OZEMITE brand appeared on Australian supermarket shelves in June 2012 as an Australian owned alternative to the world-famous Vegemite brand. Vegemite is a brand of Mondelez Australia Foods, which is a subsidiary of the US company Mondelez International. However, the threat to Dick Smith’s brand did not come from Vegemite. Instead, a competitor called AussieMite, which has been selling a Vegemite alternative since 2001, has applied to have the OZEMITE trade mark removed from the Australian trade mark register for non-use.

Under Australian law, if, after the first five years of being registered, a trade mark is not used in Australia for a consecutive period of three years, it can be removed from the trade mark register for non-use. As the OZEMITE trade mark was on the register but unused between the priority date in 1999 and the launch of the product in 2011, it became susceptible to removal for non-use.

What is curious about this case is that even though the trade mark was not used between 1999 and 2012, it has become a household name in Australia between 2012 and 2013. Under the Australian Trade Marks Act, the three year period of ‘non-use’ commences on the date that is one month before the non-use application was lodged. A quick search of the trade mark register shows that the application for removal was lodged on the 9th of June 2011. This means that any use of OZEMITE by Dick Smith Foods prior to 9 May 2011 will be enough for the non-use application to fail and the trade mark to stay registered. In addition, IP Australia are able to take into account other discretionary factors, such as the fact that the brand has become well known between the non-use application being lodged, and a hearing being held.

Despite only requiring a small use of the trade mark prior to 9 May 2011, and being able to argue to retain his trade mark on the basis of the use between 2012 and 2013, Dick Smith has taken a novel (although not recommended) approach. He has decided that he does not want to spend “one cent” on lawyers and is not even going to turn up to a hearing.

In a revealing move, Dick Smith Foods applied to register “Dinky Di-Nemite” in October 2011. Here at the Squire Sanders Global IP&T Blog, we expect to see OzEmite disappear from the shelves of Australian supermarkets and Dinky Di-Nemite appear in the near future. In the meantime, we recommend that our clients instruct us to turn up to hearings, as the legal costs of fighting a trade mark dispute are often much less than the cost of rolling out an entirely new brand.

This story continues in our Part 2 blog post.