Federal Court win for Dick Smith’s OzEmite

Posted by AFN Staff Writers on 15th August 2016

The Australian Federal Court has allowed businessman Dick Smith to continue selling his OzEmite yeast extract spread.

The decision, handed down on Friday 12 April 2016, found that Smith’s company Dick Smith Investments was able to retain its OzEmite trade mark on the trade marks register.

Trade Marks Office decision

The ruling by the Federal Court reversed a 2014 decision by the Australian Trade Marks Office, which found in favour of a South Australian maker of another yeast extract spread with a similar sounding brand, called AussieMite.

“OzEmite” was registered as a trade mark by Dick Smith Investments in 1999.  In 2011, the makers of AussieMite applied to have “OzEmite” removed from the trade marks register, alleging that it had not been used for any of the registered goods for at least three years.

In the earlier ruling, the delegate of the Registrar of the Trade Marks Office found that no OzEmite products had not been sold until 2012, and that there were no circumstances that acted as obstacles to the use of the trade mark during this time.  Accordingly, the Trade Marks Office had ordered that “OzEmite” be removed from the register.

Federal Court reversal in favour of Dick Smith Investments

However, the Federal Court reversed the Trade Marks Office actions.

In a judgment delivered by Justice Katzmann, the Federal Court held that “OzEmite” could remain on the register.

It was found that the trade mark had in fact been used before any OzEmite-branded products were sold on the market in 2012.

Comments by Dick Smith Investments

In the lead-up to the case, a letter from Dick Smith Investments to the maker of AussieMite was published on the Dick Smith Foods website, complaining about the need to spend money on legal cases.

According to a recent ABC news report, Dick Smith said the legal costs for his company had exceeded $500,000. All profits from the sale of OzEmite were being directed to charities.

OzEmite background

Smith originally developed OzEmite as an Australian-made alternative to Vegemite, which is owned by American company Kraft.

Smith states on the Dick Smith Foods website that it took years to perfect the taste.  Additionally, purpose-grown corn yeast had to be sourced because existing suppliers had contracts with American suppliers.  He said this explained any perceived inactivity once the trade mark was registered in 1999.