Dick Smith to appeal decision to strike OzEmite trademark from register
Dick Smith has decided to appeal a decision to remove the trademark registration of Dick Smith’s OzEmite despite previously telling Mumbrella he “probably wouldn’t” appeal last month’s ruling, citing support from the public.
“We got some very good advice from a barrister who’s an expert in this field. He thought not only would we be able to prevent him from striking out our name but we’d have a very good case of having his name removed because he pinched ours,” Smith told Mumbrella.
At the time of the decision Smith told Mumbrella: “We probably won’t appeal the decision but if Roger Ramsey spends thousands of dollars on fighting us on the name we’ll just change it to Dickymite, that’s quite a good name.”
On his change of heart regarding the appeal, Smith said it was the support of the public that made him reconsider.
“So many people wrote to me and said Dick, under no circumstances should you give in to this dishonesty when Ramsey’s clearly stolen your name,” he said.
“It won’t impact on our charity donations. We’ll raise the money to fund the case separately. A tremendous amount of people have volunteered to put in money.”
Roger Ramsey told Mumbrella he is “disappointed” Smith has not “accepted the umpire’s decision” and will be speaking to their legal team about “writing a defence”.
He added: “We’ve come this far, we’re at the point of no return. The rules are in Australia it’s first to shelf, not the first to register a trademark for who has the rights to that name.”
Smith claims Ramsey initiated the trademark battle with the aim of securing publicity for his product. He added:”The sales he has are just minute, last time I looked they were less than 1 per cent of the yeast spread range.
“We’re selling about 2.4 per cent. The only reason he could be spending this money is to get publicity. I would imagine his product would be about to get dropped by Coles and Woolworths because his sales are so small.”
Ramsey rejected Smith’s comments describing the comment as “hearsay” and saaying Smith was “adept at putting a spin on it”, telling Mumbrella: “How are we to know his product isn’t going to be dropped by Coles and Woolworths?
“All the publicity Dick Smith’s ever created for our product has been negative. He’s made some wild allegations about us stealing his name when in actual fact the trademark Aussie Mite was first registered in 1982 and the OzMite, where he’s just added an E, was assigned to him in September 1999. Before he made the application to register it it hadn’t been on the register since 1993.”
According to IP Australia, the OzEmite trademark was lodged on October 29, 1999 while Aussie Mite was filed on May 7 2001 with a new trademark “Dick Smith’s OzEmite” lodged on March 6 this year.
At the time of IP Australia’s decision to strike OzEmite off the register, Smith said the brand would consider changing it’s name to Dickymite, an idea that hasn’t completely been struck off.
“We’ve applied for Dickymite and that will be our backup. Lot’s of people like Dickymite and I happen to like it more than OzEmite,” he said.
The OzEmite trademark will remain registered and the product will remain on supermarket shelves until the appeal has been determined.
“If he does win the appeal, then we’ll just have to consult with our legal firm to find out what would be the next step,” said Ramsey.
Smith’s lawyer, Mark O’Brien of Johnson, Winter & Slattery expects the case to be heard later this year. The matter was first heard in December last year.
Miranda Ward
Miranda Ward worked for Mumbrella from 2013 to 2017, eventually becoming deputy editor. Miranda joined Mumbrella in September 2013 from Sky News.
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Looks like the two main areas of contention here are:
1. Dick Smith registered the name first, but didn’t use it for almost ten years. A trademark unused for three years can be cancelled by IP Australia.
2. IP Australia probably should’t have approved the registration of Aussie Mite in the first place as it is confusingly similar to existing OzeMite. Although Dick Smith could have opposed the application.
Which goes to show the value of having a watch list on new trademark applications. if you own a trademark, it’s well worth regularly seeing what comes up on the trademark database that may step on your toes.
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I wonder if IP Australia could be held liable for negligence in approving the Aussie Mite trademark in the first place, given that OzeMite was registered first?
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