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  • This decision stands as post-Gallo precedent that a trade mark owner can have used a trade mark even in circumstances where not a single sale of a product bearing the mark has been made.
  • A single instance of use, coupled with a genuine intent to use the mark for commercial purposes, is sufficient to establish use
  • Even if there has been no use of a trade mark, the court can take into account a wide range of factors in considering whether to exercise its discretion to leave the trade mark on the register – including reasons why the mark was not used, and the conduct of the party seeking the removal of the trade mark.

The decision in Dick Smith Investments Pty Ltd v Ramsey (2016) FCA 939 saw Dick Smith retain his OZEMITE trade mark, in the face of a decision from the Trade Marks Office to remove the mark for non-use – an action brought by the owner of the AUSSIE MITE trade mark.

The successful appeal to the Federal Court of Australia against the non-use decision brings an end to the long-running war between the sound-alike yeast spread brands. Justice Katzmann allowed the appeal on the grounds
that OZEMITE had in fact been used during the statutory non-use period, and, even if there had not been use of the trade mark, would have exercised the court’s discretion to leave OZEMITE on the register.

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