During the statutory period did DSI use the ozemite trade mark in Australia within the meaning of s 92(4)(b) of the Act?
97 The answer to this question turns on the meaning of the concept of use of a trade mark in the Act and s 92(4) in particular. The question must be determined objectively: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 ("Gallo") at [33].
98 It is common ground that the product now known as OzEmite was not sold or offered for sale at any time during the statutory period. Indeed, it was still under development. Despite this, the Dick Smith parties contend that the ozemite trade mark was used during the non-use period in relation to the goods the subject of the application. They point to two occasions of what they describe as "pre-launch publicity" for the OzEmite product, which are said to be analogous to activities held to constitute use of a trade mark in the case law to which I will come shortly.
99 The first instance occurred when Mr Smith featured in a skit on The Chaser's ABC television program in August 2010 in the lead-up to the 2010 federal election.
100 The second occurred during a lengthy interview with Mr Smith on radio station 5AA in Adelaide on 28 March 2011. The interviewer was Leon Byner.
101 It is not in dispute that, if either of these two instances amount to use for the purposes of s 92(4), then it is use by the registered owner, either by itself or through an authorised user.
102 The Chaser skit was a satirical piece on migration. Mr Smith appeared as a "spokesman" for the presumably fake organisation: "Australians Against Further Emigration". His appearance on the supposedly commercial-free national broadcaster (which lasted for about 30 seconds) saw him unashamedly promoting Dick Smith Foods. For about 12 of those 30 seconds he can be seen wearing a t-shirt emblazoned with the OzEmite logo, surrounded by Dick Smith Foods products.
103 The focus of the interview on Adelaide radio was the decision by the major supermarket chain, Woolworths, to continue to stock Dick Smith Foods products. There, Mr Smith disclosed that at one point he was contemplating closing down Dick Smith Foods because of the pressure from competition from foreign companies but that Woolworths talked him out of it when they assured him they were interested in promoting Australian produce and his products in particular. Mr Smith also told Mr Byner that he would be expanding his product line and in about four to six months a range of quality Australian made and owned food products would be appearing on supermarket shelves. This is the relevant part of the interview, which runs for about 26 seconds:
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?
BYNER: 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 its Australian … no, its 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.
104 Is this enough?
105 Mr Ramsey submits not. He contends that there can be no use unless there is "an occasion of trade" in respect of "vendible articles" and that this means that unless there is at least a single act of sale, there is no use. The source for these propositions is said to be two references in the reasons of the plurality (French CJ, Gummow, Crennan and Bell JJ) in Gallo at [44] and [51]. At [44] their Honours observed that the reference in s 17 to "the course of trade" "encompasses the idea that use of a trade mark is use in respect of 'vendible articles'", emphasising that a mark is used only if it is used "in the course of trade".
106 In any case, Mr Ramsey contends that there was almost "no promotion" of the OzEmite product from June 2001 until 2011.
107 The alternative contention can be disposed of swiftly.
108 Under the Trade Marks Act 1955 (Cth) ("the 1955 Act"), an application to have a trade mark removed for non-use could be defeated by any use of the mark in Australia during the statutory period. This represented a significant change from the position under the earlier Act, the Trade Marks Act 1905-1948 (Cth), s 72 of which enabled a mark to be removed unless at the date of the application it was in bona fide use and had been so for a period of six months immediately before that date. That required "a course of conduct extending substantially over the period and still continuing at the end of it": Continental Liqueurs Pty Ltd v GF Heublein and Bro. Inc. (1960) 103 CLR 422 at 430 (Kitto J). In Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1967) 116 CLR 254 ("Estex") at 258, however, Windeyer J, speaking of s 23 of the 1955 Act, said:
But under the present Act, the issue is not whether the mark had been in use for a period but whether there was no use during a period. I do not think that, in this context, the word "during" means "throughout" so as to require a regular and continuous course of conduct for the whole period. If during the period the registered proprietor uses his mark in good faith that will keep the mark alive, and will rebut what I may call the statutory presumption of abandonment which s. 23 creates.
Thus, the question in that case was whether anything occurred at the relevant time which "amounted to a use of the mark in Australia by the respondent". The onus was on the applicant to show an absence of use.
109 In Woolly Bull Drummond J held at [14]-[17] that a single bona fide use of the mark in the relevant period is also sufficient to answer an application for removal under the current Act. See also Unilever Australia Ltd v Karounos (2001) 113 FCR 322 at [64] (Hill J). In Gallo at [64] the High Court expressly refrained from considering the question.
110 Thus, just one use of the ozemite trade mark in good faith in relation to spreads and snack foods in class 29 and/or yeast, yeast extracts, spreads and snack foods in class 30, they being the goods the subject of Mr Ramsey's application, is sufficient to resist removal. The only real issue, then, is whether at least one of the two occasions upon which the Dick Smith parties rely constitutes "use". This brings me to Mr Ramsey's principal argument.
111 In Gallo their Honours cited two authorities for the above propositions: Jackson & Co v Napper (1886) 35 Ch D 162 ("Jackson") at 179 (Stirling J); Aristoc Ltd v Rysta Ltd [1945] AC 68 ("Aristoc") at 102 (Lord Wright).
112 In Jackson at 179 Stirling J said that a trade mark has been used in England if the articles marked with it have been "actually vendible articles in the market in England". Stirling J relied on Lord Westbury's statements about the essential ingredients of a trade mark appearing in McAndrew v Bassett (1864) 4 DJ&S 380 at 384.
113 In Aristoc the House of Lords held that use of a trade mark on stockings to indicate that the stockings had been repaired by the trade mark owner was not a trade mark use. Lord Wright noted (at 101) that "the fundamental idea of the function of a trade mark" was "to indicate the origin of the goods" (original emphasis) and (at 102) that "[t]he word 'origin' … denotes at least that the goods are issued as vendible goods under the aegis of the proprietor of the trade mark, who thus assumes responsibility for them, even though the responsibility is limited to selection …". His Lordship continued:
The proprietor is required to be a trader who places the goods before the public as being his goods. That is the vital connexion, not some later partial and ephemeral attribution to some one else. "Trade" is a very wide term … But it must always be read in its context … In the Act of 1938 the context shows that "trade" refers to selling or otherwise trading in the goods to which the mark is applied. Thus in s. 26, sub-ss. 2 and 6, we find the words "goods to be sold or otherwise traded in"; the same collocation of words is found in s. 31; and again in s. 68 in the definition of limitations. These instances show that "trade" is here used in the particular sense of merchanting, selling or the like, which would nowadays include the more modern practices of hire purchase, leasing (e.g., of valuable machines), letting out for public use, exporting, etc. But equally it is clear that repairing or processing or the like is not included, because it is not trade in the particular sense intended. This construction is consonant with the established user in the past of the word.
114 Similarly, Lord Macmillan said in Aristoc at 97:
"Trade" is no doubt a wide word but its meaning must vary with and be controlled by its context. A connexion with goods in the course of trade in my opinion means, in the definition section, an association with the goods in the course of their production and preparation for the market. After goods have reached the consumer they are no longer in the course of trade. The trading in them has reached its objective and its conclusion in their acquisition by the consumer.
(Emphasis added.)
115 To like effect, Viscount Maugham (with whom Lord Thankerton agreed) observed at 89 that it was "beyond doubt" that the purpose of a registered trade mark in relation to goods has always been to indicate the origin of the goods, "in other words, for the purpose of indicating either manufacture or some other dealing with the goods in the process of manufacture or in the course of business before they are offered for sale to the public".
116 While the plurality in Gallo did not refer to any of these remarks, neither did they disapprove of them.
117 In my opinion, the reference in Gallo to "vendible goods" should be read as goods which are "sold or otherwise traded in", but not so as to limit the scope of trade mark use to goods which are actually sold. After all, "vendible" does not mean sold. It means capable of being sold. It also means "marketable". See The New Shorter Oxford English Dictionary (1993).
118 Furthermore, the Act contemplates the registration of trade marks in relation to goods at a time before they are traded. The language used in the very definition of a trade mark in s 17 is of "a sign used, or intended to be used, to distinguish goods … dealt with or provided in the course of trade …" (emphasis added). Similarly, the 1955 Act defined a trade mark as "a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate, a connexion in the course of trade between the goods and a person who [was entitled to use the mark (as its proprietor or registered user)]" (emphasis added). What is more, as Barwick CJ, McTiernan, Taylor and Owen JJ emphasised in the appeal in Estex at 271, "use" is "not limited by any concept of the physical use of a tangible object".
119 Like the words of a statute, remarks in a judgment must be read in context. Gallo also concerned an application for the removal of a trade mark from the Register for non-use but that is where the similarity ends. The facts and the issues in Gallo were very different from those in the present case.
120 Proceedings in Gallo began in this Court as an infringement suit, but by a cross-claim Lion Nathan Australia Pty Ltd ("Lion Nathan"), the alleged infringer, applied for an order under s 101(2) that the mark be removed from the Register for non-use. The primary judge held that there had been no infringement and granted Lion Nathan's application. A Full Court reversed the finding on infringement but upheld the order for removal. But the High Court allowed the appeal, all five justices holding that there had been use of the trade mark in good faith during the statutory period.
121 The relevant trade mark was barefoot. It was registered under the 1995 Act in relation to wines. E & J Gallo Winery ("Gallo"), an American company, was the owner of the mark at the time of trial. On 14 February 2001 another American company, Grape Links Inc, trading as Barefoot Cellars (to which the mark had been licensed by its previous owner, Michael Houlihan), shipped 60 cases of wine carrying the barefoot mark to a company in Germany. In June 2002 some 144 bottles from those 60 cases were sold to a Victorian liquor wholesaler, Beach Avenue Wholesalers Pty Ltd, which imported the wine into Australia. During the statutory non-use period (7 May 2004 to 8 May 2007, which was during the time that Gallo acquired ownership of the barefoot mark with its purchase of Barefoot Cellars) it sold 41 of the bottles. There was no evidence, however, that Barefoot Cellars, Mr Houlihan or Gallo knew that wine bearing the mark was being offered for sale at that time in Australia.
122 The relevant question was whether there was "use" by Gallo or its predecessor in title (Mr Houlihan) of the barefoot mark in respect of wines "in good faith" during the statutory period. Lion Nathan's contention was that the requirement of "use in good faith" involved consideration of the volume of use (which it urged had to be "substantial") and the state of mind of the registered owner concerning the matter of use. Lion Nathan argued that use in the statutory period was neither substantial nor genuine and that there could be no use by the owner in good faith when the owner was unaware that the goods were being used: see [60].
123 It was in this context that the plurality considered the concept of "use" of a trade mark. It is from that consideration that the passages upon which Mr Ramsey relies have been drawn.
124 First, their Honours referred to the definition of a trade mark in s 17 of the Act (at [41]), observing (at [42]) that, whilst the definition does not refer to a trade mark as an indication of "a connexion in the course of trade" between the goods and the trade mark owner, which appeared in s 6(1) of the 1955 Act, the requirement in s 17 that the trade mark "distinguish" goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of "goods to which the trade mark is applied", citing Aristoc at 91 (Viscount Maugham), 96 (Lord Macmillan), and 102 (Lord Wright). They emphasised that distinguishing goods of a registered owner from the goods of other traders and indicating a connection in the course of trade between the goods and the registered owner are "essential characteristics of a trade mark". They then approved (at [43]) the statement of the Full Court in Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19] that use "as a trade mark" under the current Act is use of the mark as "a badge of origin", that is to say, to indicate "a connection in the course of trade between goods and the person who applies the mark to the goods" and that that is "the concept embodied in the definition of 'trade mark' in s 17 - a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else". It was at this point that the passage upon which Mr Ramsey relied appeared. Its purpose was to emphasise that the mark is used only if it is used "in the course of trade".
125 To say that this expression "encompasses the idea that use of a trade mark is use in respect of 'vendible articles'" does not signify that the articles must be vendible at the time the mark is used and I do not believe that in saying so their Honours intended that meaning. The "course of trade" is not confined to sales. It includes "merchandising, advertising and promotion, making offers, selecting, distributing, selling, hiring, leasing, letting out for public use, exporting, importing, repairing, processing, maintenance, servicing - all the operations of a commercial character by which a trader provides to customers for reward some kind of goods or services": Lahore JW, Patents, Trade Marks & Related Rights (LexisNexis Butterworths, 2006), vol 1A, at [60,130] and the cases referred to there.
126 The expression "occasion of trade" which Mr Ramsey drew from the plurality's reasons in Gallo at [51] must also be read in context. The relevant context was Lion Nathan's submission (to which the plurality referred at [49] and which it was addressing at [51]) that "it was a necessary condition to establish a use in Australia that an overseas manufacturer knowingly 'projects' his goods into the course of trade in Australia". At [49] their Honours said that Lion Nathan's submission was based on a misreading of the judgment in Estex, which, they said, was authority for "the proposition that the foreign owner of an Australian trade mark uses it in Australia when he sells goods for delivery abroad to Australian retailers and those retailers import them into Australia for sale and there sell them". At [51] their Honours applied Estex to dismiss Lion Nathan's submission:
The capacity of a trade mark to distinguish a registered owner's goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia. Each occasion of trade in Australia, whilst goods sold under the trade mark remain in the course of trade, is a use for the purposes of the Trade Marks Act. A registered owner who has registered a trade mark under the provisions of the Trade Marks Act can be taken, in general terms, to have an intention to use that trade mark on goods in Australia. It is a commonplace of contemporary international trade that prior to consumption goods may be in the course of trade across national boundaries.
127 I acknowledge that at [64] their Honours also made the observation that "a single act of sale may not be sufficient to prevent removal". Mr Ramsey relied upon it to impress upon the Court his fundamental position: that there must be a single act of sale before the Court can consider whether the use is in good faith and thus, absent a single act of sale, there is no use. But the observation at [64] must also be read in context. The immediate context can be seen here:
Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine" use judged by commercial standards. …
(Footnotes omitted.)
128 It is abundantly clear that the plurality was not saying that a single act of sale was necessary to defeat a removal application; merely that it may not be sufficient to establish use.
129 The plurality cited in support of the opening statement (that a single act of sale may not be sufficient to prevent removal) Re Nodoz Trade Mark [1962] RPC 1 ("Nodoz"). In that case Wilberforce J expressed the view at 7 that "in a suitable case one single act of user of the trademark may be sufficient". In that case, the question was whether medical preparations bearing the mark nodoz had been used in England. The only evidence proffered by the trade mark owner to prove use was a reply to a letter apparently written from an English address to the then owner of the mark asking it to send him, at his expense, 200 nodoz tablets. In the reply the owner said that it was sending him by mail two vials each containing 60 nodoz tablets. At the same time the owner sent an invoice directing the shipment to a General Post Office address in Brighton, Sussex, upon which the following words appear "shipped by airmail, c.i.f. destination, 2 bottles only 60's nodoz awakeners", together with the price. The documents were taken from the company's records. While some effort was made to establish delivery, no evidence was offered that the tablets or the invoice had arrived in England or that they had reached the supposed buyer or the GPO and were awaiting delivery to the buyer. In these circumstances, Wilberforce J said he was not satisfied that the goods had arrived and thus that during the statutory period there had been any use of the mark in relation to the goods by its owner in England.
130 In Gallo (as in Nodoz), to demonstrate use of the trade mark the registered owner was relying on sales (and only on sales). As the Dick Smith parties submitted, the circumstance that a single act of sale may not be sufficient to establish use does not prove that there has been no use. Use may be demonstrated by other means. Each case will turn on its own facts.
131 After all, it could not seriously be contended that, if a trader offers for sale goods to which his or her mark is attached but no-one chooses to buy them, there has been no use of the mark in relation to the goods. The mark is being employed in the course of trade just as surely as it would have been if the trader managed to secure a sale.
132 For all these reasons I accept the submission by the Dick Smith parties that Gallo is not authority for the proposition that there must at least be "a single act of sale". Since in Gallo actual sales of goods to which the trade mark was attached had taken place during the statutory period, there was no occasion to consider whether something short of an actual sale could amount to use of the trade mark in relation to the relevant goods.
133 In the following authorities, however, upon which the Dick Smith parties relied, that occasion squarely arose. To the extent that these authorities detracted from Mr Ramsey's primary position, he had no satisfactory answer to them.
134 The first is Hermes Trade Mark [1982] RPC 425 ("Hermes"). In that case a French company, Hermes Société Anonyme, applied to rectify the register by expunging for non-use during the statutory period the registration of hermes, a trade mark registered in a class for watches and clocks. Before the statutory non-use period (five years) the registered owners had sold watches under the mark, but during the statutory period they had sold none, and no clocks either. They claimed, nonetheless, that they had used the trade mark in relation to goods in the relevant class because they had used the mark in advertisements in a directory of trade names ever since they purchased the mark, that is for more than 20 years before the expiration of the non-use period, on invoices for repairs to hermes watches, on orders to their suppliers during preparations for a re-launch of the hermes watches on the market and price-lists prepared for the same purpose. The application failed before the Assistant Registrar of Trade Marks and the appeal was dismissed.
135 Falconer J sitting in the Chancery Division of the High Court of Justice in England considered that use of a mark in advertising need not be "concurrent with a placing of the goods on the market if it is to be regarded as 'trade mark' use …", although to amount to use sufficient to defeat an application to remove the mark from the register for non-use, it had to be "use in the course of trade" (picking up on the definition of "trade mark" in s 68(1) of the Trade Marks Act 1938 (UK) (at 429 and 430)). His Honour accepted that use of a trade mark in an order to suppliers to acquire goods to be marketed by the trade mark owners under the mark was a use of the mark in the course of trade "in … other relation to the goods", although the goods were not then in existence. He described this (at 431) as "a use in the course of trade in the watches - their acquisition for future sale". He expressed his agreement with the Assistant Registrar that the phrase "in the course of trade" is "wide enough to embrace the steps necessary for the production of the goods as well as the actual placing of them on the market". His Honour also said this at 430:
[I]f the registered proprietor should commence a series of advertisements featuring his mark as part of an introductory campaign, prior to putting his goods on the market under the mark, but before they were actually on the market, in my judgment such use would clearly be use of the mark in the course of trade, not upon the goods or in physical relation thereto, but it would be in other relation thereto, the point being that it would be use in the course of trade in those goods, albeit in advertisements.
136 But his Honour did not consider that advertisements appearing annually in a trade directory during the statutory non-use period (five years under the UK Act s 26(1)(b)) amounted to use of the trade mark. The particular evidence which his Honour found was insufficient to amount to use was reproduced at 428 of the judgment. It was the evidence of Mr Crockett, who was a director of the registered trade mark owner:
I am advised that advertisements featuring the trade mark in relation to the goods and the existence of printed price lists during the five-year period ending 18 March 1977 without there being goods available to meet orders which may be placed as a result of such advertising and issue of price lists may not constitute a complete defence in these proceedings … but I wish to make it clear that my company have never abandoned the trade mark and continually advertised it in the way referred to herein, in the belief that this would keep the trade mark in the minds of those engaged in the trade and in the belief that this would protect them from any allegation of non-use of the trade mark.
137 These advertisements, his Honour held at 430, were not advertisements put out in the course of trade in the goods covered by the registration. If those advertisements were insufficient to amount to use of the trade mark in the course of trade, it is difficult to see how the unpaid advertising relied upon in the present case would be sufficient.
138 Nevertheless, in Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517; [1995] AIPC 91-119 ("Buying Systems") Gummow J accepted that steps taken before any sale of the goods in question could be use of a trade mark under the 1955 Act - as long as there was an existing intention to offer or supply the goods in trade. In the present case there is no dispute that at all relevant times the trade mark owner had that intention.
139 In Buying Systems, Studio SRL, an Italian company, applied to register the word "Studio" for goods specified as "fashion and hairdressing magazines". An Australian company, Buying Systems (Australia) Pty Ltd, opposed the application, alleging, amongst other things, that Studio SRL could not properly claim to be the proprietor of the trade mark because Buying Systems (Australia) was already using "Studio" as a trade mark. A delegate of the Registrar dismissed the opposition, but on appeal, Gummow J reversed the delegate's decision and refused the Studio SRL's application, holding that Buying Systems (Australia)'s actions in obtaining business cards, printing letterhead, contacting potential advertisers, making arrangements for the placing of some advertisements and distributing a large number of copies of a promotional brochure in respect of a new magazine (no edition of which had yet been produced, let alone sold) were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating, or so as to indicate, a connection in the course of trade between it and the new magazine.
140 Gummow J had come to a similar conclusion in an earlier case, New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 86 ALR 549; 14 IPR 26 ("Dairy Corporation"), to which neither party referred in submissions. Although this judgment was relevantly concerned with an application for removal from the Register for non-use under s 23(1)(b) of the 1955 Act, the words used in s 23(1)(b) are not materially different from those used in s 92(4)(b).
141 In Dairy Corporation, as in the present case, there had been no sale of the relevant product (milk) during the statutory period. Orders had been placed for the production of containers and art work provided to the manufacturer of the containers and during the period the first packs were delivered to the trade mark owner, the first trial production run had taken place, and, on the very last day, "the first commercial production of chocolate milk". But the goods were not available for sale, let alone sold, until after the expiration of the period.
142 Gummow J held at 44 (citing Hermes at 432) that "[t]he phrase 'in the course of trade' is wide enough to cover steps necessary for the production of goods, as well as the actual placement of the goods on the market".
143 In Moorgate Tobacco Co Limited v Philip Morris Ltd (No 2) (1984) 156 CLR 414 ("Moorgate") the relevant question was whether Moorgate had become the proprietor of the mark "kent golden lights" for the purposes of s 40(1) of the 1955 Act so as to entitle it to apply for registration and resist an application made by some other person who might apply for registration purporting to be the proprietor. Moorgate's claim to have become the proprietor of the mark was necessarily based on prior use. Deane J explained at 432:
The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of "proprietor" of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person …
144 To prove prior use in Australia, Moorgate relied on evidence that on three occasions, in or in connection with discussions between Philip Morris and Loew's Theatres Inc (from which Moorgate purchased the Kent cigarette business and the kent trade mark) about the introduction into Australia of a low tar and nicotine cigarette, packets of cigarettes and associated advertising material displaying the name "kent golden lights" were handed or posted to representatives of Philip Morris in Australia. The discussions relevantly included Philip Morris selling low tar and nicotine cigarettes under licence from Loew's. At that time, however, Loew's did not intend to trade in the goods in Australia. Moreover, no decision had been made as to "what name would be used if Philip Morris were, under licence from Loew's, to commence to manufacture and market the goods in Australia at some indefinite future time": see 156 CLR at 433. That use was considered insufficient to establish use of the mark as a trade mark.
145 In the course of his reasons, however, Deane J, with whom the other members of the Court agreed, observed at 433-4:
The cases establish that it is not necessary that there be an actual dealing in goods bearing the trademark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark … or that the mark has been used in an advertisement of the goods in the course of trade: Shell Co. of Australia v. Esso
Standard Oil (Australia) Ltd. [(1963) 109 CLR 407 at 422]. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.
146 In that case, his Honour held that there was no such intention, only preliminary discussions. Not even the choice of trade mark had been determined.
147 I note that in Winton Shire Council v Lomas (2002) 119 FCR 416 at [36] Spender J concluded from Deane J's remarks, that if it was possible to identify "an actual trade or offer to trade in the goods … bearing the mark, or an existing intention to offer or supply goods … bearing the mark in trade, that is sufficient". In other words, as his Honour put it later in his reasons (at [38]), the passage in Moorgate I cited above (at [143]) "clearly envisages" that either of two alternatives will suffice to establish use: on the one hand "preparatory steps coupled with an actual trade or offer to trade", on the other, "preparatory steps coupled with an existing intention to offer or supply goods in trade". He cited Buying Systems as an instance of the latter.
148 I would add that in Lomas v Winton Shire Council [2002] FCAFC 413 at [39] a Full Court of this Court (Cooper, Kiefel and Emmett JJ) accepted that it was unnecessary that there be an actual dealing in goods bearing a trade mark before there can be said to be trade mark use, adding, citing Moorgate, that it "may even be possible to establish use where the mark has been used in an advertisement of goods in the course of trade in circumstances where there is an existing intention to offer or supply goods bearing the mark in trade …".
149 In Woolly Bull Drummond J observed (at [20] and [40]) that, without more, subjective intention to use the mark was not sufficient. But his Honour accepted (albeit in obiter dicta) that it is unnecessary for relevant purposes that there be "an actual trade in the sense of the offering for sale and the sale of goods bearing the mark". His Honour went on to emphasise (at [40]):
[T]he owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.
150 In QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553, the relevant issue was whether a small amount of preparation by the opponent during the statutory period to use the words "Fiji Funjet" was sufficient to denote use of one or both of the registered marks, registered in respect of travel agency services, each of which incorporated the word "Funjet", and thus to defeat an application to remove the marks from the Register for non-use. The period in question was from 17 May 1994 to 17 May 1997. The hearing officer found that it was.
151 The use of the mark during the statutory period was described in the reasons as follows (at 557):
Sometime on or earlier than 15 March 1997, [there was] a weekly marketing brainstorm session where it was decided to revive the FIJI FUNJET concept, previously run in the period 1974 to 1978 … [A]n intra-office memorandum from Ann Johnson, marketing controller, dated 15 March 1997[,] … mentions the Fiji Funjet in the context of a four-page flyer to be released in July 1997.
152 The hearing officer went on to refer to another intra-office memorandum, dated 20 May 1997, from the marketing controller to a corporate lawyer for Qantas, which, he said, "confirm[ed] an intention to use the 'Fiji Funjet name' on their next Fiji product flyer to be released in July 1997". He also referred to the production of flyers and other promotional material after July 1997 which carried the fiji funjet trade mark, and others simply displaying the word "Funjet", including a plastic cup. He considered that the process of ordering brochures, scheduling advertising and the like was "directly analogous to 'tak[ing] positive steps to acquire goods marked with the trade mark'" referred to in Hermes at 432.
153 The hearing officer distinguished Moorgate, holding that, although services under the fiji funjet trade mark had not been offered to the public during the statutory period, the trade mark owner had "a fixed and existing intention" at that time "to immediately use the trade mark" and did in fact do so within three months of the end of the period.
154 Although neither Hermes nor Buying Systems is mentioned in the plurality's reasons in Gallo, there is one reference to the judgment in Woolly Bull (at [64]) (and three in the report of the argument) and two to Dairy Corporation (at [62] and [63]) (and two in the report of the argument). Gummow J, it will be recalled, was a member of the plurality.
155 In all these circumstances, I accept the submission made by the Dick Smith parties to the effect that Gallo should not be read as excluding from "use as a trade mark" during the statutory period all steps antecedent to a sale or the offering for sale of the goods the subject of the application.
156 The evidence in the present case establishes that the Dick Smith parties did not merely have a subjective intention to use the ozemite trade mark in relation to the goods the subject of the application. As in Buying Systems, the evidence went well beyond preliminary investigations and showed "an objectively ascertainable commitment" (Woolly Bull at [28]) to producing a "vendible" product which would carry the mark. I am satisfied that the OzEmite product remained under development during the non-use period and that, notwithstanding the various setbacks and, at times, some understandable frustration, the Dick Smith parties were intent on bringing it to market. Considerable funds had been invested in its development. While there was no evidence about the full extent of the expenditure, as I mentioned above the evidence does disclose that by August 2005 over $100,000 had been spent. I expect that by the end of the statutory period that sum would have been significantly greater.
157 It may not be strictly correct to describe the broadcasts in 2010 and 2011 as "pre-launch publicity", as the launch of the product was not then imminent. But that is beside the point. What matters is whether the mark was being used as a trade mark to distinguish the prospective product from the products of others. The references to Ozemite in the two promotional pieces answer this description. To adopt Lord Macmillan's language in Aristoc, they reveal uses of the mark in "association with the goods in the course of their production and preparation for the market" and in this way were uses of the mark in connection with goods in the course of trade. Their objective purpose was to revive, if not maintain, interest in the OzEmite product amongst potential purchasers so that there would be a viable market for the product once it was released. I do not doubt that in each of these appearances, and notwithstanding the humour in The Chaser skit, Mr Smith's promotion of OzEmite was an expression of a genuine intent to use the mark for commercial purposes. Consequently, each involved a use of the mark in good faith for the purposes of s 94(1)(b)(ii). 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.
158 For these reasons I am satisfied that the Dick Smith parties have discharged their burden of proof. I find that DSI, the then registered owner of the ozemite trade mark, used the mark in Australia during the statutory period in relation to goods to which the non-use application relates.