Trident Seafoods (the Opponent) opposed the registration of the trade mark TRIDENT in the name of Trident Foods (the Applicant) that covered a range of Class 29 and 30 goods, including such goods made of/from fish.
The Opponent is the owner of the below trade mark registration that covers a range of Class 29 goods, including ‘seafood’.
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The hearing officer noted that the Opponent’s trade mark has an earlier priority date than the Applicant’s trade mark, covers goods that are the same, or at least of the same description as the goods covered by the Applicant’s trade mark, and that the trade marks are deceptively similar.
Initially, the Applicant’s trade mark was only accepted for registration based on evidence of use, so the hearing officer reviewed the evidence of use and noted that the Applicant has:
Two earlier trade mark registrations no.(s) registered 266625 and 400953 for substantially identical trade marks being the word TRIDENT which cover the same goods (although I note that Court action and non-use action is pending on both registrations);
A long history of the applicant using its Trade Mark on various edible foods ranging from Asian sauces, noodles and coconut cream to smoked oysters and tinned tuna which collectively produces significant sales figures across Australia each year; and
An applicant who has invested significant time and money into rigorously defending its Trade Mark both in IP Australia and the Courts
Overall, the hearing officer was satisfied that the Applicant had demonstrated sufficient use of its trade mark for the provisions of section 44(3)(b) to be applied and the application was accepted on the basis of ‘other circumstances’.
This matter is now the subject of an appeal.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.