First published as part of Michelle Cooper and Dr Karl Dittko, ‘Current Developments – Australia’ (2018) 114 Intellectual Property Forum 80

Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490

In this matter, Justice Gleeson of the Federal Court considered two appeals from decisions of the delegate of the Registrar of Trade Marks. The first was an appeal from unsuccessful applications for removal of two trade mark registrations for non-use where non-use had been found, but the Registrar’s discretion to allow the registrations to remain on the Register was applied. The second was an appeal from an unsuccessful opposition in relation to a fresh trade mark application made following the filing of the non-use applications.

The case considered use of a trade mark by a parent company where registration rights are recorded in a wholly owned subsidiary. The implications of this manner of use, including considerations for non-use, prior continuous use, and intention to use were examined, as well as the appropriateness of applying the Registrar’s discretions in such circumstances to non-use actions and acceptances of applications. The scope of claims for “fish” in class 29 was also considered.

Background facts

The appellant, Trident Seafoods, is a United States corporation that has used TRIDENT SEAFOODS branding on fresh, tinned and frozen seafood products overseas since 1973. It wished to provide its product in Australia under the same branding, but an application to register its trade mark was obstructed by prior registrations in the name of the respondent, Trident Foods, for the trade mark TRIDENT.

Trident Foods’ registrations dated from 1973 and 1983 and specified “Fish and fish products” and “Meat, fish, poultry and game, including sardines, mackerel, pilchards, crab, oysters, mussels, and prawns; meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, preservatives and pickles” respectively in class 29..

The TRIDENT trade mark has been used on a variety of products, and is closely connected with goods that have Asian flavours and ingredients. The best selling product in this range is sweet chilli sauce. In about 2000, Trident Foods was acquired by Manassen Foods Australia Pty Ltd. Trident Foods is a wholly owned subsidiary of Manassen. Since shortly after the acquisition, sales of TRIDENT branded products were undertaken by Manassen, although Trident Foods remained the recorded owner of the trade mark registrations.

Trident Seafoods applied to have Trident Foods’ registrations removed for non-use, and Trident Foods opposed these applications. Trident Foods subsequently filed an application for a further trade mark for TRIDENT specifying “Coconut oil; Cooked means consisting principally of fish; Edible oils; Fish products; Fish paste; Fish (not live); Food products made of fish; Food made from fish; Pastes containing fish; Tinned fish” in class 29 and “Fish sauce (condiments); Flavourings made from fish” in class 30”. This application was opposed by Trident Seafoods.

Prior decisions

In the non-use action, the delegate of the Registrar was unable to determine that the trade marks had been used for the relevant goods during the relevant non-use period, but applied the Registrar’s discretion pursuant to the Trade Marks Act 1995 (Cth) (the “Act”) s.101(3) to allow the registrations to remain on the Register.

In the opposition, the delegate of the Registrar found that the Trident Seafood application was a prior filing to which the applied for trade mark was deceptively similar and which specified the same goods or goods of the same description, but applied the Registrar’s discretion to allow acceptance of the applicant pursuant to s.44(3)(b) of the Act, “that, because of other circumstances, it is proper to do so”. A lack of intention to use the trade mark was not made out.

Non-use action

Scope of specified goods

The Court first looked at the use to which the TRIDENT trade mark had been put in light of the goods specified in the registrations. Reference to the ordinary meaning of “fish” was made and following a review including dictionary definitions, the Court considered that it encompasses “any animal living exclusively in water”. The specification for “fish and fish products” was held to extend to “seafoods, including mussels and oysters (molluscs) and prawns and crabs (crustaceans) and also foods prepared from seafoods”.

The Court held that the scope of “fish” did not, however, extend to all products containing seafood as an ingredient:

… the application of a trade mark to a particular food product is a use of the trade mark in relation to those goods only, and generally not to the ingredients from which the goods are made.

Factors for consideration are:

  1. whether the product is identified by its name as a fish product; and
  2. the extent to which the product is comprised of fish.

The greater the fish content in a product, the more likely it will be to answer the description “fish product”. A soup product labelled as “Tom Yum Goong Flavour Thai Noodle Soup” with an ingredient list that included an oil sachet containing fish sauce and dried shrimp did not have sufficient fish content to be considered a “fish product”.

Use of trade mark under control of registered owner

The Court then looked at the use to which the TRIDENT trade mark had been put by the registered owner, Trident Foods, in light of the fact that its parent company, Manassen, had undertaken the sales of TRIDENT branded products since around 2000. The Court held that the use was not authorised use within the meaning of s.8 of the Act as Trident Foods did not control the use made by Manassen. Accordingly, no requisite use had been made of the trade mark during the relevant non-use period.

In matters concerning questions of authorised use, two factors have been considered: connection and control. In the case of a wholly owned subsidiary trade mark owner and a parent company user, connection should not be in issue. In this particular case, Trident Foods and Manassen shared common directors, a common registered address, and a common principal place of business.

However, notwithstanding commercial realities that many organisations structure their affairs such that trade marks are held by a separate entity, including wholly owned subsidiaries, without also being able to show actual control by the subsidiary trade mark owner over a parent user, no authorised use will be found.

The Court also confirmed that control is not evidenced by notices of ownership of the trade mark. Trident Foods sought to formalise a claimed unwritten licence agreement to address concerns regarding control. Without evidence of examples of actual control being exercised during the relevant non-use period , the existence of an unwritten licence agreement in relation to the relevant non-use period was held not to have been established.

It was held that the corporate relationship between Trident Foods and Manassen does not place Trident Foods in a relationship of control over Manassen; rather, the converse is the case.

Registrar’s discretion not to remove registration for non-use

Trident Foods bore the onus of satisfying the Court that the discretion should be exercised, but it was not necessary for it to show that exceptional circumstances existed. The Court stated that in applying the discretion, the Registrar should have reference to both the interests of the consumer, and the interests of the registered owner.

The Court took into account use made of the TRIDENT trade mark before, during, and after the relevant non-use period. There was no evidence of use of the trade mark TRIDENT by Trident Foods (as opposed to Manassen) in respect of any goods during or after the relevant non-use period. Nevertheless, for the following reasons, the Court found that it was appropriate to apply the Registrar’s discretion not to remove the mark from the Register.

  1. There had been recent use of the trade mark on fish products, namely tinned tuna products. The Court took the view that this use, although a reaction to the non-use applications, was use in good faith as the sales were not unprofitable.
  2. Trident Foods has developed an intention to use the mark on tinned mackerel products as well.
  3. Weight was given to the intention for Manassen to use the trade mark TRIDENT as an authorised user. A licence agreement to formalise their relationship with a view to ensuring that Manassen uses the trade mark under the control of Trident Foods was now in place.
  4. There had been long-standing use of the trade mark TRIDENT by Manassen with the knowledge and acquiescence of Trident Foods, and in circumstances where they are members of the same group of companies. The public are likely to identify products using the TRIDENT trade mark as emanating from a single source.
  5. In light of the longstanding and significant use of the TRIDENT trade mark on a wide range of food products, there was a prospect of confusion in the minds of consumers if the TRIDENT SEAFOODS branding was used in the Australian marketplace.

Accordingly, the appeal in relation to the non-use applications was dismissed.

Opposition

Questions as to use of and intention to use a trade mark, as well as the exercise of the Registrar’s discretion to accept an application for registration, are confined to the circumstances that prevailed as at the priority date of an application. The Court’s findings in relation to each of the asserted grounds of opposition ae summarised below.

Honest concurrent use

No operation of the provision for acceptance on the basis of honest concurrent use was found because of the absence of use of the TRIDENT SEAFOODS branding in Australia.

Prior continuous use

No operation of the provision for acceptance on the basis of prior continuous was found because of:

  1. a substantial gap in sales of goods under the TRIDENT trade mark prior to the filing of the Trident Seafoods application; and
  2. the use that was made was not under the control of the registered owner, Trident Foods, but instead its parent user, Manassen.

Other circumstances

The Registrar’s discretion under s.44(3)(b) of the Act to accept an application because of “other circumstances” was not applied because in the absence of a licence agreement, Trident Foods was not using the TRIDENT trade mark as at the priority date and had not authorised any such use. Rather, the mark was being used by Manassen, albeit with the acquiescence of Trident Foods. The Court considered it a precondition for the exercise of the Registrar’s discretion that there be use or intended use of the trade mark, or authorisation or intended authorisation of such use, by the applicant as at the priority date.

Intention to use

Similarly, although it was not strictly necessary for the Court to decide this ground, as the accepted evidence was that the use of the trade mark TRIDENT as at the priority date was by Manassen rather than Trident Foods, it was concluded that Trident Foods did not intend, as at the priority date, to use, or authorise the use of, the trade mark. Trident Seafoods would have been successful in its opposition on the ground of non intention to use.

Accordingly, the appeal in relation to the opposition was allowed.

Outcome

For the reasons set out above, the Court held there was no authorised use of the trade mark TRIDENT during the relevant non-use period because the registered owner was a wholly owned subsidiary who acquiesced to, rather than controlled, the use of the trade mark by its parent company. The registrations are, however, to remain on the Register by exercise of the Registrar’s discretion set out in s.101(3) of the Act.

Similarly, the Court held there was no prior continuous use or intention to use the trade mark TRIDENT by the applicant as at the priority date of the application because the use made was not by, or authorised by, the applicant and instead was use by its parent company. The Court clarified that the Registrar’s discretion set out in s.44(3)(b) of the Act is not to be exercised to allow acceptance of an application where the applicant has not, at the time of the application, used or intended to use, or authorised or intended to authorise, use of the applied for trade mark.

Trident Seafoods has sought leave to appeal the decision.