Trident Seafoods Corporation v Trident Foods Pty Limited  FCA 1490 (4 October 2018)
This concerned two appeals by Trident Seafoods against the Registrar’s decisions in related non-use and opposition proceedings
Trident Foods owns two Australian trademark registrations for TRIDENT covering various goods in class 29 including fish and fish products. The TRIDENT brand has been used for a variety of food products since the early 1970s, particularly Asian flavours and ingredients.
Trident Seafoods, a US corporation, wants to sell its TRIDENT SEAFOODS branded seafood products in the Australian market. To date, it has been obliged to sell its seafood products in Australia under an alternative BOUNTIFUL brand.
The first appeal concerns Trident Seafoods’ applications for removal of the TRIDENT trademark registrations which were declined by the Registrar as reported here . The relevant non-use period was the 3 years period ending on 7 January 2014. Although the delegate was not satisfied the TRIDENT trade mark had been used, she exercised discretion in favour of leaving the class 29 registrations on the Register.
The second appeal concerns Trident Seafoods’ opposition to an application for trademark registration by Trident Foods of the word mark TRIDENT filed on 18 July 2014 for various goods in class 29 including fish products which was rejected by the Registrar. Although Trident Seafoods had an earlier pending application to register a logo version of its TRIDENT SEAFOODS brand filed on 7 May 2013 for class 29 goods, the delegate applied the ‘other circumstances’ provision under s44(3)(b)
The first appeal was dismissed. In this appeal, Gleeson J firstly considered the meaning of “fish and fish products” and considered it covers seafoods, including mussels and oysters (molluscs) and prawns and crabs (crustaceans), as well as foods prepared from seafoods. Further, “fish” encompasses seafoods, including mussels and oysters (molluscs) and prawns and crabs (crustaceans), and also foods prepared from seafoods. Her Honour considered 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 and accepted Trident Seafoods’ submission that a reference to “fish product” does not generally include every product with any fish amongst its ingredients. However, whether a product is a “fish product” will depend on the ingredients of the product or, perhaps, whether the product is identified by its name as a fish product. Generally speaking, the greater the fish content in a product, the more likely it will be to answer the description “fish product”. Her Honour expressed the view that a fish sauce product or a flavouring made from fish could be a fish product, particularly where the main ingredient is fish or seafood. However, her Honour concluded that a TRIDENT branded Thai Noodle Soup product marketed by Trident Foods which contained a flavoured oil sachet containing fish sauce and dried shrimp is not a fish product.
Gleeson J agreed with the delegate and found that Trident Foods had not used the TRIDENT trade mark for any fish or fish products and had not rebutted the allegation of non-use.
Trident Foods was a wholly owned subsidiary of Manassen Foods and her Honour was not satisfied that use of the TRIDENT trade mark by Manassen Foods was authorised by Trident Foods in the sense of being “under the control” of Trident Foods.
When considering the exercise of discretion, it was relevant to note that Manassen Foods sold certain TRIDENT fish products up to 2007, as well as oyster sauce and fish sauce during 2010, and oyster sauce during 2011 and 2012. After the relevant non-use period had ended on 7 January 2014, Manassen also sold three TRIDENT tinned seafood products, being tinned tuna, smoked mussels and smoked oysters which her Honour accepted as not lacking good faith and was not mere colourable use to defend the TRIDENT trade mark registrations. After considering all the circumstances, her Honour was prepared to exercise discretion in favour of Trident Foods and leave its class 29 registrations for the TRIDENT trade mark on the Register.
The second appeal was successful. In this appeal, Gleeson J considered the objection under s44(1) was applicable. Trident Foods could not rely on “other circumstances” under s44(3)(b) because it 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 Foods, albeit with the acquiescence of Trident Foods. The use or intended use of the trade mark, or the authorisation or intended authorisation of such use is a precondition to the right to apply for registration by s 27 of the Act. In her Honour’s view, it would not be appropriate to exercise the discretion under s 44(3)(b) when that precondition had not been satisfied.
In light of this finding, it was not strictly necessary to decide the s59 lack of intention to use ground of opposition, but her Honour did comment on this and considered Trident Seafoods could also prevail under this ground. This is because all the evidence pointed to use of the TRIDENT trade mark by Manassen Foods and Trident Foods did not itself have an intention to use this mark as at the 18 July 2014 filing date.
Trident Foods sought to rely on honest concurrent use under s44(3)(a) and prior continuous use under s44(4). Although it did not file a Notice of Contention, Gleeson J was prepared to dispense with this requirement and consider these grounds.
Honest concurrent use was quickly dismissed because there was no evidence that the mark subject of its intervening TRIDENT SEAFOODS Logo application had ever been used in Australia and concurrent use could not be satisfied in the absence of use of this mark.
Prior continuous use also could not be satisfied because Trident Foods could not show use of the TRIDENT mark for the relevant goods from before 7 May 2013 ( the filing date of the TRIDENT SEAFOODS Logo mark) up until 18 July 2014 ( the filing date of its TRIDENT mark). Further, Trident Foods could not rely on use of TRIDENT by Manassen Foods because such use was not under its control.