Trident Seafoods Corporation v Trident Foods Pty Ltd  FCAFC 100 (20 June 2019)
This involved two related appeals where leave to appeal was granted. Trident Seafoods (TSC) was unsuccessful in its appeal seeking removal of two TRIDENT trade mark registrations owned by Trident Foods (TF). However, TF was successful in its appeal overturning an opposition by TSC to registration of TF’s application for trademark registration of the word mark TRIDENT.
The first appeal concerned TSC’s applications for removal of two TRIDENT trademark registrations owned by Trident Foods (TF) covering various goods in class 29 including fish and fish products. The relevant non-use period was the 3 years period ending on 7 January 2014. The Registrar was not satisfied the TRIDENT trade mark had been used, but exercised discretion in favour of leaving the class 29 registrations on the Register. The primary judge, Gleeson J agreed and dismissed TSC’s appeal. Her Honour considered it was relevant to note that TF’s parent company, 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 TF and leave its class 29 registrations for the TRIDENT trade mark on the Register.
The second appeal concerned TSC’s opposition to an application for trademark registration by TF of the word mark TRIDENT filed on 18 July 2014 for various goods in class 29 including fish products. TSC 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 Registrar applied the ‘other circumstances’ provision under s44(3)(b). However, the primary judge disagreed and considered that TF 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, albeit with the acquiescence of TF. 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 s44(3)(b) when that precondition had not been satisfied.
The primary judge also considered Trident Seafoods could prevail under the s59 intention to use ground of opposition. This is because all the evidence pointed to use of the TRIDENT trade mark by Manassen and TF did not itself have an intention to use this mark as at the 18 July 2014 filing date.
The judgment of the primary judge is reported here
In the first appeal, the Full Court (Reeves, Jagot and Rangiah JJ) found that TSC had not identified any error of the requisite kind in the primary judge’s exercise of discretion.
TF contended that the primary judge erred by not finding that the use of the TRIDENT mark by Manassen was authorised by TF so that use by Manassen was use by TF. The Full Court agreed. The issue is not whether one company controlled the other but rather whether TF, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the TRIDENT trade mark. It was significant that the two companies had the same directors and it must be inferred from the evidence that the two companies operated with a unity of purpose. The Full Court noted that “as directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand.” This was a case at the other end of the spectrum to Lodestar ( see case report here ) where there was no relationship between the owner and the user of the marks beyond a licence. Given the corporate relationship, it is inconceivable that Manassen was using the marks without the knowledge, consent and authority of TF. This necessarily constitutes more than mere acquiescence by TF. Hence, the Full Court found there has been relevant use of the TRIDENT mark by TF during the relevant three year period and TF had rebutted the allegation of non-use.
The Full Court also disagreed with the primary judge and considered that a TRIDENT branded Tom Yum Goong Flavour Thai Noodle Soup product which contained a flavoured oil sachet containing fish sauce and dried shrimp was a fish product. Similar considerations applied to a fish stir fry sauce product. Hence, use of the TRIDENT trade mark on these products also constituted use by TF during the relevant three year period.
Further, the Full Court noted that it should have been found that TF had a residual reputation in fish and fish products. This was a factor which also should have been considered in the exercise of discretion to not remove the TRIDENT trade mark registrations.
In the second appeal, the Full Court noted that, although TSC’s intervening trade mark application for its Trident Seafoods Logo mark was blocking TF’s TRIDENT word mark application, that intervening application was itself being blocked by TF’s earlier TRIDENT registrations (which were not to be removed for non-use).
The Full Court agreed with the primary judge that the honest concurrent use provision under s44(3)(a) could not apply because it requires use of both marks, that is the TRIDENT mark and the Trident Seafoods Logo mark. However, the Trident Seafoods Logo mark had not been used in Australia.
The primary judge erred in not finding use of the TRIDENT mark by Manassen was authorised by TF and, as a result, the primary judge’s exercise of discretion under the other circumstances provision of s44(3)(b) miscarried. The Full Court also disagreed with the primary judge and considered the better view is that s 44(3)(b) involves an exercise of discretion in the circumstances as they exist at the time the discretion is exercised, rather than as at the priority date of the application. No relevant distinction can or should be drawn between the discretions in s 44(3)(b) and s 101(3) in this regard. In all the circumstances, the Full Court considered that discretion should be exercised in favour of registration of the TRIDENT mark by TF.
Given the finding of the Full Court under s44(3)(b), it was unnecessary to consider prior continuous under s44(4).
The error in not finding use of the TRIDENT mark by Manassen was authorised by TF also affected the primary judge’s assessment of the s59 intention to use ground of opposition. Given the Full Court’s finding that TF used the TRIDENT mark t because Manassen was its authorised user, there is no reason to infer that TF did not have an intention to use the TRIDENT mark subject of the application in precisely the same way. There was no circumstance which could displace the presumption of TF’s intention to use the mark. Even if TF was not using the TRIDENT mark because Manassen was not an authorised user, there could be any doubt that when TF filed its trade mark application it intended that Manassen be the authorised user of the mark.