You may recall our last post on the Federal Court decision about two appeals by Trident Seafoods Corporation (“Trident Seafoods”) from decisions made by delegates of the Registrar of Trade Marks in relation to disputes with Trident Food Pty Ltd (“Trident Foods”).

By way of brief re-introduction, Trident Seafoods was founded in 1973 and provides fresh, tinned and frozen seafood products globally under this brand:

“TRIDENT” is an Australian brand owned by Trident Foods, which is a wholly owned subsidiary of Manassen Foods Australia Pty Ltd (Manassen). The “TRIDENT” brand is closely connected with Asian flavours and ingredients:

Trident Seafoods had previously filed applications for the removal of three of Trident Foods’ trade marks for non-use. The delegate removed one mark but exercised her discretion to not remove TM266625 and TM400953 from the Register. Trident Seafoods appealed this decision to the Federal Court and in our previous post, we discussed how the primary judge found Trident Seafoods had established grounds of non-use for TM266625 and TM400953 after considering:

• “fish products” referred to seafoods, including mussels and oysters (molluscs) and prawns and crabs (crustaceans), and foods prepared from seafoods
• the corporate relationship between Trident Foods and Manassen and the fact that the companies shared the same directors did not place Trident Foods in a relationship of control over Manassen
• the identification of Trident Foods as trade mark owner on products supplied by Manassen did not prove use of the trade mark under the control of Trident Foods
• even though the parties signed an agreement in 2017 to ‘formalise’ an unwritten licence arrangement between Trident Foods and Manassen to use the trade marks, the affidavit evidence did not support the existence of such an arrangement

Even so, her Honour exercised her discretion to not remove the marks from the Register, noting that Trident Foods’ recent (post non-use period) good faith use of TRIDENT on tinned tuna products supported a developed intention to use the mark on seafood products and further, Trident Foods and Manassen had now entered into a licence agreement to formalise their relationship concerning the trade marks.

The primary judge also upheld Trident Seafoods’ opposition to trade mark application no. 1635410 (Trident Foods TM Application) after considering Trident Foods’ failure to adduce evidence demonstrating an actual intention to use and the issues surrounding Manassen’s use of the TRIDENT mark.

Trident Seafoods appealed the decision of the primary judge and Trident Foods filed a notice of contention in relation to Trident Seafoods’ opposition to the Trident Foods TM Application.

The two appeals were heard together by the full Federal Court consisting of Reeves, Jagot and Ringiah JJ.

Some fin, any fin – Trident Seafoods’ contentions

The Full Court ultimately held that Trident Seafoods had failed to identify any fin that constituted an error of the requisite kind to justify appellate intervention in respect of the exercise of a discretion.

In summary, Trident Seafoods’ contended the following:

• Trident Seafoods asserted that the primary judge’s exercise of discretion miscarried having regard to the statutory purpose of Part 9 of the Trade Marks Act 1995 (Cth) and the guiding principle of the public interest. In particular, Trident Seafoods submitted that the primary judge failed to observe the advantage of marketplace competition that would follow. The Full Court did not accept that the primary judge was bound to make such an observation.
• Trident Foods reintroduced fish products in Australia following the filing of the non-use application by Trident Seafoods. The primary judge concluded that the use of the TRIDENT mark on these tuna, smoked oysters and smoked mussels products after the non-use period did not lack good faith and was not colourable – Trident Seafoods challenged this, but did not identify any error said to undermine the primary judge’s conclusion.
• In deciding that Trident Foods’ marks should not be removed from the register, the primary judge had considered that there was a relevant prospect of confusion in the minds of consumers arising because of the longstanding and significant use of the “TRIDENT” mark on a wide range of food products. Trident Seafoods submitted that the intention of Trident Foods to sell tinned mackerel under the Trident mark was at best of “marginal relevance” to the question of confusion. The Full Court opined that a complaint about the weight afforded to a relevant factor in the exercise of a discretion does not disclose an error which justifies appellate intervention. Further, it found that the intention to change use of the mark on different products including tinned mackerel represented a continuation of the use of the marks across a wide variety of foodstuffs, sold from different aisles in supermarkets under the TRIDENT brand.
• Further to the above, Trident Seafoods submitted that the primary judge did not identify the evidentiary basis for the conclusion that there was a relevant prospect of confusion in the minds of consumers and did not undertake any evaluation of the likely context in which any potential prospect of confusion might arise. These criticisms of the primary judge were found to be unsubstantiated.
• Trident Seafoods also contended that the primary judge erred by treating “fish” and “fish products” as including mussels and oysters (molluscs) and prawns and crabs (crustaceans). Trident Seafoods also took issue with the primary judge finding that Oyster Sauce constituted a fish product, and that use of the TRIDENT mark on this product constituted use during the non-use period. The Full Court found there was no error in the primary judge treating “fish” and “fish products” as extending to molluscs and crustaceans, and on the primary judge’s reasoning, “fish” included oyster.

The Full Court therefore dismissed Trident Seafoods’ appeal, finding that the primary judge had not erred in exercising her discretion to refuse the removal of TM266625 and TM400953 from the Register.

Those who swim together, stay together

Following the filing of Trident Seafoods’ appeal, Trident Foods filed a notice of contention with respect to the primary judge’s upholding of Trident Seafoods’ opposition to the Trident Foods TM Application.

The Full Court accepted Trident Foods’ submissions that the primary judge erred in concluding that Trident Foods had not itself used the marks in Australia during the relevant period.  The Full Court found that Manassen’s uses of the marks in that period were authorised uses under section 8(1) of the Act and thus taken to be uses by Trident Foods as the owner of the marks under section 7(3) of the Act.

In doing so, the Full Court had consideration of the following:

• It was significant that at all relevant times Trident Foods sand Manassen had the same directors, which was evidence that they operated with a unity of purpose. 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 to maximise sales and to enhance the value of the brand. The Full Court distinguished Lodestar[1] on this basis and found that it was commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks.
• Every packet sold by Manassen stated that Trident is a registered trade mark of Trident Foods. This further supported the inference of control by Trident Foods of the use of the marks it owns.
• Given the corporate relationship, the Full Court found it inconceivable that Manassen was using the marks without the knowledge, consent and authority of Trident Foods.
• The Full Court found that the Tom Yum Goong Flavour Thai Noodle Soup product should have been accepted by the primary judge as involving a use of the TRIDENT mark within the relevant period because “goong” means prawn in Thai. As “fish” includes crustaceans such as prawns and the Thai word for “prawn” appears on the name of the product, the requirements for use during the relevant period would have been satisfied.

However, the Full Court was not persuaded that use of the TRIDENT marks during the relevant period on dates, tinned Chinese vegetables, and tinned corn would constitute similar goods to provide a further factor supporting the exercise of the discretion in section 101(3). The fact that those goods emanated from the same producer and were sold in the same shops does not mean that they are similar goods to the fish and fish product goods.

Given that the Full Court considered the primary judge’s exercise of discretion under section 44(3)(b) involved error, it was necessary for the Full Court to consider the exercise of the discretion themselves. In its view, there were compelling reasons why it was proper that the Trident Foods TM Application should proceed to registration:

• the Full Court agreed with Trident Foods’ submission that, contrary to the approach of the primary judge, the better view is that section 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; and
• on this basis, and if it were necessary to identify other circumstances indicating that the Trident Foods TM Application should proceed to registration, the Full Court called in aid the licence agreement dated 3 November 2017 which formalised the ‘unwritten’ licence between Trident Foods and Manassen. This licence agreement established Trident Foods’ intention that Manassen be an authorised user of the various TRIDENT marks. The result was that Trident Foods was able to use its TRIDENT mark on a wide range of foodstuffs.

The Full Court therefore accepted the Trident Foods TM Application for registration on the basis that the above circumstances gave rise to a proper basis pursuant to section 44(3).

It’s o-fish-al – the Trident Foods TM Application will be registered

Trident Foods’ trade mark application no. 1635410 for the word ‘TRIDENT’ covering ‘coconut oil; cooked meals 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 will now proceed to registration.

This decision suggests a more flexible approach to the question of authorised use than that indicated by Lodestar, as well as to the exercise of the Registrar’s discretion to refuse removal despite non‑use. It also provides guidance as to the Court’s view on corporate entities who share the same directors acting with an agreed ‘unity of purpose’ despite being separate legal persons.

[1] Lodestar Anstalt v Campari America LLC [2016] FCAFC 92.