This recent Federal Court decision concerns two appeals by Trident Seafoods Corporation (Trident Seafoods) from decisions made by delegates of the Registrar of Trade Marks. Trident Food Pty Ltd (Trident Foods) is the respondent to both appeals.

Trident Seafoods

Trident Seafoods was founded in 1973 and is one of the largest vertically integrated seafood distributors in the world. “TRIDENT SEAFOODS” is its house brand used with respect to the provision of fresh, tinned and frozen seafood products which it distributes globally:

 

(Trident Seafoods Logo).

Trident Seafoods has not sold seafood products in Australia but now wishes to enter the market and commence selling “TRIDENT SEAFOODS” branded seafood products.

Trident Foods

“TRIDENT” is an Australian brand that has been used on a variety of food products since the early 1970s. Historically, the “TRIDENT” brand is closely connected with Asian flavours and ingredients. Nowadays, the “TRIDENT” brand has such a high penetration in Australian households that it is probably in most households at some point during the year.

Trident Foods is a wholly owned subsidiary of Manassen Foods Australia Pty Ltd (Manassen). Since Manassen acquired Trident Foods in about 2000, the sales of “TRIDENT” branded products have been undertaken by Manassen and not Trident Foods itself.

What led to the appeals?

First Appeal

On 7 May 2013, Trident Seafoods filed trade mark application no. 1555536 (Trident Seafoods TM Application) for the Trident Seafoods Logo in relation to the following goods:

Class 29: Seafood; processed seafood; edible oils; edible fish oils; nutritional oils for food purposes; edible oils and edible fish oils for use as ingredients in foods and beverages.

Registration of the Trident Seafoods TM Application was blocked by the following three trade mark registrations for ‘TRIDENT’ held by Trident Foods:

1. TM266625 which had been registered since 15 March 1973 for goods specified as:

Class 29: Fish and fish products.

2. TM400953 which had been registered since 8 December 1981 for goods specified as:

Class 29: 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.

3. TM400955 which at the time had been registered since 8 December 1983 for goods specified as:

Class 31: Grains not included in other classes; living animals; fresh fruits and vegetables, seeds; live plants and flowers; malt.

When Trident Seafoods approached Trident Foods seeking consent to register the Trident Seafoods TM Application, Trident Foods refused. Trident Seafoods then filed applications for the removal of the three Trident trade marks for non-use. Trident Foods opposed those applications and the matter was heard by a delegate of the Registrar.

The delegate found there were grounds for removal established by Trident Seafoods. The delegate removed TM400955 but exercised her discretion to not remove TM266625 and TM400953 from the Register. Trident Seafoods appealed the decision in relation to those marks still on the Register.

Second Appeal

On 18 July 2014, Trident Foods filed trade mark application no. 1635410 (Trident Foods TM Application) for the word ‘TRIDENT’ in relation to:

Class 29: 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.

 

Class 30: Fish sauce (condiments); Flavourings made from fish.

Trident Seafoods oppoed the Trident Foods TM application but failed to establish any grounds of opposition at the hearing. Trident Seafoods appealed the decision.

Issues for Determination

The parties agreed that the following issues arose in the first appeal:

1. What goods fell within the description of “fish and fish products”?
2. Did Trident Foods use the trade marks during the Non-Use Period for the relevant goods?
3. If the answer to question 2 is “no”, should the Court exercise its discretion to not remove the trade mark from the Register?

The findings made in the first appeal contributed to the determination of the outcome of the second appeal.

Is that a fish, or some fin else?

Justice Gleeson constructed the words “fish products” by reference to the relevant editions of the Nice Classification as at the time of registration, which indicated that “fish products” referred to seafoods, including mussels and oysters (molluscs) and prawns and crabs (crustaceans), and foods prepared from seafoods.

Trident Foods contended that the application of a trade mark to goods containing an ingredient is (or at least might be) a use of the trademark “in relation to” that ingredient.

Ultimately, it was held that the application of a trade mark to a particular food product is use of the trade mark in relation to those goods only, and generally not to the ingredients from which the goods are made. Nonetheless, a fish sauce product or a flavouring made from fish could be a fish product, particularly where the main ingredient is fish or seafood.

Troubled waters

The relevant period for the purposes of the non-use applications was from 7 January 2011 to 7 January 2014 (Non-Use Period).

Her Honour found that Trident Foods did not use either TM266625 nor TM400953 in relation to “fish” or “fish products” during the Non-Use Period.

Trident Foods attempted to establish that Manassen had been an authorised user of the ‘TRIDENT’ marks.

However, her Honour found that:

• the corporate relationship between Trident Foods and Manassen did not place Trident Foods in a relationship of control over Manassen – rather, the converse was the case;
• the fact that the companies shared the same directors, without more, did not permit Trident Foods to exercise 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; and
• 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.

Accordingly, Trident Foods had not used either TM266625 nor TM400953 for the relevant goods during the Non-Use Period and Trident Seafoods had established grounds of non-use.

Hook, line and sinker?

Not quite.

Even though grounds for removal were established, Justice Gleeson exercised the discretion afforded the Court in deciding that the two marks should not be removed from the Register. In doing so, she considered that:

• there had been recent use of the trade marks as Trident Foods reintroduced fish products (tuna, smoked oysters and smoked mussels) in Australia. Whilst this was a reaction to the non-use application, it did not lack good faith and was not colourable;
• Trident Foods had developed an intention to use the mark on tinned seafood products which was consistent with the changing use of the trade marks from time to time reflecting circumstances in the marketplace;
• Trident Foods and Manassen had entered into an agreement to formalise their relationship concerning the trade marks with a view to ensuring Manassen uses the trade marks under the control of Trident Foods;
• historically, the portfolio has included fish and fish products and the public are likely to identify products using the “TRIDENT” trade mark as emanating from a single source; and
• there is a relevant prospect of confusion in the minds 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.

The first appeal was dismissed. TM266625 and TM400953 remain on the Register.

Was Trident Foods also off the hook for the second appeal?

No. Notwithstanding Trident Foods’ success on the first appeal, Justice Gleeson found in Trident Seafoods’ favour in the second appeal which concerned Trident Seafoods’ opposition to the Trident Foods TM Application. The opposition covered most of the goods claimed in class 29, but not the goods in class 30.

Despite the fact that the Trident Seafoods TM Application remained pending and may ultimately never achieve registration, the priority date for that application was earlier than the priority date for the Trident Foods TM Application. Accordingly, Trident Foods was required to show prior use, honest concurrent use or other circumstances to justify acceptance under section 44 of the Act. Justice Gleeson found that the evidence supported neither prior use nor honest concurrent use (particularly given the issues surrounding the relationship between Trident Foods and Manassen) and further, that there were no “other circumstances” which warranted acceptance of the application.

Her Honour also upheld the opposition on the alternative ground advanced by Trident Seafoods, namely that Trident Foods did not intend to use the ‘TRIDENT’ trade mark for the relevant goods as at the priority date. Perhaps surprisingly, her Honour found that Trident Foods’ failure to adduce evidence demonstrating an actual intention to use, coupled with the issues surrounding Manassen’s use of the TRIDENT mark, supported the conclusion that the requisite intention to use was not present.

Her Honour therefore allowed the second appeal and upheld Trident Seafoods’ opposition to the Trident Foods TM Application.

The small win is hardly comforting. Trident Seafoods may not be able to sell fish products in Australia under the “TRIDENT SEAFOODS” brand any time soon, though we think there are plenty of fish in the sea.