A previous post examined Gleeson J’s conclusion that Trident Foods had not used its TRIDENT trade marks for a continuous period of three years because it had not actually controlled the use by its parent, Manassen. As noted there, however, Gleeson J exercised her discretion under s 101(3) not to order removal.
You will recall that Trident Foods has had TRIDENT registered:
(1) for fish and fish products in class 29 since 1973, TM No. 266,625; and
(2) since 1983, for meat, fish, poultry and various extracts, preservatives and pickles, TM No. 400,953,
and Trident Seafoods is trying to get those trade marks removed for non-use because they are blocking its attempt to register its own trade marks for “Trident Seafoods”. Gleeson J found that Trident Foods had not used its trade marks either itself or through an authorised user in the relevant 3 years between 2011 and 2014, but exercised her discretion against removal.
Discretion against removal
At , a number of matters played into her Honour’s decision not to order removal.
One factor was that Trident Foods had not abandoned its trade mark but, when the removal action had been filed, had organised Manassen to make some limited sales of fish products and (eventually) had entered into a formal (and presumably effective) licence agreement with Manassen.
Another factor was the risk of confusion if Trident Seafoods started marketing its products in Australia by reference to a trade mark which included “Trident”. While there had been limited use by Manassen in relation to fish and fish related products, there had nonetheless been some limited use both before and after the non-use period and that use had been with the knowledge and acquiescence of Trident Foods. Moreover, there was longstanding use in respect of a wide range of food products which changed over time.
Interestingly, Gleeson J would not have exercised the discretion if Manassen’s use had been in respect of products other than fish and fish products only. Such use could be taken into account in favour of the exercise of the discretion because there had been some use in respect of fish and fish products and, apparently more importantly at , because Trident Foods and Manassen still intended that Manassen continue to use the trade mark as an authorised user.
The fact that the limited sales of fish and fish products after the non-use period were specifically motivated in response to the bringing of the non-use application was not ‘colourable’. At , Gleeson J noted that the sales were not unprofitable or otherwise contrived, but appeared to reflect a genuine estimate of the extent to which the products could be profitably sold in Australia.
Other matters – what goods were specified
In the course of her Honour’s reasons, Gleeson J was required to give careful consideration to the meaning of “fish and fish products” in the specification of goods in the respective trade marks. This required consideration of the signification of the terms in the editions of the Nice Classification in force at the priority date of the trade marks as well as the normal meaning of the terms.
Trident Seafoods argued that the terms were limited to creatures with scales, gills and fins. However, Gleeson J accepted at  –  the terms were wide enough to cover crustaceans such as crabs and prawns and molluscs such as oysters as well as foods prepared from those products.
Trident Foods argued further that the use of TRIDENT for products which include fish as an ingredient would constitute use in respect of fish and fish products relying on, for example, sales of prawn flavoured tom yum soup. Gleeson J rejected this argument in its broadest form and, instead, considered a qualitative assessment on a product by product basis was required:
- … 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.
Noting that a a trade mark in respect of flour would not cover bread or vice versa, her Honour explained at :
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”. In my view, a fish sauce product or flavouring made from fish could be a fish product … particularly where the main ingredient is fish or seafood. ….
Noting also that there may be debate about whether a sauce of flavouring of animal origin fell within class 29 or class 30, Gleeson J considered that TRIDENT brand Tom Yum soup, labelled “Tom Yum Goong Flavour Thai Noodle Soup” with a marking “contains Crustacea and fish”, was not a fish product. The contents listed noodles, a flavour sachet, an oil sachet and a chilli sachet and the oil sachet was described as containing, relevantly, fish sauce and dried shrimp.
Honest concurrent user
The final round of issues related to Trident Foods’ fallback application to register TRIDENT for “its” products. After Trident Seafoods brought its non-use application against Trident Foods’ registrations, Trident Foods filed a further application in 2014 to register TRIDENT for its products including fish and fish products. Trident Foods’ application was blocked of course by Trident Seafoods’ earlier, pending applications (which you will remember were in turn blocked by Trident Foods’ registrations that Trident Seafoods was trying to remove for non-use).
The first point is that Gleeson J ruled at  that Trident Foods could not rely on “honest concurrent use” to overcome the citation of Trident Seafoods’ applications as Trident Seafoods had not used its trade mark in Australia. The plain, literal words of s 44(3)(a) required “honest concurrent use of the 2 trade marks (emphasis supplied). As there had been no use in Australia of its trade mark by Trident Seafoods, s 44(3)(a) did not apply.
Seems like yet another triumph of the “plain English” drafting of the 1995 Act.
(not) closely related goods
Next, at  – , Gleeson J ruled that Trident Foods could not take advantage of the prior continuous user provisions in s 44(3)(a).
The long period of non-use from 2007 to 2014 meant that there was no use at all in respect of “the goods” or “similar goods”. However, Trident Foods argued it could rely on use in respect of closely related goods on the basis of the reference in s 44(4)(a)(ii) to continuous use for “the similar services or closely related goods”. Gleeson J held this avenue was unavailable to Trident Foods because s 44(4)(a)(ii) applied only to trade mark applications for services. Where the application was blocked because of its specification of goods, only s 44(4)(a)(i) applied and so the use had to be in respect of the specified goods or similar goods. At :
In this case, s 44(1) applies because the relevant application is an application for the registration of a trade mark in respect of goods. Section 44(2), concerning registration of a trade mark in respect of services, has no application. “[T]he similar goods or closely related services” referred to in s 44(4)(a)(i) are the “similar goods or closely related services” in respect of which registration of a trade mark is sought, referred to in s 44(1)(a)(ii). Section 44(4)(a)(ii) has no relevant operation, because it refers to the “similar services or closely related goods” in s 44(2)(a).
In any event, the use was by Manassen and, as discussed in the previous post, that use was not authorised use and so could not be relied on.
The discretion for “other circumstances” under s 44(3)(b)
Finally, Trident Foods argued at  that, even if “honest concurrent use” was not available,
(1) the existence of its earlier registrations for TRIDENT (which were not going to be removed);
(2) the fact that Trident Seafoods blocking applications were pending applications only and were blocked by Trident Foods’ own registrations; and
(3) essentially the discretionary considerations which led her Honour not to order removal of the trade mark registrations for non-use,
were “other circumstances” on which her Honour could exercise the discretion under s 44(3)(b).
At , Gleeson J accepted that the inchoate nature of Trident Seafoods’ applications and their inability to proceed in the face of Trident Foods’ earlier registrations was a relevant “other circumstance” enlivening s 44(3)(b).
At , however, it was not appropriate to exercise the discretion to allow registration because there was no use, or intention to use, the trade mark at the priority date of the application by Trident Foods or an authorised user:
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 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 my view, it would not be appropriate to exercise the discretion under s 44(3)(b) whether [sic] that precondition had not been satisfied.
Moreover, s 59 would apply as a ground of opposition to defeat Trident Foods’ application. You will remember that Trident Foods filed this application in 2014, but its licence agreement with Manassen was put in place only in 2017. When Trident Foods applied to register the trade mark, therefore, it did not have an intention to use the trade mark either itself or through an authorised user.
Trident Seafoods has appealed: NSD1951/2018.
Trident Seafoods Corporation v Trident Foods Pty Limited  FCA 1490