Will your assignments and licences of intellectual property, such as in a typical franchise agreement, expose your client to liability for cartel conduct or will you be ready to apply for an authorisation?
Section 51(3) exempts from most of the prohibitions in Pt IV of the Competition and Consumer Act terms and conditions in assignments and licences of intellectual property which most of us take for granted.
The rationale for repeal is that most transactions involving IP do not have anti-competitive effects or purposes and, if they do, they should not be exempt from the competition laws.
Rodney De Boos, a consultant at DCC with many years’ experience in licensing and commercialisation of IP, however, points out that this explanation was developed before the provisions banning cartel conduct were introduced into the Act. And, he contends, typical arrangements in IP agreements which allocate, for example, territories or customers will constitute cartel conduct and so need authorisation if the parties are not to be in breach of the cartel provisions.
As Rodney explains, a cartel provision are certain types of specified provisions between competitors.
Now, it may well be that an assignor and assignee, or a licensor and licensee, will not be competitors. There are many types of arrangements, however, where the Competition and Consumer Act will deem them to be competitors. An obvious example is the case of a franchisor who has retail outlets (either itself or through a related body corporate) as well as retail franchisees. Other arrangements involving IP could also be similarly problematical.
You can read Rodney’s concerns in more detail here.
The bill repealing s 51(3) has already passed the House of Representatives and is due to be debated by the Senate in the sittings coming up.
Professor Mark Davison and colleagues have a paper forthcoming in the AIPJ exploring the validity of the claims to protection [SSRN paper here]
We have been here before – when the EU-Australia Wine Agreement knocked out use of names like ‘champagne’ in return for greater access to the EU for Australian sparkling and other wines.
When the second version of that agreement replaced the 1994 version, the National Interest Assessment pointed out:
8. In 2006-07, Australia exported 421 million litres of wine to the EC with a value of $1.3 billion, and imported 10.2 million litres with a value of $168 million. Key regulatory and intellectual property issues related to trade in wine between Australia and the EC are currently regulated by the 1994 Agreement.
9. The Agreement offers a number of advantages to Australian wine-growers, which will help consolidate their access to the EC market at a time when the domestic industry still faces concerns about an over-supply. The new Agreement also resolves several outstanding issues not covered by the 1994 Agreement, and thus will help maintain a mutually beneficial trade relationship with the EC.
10. In particular, the Agreement obliges the EC to permit the import and marketing of Australian wines produced using 16 additional wine-making techniques. It also sets out a simpler process for recognition of further techniques, with an option for disputes to be resolved by a binding arbitration. Under the 1994 Agreement, by contrast, the process for authorisation of new wine-making practices has no binding dispute settlement procedure, and no new practices have been authorised under the 1994 Agreement. This has been particularly problematic for Australian wines produced with an important wine-making technique involving the use of cation exchange resins to stabilise the wine. This technique was provisionally authorised for 12 months under the 1994 Agreement, and this authorisation has since had to be periodically extended for 12-month periods.
11. The Agreement also obliges the EC not to impose any new wine labelling requirements that are more restrictive than those which apply when the proposed Agreement comes into force. This means that industry will not face the difficulties and additional costs that might arise if the EC was permitted to introduce more onerous wine labelling requirements.
12. Finally, the Agreement obliges the EC to recognise and protect new Australian wine Geographical Indications. A Geographical Indication is a label or sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin.
How it will play out this time, who knows? As usual, the Australian government is keeping its position largely secret from us. The EU, however, is quite open about what it is seeking (Compare DFAT here and here and here to EU proposed text here see esp. article X.22 and from X.31 and generally).
While some of us have been sweltering on the beach or disporting in the northern snows, Beach J has granted Branhaven’s application to amend its patent application for compositions and methods of inferring bovine traits following Meat & Livestock Australia’s opposition.
You will recall that Beach J had earlier rejected MLA’s attack based on manner of manufacture, novelty and inventive step. However, his Honour upheld the challenges based on lack of clarity and, to an extent, utility.
Branhaven applied to amend under s 105(1A) of the Patents Act 1990.
MLA opposed; in broad terms arguing that Branhaven was too late, there was no power to amend at this stage; the amendments were not permissible in any event and, as a matter of discretion, should not be allowed even if the Court did have power.
Prior to the Raising the Bar Amendments, the Court had power under s 60(4) to hear an appeal from the Commissioner’s decision in an opposition. The Court was restricted, however, to dealing with the application in the form the subject of the opposition before the Commissioner. If the opposition was successful but on grounds that could be cured, any application to amend had to be remitted to the Commissioner. Two of the amendments introduced by Raising the Bar were s 105(1A) and s 112A. Section 105(1A) provides:
If an appeal is made to the Federal Court against a decision or direction of the Commissioner in relation to a patent application, the Federal Court may, on the application of the applicant for the patent, by order direct the amendment of the patent request or the complete specification in the manner specified in the order.
MLA argued that, after such a hotly contested ‘appeal’ and detailed reasons, Beach J was in effect functus officio. Amongst other things, MLA’s application was not made during the appeal and the Court therefore had no power to deal with the amendment application.
Beach J has rejected all these attacks. In the course of doing so, his Honour recognised it would not be appropriate to remit the matter to the Commissioner (even if there were power). His Honour also found that s 105(1A), like s 105(1) but unlike the Commissioner’s powers under s 60, was discretionary. His Honour’s reasons also explored the types of considerations that might affect the exercise of that discretion in the context of an application instead of a granted patent.
At this stage, it is not known if MLA will seek to appeal.
Robertson J has allowed Rokt’s appeal and held that its ‘computer implemented method for linking a computer to an advertising message by way of an intermediate engagement offer ….” was a manner of manufacture and so patentable subject matter.
The Commissioner had found (and here) that Rokt’s patent was not a manner of manufacture as required by s 18(1)(a) and so refused grant.
On the appeal, Robertson J found Rokt’s claims were patentable subject matter in application fo the principles from Research Affiliats and RPL Central on the facts.
Crucial to his Honour’s decision was evidence that computer systems at the priority date in December 2012 did not work in the way claimed, which was not just a routine use of the technology.
In response to the Commissioner’s argument that the method was just a business method, Robertson J said at :
The invention solved not only a business problem but also a technical problem. As to the latter, it provided a single platform in which user engagement data could be coupled with transactional data and user context data to provide a personalised ranking of engagement offers to the user. This technical problem of providing this single platform was solved by introducing the tracking database and the objects database and designing the ranking engine and the engagement engine which accessed and manipulated the data in the two databases to rank and select engagement offers. The ranking engine optimised the personalised output for the consumer. Critically, the ranking engine implemented a ranking algorithm which ranked the retrieved object by a combination of an engagement score and revenue score. I also accept the evidence Professor Verspoor gave, which is summarised at -, -, - and  above.
On the evidence, Robertson J found that known, exiting components were integrated into a new system in an innovative and previously unknown way. At , his Honour explained:
In this case, the evidence showed that the use of computers was integral to the invention, not just incidental. At  – , Robertson J said:
The use of computers was integral, rather than incidental, to the invention in the sense that there is an invention in the way in which the computer carries out the business scheme: see RPL Central at . It was not feasible to store and manage large amounts of tracking data collected from real-time interactions with digital devices and manipulate large quantities of data for context-sensitive decision-making without the use of computers. The data bank that was the source of engagement objects and historical/tracking data was a critical component of the invention. I accept the applicant’s submission that the computer was not merely acting as an “intermediary” but that the substance of the invention involved the new functioning given to the computer. I accept Professor Verspoor’s evidence summarised at - above. Storage and manipulation of data at the magnitude and speed that was required to implement the method could only be done on a computer or computers. The data analysis claimed in the patent could not be performed without a computer or computers, particularly having regard to the gathering, manipulation and subsequent use of the data by the engagement engine. The user interactions took place on the user’s computer and it was integral to the invention that data be collected, and engagement offers presented, through that computer. The transmission and receipt of data over the internet to and from the advertising system could also only be done using computers.
net cost to Australian IP professionals is $2.5 million (unchanged)
net cost to the Australian Government is $2.8 million (unchanged).
Perhaps one of the most interesting aspects of the report is an analysis of all infringement court cases involving patents, trade marks or registered designs since 2008:
Rate of infringement cases by registered IPR
There have been far less design infringement cases but, having regard to the number of registered designs, litigation is in approximately the same proportion as trade mark infringement cases, but approximately only one third the rate of patent litigation.
Another surprising aspect: the New Zealand Intellectual Property Association also made submissions – which appear to have been rather influential – which strongly opposed Australia joining the Hague system.
Finally, the report is at pains to say that the costs benefit analysis of joining Hague is only one factor being considered. Anyone want to put money on Australia joining (before we sign up to anothere one-way trade agreement with, this time, the EU)?
The report gets a bit over-excited by the high proportion of certified designs which get litigated – well, duh! ?
Last week’s post looked at the substantive reasons for the rejection of Frucor’s attempt to register a shade of green as a trade mark for energy drinks. There were also a couple of points about grounds of opposition and amendment of applications on appeal worth noting.
You will remember that Frucor’s application included a green swatch, copied from its New Zealand trade mark application, which was for a different colour than the colour identified by the written description under reg. 4.3(7), Pantone 367c.
What’s a ground of rejection (for opposition purposes)
In addition to the grounds of opposition provided by sections 58 to 62A, as you will know s 57 provides that an application may be opposed on any of the grounds on which the application could have been rejected during examination.
Coca-Cola argued that the inconsistency between the graphic representation of the mark and the written description was itself a ground of rejection.
The basis for this argument was that s 33 required the Registrar to reject an application where the application had not been made in accordance with the Act. It argued the Registrar should have rejected the application because the inconsistency meant that Frucor’s application had not been made in accordance with the Regulations as required by s 27(2)(a).
Yates J rejected this argument at ff. The grounds of rejection contemplated by s 57 were, relevantly, those provided by s 39 – s 44. (They even appear under a heading “Grounds for rejecting an application”.)
The power to amend
Frucor had not sought to amend its application to substitute a swatch of the correct colour before the Registrar during the examination process. It did apply to amend, however, during the appeal to the Federal Court.
Yates J, citing the approach taken by Heerey J under the Patents Act in Genetics Institute, held that the Court had power to consider the amendment application under s 197even though there had not been an application to amend before the Registrar. At , his Honour explained:
…. I do not see how an appeal to this Court from a decision of the Registrar in opposition to registration proceedings under the Trade Marks Act differs materially from an appeal to this Court from a decision of the Commissioner in opposition to grant proceedings under the Patents Act. Whilst I acknowledge that, in the present case, an application under s 63 of the Trade Marks Act was not before the Registrar, the registrability of the mark the subject of the application was in contest. In the proceedings below, the Registrar had the power to permit the application to be amended subject to the constraints placed upon the exercise of that power by the Act. Given the nature of the “appeal” to this Court, the Court’s power to quell the controversy as to the registrability of the mark—the subject matter of the appeal—cannot be more limited than the Registrar’s power. Further, it cannot matter that the Registrar was not asked to exercise the power of amendment, just as it cannot matter that an opponent might seek to raise additional or new grounds of opposition, or that the parties might seek to adduce different evidence to the evidence that was before the Registrar or raise new or different arguments. The opposition proceeds afresh before the Court on the subject matter that was before the Registrar and is adjudicated upon accordingly.
This practical approach is, with respect, to be welcomed in the interests of efficiency and, if followed, would obviate the need to introduce into the Trade Marks Act a counterpart to s 105(1A) of the Patents Act which, in turn, arose because Courts applying NEB had ruled a Court hearing an appeal from an opposition before the Commissioner had no power to deal with an amendment application.
Even though the power existed, Yates J at  denied Frucor’s application to amend. The substitution of “a markedly different green-coloured swatch” for the existing swatch would substantially affect the identity of the trade mark and so was prohibited by s 65(2).
Frucor also made a very late application to the Court to amend the application on the basis of s 65A.
The very late stage of the application and the lack of any utility (as the application would fail the distinctiveness requirement in any event) were fatal.
In contrast to his Honour’s practical approach to allowing consideration of an amendment under s 65 through s 197, however, Yates J considered allowing a party to bring an application under s 65A for the first time in the Court would subvert the statutory process for the consideration of such amendments by the Registrar prescribed by s 65A. Section 65A contemplated publication of the amendment application in the Official Journal and opposition proceedings before the Registrar.
In further contrast to Yates J’s views about s 65A, it may be noted that Courts dealing with amendment applications under s 105(1A) have directed the amendment applicant to publish the application in the Official Journal so that the Commissioner and any potential opponents may intervene. The difference is of course that the Patents Act through s105(1A) expressly tells the Court to deal with the request to amend because of the inefficiencies and delays which had resulted.
As previously noted, it does not appear that Frucor has appealed.
Frucor’s attempt to register the colour green as the predominant colour applied to its “V” energy drinks has failed. The colour being applied for was not properly defined and, consequently, had not been used as a trade mark. Yet again, consumer survey results did not help.
Frucor’s application included a green swatch, copied from its New Zealand trade mark application and, in accordance with reg. 4.3(7) a written description:
The mark consists of the colour green (Pantone 376c), as shown in the representation attached to the application, applied as the predominant colour to the goods, their packaging or labels.
The fundamental problem was that the green colour of the swatch was not Pantone 376c.
What’s the trade mark
Frucor argued that the written description should be given priority over the coloured swatch as a matter of construction of the trade mark application.
Its argument was that any trader looking at the Register would realise the colour swatch was inherently unreliable due to the potential for corruption through scanning, printing etc. Consequently, anyone looking at the Register would recognise that Pantone 376c was the subject colour.
Yates J considered this analysis was informed by Frucor’s subjective intention. The matter needed to be determined objectively. Reg. 4.3 required the application to set out a representation of the mark and, in that context, r. 4.3(7) required a description of the mark “as represented”. It was the representation which was primary. At , his Honour concluded:
…. A person inspecting the Register is entitled to act on the assumption that the trade mark applicant’s own depiction of colour in the representation accompanying the application is accurate.
Once the person inspecting the Register appreciated there was an inconsistency between the graphic representation and the description, there was no way to resolve the disconformity.
“V” green had not acquired distinctiveness
As the application was for a single colour mark, this meant that Frucor could not possibly demonstrate its trade mark had acquired distinctiveness under s 41(6)(a), the old (or pre-Raising the Bar version). At , his Honour explained:
As the Full Court explained in Woolworths/BP at , it is important to appreciate that it is the use of the mark applied for, as a trade mark, that determines what can be registered. In that connection, the Full Court emphasised that the mark that is the subject of the application for registration must conform to the mark that was, for the purposes of s 41(6), used before the filing date. Because, in the present case, the mark is defined ambiguously—its features are uncertain and cannot be determined objectively—it is not possible for Frucor to establish the factual condition of s 41(6)(a) by reference to its own particular use of “V” Green. It follows that, for that reason alone, registration should be refused in the present case.
Yates J would have rejected the application even if one assumed there was no ambiguity and the colour claimed was Pantone 376c.
Yates J accepted that Frucor’s use of “V” green was substantial, consistent and conspicuous. At , his Honour had “no doubt that … those familiar with Frucor’s “V” energy drinks would have associated “V” Green as the colour of Frucor’s core energy drink product.” (emphasis supplied)
Yates J held, however, that this extensive use and recognition was not use as a trade mark. First, at  the “consistent presence” and “dominating display” of the “V” logo was what consumers would recognise as performing the function of the badge of origin for the goods.
Accepting that there could be more than one trade mark for a product, the second consideration was the role colour played in the soft drink market including energy drinks, soft drinks, sports drinks, fruit juices and bottled water.
Packaging and labels in this field are often brightly coloured. Soft drink producers used colour to denote a range of things: sometimes product flavour, more generally some “varietal characteristic”. Frucor itself had different varieties of “V” which were presented in different liveries (scroll down): red for berry flavoured, silver for sugarfree, black and also a yellow in addition to “V” green which was reserved for the “hero” of the range. So at :
…. Although Frucor’s use of “V” Green was pervasive and no doubt fundamental to its whole marketing strategy, it was, nonetheless, reminiscent of its core product. In this way, Frucor’s use of “V” Green was essentially descriptive, not distinctive in the trade mark sense. It denoted the core product in the “V” energy drink range. I am not persuaded that, somehow, consumers would understand that colour in relation to the core product was being used differently to colour in relation to other varieties within the “V” energy drink range, or any differently from how colour was and is used descriptively across the range of non-alcoholic beverages sold through trade channels such as supermarkets and convenience stores.
So at , even though more than one trade mark could be used on any given product, the “V” green colour did not function as a trade mark.
What the market survey didn’t prove
Frucor’s evidence from a market research consultant based on two surveys did not help. His evidence showed, for example, that some 77% of the survey respondents identified Pantone 376c with a brand of energy drink and and 85% of those identified the drink as Frucor’s “V” energy drink. As a result, the expert concluded that Pantone 376c was part of Frucor’s “brand identity”, having properties that went well beyond decorative or functional attributes so that it distinguished Frucor’s products from other traders’.
The main problem was that evidence the public associated, or even identified, a particular colour with a “brand” by itself is not enough to establish that the colour is functioning as a trade mark. At , his Honour explained:
… evidence of an association (or, I would add, identification) of a sign, including a colour, with a particular product does not mean, without more, that the sign is functioning or has functioned as a trade mark in relation to that product. One needs to have an understanding of how the sign was used, in the proper context and setting, before that conclusion can be drawn. Moreover, the conclusion is not purely a factual one.
The last sentence in that extract points out that whether something is used as a trade mark is a legal conclusion.
If you are going to advance someone to give evidence that a colour has been used as a trade mark – as Frucor’s market survey expert purported to do, you will also need to demonstrate that the witness properly understands the legal concept. More practically, if you are trying to convert your colour into a trade mark, you need to educate your public that it is being used as your trade mark. At it’s most rudimentary level (and bearing in mind the range of other issues), can you tell your customers to “look for” you product by reference to its colour?
Market survey blues
Approaching the matter in this way enabled Yates J to avoid having to deal with the numerous criticisms about the survey methodology raised by Coca-Cola. A couple of points, however, do emerge.
At , Yates J was sceptical that the sample used in the surveys was representative. Frucor’s expert had not bailed up survey respondents randomly in the street or at the shopping centre. Rather, as is quite common in marketing, they were drawn from a panel of people who had signed up to participate in surveys.
That criticism is all the more compelling given the second point. Yates J was not at all comfortable accepting Coca-Cola’s criticisms of Frucor’s survey methodology in the absence of support from Coca-Cola’s own expert evidence.
Presumably, the same reasoning would apply under s41(3) in the “new” version. ?
At , Yates J recalled that this required “an understanding, from an objective viewpoint, of the purpose and nature of the use, considered in the context of the relevant trade” citing Woolworths/BP at . ?
See for example the evidence in Philmac about its khaki and then terracotta plastic pipe fittings leading to the conclusion at . For more recent US practice see here. ?
Trident Seafoods has failed to get Trident Foods’ registrations for TRIDENT removed for non-use, but only because Gleeson J exercised her Honour’s discretion against removal.
Trident Foods has had TRIDENT registered for fish and fish products in class 29 since 1973, TM No. 266,625 and, since 1983, for meat, fish, poultry and various extracts, preservatives and pickles, TM No. 400,953.
Trident Seafoods was founded in the USA in 1973. It is apparently the largest seafood distributor in North America. It uses and has registrations all round the world – except for Australia and New Zealand – the trade marks “Trident Seafoods” and a stylised logo incorporating those words. It has been marketing its products in Australia since 2007 under the trade mark “Bountiful”, but its attempt to register “Trident Seafoods” has been blocked by Trident Foods’ prior registrations. It brought an action under s 92(4)(b) to remove those blocking registrations on the grounds of non-use. The non-use period was 7 January 2011 to 7 January 2014.
There is a good chance you have, or have had, some TRIDENT condiments on your shelf, but here’s the thing. Since at least 2000, Trident Foods did not itself manufacture and sell TRIDENT branded products. The products were manufactured and sold by Manassen Foods Australia. Trident Foods claimed Manassen’s use was use as an authorised user. Gleeson J, however, rejected this claim but, as noted above, decided it was appropriate to exercise the discretion under s 101(3)not to order removal.
Manassen was not an authorised user
There was no written licence agreement between Trident Foods and Manassen until 3 November 2017.
In addition to that licensing arrangement, Trident Foods relied on the corporate relationship with Manassen, the involvement in their respective businesses of two common directors and Manassen’s compliance with the Bright Food Group’s quality assurance manual.
Trident Foods is a wholly owned subsidiary of Manassen (and both are members of the same corporate group, the ultimate holding company of which is Bright “Cayman Islands”). Nonetheless, Trident Foods relied on the essentially pragmatic approach applied by the Registrar:
There is nothing unusual in a large company such as Henry Schein, Inc and/or its predecessors (that is “the Company” as defined earlier) incorporating a wholly owned subsidiary in order to hold its worldwide trade mark (or, for that matter, patent or other IP right) portfolio. It is very common practice” because, inter alia, it efficiently streamlines processes for the prosecution and renewal of properties in the portfolio and it avoids the need to record name changes, mergers or assignments around the world should the parent company restructure or change names.
Gleeson J rejected this. Based on the Henschke v Rosemount and the Lodestar v Campari cases, her Honour held at  that “control” for the purposes of authorised use required “actual control” “as a matter of substance”.
The corporate relationship between Trident Foods and Manassen did not provide that. At [100(1)]: Gleeson J explained:
The corporate relationship between Trident Foods and Manassen does not place Trident Foods in a relationship of control over Manassen; rather, the converse is the case. The commonality of directors does not, without more, permit Trident Foods to exercise control over Manassen.
Trident Foods led evidence from a Ms Swanson, one of the two directors:
We have always maintained control over Manassen from the point of view of [Trident Foods’] as we have fiduciary obligations to act in the interest of [Trident Foods]. One of the things that has been considered, at least by me, since appointment as a director of Trident, is the quality and standard of the goods being sold under [Trident Foods’] trade mark registrations. As a director of Manassen, I appreciate the high standard of the goods that are sold by this company. As such, I have never had any cause for concern regarding the damage that could occur to the TRIDENT brand owned by [Trident Foods]. If there ever was a suggestion that poor quality goods were to be sold under [Trident Foods’] TRIDENT brand, I would be empowered and authorised to prevent such an occurrence.
Ms Swanson also gave evidence that Manassen had to comply with the Bright Food Group’s vendor quality management system (the VQM Manual) which was in place to maintain quality measures over all of the Group’s brands. In addition, she participated each month in meetings of Manassen’s “Innovation Council” which decided what products Manassen would sell, including “Trident” products, and were concerned with brand valuation and impairment to ensure that the brand was performing well and to avoid devaluation.
Gleeson J considered this was inadequate to establish actual control. Trident Seafoods argued that the directors would be in breach of their fiduciary duties to Manassen if they sought to exercise quality control over its operations on behalf of Trident Foods. Thankfully, Gleeson J did not accept this in terms. Rather, it seems Ms Swanson’s evidence was insufficient because it was at the level of assertion, without demonstrating examples of control being exercised by Trident Foods. At  points (2) – (6), her Honour explained:
(2) Ms Swanson’s evidence is in the nature of assertion. It does not include any particular illustration of conduct by Trident Foods amounting to actual control of the use of the “TRIDENT” trade mark.
(3) The fact that Ms Swanson considered it unnecessary to give directions, whether by reason of the existence of the VQM Manual or otherwise, is not relevant to the question of whether Manassen had obligations to Trident Foods in relation to the use of the “TRIDENT” trade mark.
(4) Any control that Ms Swanson might personally exercise by virtue of her membership of the Innovations Council (which was asserted but not demonstrated) does not prove control by Trident Foods.
(5) The identification of Trident Foods as trade mark owner on products supplied by Manassen does not prove use of the trade mark under the control of Trident Foods.
(6) Assuming that the VQM Manual is owned by Trident Foods jointly with other corporate entities in the Bright Group, Trident Seafoods did not demonstrate that the VQM Manual conferred any relevant control on Trident Foods over Manassen.
Finally, Gleeson J was not prepared to find there had in fact been an unwritten licence agreement in place as claimed in the recitals to the 2017 document. The claim was inconsistent with the evidence of how things had actually operated.
It is not possible to tell from the judgment what the contents of the VQM Manual were. One must wonder, however, whether much would really be gained by requiring the directors of Trident Foods to have met and formally adopted the relevant parts of the VQM Manual (assuming there were any) as the quality standards that Manassen needed to comply with and, further, to meet formally as directors of Trident Foods and approve changes to any applicable quality standards or even to meet at regular intervals to consider whether Manassen was complying with quality standards they had prescribed. Unless a subsidiary can never exercise control of its parent or a related body corporate that was not a subsidiary, nonetheless, it would seem that level of formalism is required.
Her Honour’s approach may be compared to that of Nicholas J in Dunlop v Goodyear at  and . Of course, in that case the trade mark was owned by the parent, not the subsidiary; there seem to have been numerous written agreements in place and some evidence of head office (i.e., the parent) issuing instructions about the business and the use of the trade marks in the business.
As already indicated, Gleeson J went on to exercise the discretion not to remove Trident Foods’ registrations. In what is already an overly long post, that and some other points of interest will have to await consideration another day.
As you know, under s 7(3), authorised use of a trade mark by a person is taken to be use of the trade mark by the registered owner. And, under s 8 a person is an authorised user of a trade mark if that person uses the trade mark under the control of the trade mark owner. Section 8(3) and (4) provide that “control” may be “quality control” or “financial control”, although s 8(5) does provide that s 8(3) and (4) do not limit the meaning of “under the control of”. ?