FEDERAL COURT OF AUSTRALIA

Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed with costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ORDERS

THE COURT ORDERS THAT:

1.    To the extent that the respondent contended that the decision of the Registrar’s delegate should be affirmed on grounds other than those relied on by the delegate, compliance with r 34.39 of the Federal Court Rules 2011 be dispensed with.

2.    Within 14 days of the date of these orders, the parties file and serve short minutes of orders to give effect to these reasons.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

GLEESON J:

1    This judgment concerns two appeals by Trident Seafoods Corporation (“Trident Seafoods”) from decisions made by delegates of the Registrar of Trade Marks (“Registrar”). Trident Food Pty Ltd (“Trident Foods”) is the respondent to both appeals: .

2    Trident Seafoods is a United States corporation which wishes to commence selling “TRIDENT SEAFOODS” branded seafood products in the Australian market. “TRIDENT SEAFOODS” is its primary brand used with respect to the provision of fresh, tinned and frozen seafood products which it distributes globally.

3    “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. Its best-selling product is sweet chilli sauce.

4    The trade mark “TRIDENT” has been registered since 15 March 1973 (“TM266625”). The goods specified for this trade mark are: “Class 29: Fish and fish products”.

5    The trade mark “TRIDENT” has also been registered since 8 December 1983 no. 400953 (“TM400953”) 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.

6    Trident Foods is the owner of both registered trade marks.

7    The first appeal (NSD1175/2016) is an appeal from Trident Seafoods Corporation v Trident Foods Pty Ltd [2016] ATMO 45 made on 30 June 2016 (“non-use decision”) in relation to applications filed by Trident Seafoods under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (“Act”), relevantly declining to remove TM266625 and TM400953 from the Australian Trade Marks Register (“Register”) on the ground of their non-use.

8    The second appeal (NSD799/2017) is an appeal from Trident Seafoods Corporation v Trident Foods Pty Limited [2017] ATMO 39 made on 3 May 2017 (“opposition decision”), rejecting Trident Seafoods’ opposition to the registration by Trident Foods of a further trade mark. The registration was sought by a trade mark application no. 1635410 (“Trident Foods TM application”) filed on 18 July 2014 for the word “TRIDENT” in Class 29 in relation to: “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”, and in Class 30 in relation to: “Fish sauce (condiments); Flavourings made from fish” (“opposed mark”).

Background

Trident Seafoods

9    Trident Seafoods was founded in 1973. According to one of its senior executives, Mr Halhjem, Trident Seafoods is the largest vertically integrated seafood distributor in North America and one of the few large vertically integrated seafood distributors in the world. It uses the following trade mark (“Trident Seafoods logo”):

10    Trident Seafoods has not attempted to sell seafood products in Australia using the Trident Seafoods logo. Since 2007, Trident Seafoods has sold seafood products in the Australian market under the brand “BOUNTIFUL”. Ms Halhjem’s evidence was that Australia and New Zealand are the only countries in which Trident Seafoods is forced to use the trade mark “BOUNTIFUL” instead of the brand “TRIDENT SEAFOODS” or the Trident Seafoods logo.

11    Trident Seafoods currently sells only a single product in Australia using the mark “BOUNTIFUL” through the retailer Costco.

Trident Foods

12    Trident Foods is a wholly owned subsidiary of Manassen Foods Australia Pty Ltd (“Manassen”).

13    Since shortly after the acquisition of Trident Foods (then known as Jildoc Pty Ltd) by Manassen in about 2000, the sales of “TRIDENT” branded products have been undertaken by Manassen and not Trident Foods itself.

14    Trident Foods claims, and Trident Seafoods disputes, that it has licensed Manassen to use the “TRIDENT” trade mark in relation to a range of food products which, in May 2013, included coconut creams and milks, curry pastes, dried fruit, noodles, rice crackers, rice paper rolls, soups, stir fry sauces, sweet chilli sauce, tempura batter mix and packaged vegetables (but not fish or fish products).

Events leading to the appeals

15    On 7 May 2013, Trident Seafoods filed a trade mark application no. 1555536 (“Trident Seafoods TM application”) for the Trident Seafoods logo (in Class 29) in relation to the following products:

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.

16    Registration of the Trident Seafoods TM application was blocked by the following three trade mark registrations held by Trident Foods:

(1)    TM266625;

(2)    TM400953; and

(3)    Trade mark no. 400955, being the word “TRIDENT” in Class 31 in relation to “Grains not included in other classes; living animals; fresh fruits and vegetables, seeds; live plants and flowers; malt” (“TM400955”).

17    On 9 January 2014 Trident Seafoods’ Australian trade mark attorney, Mr Terry, wrote to the trade mark attorneys for Trident Foods seeking Trident Foods’ consent to registration of the Trident Seafoods TM application. Mr Terry’s letter also referred to the fact that his firm’s searches did not identify any evidence that Trident Foods was using the trade marks in relation to the goods in respect of which they were registered, and stated:

Bearing in mind the grace period allowed by the removal provisions in the Trade Marks Act 1995, we would be grateful if you could respond to this letter by 7 February 2014. If we do not hear from you by this date, we will seek instructions from our client to proceed with applications for removal and restriction of the Cited Registrations on the grounds of non-use.

18    Trident Foods did not consent to the registration of the Trident Seafoods TM application.

19    On 7 February 2014, Trident Seafoods filed its applications for the removal of the three Trident trade marks for non-use (“non-use applications”). Trident Foods opposed those applications.

20    The Trident Seafoods TM application remains pending on the Register, as it has been deferred until the non-use applications, which were filed in order to clear the way for its registration, have been determined.

21    On 18 July 2014, Trident Foods filed the Trident Foods TM application. Trident Seafoods subsequently opposed the Trident Foods TM application.

22    The two opposition proceedings were then heard by delegates of the Registrar.

Decisions under appeal

Trident Foods opposition to non-use applications opposition

23    The relevant period for the purposes of the non-use applications was from 7 January 2011 to 7 January 2014 (“non-use period”).

24    On the evidence before her, the delegate found that she was unable to determine whether the three relevant marks (including TM266625 and TM400953) had been used for the relevant goods during the relevant period let alone whether such sales were ordinary and general use judged by commercial standards. The delegate concluded that Trident Foods failed to satisfy its burden to show that the marks were used in relation to the relevant goods during the relevant period.

25    Having found non-use, the delegate considered whether to exercise the Registrar’s discretion under s 101(3) of the Act. The delegate concluded that it was appropriate to exercise that discretion to keep TM266625 and TM400953 on the Register for the following reasons:

(1)    Trident Foods had not abandoned the marks and it had a long standing reputation for providing the foods specified in the marks at various times, based on demand and trade mark reinvigoration, in the Australian market under the trade marks;

(2)    there have been sales under the “TRIDENT” mark since the end of the non-use period;

(3)    Trident Foods had established their reputation in the “TRIDENT” mark to such an extent that the delegate considered it reasonable to conclude that, if the Trident Seafoods logo were to enter the Australian market place, this would result in confusion for potential purchasers of “TRIDENT” branded foods;

(4)    TM266625 and TM400953 were presently barriers to acceptance of Trident Seafoods TM application; and

(5)    accordingly, it would not be in the public interest to remove TM266625 and TM400953.

26    The delegate did not exercise the Registrar’s discretion in relation to TM400955. That trade mark is not part of this appeal. It has been removed from the Register.

Trident Foods TM application opposition

27    Trident Seafoods relied upon s 44 and s 59 in its opposition to the application.

28    The delegate found that s 44(1) applied to the Trident Foods TM application due to the earlier filed Trident Seafoods TM application. Specifically, the delegate found:

The essential and striking element in the Trident Seafoods mark is the word TRIDENT which is presented in large text with graphic devices namely a trident and ocean waves which only serve to emphasis[e] the word TRIDENT in the consumers mind. The Trade Mark is the word TRIDENT solus. Thus, I am satisfied that the trade marks are deceptively similar, that they cover the same goods and goods of the same description and that the Trident Seafoods mark has an earlier priority date than the Trade Mark.

29    However, the delegate decided to exercise the Registrar’s discretion not to reject the application pursuant to s 44(3)(b) of the Act because she was satisfied “that, because of other circumstances, it is proper to do so”. The relevant circumstances were:

(1)    TM266625 and TM400953, which are for substantially identical trade marks being the word “TRIDENT” which covers the same goods (although the delegate noted that court action and non-use action was pending on both registrations);

(2)    “A long history of the applicant using its trade mark on various edible foods ranging from Asian sauces, noodles and coconut cream to smoked oysters and tinned tuna which collectively produces significant sales figures across Australia each year”;

(3)    Trident Foods had invested significant time and money into rigorously defending its trade mark in both IP Australia and the Courts;

(4)    the sales figures were very impressive given the relatively low cost of the food items bearing the trade mark; and

(5)    the use of the trade mark also appeared to span a considerable number of years even if the applicant’s evidence was limited.

30    With respect to s 59, the delegate was not satisfied that Trident Seafoods had discharged its onus of proving that Trident Foods did not intend to use the trade mark.

31    The delegate rejected Trident Seafoods’ argument that Trident Foods lacked an intention to use the trade mark when it filed the Trident Foods TM application on 18 July 2014. In doing so, the delegate found that Trident Foods “has actually used the Trade Mark on the relevant goods (continuously in the case of sauces containing fish and edible oils) in the past and is using the trade mark on the relevant goods once again”. The delegate also declined to conclude that the small scale sale of tinned fish products did not amount to genuine commercial use or that Trident Foods’ intention in making the sale was purely strategic rather than an intention to sell the goods in good faith.

Legal principles governing appeal

32    The legal principles governing the appeal were not in contest.

33    An “appeal” from a decision of the Registrar is an appeal from an administrative decision, and is thus an exercise of the original jurisdiction of the Court. The appeal is heard as a hearing de novo. As such, “it is the duty of the court to decide the matter as upon an original application and not merely to decide whether the decision of the registrar can or cannot be supported”: Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 (“Jafferjee”) at 119. This approach applies equally to the non-use applications opposition: Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939; (2016) 120 IPR 270 at [42] and the Trident Foods TM application opposition: Primary Health Care Ltd v Commonwealth [2016] FCA 313; (2016) 117 IPR 73 at [9].

34    There is no presumption in favour of the Registrar’s decision: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [33]. While weight may be given to the Registrar’s opinion as that of a skilled and experienced person, the degree to which weight should be given to the Registrar’s opinion will depend on the circumstances of each case and the particular question involved: Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 109 IPR 187 at [24]. No special weight is given to the exercise of discretion by the Registrar: Jafferjee at 119.

Issues for determination

35    The parties agreed that the following issues arise in the first appeal:

(1)    What goods fall within the description:

(a)    “fish and fish products” in Class 29 for TM266625?

(b)    “fish” in Class 29 for TM400953?

(2)    Whether Trident Foods is able to rebut the allegation made under s 92(4)(b) of the Act that, during the non-use period, Trident Foods has not:

(c)    used in Australia; or

(d)    used in good faith in Australia,

TM266625 in relation to “fish and fish products”.

(3)    Whether Trident Foods is able to rebut the allegation made under s 92(4)(b) of the Act that, during the non-use period, Trident Foods has not:

(e)    used in Australia; or

(f)    used in good faith in Australia,

TM400953 in relation to the 17 foods specified for that registered trade mark.

(4)    If the answer to question 2 or 3 is “no” in respect of either:

(g)    TM266625; or

(h)    TM400953,

ought the discretion under to s 101(3) of the Act be exercised not to remove the trade mark from the Register.

36    The parties stated that the findings made in the first appeal would determine or substantially determine the outcome of the second appeal.

First appeal

Issue 1: goods falling within the scope of “Trident” registered trade marks

Classification of goods

37    By s 19(1) of the Act, a trade mark may be registered in accordance with the Act in respect of goods, services or both goods and services.

38    By s 19(2), the registration of a trade mark may be in respect of goods or services of more than one class. Section 19(3) states that the regulations may provide for the classes into which goods and services are to be divided for the purposes of this Act. Regulation 3.1 of the Trade Mark Regulations 1995 (Cth) (“Regulations”) provides relevantly that, for the purposes of s 19(3), goods are divided into classes of goods described in Sch 1 to the Regulations.

39    An application for registration of a trade mark is made in respect of goods and/or services: s 27(1) of the Act.

40    The classification of goods in the Regulations is the International Classification published from time to time pursuant to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”).

41    The first edition of the Nice Classification was published in 1963, and the current version is the 2018 version of the 11th edition. By way of example, the 2015 version of the 10th edition identified Class 29 by the following heading:

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats

42    There is an explanatory note to the class which states relevantly:

Class 29 includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation.

43    Under the explanatory note is an alphabetical list of products which includes a range of fish and seafood foodstuffs including, for example:

Fish fillets,

Fish, not live

Fish, preserved

Fish (Salted – )

Fish, tinned [Canned (Am.)]

Fish meal for human consumption

Fish mouses

Fish roe, prepared

Foods prepared from fish

…

Herrings, not live

…

Lobsters, not live

…

Oysters, not live

…

Prawns, not live

…

Shellfish, not live

Shrimps, not live

…

44    Shanahan’s Australian Law of Trade Marks and Passing Off (Thompson Reuters, 6th ed.) (“Shanahan”) states that the headings “are certainly not precise descriptions of all products falling within the class for, as the classification guide itself acknowledges, the broad wording of a heading may describe goods that actually fall outside the class in question. Shanahan gives the example of Class 25 which is headed “clothing, footwear, headgear” whereas “protective clothing” is placed in Class 9.

Scope of statement of goods

45    By s 20(1) of the Act, a registered trade mark confers on its registered owner, subject to Pt 3 of the Act, the exclusive rights to use the trade mark, and to authorise other persons to use the trade mark in relation to the goods and/or services in respect of which the trade mark is registered.

46    Whether goods, relevantly, are within a statement of the goods in respect of which the trade mark is registered is a question of construction of that statement: Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 at [44]. Shanahan expresses the view that the authorities suggest that the statement of goods and services should be strictly construed: see ‘Daiquiri Rum’ Trade Mark [1969] RPC 600, Ind Cooper Ltd v Paine & Co Ltd [1983] RPC 326 and Unilever Plc v Johnson Wax Ltd [1987] FCR 145, cited with approval by Wilcox J in Nikken Wellness at [40], [44].

47    According to Shanahan, the present view of the Registrar appears to be that the statement will be interpreted by reference to the goods or services in the statement. According to the Trade Marks Office Manual of Practice and Procedure, Pt 14.6.5, as accessed on 5 September 2018, where a claim is made in terms of a class heading:

[the claim] covers only the goods or services actually specified in the heading, or clearly encompassed by the heading. Such a claim does not cover all the items in the class, and is not equivalent to a claim for all goods or all services.

48    It is permissible to refer to extrinsic materials such as the Nice Classification to resolve any ambiguity in the statement: Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 at [74]. Where a statement refers to a class of goods, it should be construed in accordance with the classification in force at the date of registration: see Re Acetest Trade Mark [1967] FSR 315 (Ch D).

Scope of goods in TM266625 “Class 29: Fish and fish products”

49    In my view, the reference to “Class 29” indicates that the relevant goods are goods falling within that class. Accordingly, the words “fish products” are to be construed by reference to the goods that fell within the scope of Class 29 at the date of registration, that is, 15 March 1973.

50    At the date of registration, the classes of goods that today appear in Sch 1 of the Regulations were contained in Sch 4 to the Trade Marks Regulations 1958 (Cth) (“1958 Regulations”), which pursuant to reg 6 were the prescribed classes of goods for the purposes of s 31(1) of the Trade Marks Act 1955 (Cth). Then, as now for Sch 1, the classes in Sch 4 made no separate reference to seafood.

51    The relevant edition of the Nice Classification, the second edition published in 1971, was published in the French language only. The heading for Class 29 refers to “Viande, poisson, volaille et gibier”, and is accompanied by a “Note explicative” which states relevantly: “viande, poisson: y compris les mollusques et les crustacés”,

52    This indicates that the words meat and fish are to be taken to include molluscs and crustaceans.

53    The ordinary meaning of “fish” extends to include other forms of seafood as appears from the following first two definitions of “fish” in the Macquarie Dictionary Online:

1.    any of various cold-blooded, completely aquatic vertebrates, having gills, fins, and typically an elongated body usually covered with scales.

2.    any of various other aquatic animals.

54    The Oxford English Dictionary Online defines “fish” as follows:

1a.    In popular language, any animal living exclusively in the water; primarily denoting vertebrate animals provided with fins and destitute of limbs; but extended to include various cetaceans, crustaceans, molluscs, etc. In modern scientific language (to which popular usage now tends to approximate) restricted to a class of vertebrate animals, provided with gills throughout life, and cold-blooded; the limbs, if present, are modified into fins, and supplemented by unpaired median fins.

55    Based on these materials, I find that the statement of goods for TM266625 refers to seafoods, including mussels and oysters (molluscs) and prawns and crabs (crustaceans), and also to foods prepared from seafoods.

56    Accordingly, I do not accept the submission made on behalf of Trident Seafoods that the words in TM266625 are limited to fresh fish (either whole or filleted) and processed product made principally from fish, such as fish fingers or fish cakes. In particular, I do not accept that I should overlook the Oxford English Dictionary definition of “any animal living exclusively in water” or that the task of construing the statement of goods justifies a preference for the definition in modern scientific language.

Scope of “fish” in TM400953

57    The statement of goods in TM400953 mirrors the description of Class 29 in Sch 4 to the 1958 Regulations as at the date of registration, that is, 8 December 1983.

58    As for TM266635, the reference to “Class 29” in the statement of goods indicates that the word “fish” is to be construed by reference to the goods that fell within the scope of Class 29 at the date of registration.

59    At the date of registration, the classes in Sch 4 to the 1958 Regulations made no separate reference to seafood. The fourth edition of the Nice Classification, issued in 1983, was published in the English language. In that edition, the heading for Class 29 includes “Meat, fish, poultry and game” and the Explanatory note states relevantly:

This class includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation.

Includes, in particular:

-    Mollusca and crustacean (living as well as non living);…

60    The alphabetical list of goods and services that forms part of the Nice Classification specifies relevantly that crayfish, mussels, oysters and shell fish for human consumption fall within Class 29.

61    Based on these materials, I find that the word “fish” in TM400953 encompasses seafoods, including mussels and oysters (molluscs) and prawns and crabs (crustaceans), and also foods prepared from seafoods.

Fish as an ingredient

62    Trident Foods contended that “products that contain as an ingredient fish or fish products are relevant use of TRIDENT… for the fish and fish product claim in the Goods”. I understood the contention to be 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.

63    In my view, this contention is not consistent with the basic concept of a trade mark, defined by s 17 of the Act as, relevantly, a sign used, or intended to be used, to distinguish goods dealt with or provided in the course of trade by a person from goods so dealt with or provide by any other person.

64    The use of a trade mark on goods denotes the trade source of those goods. Where those goods are food stuffs, there is a separate question whether the trade source of the ingredients are the same as the trade source of the goods. As appears from the definition of “use” of a trade mark in s 7(4), a trade mark distinguishes goods by its application upon or in relation to the goods. Where a food is an ingredient of goods, the application of a trade mark upon the goods may do nothing to distinguish that ingredient.

65    Accordingly, and while I accept that there may be trade mark owners who have registrations for use of the trade mark in relation to goods that are ingredients of other goods in relation to which they are also registered to use the mark, in my view, 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.

66    Accordingly, I accept Trident Seafoods’ submission that the reference to “fish product” in TM266625 does not generally include every product with any fish amongst its ingredients. For example, generally a trade mark registered in respect of flour would not cover bread and vice versa: cf. Re Spillers Ltd’s Application (1953) 70 RPC 51 at 58, 60. However, 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 a flavouring made from fish could be a fish product within the scope of TM266625, particularly where the main ingredient is fish or seafood. In this regard, I note that there may be debate about whether a sauce or flavouring of animal origin falls within the scope of Class 29 or 30 in the Nice Classification.

67    Trident Foods relied on the evidence of Mr Jamie Eastley, the sales director for Manassen, who said that he considered that the TRIDENT trade mark had been issued on or in relation to prawn products because prawn was an ingredient of the relevant products including Tom Yum and Laksa. A packet of the TRIDENT branded Tom Yum Goong Flavour Thai Noodle Soup was in evidence. Its label is marked “CONTAINS CRUSTACEA AND FISH”. The ingredients list shows that the product comprises noodles, a flavour sachet, an oil sachet and a chilli sachet. The oil sachet is described as containing, relevantly, fish sauce and dried shrimp.

68    Trident Foods referred to a “plethora” of examples of well-known trade marks in Australia that are registered with respect to constituent parts or ingredients. I do not accept that I should reason by reference to these examples. In my view, the proper approach is to examine the description of the goods in the relevant trademark and determine whether a particular product falls within that description. Thus, in my view, without a greater fish content, or the use of the word “fish” in the name of the product, the Tom Yum Goong Flavour Thai Noodle Soup does not fall within the meaning of “fish product” in TM266625.

Issue 2: Did Trident Foods use TM266625 in relation to “fish and fish products” during the non-use period?

69    The answer is “No”. More particularly, for the reasons that follow, I have concluded that Trident Foods is not able to rebut the allegation that, during the non-use period, Trident Foods did not use in Australia, or use in good faith in Australia, TM266625 in relation to “fish and fish products”.

70    Trident Foods’ case was that the allegation was rebutted by Manassen’s use of the “TRIDENT” trade mark in relation to “fish and fish products” during the non-use period.

71    By s 7(3) of the Act, an authorised use of a trade mark by a person is taken, for the purposes of the Act, to be a use of the trade mark by the owner of the trade mark.

72    Section 8 in turn contains definitions of “authorised user” and “authorised use”, providing:

(1)    A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)    The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3)    If the owner of a trade mark exercises quality control over goods or services:

(a)    dealt with or provided in the course of trade by another person; and

(b)    in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4)    If:

(a)    a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b)    the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(5)    Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

Case law

73    In Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56; (1977) 137 CLR 670, a case decided under the 1955 Act, at 683 Aickin J said:

These cases demonstrate that the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connection in the course of trade with the registered proprietor, even though the connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connection of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely, registration of a registered user will not save the mark if there ceases to be the relevant connection in the course of trade with the proprietor or the mark otherwise becomes deceptive.

74    In The Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158; (1988) 88 ALR 217 (“Ritz Hotel”), also decided under the 1955 Act, there was an issue as to whether the mark was “distinctive” of a trade mark owner (which involved consideration of whether the mark “was adapted to distinguish goods…with which that person is or may be connected in the course of trade”) and whether the trade mark owner used the mark so as to preclude removal for non-use. The trade mark owner was a wholly owned subsidiary of Charles of the Ritz Group Ltd (“CRG”). At 199, McLelland J found that the trade mark owner neither participated in, nor controlled any aspect of the production of goods marketed in Australia under the relevant marks. His Honour considered whether a mark would be described as a “house mark” of the whole corporate group of which the trade mark owner was a member. Rejecting the proposed application of reasoning of the English Court of Appeal in Revlon Inc v Cripps & Lee Ltd (1980) 6 FSR 85, his Honour said:

To say, with Buckley LJ, that the mark had become in effect a “house mark of the whole group”, indicating that the goods originate from the group but not from any particular part of the group, does not seem to me to solve the difficulty, because the group, considered as an entity (as it must be on this approach) is necessarily not the same as any particular company within the group, yet it is a particular company, namely the proprietor of the mark, between which and the relevant goods the mark must…indicate a connection in the course of trade …

The practical reality of the situation is as it seems to me, that the [trade mark owner] had no connection at all with the production or distribution of any goods distributed by Bentley in Australia …

I should add that the position would in my view be quite different if the registered proprietor of the subject marks had not been the [trade mark owner] but the company through which the relevant enterprise was in fact managed and controlled, namely CRG, which in a real and practical sense represents the relevant group.

75    Shanahan comments at [80.520] that “the deficiencies in the registrations in question were but a consequence of the manner in which the companies had chosen to arrange ownership of the marks, and it is hardly surprising therefore that [McLelland J] ultimately refused expungement on discretionary grounds”.

76    In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42, the Full Court briefly considered the concept of “authorised user”. The following passage (at [68]-[71] of the Full Court’s reasons) sets out the primary judge’s finding and the Full Court’s relevant consideration:

[68]    The following reasoning led his Honour to the conclusion that the use by the partnership was authorised use:

Where, as here, there is an immediate impediment of a testamentary character to the transfer of the trade mark to those persons in whom the beneficial ownership resides, and where, as here, the executors allow the mark to be used by the partnership (there is clear evidence of their continuing acquiescence in this) and in a manner which preserves its integrity, value and reputation, it seems to me it properly can be said that, consistent with the reason and end of the executors’ ownership, both the user and the use of the trade mark are under their control. This conclusion can be justified in either of two ways. First, as executors, they are relevantly exercising quality control (s8(3)) by allowing the person most likely to ensure that control, Stephen Henschke, to conduct the business. I would note in this that the executors, as partners and/or shareholders, are in a position on the evidence before me to know if and when a matter of proper concern in relation to quality arises. Secondly, alternatively, as executors of Cyril Henschke’s estate, they are in very distinctive family and business circumstances now exercising such control over this part of the estate, as would in the circumstances justify it being said, consistently with s8(5) that the partnership’s use is under their control. I consider that that subsection can properly be invoked in this unusual case. Consistent with the purposes of maintaining quality control over the “goods” in question (s8(3)) and, possibly, the maintenance of “financial” control over the user’s trading activities (s8(4)), a purposive construction of s8(1) and s8(2) in light of s8(5) would in my view accommodate the actions of the executors as executors since at least some time in 1998.

[69]    It is, we think, neither to do an injustice to the argument on behalf of Rosemount nor to diminish its force to say that it amounted, in summary, to a submission that none of the matters referred to by his Honour established the existence of quality control of the kind contemplated by s8(3), financial control as contemplated by s8(4) or control in any more general sense contemplated by s8(5).

[70]    There is, we consider, a good deal of force in that submission. The evidence does not appear to have suggested any basis on which the executors might be said to have exerted financial control over the partnership’s trading activities. While, clearly enough, there was a degree of consultation over matters going to “quality”, it was also clear that decisions in that respect, ultimately, were made by Mr Stephen Henschke. If a power, on the part of the executors, to revoke the authority had been relied upon, the evidence suggested that a powerful retort might well have been that there were obstacles, both practical and legal, standing in the way of such a course, and, in any event, it would perhaps be a bold argument that a mere revocable authority is sufficient to ensure that the licensor has “control” for the purposes of s8.

[71]    Broadly, the concept of “authorised user” represents a significant departure from the regime of the earlier legislation. The new statutory scheme has not yet been the subject of substantial consideration by the Court; we were referred only to McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537, an interlocutory decision in which the question which arose in this case did not have to be considered. It remains to be decided to what extent those earlier authorities which were concerned with whether use, authorised by the registered owner, by someone other than a registered user, sufficiently indicated a connection with the registered owner remain significant in relation to questions of “control” under s8. It may be that “control” within s8(5) has a reach substantially as wide as the “connection” which would be held to be sufficient under the old regime, applying the observations of Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 at 680-683 and of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227 at 237-239. Because, in our view, his Honour gave a separate, independent, ground for his decision (to which we shall come) and because argument concerning the effect of the present statutory scheme was relatively brief, we prefer to say no more about this aspect of the case, than that, if the principles stated in Pioneer and Polo remain substantially applicable, there is a good deal to be said for his Honour’s conclusion.

77    In Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478, Jacobson J found that Nature’s Hive Pty Ltd was not an authorised user of the relevant mark where there was nothing to suggest that the trade mark owner (Shin-Sun Australia Pty Ltd) exercised either quality control or financial control, such as in the way that a parent company may exercise control over a wholly owned subsidiary. At [199], noting that the trade mark owner and user had different shareholders but common directors, his Honour said:

[I]t may be unlikely that Ms Shin would remove her parents as directors of Nature’s Hive. But that is not an answer to the separate corporate identity of Shin-Sun and the power of Ms Shin as the majority shareholder to revoke any exercise of control flowing from common directorships.

78    The issue of authorised use, user and control was recently considered by a five-member Full Court bench in Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; (2016) 244 FCR 557 (“Lodestar”). The factual context was different from this case: in particular, the trade mark owner and the user were not part of a single corporate group. At [22], Greenwood J concluded that, on the facts, the asserted control was “illusory and failed to reflect any proper control by the owner of the trade marks of the quality” of the relevant products.

79    Besanko J gave the majority judgment of the Court saying, at [95]-[97]:

[95]    The meaning of “under the control of” in s 8 is informed by the principle stated by Aickin J in Pioneer, that is to say, that the trade mark must indicate a connection in the course of trade with the registered owner. The connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. It is the connection which may be slight. Aickin J was not saying the selection or quality control or financial control which may be slight. I think the principle stated by Aickin J informs the meaning of “under the control of” for the following reasons. First, the attribute of control by the registered owner was a key feature of the principle stated by Aickin J as his Honour’s remarks make clear. The same may be said of the approach taken in England as the English cases to which I have referred make clear. Furthermore, two of the examples given by Aickin J in Pioneer of a sufficient connection, namely, quality control and financial control are embodied in s 8 (subs (3) and subs (4)). This suggests to me that Parliament did not intend to effect a major change in the law in enacting s 8 in the Act. This conclusion is supported by the report of the Working Party. The Working Party expressed the view that a sufficient connection in the course of trade between the registered owner and the goods or services of the licensee should remain the law. Finally, I am fortified in reaching this conclusion by the fact that both Gyles J at first instance and the Full Court in Yau took a similar approach.

[96]    “Control is defined in the Macquarie Dictionary (6th ed, Macquarie, 2013) to mean the following:

Vt    1.    To exercise restraint or direction over; dominate; command.

2.    To hold in check; curb

n    4.    The act or power of controlling; regulation; domination or comment.

[97]    I think control in s 8 means actual control in relation to the use of the trade mark and it means actual control in relation to the trade mark from time to time. I think (as the primary judge did) that that is the primary meaning of the word, and the English cases, so far as they go, support that conclusion. Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control within s 8. That would be inconsistent with the approach taken under the 1955 Act and the Trade Marks Act 1938 (UK). Had it been Parliament’s intention it could be effected by a much simpler provision than s 8.

80    Besanko J further observed at [98] that actual control is “a question of fact and degree”. It will depend on the facts of the case. His Honour described a scenario where a licence agreement contains a term that sets in detail a quality standard to be achieved and the details in the agreement are such that it is not necessary for the registered owner to give directions or instructions from time to time. His Honour also recognised that there will be situations where the licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. Besanko J said that the primary judge (Perram J) had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.

81    Trident Foods referred to HS TM, LLC v Schein Orthopadie-Service KG [2016] ATMO 63 (“Schein”), a Trade Marks Office case that involved a subsidiary trade mark owner and a parent authorised user. Schein was apparently heard prior to, but decided post Lodestar. The submission put in Schein was that:

… [t]here is no evidence that any use of the trade marks by Henry Schein, Inc. or its unidentified related entities is under the control of the Opponent. Specifically, there is no evidence of quality control which would qualify under s 8(3), financial control under s 8(4) or any other control which might satisfy s 8(5). It is stated in paragraph 6 of the [declaration made by the Senior Vice President and Secretary of the Opponent] that each manager of the Opponent is an employee of the company Henry Schein, Inc. An employee is hardly in a position to exercise control over the employer.

82    At [23] of Schein that submission was rejected, with Hearing Officer Kirov finding that there is “nothing unusual” in a large company such as Henry Schein, Inc and/or its predecessors incorporating a wholly owned subsidiary in order to hold its worldwide trade mark (or, for that matter, patent or other IP right) portfolio. Hearing Officer Kirov went on to say that it is a:

“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.

83    Trident Foods submitted that any other finding would have been unjust and would make a “mockery of the law” as the commercial reality is that many organisations structure their affairs such that the trade marks are held by a separate entity, including wholly owned subsidiaries.

84    Following the reasoning of the Full Court in Lodestar, I concluded that authorised use involves use under the “actual” control of the trade mark owner. There must be control “as a matter of substance”, although the connection with the registered owner indicated by the trade mark may be slight.

Authorised use: Trident Foods’ case

85    Trident Foods relied on the following matters to establish that, at all relevant times, Manassen has been an authorised user of the “TRIDENT” mark. The premise of Trident Foods’ submission was that Manassen was subject to obligations by which Trident Foods exercised quality control over the goods in relation to which the trade mark has been used.

Corporate relationship

86    Trident Foods noted that it is a wholly owned subsidiary of Manassen. The two companies share common directors: Geoffrey Erby, Wayne McIntosh and Christine Swanson. The two companies share a common registered address and a common principal place of business.

87    The companies form party of a corporate group of which a Cayman Islands company, Bright Food Global Distribution Company Limited (“Bright Cayman Islands”), is the ultimate holding company.

Ms Swanson’s evidence

88    Ms Swanson gave the following affidavit evidence:

36.    Together Wayne McIntosh and I are both directors of [Trident Foods] and Manassen…

37.    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.

…

39.    The present proceedings have brought into sharp relief the obligations of brand owners and of the importance of supervision and control of licensees that use licensed brands. As such, I have instructed our trade mark attorneys to put in place a program whereby informal licence arrangements are formalised …

40.    In addition to the Treasury and Risk meetings, Wayne McIntosh and I have agreed to meet at least annually prior to the AGM of the Respondent, where at the meeting, we will review the previous years use of the TRIDENT trade mark, and other trade marks owned by the Respondent that Manassen uses. During this review, we will assess the quality of the products sold under the licensed brands and provide a written sign off for the Respondent’s internal purposes.

89    Trident Foods noted that Ms Swanson gave evidence that she does not differentiate between her roles in Manassen and Trident Foods. As a director and secretary of Trident, Ms Swanson considered that it was not necessary for directions to be given with respect to use of TRIDENT because Manassen is bound by the group’s vendor quality management system (“VQM”). Ms Swanson gave evidence that “[a]s a business, we maintain quality measures over all our brands, so in particular, to Trident as directors, we maintain that. But – but the processes that we use are group wide”. She went on to explain that the phrase the “processes that we use are group wide” was in reference to the VQM. With respect to the VQM, Ms Swanson then said “I know every company in the group has to comply with this document on a day-to-day basis. So it’s just a given in our business that you have to do that. So I don’t need to create a direction”.

90    Trident Foods submitted that, as a director of Trident Foods, Ms Swanson exercises actual control in that she is a member of the Innovations Council of Manassen, which meets monthly and where it is decided what products to sell under the TRIDENT brand, and she, with the other directors, are concerned with brand valuation and impairment of the TRIDENT brand and ensure that the brand is performing well for the purposes of annual audits to avoid it being devalued.

Ms Walker’s evidence

91    Ms Kim Walker is a graphic designer employed by Manassen. She gave evidence that there is a “corporate computer system” where she keeps copies of all graphics files produced by her including labels and promotional materials using the TRIDENT brand. Her work included product labels which direct the consumer to websites named www.trident.net.au and, later, www.tridentfoods.com.au.

92    The product labels typically, and perhaps invariably, say “Registered trade mark of Trident Foods Pty Ltd”.

Quality Control Manual

93    The evidence included a document entitled “VQM Manual”. The manual describes itself as property of the group, which is referred to elsewhere as the “Bright Group”. The manual states that Bright Food Group Holdings Pty Ltd (Australia and New Zealand) (“BFGH”) “incorporates” several companies including “Manassen Foods”. Based on the corporate group chart, BFGH is a wholly owned subsidiary of Bright Cayman Islands and, with the interposition of several companies, a parent company of Manassen (of which, as previously noted, Trident Foods is a wholly owned subsidiary).

94    The manual states that “[t]he Vendor Quality Management (VQM) system incorporates the Quality Assurance plan and Quality Control procedures of The Bright Group Holdings”.

Licence agreement

95    By a written licence agreement made on 3 November 2017, between Trident Foods and Manassen, the parties set out recitals to the agreement, relevantly, that they:

(1)    had, since 2000, had an unwritten licence agreement in place whereby Manassen’s “TM portfolio” was paid for by Manassen in exchange for the licensing of Trident Foods’ trade marks to Manassen; and

(2)    wished to reduce to writing the earlier unwritten licence on the terms of the licence agreement.

96    The agreement covers TM266625, TM400953 and other trade marks.

97    Clause 14, entitled “Quality Control”, provides:

[Manassen] undertakes and acknowledges:

(a)    It is an authorised user of the Trade Marks for the purposes of Section 8 of the Trade Marks Act 1995 and at all times uses the Trade Marks under the control or supervision of [Trident Foods].

(b)    That it will exercise the Licence in accordance with the specifications laid down, directions given and information supplied by [Trident Foods] from time to time and to a standard of quality approved of by [Trident Foods] from time to time;

(c)    That it will consent to [Trident Foods] or its authorised representative entering [Manassen’s] premises at all reasonable times for the purpose of inspecting [Manassen’s] exercise of the Licence and will, if called upon by [Trident Foods] to do so, submit samples of the Goods bearing the Trade Marks for inspection by the Licensor from time to time; and

(d)    To comply strictly with all consumer product and safety standards and regulations in effect from time to time relating to the Goods; and

(e)    That it will comply with all lawful and reasonable directions of [Trident Foods] in connection with the use and application of the Trade Marks.

98    Although it was not entirely clear, I understood that Trident Foods may also rely on the licence agreement to support its contention of authorised use by Manassen, contending that the agreement does not operate retrospectively but, rather, affirms previous conduct: cf. Film Investment Corporation of New Zealand Ltd (Receiver Appointed) v Golden Editions Pty Ltd [1994] FCA 11; (1994) 28 IPR 1 at 15; Black & Decker Inc at [147] and [148]; Allam at [430] and [431].

Authorised use: Trident Seafoods’ argument

99    Trident Seafoods argued that:

(1)    Trident Foods has not exercised any quality control over the goods sold by Manassen under the “TRIDENT” mark. For example, Mr Eastley, Manassen’s sales director, was not aware of any document setting out how the “TRIDENT” mark is to be used by Manassen.

(2)    Trident Foods has not exercised any financial control over Manassen’s trading activities.

(3)    There is no other basis on which Manassen could be said to have used the “TRIDENT” trade mark under the control of Trident Foods.

(4)    The relationship of Trident Foods as a wholly owned subsidiary of Manassen does not support a conclusion of relevant control.

(5)    Ms Swanson’s evidence does not demonstrate any relevant control. The directors of Manassen owe fiduciary duties to both companies and would be in breach of their duties to Manassen if they sought to “control” Manassen according to the interests of Trident Foods.

(6)    At most, Ms Swanson’s evidence demonstrates only “theoretical” control. Lodestar makes it clear that theoretical control is not sufficient for the purposes of ss 7 and 8 of the Act.

(7)    The VQM Manual does not support a conclusion of authorised use. It is a generic document, with some “quality control” provisions, of general application across the corporate group. It says nothing about the regulation or control of quality connected to trade mark use. In any event, the belated evidence regarding the Manual is at odds with Ms Swanson’s affidavit evidence of the need to bring into existence formal licensing arrangements.

(8)    The execution on 3 November 2017 of a licence agreement does not remedy the situation because it cannot operate retrospectively: Black & Decker Inc v GMCA Pty Ltd (No 2) [2008] FCA 504; (2008) 76 IPR 99 at [146]-[148]; Allam v Aristocrat Technologies Australia Pty Ltd [2012] FCAFC 34; (2012) 95 IPR 242 at 317-318.

Conclusion on authorised use

100    I am not satisfied that the evidence identified by Trident Foods shows that Manassen’s use of the “TRIDENT” trade mark has been “under the control of” Trident Foods within the meaning of s 8 for the following reasons:

(1)    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.

(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.

(7)    I am not satisfied on the evidence that there was an unwritten licence agreement in place, notwithstanding the recitals to the 3 November 2017 agreement. The affidavit evidence does not support the accuracy of the recital as to that unwritten agreement.

Issue 3: Did Trident Foods use TM400953 in relation to the relevant goods during the non-use period?

101    Again, the answer is “No”.

102    Trident Foods’ case was that Manassen used the “TRIDENT” trade mark in relation to the various products specified in the statement of goods for TM400953 during the non-use period.

103    As I have found that Manassen’s use of the trade mark during the relevant period was not authorised use within the meaning of the Act, Trident Foods is not able to rebut the allegation that Trident Foods has not used in Australia, or used in good faith in Australia, TM400953 in relation to the 17 foods specified for that registered trade mark.

Issue 4: In respect of either TM266625 or TM400953, ought the discretion under to s 101(3) of the Act be exercised not to remove the Trade Mark from the Register?

104    Section 101 of the Act relevantly provides:

(2)    Subject to subsection (3) …, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

(3)    If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4)    Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)    similar goods or closely related services; or

(b)    similar services or closely related goods;

to those to which the application relates.

105    I accept the submission made by Trident Seafoods that, for these marks, s 101(4) directs attention to whether the trade mark has been used by its registered owner in respect of similar goods or closely related services to those to which the application relates. In any event, s 101(4) has no relevant application because there is no evidence of use of the trade mark by Trident Foods (as opposed to Manassen) in respect of any goods.

Case law

106    The discretion afforded to the Registrar and, on an appeal, the Court by s 101(3) of the Act is broad, and is limited only by the subject-matter, scope and purpose of the Act and, in particular, by the subject-matter, scope and purpose of Pt 9 of the Act: Austin Nichols & Company Inc v Lodestar Anstalt (No 1) [2012] FCAFC 8; (2012) 202 FCR 490 (“Austin Nichols”) at [35]. Trident Foods bears the onus of satisfying the Court that the discretion should be exercised in its favour. It is not necessary to show exceptional circumstances before the Court may exercise the s 101(3) discretion: Austin Nichols at [69].

107    In Austin Nichols, the Full Court observed that Pt 9 is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. “At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners”: Austin Nichols at [38].

108    There is a public interest in the integrity of the Register as an accurate record of trade marks which perform their statutory function, namely to indicate the trade origins of the goods it which it is intended that they be applied: Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; (2010) 240 CLR 590 at [22].

109    In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 at [202]- [203], Flick J identified factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 of assistance in considering the exercise of the discretion, of which the following are relevant in this case:

(1)    whether the trade mark had been abandoned;

(2)    whether the registered proprietors of the mark still had a residual reputation in the mark; and

(3)    sales by the registered proprietors of goods for which removal was sought since the relevant period ended.

110    Use of the trade mark since the end of the non-use period is a relevant consideration provided that the use “is in good faith and not colourable”: Austin Nichols at [41]. The owner’s intentions to use the mark may also be relevant: Austin Nichols at [43].

111    In this context, “good faith” use of a trade mark is use for a genuine commercial purpose: E & J Gallo Winery at [187]. On appeal in E & J Gallo Winery v Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144, the plurality stated (at [62]):

In Electrolux Ltd v Electrix Ltd a question arose of bona fide use within the meaning of s 26 of the Trade Marks Act 1938 (UK). It was held that bona fide use must be ordinary and genuine use judged by commercial standards. In Imperial Group Ltd v Philip Morris & Co Ltd, it was held that use of a trade mark for a purpose other than deriving profit and establishing goodwill is not use as required by the legislation. It has also been held that contriving use for the purpose of defeating a trade rival’s plans will lack the necessary quality of genuineness. However, a use does not cease to be genuine even if it only occurs after an appreciation that a registration was vulnerable to an attack on the grounds of non-use. In deciding that a use is not genuine, a court may be influenced by the quantum of sales. In Re Concord Trade Mark, Falconer J relied on Lawton LJ’s summary of the findings in the Electrolux case in Imperial Group:

“According to the judgments given in this court in that case [Electrolux] a bona fide use should be ‘ordinary and genuine’ (per Lord Evershed MR at 36), ‘perfectly genuine’, ‘substantial in amount’, ‘a real commercial use on a substantial scale’ (per Jenkins LJ at 41) and not ‘some fictitious or colourable use but a real or genuine use’ (per Morris LJ at 42).”

(Footnotes omitted)

112    A further relevant consideration is whether the removal of the mark would lead to deception or confusion: Austin Nichols at [31]. In Ritz Hotel, at 224 McLelland J relied on the potential of public confusion in concluding that certain trade marks should not be removed “in respect of any categories of goods in relation to which, or goods of the same description as which, the respective marks have been substantially used in Australia”. In relation to two other categories, which his Honour found were not of the same description but were “nevertheless of a kind which would be likely to be associated in the public mind with, categories of goods in relation to which” the relevant marks had been used, McLelland J concluded that it was not “in the public interest, whilst preserving the monopolies in respect of the latter categories, to remove them in respect of the former categories”.

113    In C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561; (1999) 47 IPR 63, Finn J found authorised use of the relevant trade mark. However, his Honour indicated at [169]-[170] (citations added):

[I]f I am incorrect in the view I have taken on non-use, this case is one in which I would exercise my discretion favourably to the executors under s 101(3) because it is reasonable in the circumstances to do so: on s 101(3) see McHattan v Australian Specialised Vehicle Systems Pty Ltd [[1996] 481 FCA 1; (1996) 34 IPR 537].

There is no evidence that any member of the public has been deceived by the “non use”. The executor’s legal title to the mark is unimpeachable. All who have any beneficial interest in the mark (in the members of the Henschke family directly or via their shareholdings) have acquiesced in the actual user. There is no public interest adversely affected as a result of what has occurred: cf Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd [[1988] FCA 384;] (1988) 13 IPR 323 at 345 (a decision under the 1955 TM Act). I can see no useful purpose to be served by removing the trade mark from the register simply for the purpose of, in effect, compelling a fresh application to be made by what I will inexactly call the Henschke interests. The mark is, and will remain, within the family. It should not be disturbed. It should be preserved as an established mark associated with a family and a business that have given it its present national and international standing.

114    Trident Seafoods contended that use of the trade marks by Manassen, whether before, during or after the non-use period, does not assist Trident Foods on the question of whether the Court should exercise the s 101(3) discretion in Trident Foods’ favour, relying on the judgment of Kitto J in Re Carl Zeiss Pty Ltd’s Application [1969] HCA 17; (1969) 122 CLR 1 (“Carl Zeiss”). Trident Seafoods acknowledged that the Full Court in Austin Nichols “adopted a different statement of principle”. As the Full Court noted in Austin Nichols at [28], Carl Zeiss was a decision concerning the 1955 Act, in which there was no equivalent of s 101(3).

115    To the extent that it was suggested by Trident Seafoods, in the light of the decision in Austin Nichols, I do not accept that Manassen’s use of the trade marks is irrelevant to the exercise of the s 101(3) discretion.

116    The power to remove a trade mark from the Register in respect of “any or all” of the goods, means that where use is proven in respect of certain goods but not others, the latter goods may be removed notwithstanding use was proven in respect of the former. Further, if a description of the goods in the registration is broader than the proven use, the Registrar or the Court can redraft the registration and replace the broad description with a narrower description more closely aligned with the use proven: Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94; (2011) 214 FCR 396 (“Hills Industries”) at [291]-[306]. For example, in Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation [1990] FCA 81; (1990) 17 IPR 269, the Full Court amended the description “dairy products” to “flavoured milk and cheese”.

Trident Foods’ submissions

117    Trident Foods relied on the following matters to argue that the Court should be satisfied that it is reasonable to decide that the two trade marks should not be removed from the Register:

(1)    sales of “TRIDENT” branded products before, during and after the non-use period;

(2)    the similarity of the goods for which the mark has been used to the goods within the statements of goods in the trade marks;

(3)    the continuous use of the “TRIDENT” brand over 50 years by Trident Foods or its predecessor in title in relation to food products;

(4)    the trade marks have not been abandoned;

(5)    Trident Foods trade mark registration no. 400954 for “TRIDENT” in Class 30, which relates to foodstuffs similar to the goods within the statements of goods in the trade marks; and

(6)    the likelihood of deception or confusion in the event of registration of Trident Seafoods’ mark and its use in relation to food products in Australia.

118    In supplementary submissions filed in March 2018, Trident Foods referred to a trade mark application no. 1608153 for “TRIDENT” in classes 29 and 30, which had proceeded to registration after Trident Seafoods withdrew its opposition to the application in January 2018. Trident Foods argued that the recent registration strengthened its position in relation to the exercise of the s 101(3) discretion.

Sale of goods using the “Trident” trade mark

119    There has been no relevant use of the “TRIDENT” mark by Trident Foods itself. All relevant use of the “TRIDENT” mark since 2000 has been by Manassen.

120    However, a significant aspect of the parties’ dispute concerned the precise products on which the mark has been used, and the circumstances of use of the mark on tinned fish products since the end of the non-use period.

121    Trident Foods submitted that the trade marks were each used in Australia before, during and after the non-use period in relation to the following goods falling within the scope of TM266625 or TM400953:

(1)    fish;

(2)    fish products;

(3)    oysters, mussels, and prawns;

(4)    preserved, dried and cooked fruits and vegetables; and

(5)    jams, preservatives and pickles.

122    Trident Foods submitted that, if the Court finds that the use of the “Trident” mark on the goods described in the evidence during the non-use period constitutes use in relation to “the Class 29 goods”, then there can be no suggestion that such use was not in good faith because those products clearly form part of Trident Foods’ goods and have done so for many years, and because they have been advertised extensively and sold in substantial volumes.

123    Trident Seafoods noted that the latest date prior to the non-use period on which there is any evidence of “TRIDENT” branded fish products (i.e., tinned tuna) is 2007. Further, there is no evidence of any other fish products (particularly, salmon, herring or pilchards) or crab, after about 2000. Further, Trident Seafoods submitted there is no evidence of any sales, either before, during or after the non-use period of any of meat, poultry, game, mackerel, prawns, meat extracts, jellies, jams, eggs, preservatives or pickles. I did not understand this submission to be contested, except perhaps by reference to the argument, rejected above, that some of these products were ingredients of products sold using the “TRIDENT” mark.

Prior to non-use period

124    Trident Seafoods did not dispute that Manassen sold certain “TRIDENT” fish products up to 2007, albeit it pointed to evidence that sales of seafood products and canned seafood products were dwindling and other matters casting doubt on whether the sales were of any significant volume.

125    A Manassen product catalogue from the very early 2000s shows that products included “TRIDENT” tinned tuna, crab meat, tinned salmon, herring fillets, pilchards, smoked oysters and smoked mussels.

126    For 2007, Trident Foods relied on the evidence of Ms Walker to demonstrate that the “TRIDENT” mark was used on the following products during that year:

    Oyster sauce

    Chow Mein soft noodles

    Pad Thai noodles

    Singapore soft noodles

    Fish stir fry sauce

    2 minute noodles hot & spicy

    2 minute Thai Laksa.

127    I accept that Ms Walker’s evidence is sufficient to be satisfied that the “TRIDENT” mark was used during 2007 on each of these products. Based on the names of the products and a review of the labels for the products, including the ingredient lists and warnings, I accept that the Oyster Sauce and the Fish Stir Fry Sauce are probably fish products within the meaning of TM266625.

128    For 2008, Trident Foods relied on the evidence of Ms Walker and Ms Swanson to demonstrate that the “TRIDENT” mark was used on the following products during that year:

    Pad Thai noodles

    Green curry paste and red curry paste

    2 minute noodles hot & spicy

    2 minute Thai Laksa

    Smoked mussels

    Smoked oysters

129    For its part, Trident Seafoods noted that sales of Smoked mussels and Smoked oysters are not recorded in sales data provided in relation to 2008 to 2010.

130    Based on the names of the products and a review of the labels for the products, including the ingredient lists and warnings, I accept that the Smoked mussels and the Smoked oysters are fish products within the meaning of TM266625.

131    Further, I accept that the “TRIDENT” mark was used during 2008 on each of these products except Smoked mussels and Smoked oysters.

132    Applying the same approach to Trident Foods evidence of use of the “TRIDENT” trade mark, I find that the “TRIDENT” mark was used on the following products that are fish products within the meaning of TM266625:

(1)    during 2009, none;

(2)    during 2010, Oyster Sauce and Fish Sauce; and

(3)    1 to 7 January 2011, unknown.

During non-use period

133    Trident Seafoods accepted that the “TRIDENT” trade mark was used during the non-use period in relation to dried fruits (dates) and preserved/cooked vegetables (for example, asparagus, baby corn, Chinese vegetables). It submitted that Trident Foods’ sales data did not show use of the “TRIDENT” mark in relation to oysters or mussels during the non-use period.

134    Applying the approach followed above to Trident Foods’ evidence of use of the “TRIDENT” trade mark, I find that during the non-use period the “TRIDENT” mark was also used on the following products that are fish products within the meaning of TM266625:

(1)    during the period 8 January to 31 December 2011, Oyster Sauce;

(2)    during 2012, Oyster Sauce;

(3)    during 2013, none; and

(4)    1 to 7 January 2014, unknown.

After non-use period

135    I understood there to be no dispute that the “TRIDENT” trade mark has continued to be used since the non-use period in relation to dried fruits (dates) and preserved/cooked vegetables (for example, asparagus, baby corn, Chinese vegetables).

136    Trident Foods submitted that:

(1)    When it became aware that it may be removed for non-use, it sought to protect its “TRIDENT” brand, by offering for sale and selling tinned fish in Australia.

(2)    It would not have recommenced selling tinned fish in Australia if it would have been commercially unviable.

(3)    Sales of tinned fish have taken place since immediately after the end of the non-use period;

(4)    Trident Foods has intentions of expanding the tinned fish range to include mackerel in different sauces.

(5)    When mussels and oysters were not commercially successful, they were not sold for a period, demonstrating Trident Seafood’s good faith and commercial approach to what it sells.

137    Trident Seafoods did not dispute Manassen has sold three “TRIDENT” tinned seafood products (tinned tuna, smoked mussels and smoked oysters) in “miniscule “volumes commencing after the end of the non-use period. It contended that Manassen currently sells only two tuna products. Trident Seafoods noted that the products have only been sold in a disparate selection of independent supermarkets in regional areas.

138    Trident Seafoods contended that the use of the “TRIDENT” mark in relation to tinned fish, mussels and oysters since the non-use period has not been use in good faith.

139    The evidence shows that, since the non-use period, the following four products were added to the range of “TRIDENT” branded products sold by Manassen:

    Tinned tuna in springwater

    Smoked mussels

    Smoked oysters

    Tinned tuna in oil

140    The principal evidence on behalf of Trident Foods concerning the sales of these products since the non-use period was given by Mr Eastley, whose evidence I accept.

141    Mr Eastley gave affidavit evidence addressing the allegation that the sales of fish by Manassen since 2014 were only made to block Trident Seafoods from selling fish in Australia.

142    In cross-examination, Mr Eastley said that he received a call from Wayne McIntosh and they had a conversation that was a trigger for the “New Zealand” consignment of tinned tuna. Mr Eastley rejected a suggestion that Mr McIntosh had directed him that there was to be a relaunch of fish products. Mr Eastley said that Mr McIntosh told him of the “pending case”; that there was a need to grow and protect Trident and to look at the sales of Trident fish products; and that Mr McIntosh asked whether those products could be launched “straight back into Australia”. Mr Eastley was able to obtain Australia-compliant “TRIDENT” branded tuna from the related company Hutchinsons Ltd in New Zealand. Accordingly, it was relatively easy for Mr Eastley to freight “TRIDENT” branded tinned tuna from New Zealand.

143    Mr Eastley stated that the first sale of Trident branded fish after the non-use period took place in April 2014. The evidence included a sales document from Manassen to Salamanca Fruit Market dated 7 April 2014 including tuna, mussels and oysters.

144    Mr Eastley’s evidence included sales figures which he accepted, in cross-examination, were “miniscule”. Those figures totalled $58,053. However, there was additional evidence, which I accept as reliable, that the gross sales of the relevant products were higher than those accepted by Mr Eastley. According to that later evidence, as at 27 November 2017, the total actual sales of the four products were $81,402, comprising 41,676 units.

145    Mr Eastley said that he had participated in a decision, in early 2017, to introduce a “TRIDENT” branded tinned mackerel product that could be ranged alongside the King Oscar branded mackerel that Manassen supplies under licence.

146    Mr Stewart, the managing director of Manassen, gave evidence that he had been managing the preparation of a brand plan for Trident on behalf of Manassen. The brand plan refers to the relaunch of the “TRIDENT” tinned fish range which, Mr Stewart said, would be a focus in 2018 with a “primary push” on mackerel.

147    Mr Eastley also gave evidence that there were no sales of smoked oysters in 2015 and 2016 and no sales of smoked mussels in 2016 due to the pricing of major competitors and these products being generally less popular with contemporary consumers. However, earlier in 2017, Mr Eastley decided to re-enter the mussels and oyster categories and promote them together with the tuna offerings under the “TRIDENT” brand.

148    Mr Eastley did not accept that the sales of the relevant products are inherently unprofitable. He rejected the suggestion that they were bordering on not worthwhile. In giving this evidence, Mr Eastley added that having products that make lower margins from time to time happens across the range of products. When asked if the products would be sold if Mr Eastley did not think that it was useful to protect the “TRIDENT” trademark, Mr Eastley said “[i]t’s hard to say”. Mr Eastley acknowledged the possibility that the products would not continue to be part of the Manassen range of “TRIDENT” products.

149    Trident Seafoods emphasised that there was no plan to reintroduce sales of tinned fish before 7 January 2014 (being the end date of the non-use period). In final submissions, it conceded that there was a current intention to put a mackerel product into the marketplace; however, it claimed that Mr Eastley’s evidence “made plain that tuna was not on that radar”.

Sale of similar goods

150    Trident Foods contended that the goods identified in the two trade marks are similar to those that have been offered for sale and sold by Manassen by reference to the “TRIDENT” mark for decades, namely “a wide range of food”. Sweet chilli sauce, coconut cream, soy sauce and other noodles and condiments were identified by Trident Foods as examples.

Continuous use of the “TRIDENT” brand

151    A Manassen document entitled “Brand Plan 2018” for “TRIDENT” shows that Manassen identifies the brand as:

Established & Trusted

50+ years of delivering authentic Asian flavours to Australia

152    Trident Seafoods submitted that whatever reputation and goodwill in the “TRIDENT” mark existed in 2000, it has not been proved and noted that the relevant trade marks were assigned to Trident Foods in 2000 “without the goodwill in the Trade Marks”.

153    Further, Trident Seafoods noted that there is no evidence of lengthy continuous use of the “TRIDENT” brand in relation to fish products.

Trade marks not abandoned

154    The 2010 brand plan shows that the “Brand Vision” is: “Australia’s most trusted brand for authentic Asian flavours”.

155    The brand plan sets a substantial business objective for the “TRIDENT” brand, including as a “Growth Driver” via the “Re-launch [of the] Canned Fish Range”.

156    Trident Foods contended that the “TRIDENT” brand has been “heavily advertised for decades, with millions of dollars being spent annually on its promotion”. Figures for 2014 to 2016 bore out the latter proposition. There was evidence that the “TRIDENT” brand has been advertised by Manassen since 2001.

TM400954

157    TM400954, registered from 8 December 1983, covers the following products:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour, ices; honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, sauces, spices.

158    Trident Seafoods submitted that Trident Foods’ other registrations for the “TRIDENT” mark are not relevant, because the goods claimed in the other registrations are not similar to the goods claimed in the Trident Seafoods application.

Prospect of confusion

159    Trident Foods contended that any use by Trident Seafoods of the name Trident in relation to food products would cause substantial confusion in the marketplace and would result in Trident Seafoods unfairly obtaining the benefit of Trident Foods’ reputation and goodwill developed over 50 years in Australia.

160    Trident Seafoods argued that the type of potential confusion relevant when considering the exercise of discretion under s 101(3) is akin to the deception or confusion necessary to establish a case of misleading or deceptive conduct under s 18 of the Australian Consumer Law, or passing off. Having regard to the breadth of the discretion, I do not accept that the test should be expressed so highly. In Austin Nichols at [73], the Full Court observed that the “onus was on Lodestar to show that confusion would or, at least, could result” from removal of the relevant mark from the Register.

161    I accept that the “TRIDENT” mark has a substantial reputation in Australia, having regard to the following matters:

(1)    The trademarks are valued in the books of Trident Foods at approximately $10 million. Ms Swanson gave evidence, which I accept, that the value of the trademarks is audited annually and the carrying value of that asset is substantiated by the trading of the brand.

(2)    The “TRIDENT” brand has such a high penetration in Australian households that it is probably in most households at some point during the year.

(3)    To Mr Eastley’s understanding, there is not an independent retail channel in Australia that does not carry a “TRIDENT” brand product.

(4)    “TRIDENT” branded products are on promotion with independent retailers every month of the year, across the range.

(5)    “TRIDENT” is the number 1 selling brand for sweet chilli sauce, dates and coconut cream.

162    However, I also accept Trident Seafoods’ submission that there is insufficient evidence to prove the existence of a residual reputation in “TRIDENT” branded fish products arising from sales of such products prior to the non-use period. I also accept that Trident Foods did not establish any relevant reputation in “TRIDENT” branded fish products arising from recent sales of such products.

163    Trident Seafoods noted that there was no evidence to suggest that consumers are likely to be confused as to whether seafoods sold under the Trident Seafoods logo comes from the same source as “TRIDENT” sweet chilli sauce. It noted that there is no evidence that suppliers of other seafood products such as Greenseas, John West and Safcol are also suppliers of other types of non-fish products such as sauces. Trident Seafoods asserts that it sought Trident Foods’ consent to registration of the Trident Seafoods logo because it does not consider that any confusion will arise given Trident Foods’ lack of any reputation in relation to fish products.

164    Trident Seafoods also contended that the trade channels through which the goods would move would also reduce any possibility of confusion. For example, it noted that:

(1)    The goods would not necessarily be stocked in the same stores. There was evidence that Trident Foods’ goods are sold predominantly through independent supermarkets with Coles and Woolworths progressively reducing their sales of “TRIDENT” products since at least 2008.

(2)    Even where they may be stocked in the same stores, the goods are unlikely to be stocked near one another. Frozen and chilled seafood products are stocked in a separate section of a supermarket from products such as sauces and noodles (although, I note, Mr Eastley’s evidence was that Trident products are typically down three or four aisles of the average supermarket).

165    Further, Trident Seafoods argued that the different get-ups of the products also reduces the possibility of any confusion where “TRIDENT” branded foods are all branded with red colouring on the packaging, while the Trident Seafoods logo is blue and white.

Other matters raised by Trident Seafoods

“Colourable” use of trade marks

166    Trident Seafoods relied on the following matters to contend that the use of the “TRIDENT” mark on fish products since the non-use period was “colourable” or not in good faith:

(1)    it was a reaction to the non-use application which occurred with little or no planning;

(2)    the products were rushed onto the market in Australia;

(3)    the fish and seafood products have not been incorporated in the broader range of “TRIDENT” branded products sold by Manassen, for example, in the “Brand Plan” developed in 2005, in references on the Trident Foods website or in consumer advertising;

(4)    the small amounts made available for sale and sold; and

(5)    the products have only been sold in a disparate selection of independent supermarkets in regional areas.

167    Trident Seafoods identified several portions of Mr Eastley’s cross-examination as “particularly telling”. Those portions reveal the following:

(1)    Mr McIntosh expressly told Mr Eastley that he wanted to launch “TRIDENT” canned fish products “straight back into Australia” due to the “pending case”. Mr Eastley did not recall any other reasons given by Mr McIntosh for the request and Mr McIntosh was not called to give any different evidence.

(2)    Mr Eastley did not put the profit margin on the relevant products at greater than 10%. Although he was not prepared to accept that the sales figures were inherently unprofitable, Mr Eastley accepted that the 2016 margin figures were “very tight”.

(3)    Trident Foods did not sell any oysters in 2015 and 2016, and did not sell any mussels in 2016.

(4)    Mr Eastley said it was “hard to say” whether Trident Foods would have sold these products if they did not think that it was useful to protect the “TRIDENT” mark.

(5)    There is a possibility that a decision would be made in the near future that the relevant four products were simply not sustainable

168    Trident Seafoods also referred to the evidence of Mr Schostakowski, a former national business manager with Manassen. Mr Schostakowski described his role as coordinating the field sales team, who reported to Mr Eastley. Mr Schostakowski recalled discussion with Mr Eastley in early 2014 about selling “TRIDENT” branded fish. Mr Schostakowski recalled a period during which the range of fish was not sold and he could not remember exactly when it started again. Mr Schostakowski said that he was not aware of the consignment of tinned seafood products from New Zealand to Australia, saying that he was not normally involved in discussions about the source of products.

169    I do not accept that Mr Schostakowski’s evidence indicated that the consignment was so insubstantial and Mr Schostakowski did not recollect it, notwithstanding his responsibilities. There is no reason to doubt his evidence that he was not normally involved in the kind of discussions that would have led him to have been aware of the consignment.

170    Trident Seafoods also argued that Trident Foods had failed to adduce evidence which would be expected to have been available. In particular, Trident Seafoods referred to the following:

(1)    Mr Eastley’s affidavit evidence as to when “planning” to reintroduce the four products commenced was unclear, although he did accept in cross-examination that it commenced after his conversation with Mr McIntosh following Mr Terry’s 9 January 2014 letter.

(2)    Trident Foods has not explained its failure to call Mr McIntosh as a witness, when Mr McIntosh was a key figure in Trident Foods’ decision to sell the four products and Mr Eastley was acting pursuant to Mr McIntosh’s request.

(3)    Trident Foods provided “no documentary evidence which one would expect would exist and could be put into evidence to establish the position unequivocally”.

Other discretionary factors

171    Trident Seafoods’ contended that it is relevant that the continued registration of the “TRIDENT” marks in relation to fish and fish products is causing it a commercial detriment.

172    Trident also argued that the conduct of Trident Foods in the proceeding before the Trade Marks Office and this court is relevant. It complained that Mr McIntosh’s evidence to the Trade Marks Office failed to disclose the cessation of sales of seafood products in 2007 and the “plan” hatched to re-launch seafood products at his instigation after receiving notification of Trident Seafoods’ intention to seek removal of Trident Foods’ trade mark registrations in respect of seafood products. Trident Seafoods contended that the delegate’s decision revealed that she had been misled by Trident Foods to accept its submission, now known to be false, that “it could not be contended that the evidence of use in January 2014 was in response to the non-use actions”.

Extent of use of trademarks

173    Trident Seafoods noted that TM400953 has a lengthy class description, including foods that are not sold using the “TRIDENT” mark and not intended to be sold using that mark. It submitted that the Court could, in effect, redraft the statement of goods to excise goods that are not sold or intended to be sold using the “TRIDENT” mark. Trident Seafoods contended that this redrafting exercise could extend to limiting the statement of goods to particular kinds of fish.

174    Trident submitted that TM266625 should be removed in its entirety, and that TM400953 should be restricted to “dried fruits and tinned vegetables”.

Consideration

Nature of Trident Foods’ use of “TRIDENT” mark after non-use period

175    I accept Trident Seafoods’ submissions that the use since the non-use period was: (a) a reaction to the non-use application; (b) very limited; and (c) unaccompanied by a formal relaunch of the kind that might have been expected if there was an intention to sell the relevant products on a large scale. On the other hand, the sales were not unprofitable or otherwise contrived. They appear to reflect Mr Eastley’s genuine estimate about the extent to which the relevant products could be profitably sold in Australia. That conclusion is reinforced by the fact that the smoked oyster and mussel products were withdrawn from sale for a period despite the ongoing trade mark proceedings.

176    I do not accept that there is an adverse inference to be drawn by reason of Trident Foods’ failure to call Mr McIntosh, where I was satisfied that Mr Eastley made the decisions to sell the tuna, smoked oysters and smoked mussels products and where I have accepted that the relevant use was a reaction to the non-use application. Nor do I accept that the absence of documentary evidence concerning the circumstances of the relevant use is significant where I was not asked to disbelieve Mr Eastley’s evidence. In particular, I do not accept that there is anything inherently sinister about the PowerPoint presentation entitled “Trident Seafood Australian Sales Update”. The production of the document was coordinated by Mr Schostakowski. He could not recall the circumstances in which the document came to be prepared but his evidence suggested that it was typical of documents commonly prepared to review a brand’s performance. In my view, the document tends to demonstrate an interest in the use of the “TRIDENT” mark on seafood products in the light of the non-use application.

177    Accordingly, I am satisfied that the use of the “TRIDENT” mark on the tuna, smoked oysters and smoked mussels products after the non-use period did not lack good faith and was not colourable.

Discretion

178    I would probably not accept that the widespread use of the “TRIDENT” mark on foodstuffs, including food products that have an affinity with fish and fish products, would justify an exercise of the s 101(3) discretion in Trident Foods’ favour to prevent the removal of TM266625 and TM400953 (in relation to fish) if Trident Foods and Manassen had no intention for Manassen to use the trade mark on fish or fish products as an authorised user within the meaning of the Act. This is because I accept that there is a public interest in avoiding the inclusion on the Registrar of a trade mark in respect of goods where there is no intention that that the mark be applied to those goods: the inclusion of such marks tends to reduce the integrity of the Register. Thus, I would not accept that the sale of goods that are not fish or fish products (including, for example, dates and tinned vegetables, or goods that might be used to create a dish using fish or fish products), without more, provides a basis for the exercise of the s 101(3) discretion in Trident Foods’ favour.

179    However, in this case, taking into account the various matters raised by Trident Seafoods, the following matters satisfy me that it is reasonable to decide that the two marks should not be removed from the Register (or confined in the manner proposed by Trident Seafoods) even though grounds for removal were established:

(1)    There has been recent use of the trade marks on tinned tuna products (as well as smoked mussels and oysters). I accept that these post-non-use period sales were motivated by the non-use application but not that they reflect a lack of good faith or use of the “TRIDENT” brand for a purpose that reflects unfavourably on Trident Foods (or Manassen). There was no suggestion that the sale of these products was unprofitable or that the products would have been sold on an uncommercial basis, merely in order to justify the continued registration of the marks. I have rejected the contention that the recent use of the trade marks is “colourable”.

(2)    Consistent with the changing use of the trade marks from time to time reflecting circumstances in the marketplace, Trident Foods has developed an intention to use the mark on tinned mackerel products.

(3)    Trident Foods and Manassen have entered into a licence agreement to formalise their relationship concerning the trade marks and with a view to ensuring that Manassen uses the trade marks under the control of Trident Foods.

(4)    There has been long-standing use of the “TRIDENT” brand by Manassen with the knowledge and acquiescence of Trident Foods, and in circumstances where they are members of the same group of companies, on a wide and changing portfolio of food products. That use has been responsible for the continuing strong reputation of the “TRIDENT” brand. Historically, the portfolio has included fish and fish products, including tinned tuna and other tinned seafood products. The public are likely to identify products using the “TRIDENT” trade mark as emanating from a single source which is, in fact, a company that is part of the group of companies of which Trident Foods is a member. In these circumstances, I do not accept Trident Seafoods’ submission that Manassen’s use does not assist Trident Foods on the question of discretion.

(5)    Following the approach of McLelland J in Ritz Hotels, I consider that there is a relevant prospect of confusion in the minds of consumers as to the source of seafood products using the Trident Seafoods logo in the event of sales of fresh, tinned or frozen seafood products using that logo in Australian supermarkets. That confusion may arise because of the longstanding and significant use of the “TRIDENT” mark on a wide range of food products, which range has changed from time to time. In my view, there is a likelihood of the confusion I have identified, regardless of the different form and colours of the Trident Seafoods logo and even though the “TRIDENT” mark has not been used on fresh or frozen seafood. That confusion is likely to be experienced by consumers who purchase food products at supermarkets because the “TRIDENT” mark is likely to be associated in the minds of those consumers with an array of food products (not necessarily assumed to be limited to, for example, tinned products or tinned products of a particular variety) emanating from a single supplier and available for purchase at supermarkets. There is no public interest that has been adversely affected by Trident Foods’ non-use of the trade marks.

180    In reaching this decision, I have not taken into account the recent registration of Trade Mark TM1608153.

Second appeal

181    The second appeal concerns the Trident Foods TM application, filed on 18 July 2014, for the word “TRIDENT” in Class 29 in relation to: “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”, and in Class 30 in relation to: “Fish sauce (condiments); Flavourings made from fish”.

182    Trident Seafoods argued that the application should be rejected except for Class 29, in relation to pastes containing fish, and Class 30.

Legal framework

183    Section 44 of the Act provides relevantly:

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a)    the applicant's trade mark is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)    a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)    the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)    a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(3)    If the Registrar in either case is satisfied:

(a)    that there has been honest concurrent use of the 2 trade marks; or

(b)    that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4)    If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)    beginning before the priority date for the registration of the other trade mark in respect of:

(i)    the similar goods or closely related services; or

(ii)    the similar services or closely related goods; and

(b)    ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

184    Section 59 of the Act provides:

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)    to use, or authorise the use of, the trade mark in Australia; or

(b)    to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

185    Trident Foods conceded that the three elements of s 44(1) of the Act were satisfied as:

(1)    the opposed mark is substantially identical with, or deceptively similar to, the Trident Seafoods mark;

(2)    the Trident Seafoods mark has an earlier priority date than the opposed mark; and

(3)    registration of the opposed mark and the Trident Seafoods mark is sought in respect of similar goods.

186    In Hills Industries, Lander J considered Hills’ opposition to the registration of certain marks on grounds including under ss 44(1) and 60 of the Act. One issue was whether an application for registration should be accepted pursuant to s 44(3). Evidently, the onus of demonstrating that s 44(3) applies will fall on the trade mark applicant: Hills Industries at [147] and Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388 at [238].

187    In Hills Industries, at [177], Lander J concluded that s 44 in general assumes an inquiry at the priority date of the opposed mark and the question of the exercise of the discretion under s 44(3)(b) was to be confined to those circumstances which prevailed prior to the priority date.

188    The relevant date for considering the application of s 59 is also the priority date of the opposed mark, although use after that date may be relevant in drawing inferences as to the question of intention as at the priority date: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 at [74].

189    The filing of an application to register a trade mark is prima facie evidence of an intention to use the trade mark in relation to the goods or services the subject of the application: Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 at 401. However, the presumption that such an intention exists can be rebutted by “slight evidence”: Americana International Ltd v Suyen Corporation [2008] ATMO 4; (2008) 75 IPR 596 at [36]. Once the presumption is rebutted, the onus shifts onto the applicant to prove the requisite intention to use the trade mark: Sapient Australia Pty Ltd v SAP Aktiengesellschaft [2002] ATMO 51; (2002) 55 IPR 638 at 646. Inferences drawn from the evidence may be sufficient to shift the onus onto the applicant: Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 at [41]-[43].

190    The relevant intention is an intention to use the trade mark in good faith: Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165 at [62]-[63]

Issues for determination

191    There is an issue as to whether the Registrar should accept the Trident Foods TM application for registration on the basis of “other circumstances”, by reason of which it is “proper” to accept the application for registration pursuant to s 44(3)(b).

192    There is also an issue as to whether the Trident Foods TM application may be opposed, pursuant to s 59, on the ground that Trident Foods does not intend: (a) to use, or authorise the use of, the trade mark in Australia; or (b) to assign the trade mark to a body corporate for use by the body corporate in Australia, in relation to the goods and/or services specified in the application.

193    In addition, Trident Foods sought to raise issues under s 44(3)(a) (concerning honest concurrent use of trade marks) and s 44(4) (concerning “continuous” use of the “TRIDENT” mark).

194    Trident Seafoods submitted that, given that Trident Foods did not file a notice of contention in respect of the relevant decision, Trident Foods is not entitled to raise the latter two issues because the delegate resolved those issues in Trident Seafoods’ favour.

195    Rule 34.29 of the Federal Court Rules 2011 provides:

If a respondent does not want to cross appeal from the Commissioner’s decision, but contends that the Commissioner’s decision should be affirmed on grounds other than those relied on by the Commissioner, the respondent must, within 21 days after the notice of appeal is served, file a notice of contention, in accordance with Form 77.

196    By r 34.21 of the Rules, for a proceeding under the Act, the “Commissioner” means the person holding the officer of Registrar under the Act. By r 1.34 of the Rules, as Trident Seafoods acknowledged, the Court may dispense with compliance of any of the Rules, either before or after the occasion for compliance arises.

197    In this case, there is no suggestion that Trident Seafoods was not on notice of any issue raised by Trident Foods. Accordingly, to the extent that an issue was required to be the subject of a notice of contention, I will dispense with compliance of r 34.29. In any event, as appears below, I reject Trident Foods argument under s 44(3)(a) and s 44(4).

198    As I have previously noted, the parties accepted that the findings made in the first appeal would determine or substantially determine the outcome of the second appeal.

Section 44(3)(a)

199    Section 44(3)(a) requires “honest concurrent use of the 2 trade marks”.

200    Trident Seafoods submits that s 44(3)(a) is clearly inapplicable in the current circumstances.

201    For its part, Trident Foods acknowledged that the provision was “awkward” in this case because the Trident Seafoods mark has not been used in Australia except perhaps to a “miniscule” extent.

202    I was not taken to any authority to suggest that the requirement of concurrent use could be satisfied in the absence of any use of the Trident Seafoods mark. I do not accept that the Trident Seafoods mark has been used in Australia. Accordingly, s 44(3)(a) has no relevant operation.

Section 44(4)

203    Trident Seafoods submits that s 44(4) is also clearly inapplicable in the current circumstances.

204    Trident Seafoods submitted that s 44(4) requires there to have been “continuous” use of the relevant goods from before the priority date of the Trident Seafoods TM application (namely 7 May 2013) until the priority date of the Trident Foods TM application (namely 18 July 2014).

205    Trident Foods submitted that the relevant continuous use must be in respect of “similar goods” or “closely related goods”. By s 14(1), for the purposes of the Act, goods are similar to other goods (a) if they are the same as the other goods; or (b) if they are of the same description as that of the other goods.

206    The Act provides no definition of “closely related goods”.

207    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).

208    Thus, I do not accept Trident Foods’ submission that s 44(4) will apply if it can demonstrate continuous use of “closely related goods”.

209    In my view, it instead must establish continuous use of goods that are “similar goods” to those specified in the Trident Seafoods TM application, namely:

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.

210    The substantial gap in sales of the goods the subject of the Trident Foods TM Application Goods (in particular, the fish and seafood products) between at least 2007 and April 2014 means that there is no “prior continuous” use.

211    Further, use of the trade mark by Manassen is not relevant for s 44(4), which requires the prior continuous use to be use by “the applicant [i.e. Trident Foods], or the applicant and a predecessor in title”. Manassen is neither the applicant nor a predecessor in title to the applicant.

Section 44(3)(b)

212    Section 44(3)(b) confers a discretion upon the Registrar to accept an application for registration if the Registrar is “satisfied” that, because of “other circumstances”, it is “proper” to accept the application for registration.

213    Trident Foods argued that the matters identified in relation to the exercise of the discretion under s 101(3) are relevant “other circumstances”. In particular, it identified the following seven matters:

(1)    The Trident Seafoods TM application is only at application stage, has had two adverse reports raised against it and is currently prevented from proceeding to registration by the presence of Trident Foods’ trade marks (being the marks the subject of the first appeal). If those marks are not removed from the register, the Trident Seafoods TM application will not proceed to registration.

(2)    The Trident Foods TM application should not be prevented from proceeding to registration by a mark that will never achieve registration and which has not been used in Australia.

(3)    The priority date for the Trident Seafoods TM application (18 July 2014) does not predate the priority date of TM266625, TM400953 and TM400954.

(4)    Section 44(3)(b) permits regard to use after the priority date. Pre and post-priority date evidence establishes clear use on the specified goods.

(5)    If the view is taken that the absence of evidence of actual use by Trident Seafoods makes s 44(3)(a) inapplicable, the discretion under s 44(3)(b) would be appropriately exercised in such a scenario.

(6)    Trident Foods has not abandoned its prior marks and has a long-standing reputation for providing the foods specified in the Trident Foods TM application at various times, based on demand and trade mark reinvigoration, in the Australian market under the prior marks.

(7)    The Trident Seafoods logo is comprised of a distinctive part of Trident Food’s corporate title (being the word “Trident”).Trident Foods has the “TRIDENT” mark registered internationally and enjoys a significant and valuable reputation in Australia and overseas, including New Zealand.

214    Trident Foods also argued that the recent registration of TM1608153 was another circumstance, warranting the exercise of discretion in its favour.

215    Trident Seafoods submitted that it is not “proper” to accept the Trident Foods TM application, and the Court should not exercise the discretion in s 44(3)(b) to do so, for the following reasons:

(1)    Trident Foods is not using the trade mark and has not ever used the trade mark. To the extent that the trade mark has been used, it has been used for what Kitto J described as “the illegitimate purpose” of distinguishing Manassen’s goods instead of Trident Foods’ goods: Carl Zeiss at 10.

(2)    The Trident Foods TM application was clearly filed to stifle any success that Trident Seafoods might have had in the non-use applications. There would be no other reason for Trident Foods to claim “cooked meals consisting principally of fish”, “fish products”, “fish (not live”), “food made from fish” or “tinned fish” in the Trident Seafoods Application in circumstances where TM 266625 was registered for the same mark in relation to “fish and fish products” and TM 400953 was registered for the same mark in relation to “fish … including sardines, mackerel, pilchards.

(3)    The way in which Trident Foods presented its evidence in the Trade Marks Office (including what was omitted from that evidence).

(4)    Trident Foods has does not have a reputation in relation to the goods the subject of the Trident Foods TM application.

216    Following the approach of Lander J in Hills Industries, and considering the position as at the priority date (18 July 2014), in my view, the first matter raised by Trident Foods is a relevant circumstance that makes it proper that the discretion in s 44(3) should be exercised. That is, the Trident Seafoods TM application was only at application stage, and was prevented from proceeding to registration by the presence of Trident Foods’ trade marks (being the marks the subject of the first appeal). I accept that it is a relevant other circumstance, that existed as at the priority date, that the Trident Foods TM application should not be prevented from proceeding to registration by a mark that might never achieve registration and which had not been used in Australia.

217    However, that circumstance must be considered in the context of the fact that, 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 that precondition had not been satisfied.

Section 59

218    Having reached the conclusion that the s 44(3)(b) discretion should not be exercised, it is not strictly necessary to consider the application of s 59 of the Act. However, in case I am wrong in relation to the former matter, I have given consideration to the latter.

219    Trident Seafoods accepted that it bore the onus of proving that Trident Foods did not intend, on 18 July 2014, to use the trade mark “TRIDENT” in good faith in relation to the Trident Foods TM application goods. However, it noted that the onus involves establishing a negative proposition in respect of matters that are in the knowledge of Trident Foods. Trident Seafoods contended that, where a plaintiff has the onus of proving a matter, and “relevant facts are peculiarly in the knowledge of the defendant or where the defendant has the greater means to produce evidence relating to those facts”, then if the plaintiff provides sufficient evidence from which the matter may be inferred, “the defendant then comes under an evidential burden, or an onus of adducing evidence”: Krstic v Brindley [2006] NSWSC 1414 at [26].

220    Trident Seafoods argued that the following matters demonstrate that Trident Foods did not intend, on 18 July 2014, to use the “TRIDENT” trade mark in good faith in relation to the Trident Foods TM application goods:

(1)    Trident Foods did not intend to use the trade mark at all. Manassen was (and still is) using the trade mark, and there is no evidence that it was intended that the present arrangements would change at all (and they did not change over the following three years). An intention to allow Manassen to use the trade mark in a way that would not be authorised use within the meaning of s 8 of the Act, would not be sufficient intention for the purpose of defending an opposition under s 59. The licence agreement signed on 3 November 2017 cannot cure the position as at 18 July 2014.

(2)    Trident Foods re-launched its canned seafood products in Australia in April 2014, approximately three months before it filed the Trident Foods TM application, with the specific intent of protecting its trade mark from removal applications. Its sales of those products since that time have been merely colourable use of the trade mark with the same purpose of protecting the trade mark from removal proceedings. Mr Eastley was not able to say that Manassen would sell this range of products if it were not for the non-use proceedings. An intention to sell a “miniscule” number of products for no purpose other than to attempt to defeat a non-use action – which intention may last no longer than the length of time that the non-use action remains pending – is not an intention to use the trade mark in good faith.

221    Trident Foods argued that the appellant failed to adduce any evidence that Trident Foods did not intend to use the opposed mark in relation to the specified goods, and consequently failed to discharge its burden of proof.

222    To the extent that any burden fell on it, Trident Foods contended there is direct evidence that Trident intends to use the opposed mark in relation to the specified goods and other food products going forward, particularly in relation to mackerel. Trident Foods argued that this was sufficient to discharge any evidentiary burden on Trident Foods pursuant to s 59.

223    In my view, the evidence of the use of the “TRIDENT” mark by Manassen rather than Trident Foods, until the 2017 licence agreement, in the absence of any other relevant evidence, supports a conclusion that Trident Foods did not intend, as at the priority date, to use, or authorise the use of, the trade mark in Australia, or to assign the trade mark to a body corporate for use by the body corporate in Australia, in relation to the goods specified in the.

224    Accordingly, Trident Seafoods was entitled to oppose the Trident Foods TM application pursuant to s 59 of the Act.

Conclusions

225    The first appeal must be dismissed.

226    The second appeal will be allowed. Generally, orders should be made in accordance with the orders sought in the notice of appeal subject to any qualification that may arise from the argument made by Trident Seafoods, noted above, that the application should be rejected except for Class 29, in relation to pastes containing fish, and Class 30. In order to address this possible qualification, I will make a direction that the parties file orders to give effect to my reasons in relation to the second appeal.

Associate:

Dated:    4 October 2018