FEDERAL COURT OF AUSTRALIA

Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100

ORDERS

THE COURT ORDERS THAT:

1.    Leave to appeal be granted.

2.    The appeal be dismissed.

3.    The appellant pay the respondent’s costs of the appeal as agreed or taxed.

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

ORDERS

THE COURT ORDERS THAT:

1.    Time for the filing of the application for leave to appeal be extended and leave to appeal be granted.

2.    The appeal be allowed.

3.    The orders made on 31 October 2018 be set aside.

4.    Australian Trade Mark Application No 1635410 for the mark TRIDENT proceed to registration.

5.    The respondent pay the appellant’s costs of the appeal, of the proceeding below and of the proceeding before the Trade Marks Office as agreed or taxed.

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

REASONS FOR JUDGMENT

THE COURT:

1    Trident Seafoods Corporation seeks leave to appeal against an order dismissing its appeal consequential on the primary judge’s decision not to order the removal of two trade marks from the Register of Trade Marks, being Australian Registered Trade Mark No 266625 (the first mark) and Australian Registered Trade Mark No 400953 (the second mark). Trident Foods Pty Ltd seeks an extension of time for leave to appeal and the grant of leave to appeal against orders allowing Trident Seafoods’ appeal and opposition to registration of Trident Foods’ Trade Mark Application No 1635410. The primary judge’s reasons for judgment in respect of both matters are set out in Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, referred to below as the primary judgment or PJ.

Trident Seafoods’ application for removal of marks NSD 1951/2018

Background

2    It is convenient to deal first with Trident Seafoods’ application for leave to appeal in respect of its application for removal from the Register for non-use of two marks owned by Trident Foods.

3    For the following reasons leave to appeal should be granted but the appeal dismissed with costs.

4    The first mark, for the word “TRIDENT”, was registered on 15 March 1973 in respect of goods in Class 29 being fish and fish products: PJ [4].

5    The second mark, also for the word “TRIDENT”, has been registered since 8 December 1983 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: PJ [5].

6    Trident Foods owns both marks: PJ [6]. Since about 2000 all sales of foods under the marks have been by Manassen Foods Australia Pty Ltd. Trident Foods is a wholly owned subsidiary of Manassen: PJ [12] to [13].

7    On 7 February 2014 Trident Seafoods applied under s 92(4)(b) of the Trade Marks Act 1955 (Cth) to have the marks removed from the Register on the ground that the marks remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner used the trade mark in Australia or used the trade mark in good faith in Australia in relation to the goods to which the application relates: PJ [7] and [19]. In accordance with this provision the relevant period for non-use of the marks is 7 January 2011 to 7 January 2014: PJ [23].

8    Trident Seafoods’ application for removal of Trident Foods’ marks was prompted by its own application, Trade Mark Application No 1555536 for the Trident Seafoods logo (in Class 29) in relation to “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”. The Trident Seafoods logo is:

9    Registration of Trident Seafoods’ application was blocked by the first and second marks, and another mark owned by Trident Foods, Australian Registered 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”: PJ [15] and [16].

10    Trident Seafoods failed before the delegate of the Registrar of Trade Marks. While the delegate was satisfied that the marks had not been used in the relevant period, the delegate also concluded that it was appropriate to exercise the discretion under s 101(3) of the Act which provides that:

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.

11    Trident Seafoods’ application for leave to appeal is from this decision, leave being required under s 195(2) of the Act.

The primary judge’s reasoning

12    The primary judge found that the scope of the first mark, for fish and fish products, included seafood, mussels and oysters (molluscs) and prawns and crabs (crustaceans) and were not limited to fresh fish and processed products made principally from fish: PJ [55] and [56]. Her Honour also concluded that the word “fish” in the goods to which the second mark related encompasses seafood, mussels and oysters (molluscs) and prawns and crabs (crustaceans), and foods prepared from seafoods: PJ [61].

13    The primary judge rejected Trident Foods’ submission that application of the marks to a good containing an ingredient within the scope of the registrations is or might be a use of the marks in relation to the ingredient. In her Honour’s words at [65] “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”. Consistently with this approach her Honour rejected Trident Foods’ contention that Tom Yum Goong Flavour Thai Noodle Soup fell within the meaning of “fish product” for the first mark despite its label stating the product contains crustacean and fish and the oil sachet stating that it contains fish sauce and dried shrimp: PJ [67] and [68].

14    The primary judge found that Trident Foods had not used the marks in Australia during the relevant period: PJ [69] and [101]. Her Honour noted that under s 7(3) of the Act, an authorised use of a trade mark by a person is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark: PJ [71]. By s 8:

(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

(c)    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).

15    After reviewing cases relating to the concept of authorised use and control at [73] to [83], including Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56; (1977) 137 CLR 670, The Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158; (1988) 88 ALR 217, C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42, Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478, Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; (2016) 244 FCR 557, her Honour concluded that authorised use involves use under the “actual” control of the trade mark owner and there must be control “as a matter of substance”, although the connection with the registered owner indicated by the trade mark may be slight: PJ [84].

16    The primary judge then reviewed the evidence on which Trident Foods relied to establish that it controlled the use of the marks by Manassen including:

(1)    The corporate relationship, Trident Foods being a wholly owned subsidiary of Manassen, with the two companies having common directors, a common registered address and common principal place of business, forming part of a corporate group with a common ultimate holding company, a Cayman Islands company, Bright Food Global Distribution Company Limited: PJ [86] and [87].

(2)    Ms Swanson’s evidence that she and Mr McIntosh were directors of both Trident and Manassen and always maintained control over Manassen from the point of view of Trident Foods as they have fiduciary obligations to Trident Foods. Ms Swanson also represented that she and Mr McIntosh considered the quality and standard of the goods sold under the marks and would be empowered to direct Manassen about these matters. Ms Swanson and Mr McIntosh however had never had to do so because Manassen was bound by the group wide vendor quality management system, or VQM, with which every company in the group had to comply. Ms Swanson further said that she and Mr McIntosh represented Trident at Manassen’s Innovation Council which meets monthly to decide which brands to sell under the marks. Ms Swanson had also arranged for the “informal licence arrangements” of the marks from Trident Foods to Manassen to be formalised: PJ [88] and [89].

(3)    Ms Walker’s evidence that products under the Trident brand say “Registered trade mark of Trident Foods Pty Ltd”: PJ [92].

(4)    The VQM manual which incorporates a quality assurance plan and quality control procedures for the Bright Group of companies: PJ [93] and [94].

(5)    “A licence agreement covering the marks dated 3 November 2017 between Trident Foods which contains recitals that they had, since 2000, 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 “wished to reduce to writing the earlier unwritten licence on the terms of the licence agreement”: at [95]. Clause 14, headed Quality Control, states:

[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; an

(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: PJ [97].

17    Having also set out the contrary contentions of Trident Seafoods at [99] the primary judge was not satisfied that the evidence showed that Manassen’s use of the first mark was under the control of Trident Foods: PJ [100]. For the same reasons the primary judge reached the same conclusion about the second mark: PJ [101] to [103].

18    The primary judge then considered s 101(3) of the Act. The primary judge reviewed the applicable principles in orthodox terms:

(1)    “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 at [35]”: PJ [106].

(2)    “It is not necessary to show exceptional circumstances before the Court may exercise the s 101(3) discretion: Austin Nichols at [69]”: PJ [106].

(3)    “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]”: PJ [108].

(4)    “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]”: PJ at [110].

(5)    “‘Good faith’ use of a trade mark is use for a genuine commercial purpose: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 at [187]; E & J Gallo Winery v Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144 at [62]”: PJ at [111].

(6)    Whether the removal of the mark would lead to deception or confusion is a relevant consideration: Austin Nichols at [31]; Ritz Hotel at 224.

19    After reviewing the competing submissions of the parties the primary judge found Manassen:

(1)    used the marks before the relevant non-use period on various products including fish products, Oyster Sauce and Fish Stir Fry Sauce: PJ [127];

(2)    used the marks during the relevant non-use period on various products including a fish product, being Oyster Sauce: PJ [134];

(3)    used the marks after the relevant non-use period on tinned tuna in springwater, smoked mussels, smoked oysters, and tinned tuna in oil: PJ [139]; and

(4)    intended to use the marks after the relevant period on a mackerel product: PJ [149].

20    The primary judge also found that the marks have a substantial reputation in Australia: PJ [161]. This reputation, however, did not extend to TRIDENT branded fish products arising from sale of such products before and after the relevant period: PJ [162].

21    The primary judge accepted that the use of the marks after the relevant 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” but also noted that such uses were “not unprofitable or otherwise contrived”: PJ [175]. As a result, the primary judge was satisfied that these uses of the marks on the tuna, smoked oysters and smoked mussels products after the relevant period did not lack good faith and were not colourable: PJ [177].

22    Against this background the primary judge came to the exercise of the discretion in s 101(3). The primary judge said:

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 [The Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158], 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.

Trident Seafoods’ proposed appeal grounds - consideration

23    Trident Seafoods’ submissions are not set out in terms of its proposed grounds of appeal. As a result, it is necessary to identify Trident Seafoods’ contentions by reference to its written and oral submissions rather than its proposed notice of appeal.

24    According to Trident Seafoods the primary judge’s exercise of discretion miscarried having regard to the statutory purpose of Pt 9 of the Act and the guiding principle of the public interest. It is apparent from the primary judge’s review of the relevant principles that she was aware of the statutory purpose of Pt 9 of the Act and the public interest which that part of the legislation serves.

25    Trident Seafoods submitted that the primary judge recognised the public interest in removing unused marks from the Register at PJ [178], but failed to observe the advantage of marketplace competition that would follow. It is not apparent why the primary judge was bound to make such an observation at [178] or otherwise. None of the proposed grounds of appeal relate to the lack of such an observation.

26    Trident Seafoods submitted that the five matters relied on by the primary judge at [179] of the reasons disclosed error. However, as discussed below, Trident Seafoods failed to identify any error of the requisite kind to justify appellate intervention in respect of the exercise of a discretion: House v The King (1936) 55 CLR 499 at 504 to 505.

27    Accordingly, in relation to PJ [179(1)] Trident Seafoods referred to sales of fish products after the relevant period as being miniscule in number. It is apparent from the evidence that this descriptor was being used in contrast to the sales of other Trident products which were very large in number, the primary judge having recorded at [161] her acceptance of the proposition 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.

28    It is apparent that the primary judge was aware of the evidence about the sales of fish products during the relevant period being miniscule. At PJ [144] the primary judge said:

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.

29    Having taken that and the other evidence into account, including that the sales were a reaction to the non-use application at PJ [175], the primary judge was nevertheless satisfied that the sales were neither unprofitable nor contrived. The primary judge’s consequential conclusion, that the sales did not lack good faith and were not colourable, was rationally founded on the evidence.

30    In relation to PJ [179(2)], Trident Seafoods submitted that the intention of Trident Foods to sell tinned mackerel under the Trident mark was at best of “marginal relevance” to the question of confusion. This submission implicitly acknowledges that the matter is of some relevance but does not confront the fact that in the course of the exercise of a discretion the weight to be accorded to a factor was within the provenance of the primary judge. To put it another way, a complaint about the weight afforded to a relevant factor in the exercise of a discretion does not disclose an error which justifies appellate intervention. Further, as Trident Foods submitted, sales under the Trident mark have taken place in Australia for 40 years on a wide range of foodstuffs, including fish up to 2007, with the Trident products being sold in every Coles, Woolworths and IGA Australia wide, the brand being the number one seller of sweet chilli sauce, coconut milk and dates. The intention to use the mark on tinned mackerel, considered in the overall context, was itself in good faith and not colourable. It represented a continuation of the use of the marks across a wide variety of foodstuffs, sold from different aisles in supermarkets under the TRIDENT brand.

31    In relation to PJ [179(3)] Trident Seafoods’ submissions referred to the licence agreement as being of “tangential relevance” to any intention to use the marks with respect to fish and fish products. Again, the submission discloses that the complaint is one of the weight which the primary judge gave this consideration, a matter which cannot found error of the requisite kind. The primary judge’s observation at [179(3)] is also relevant to Trident Foods’ application for leave to appeal as the observation confirms the intention of Trident Foods that Manassen be an authorised user of the trade marks.

32    In relation to PJ [179(4) and (5)] Trident Seafoods submitted that the primary judge’s finding that the marks had a substantial reputation in Australia was a “generalised observation”. This may be so but that fact alone does not disclose any error on the part of the primary judge. Trident Seafoods also submitted that the primary judge’s finding 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” was contrary to the evidence that the TRIDENT brand was associated with an ever-decreasing range of products which had not included seafood at all from 2007 to April 2014 and was difficult to reconcile with PJ [162] where her Honour said:

…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.

33    The alleged error would appear to be the characterisation of the evidence. Trident Seafoods has not explained why the primary judge’s characterisation involved error given the evidence as summarised by Trident Foods that:

(a) Trident Foods has registrations for TRIDENT for fish from the 1970s and 1980s; (b) from at least the early 2000s, Trident Foods sold tinned tuna, salmon, herring and other fish and fish products; (c) Trident Foods has sold an abundance of products that contain as an integral ingredient seafood, fish and fish products; (d) there is a close and clear connection between the TRIDENT brand and Asian flavours and ingredients, of which seafood, fish and fish products plays a prime role; (e) TRIDENT branded products bear recipes that include seafood, fish and fish products; (f) Trident Foods sought to protect its valuable and well known TRIDENT brand when it became aware quite unexpectedly that it may be removed for non-use by offering for sale and selling tinned fish/fish products in Australia; (g) Trident Foods would not have recommenced selling tinned fish in Australia if it would have been commercially unviable; (h) sales of tinned fish/fish products have taken place since immediately after the end of the Relevant Period…. (i) Trident Foods has intentions of expanding the tinned fish range to include mackerel in various different types of sauces; (j) when mussels and oysters were not commercially successful, they were not sold for a period, demonstrating Trident Foods’ good faith and commercial approach to what it sells.

34    Trident Seafoods submitted that the primary judge did not identify the evidentiary basis for the conclusion that there was a relevant prospect of confusion in the minds of consumers in light of the findings at PJ [162]. Trident Foods challenges the findings in [162] but submitted that even if it is correct the “likelihood of confusion still exists as a result of the finding by her Honour of the reputation enjoyed by Trident Foods in the name TRIDENT in relation to foodstuffs generally as a result of the 40 or more years of use of TRIDENT which included millions of units sold, and the fact that TRIDENT branded sweet chilli sauce, dates and coconut milk were the most sold in Australian supermarkets above any other brand”. Trident Foods provided an example to support this proposition, being:

…the ordinary consumer who wishes to make laksa for dinner, navigating a supermarket, where Trident Foods’ TRIDENT products occupy a number of aisles, buys TRIDENT noodles, TRIDENT coconut milk and then goes to the frozen section to buy seafood - faced with TSC TRIDENT SEAFOODS seafood in the frozen aisle, will likely be confused.

35    Trident Seafoods challenged the example but, again, did not identify any error of principle by the primary judge in accepting the likelihood of confusion given the substantial reputation in the marks across a range of products. Trident Seafoods said Trident Foods’ example did not allow for the consumer who attends the frozen food aisle without any preconception about TRIDENT branded products or for the ordinary consumer being able to discern differently branded goods. These submissions also do not identify error by the primary judge in the process of reasoning in PJ [179].

36    Trident Seafoods said further that the primary judge did not undertake any evaluation of the likely context in which any potential prospect of confusion might arise. While accepting that the primary judge did not need to set out every reason for reaching a conclusion, as referred to in Whisprun Pty Ltd v Dixon [2003] HCA 48; (2003) 200 ALR 447 at [62], Trident Seafoods submitted that the absence of reasoning about context in the present cases discloses error and that the evidence fell far short of establishing a real risk of confusion as to the source of the Trident Seafoods’ products if sold under the mark of the Trident Seafoods logo. According to Trident Seafoods the primary judge made no assessment of the class of consumers or their characteristics relevant to the question of the prospect of confusion.

37    The criticisms of the primary judge are unfounded. The primary judge did identify the relevant context and the evidentiary foundation for her conclusion about confusion. Trident Seafoods’ asserted error constitutes nothing more than a disagreement with the evidence the primary judge considered should be given weight and her characterisation of the relevant context. At PJ [161] the primary judge identified, amongst other things, that the Trident marks have a substantial reputation in Australia having regard to the brand’s “high penetration in Australian households that it is probably in most households at some point during the year”, the fact that there is “not an independent retail channel in Australia that does not carry a ‘TRIDENT’ brand product”, “‘TRIDENT’ branded products are on promotion with independent retailers every month of the year, across the range”, and “‘TRIDENT’ is the number 1 selling brand for sweet chilli sauce, dates and coconut cream”. The primary judge also referred expressly to the competing contentions of Trident Seafoods about the potential for confusion at PJ [159] to [165]. It must be taken from the primary judge’s conclusion at PJ [179], particularly PJ [179(5)] that the primary judge was not persuaded by Trident Seafoods’ submissions about the prospect of confusion. We also do not accept that, in the circumstances identified by the primary judge at [161], there was insufficient evidence for the primary judge to conclude that removal of the marks would create a prospect of confusion in the minds of consumers. The primary judge’s finding at [179(5)] 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” is unassailable. The finding was not only open on the evidence but, in our view, was correct. The fact that her Honour did not consider the TRIDENT brand had any residual reputation in respect of fish is not inconsistent with and does not undermine this conclusion.

38    Trident Seafoods challenged the primary judge’s conclusion at PJ [177] and PJ [179(1)] 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. However, beyond repeating the contentions that had been put to and rejected by the primary judge to support its position that those uses were not in good faith, Trident Seafoods did not identify any error said to undermine the primary judge’s conclusion. The submissions did no more than repeat the propositions recorded by the primary judge at PJ [166], namely that the uses on fish products after the relevant period were a “reaction to the non-use application which occurred with little or no planning”, “the products were rushed onto the market in Australia”, “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”, “small amounts made available for sale and sold”, and “the products have only been sold in a disparate selection of independent supermarkets in regional areas”. The primary judge explained at [175] and [176] why she did not accept the contentions of Trident Seafoods about the nature of the uses after the relevant period. The reasoning therein does not disclose any error which could affect her Honour’s conclusion that the uses were in good faith and were not colourable.

39    Trident Seafoods put another contention that even if the uses were in good faith and not colourable, the primary judge erred in PJ [179] by putting too much weight on the reactionary use of TRIDENT on fish products after the non-use application was made. It is not apparent how the attribution of weight in an evaluative process can constitute an error of the kind justifying appellate intervention.

40    Trident Seafoods also contended that the primary judge erred by treating “fish” and “fish products” as including mussels and oysters (molluscs) and prawns and crabs (crustaceans). According to Trident Seafoods it was unnecessary to consider the Nice Classifications which merely included molluscs and crustaceans in Class 29 and did not provide assistance with the meaning of “fish” and “fish products”. Her Honour’s use of the Oxford English Dictionary definition of “any animal living exclusively in water” was said to be in error because of the omission of the balance of the definition which refers to “primarily denoting vertebrate animals provided with fins”. Her Honour’s failure to use the Macquarie Dictionary definition of “various cold-blooded, completely aquatic vertebrates, having gills, fins, and typically an elongated body usually covered with scales” was said also to be in error.

41    The problem with these alleged errors is Trident Seafoods’ selectivity. A fair reading of the Nice Classifications discloses that molluscs and crustacean were treated as within the meaning of “fish”. The Oxford English Dictionary definition of “fish” continues saying “extended to include various cetaceans, crustaceans, molluscs, etc”. The Macquarie Dictionary definition of “fish” includes meaning two of “any of various other aquatic animals”. As a result there was no error in the primary judge treating “fish” and “fish products” as extending to molluscs and crustacean.

42    Trident Seafoods contended that the primary judge erred at PJ [134] in finding that that during the non-use period the TRIDENT mark was also used on fish products, being Oyster Sauce. It was said that an oyster is not a fish (a submission rejected above) and that the primary judge did not apply the approach to “fish products” she espoused at PJ [66], that “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”. The submission is unpersuasive. The Oyster Sauce product, on the primary judge’s reasoning (which is unaffected by error), identifies itself as a fish product because for present purposes “fish” includes oyster. It was also not suggested that the Oyster Sauce did not contain oysters.

43    In summary, Trident Seafoods has not identified any error of the requisite kind in the primary judge’s exercise of discretion. As a result, it is not necessary to consider Trident Foods’ notice of contention but those contentions are discussed below because, in part, they are relevant to Trident Foods’ application for leave to appeal.

Trident Foods contentions - consideration

44    Trident Foods contended that the primary judge erred by not finding that the use of the marks by Manassen was authorised by Trident Foods so that use by Manassen was use by Trident Foods. According to Trident Foods the primary judge should have found that there was an unwritten licence from Trident Foods to Manassen authorising the use of the marks, the terms of which were the same as the licence agreement dated 3 November 2017 and/or that the use of the marks by Manassen was use by authority of and under the control of Trident Foods. Trident Foods relied on Lodestar at [97] and [98] to the effect that the requirement of “control” of the use of the mark in s 8 of the Act means “actual control in relation to the trade mark from time to time”, that “actual control will be a question of fact and degree”, and that there may be cases where the user’s obedience to the trade mark owner was “so instinctive and complete that instruction was not necessary”. According to Trident Foods, the primary judge should have found the present case to be of this kind. However, the primary judge instead said this at PJ [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.

45    In our view, the key consideration in the present case is that at PJ [100(1)]. The issue is not whether one company controlled the other but rather whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand. This is not a case like Lodestar in which there was no relationship between the owner and user of the marks beyond a licence. This case is at the other end of the spectrum. As Trident Foods submitted, it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand. The fact that this must also have been Manassen’s purpose simply confirms the unity of purpose between the corporate entities. But unity of purpose is not inconsistent with the existence of control in a case such as the present.

46    As to PJ [100(2)] it is not surprising given the corporate relationship, the commonality of directors and the shared processes between the owner and the user of the marks that there is no particular illustration of actual control by Trident Foods of Manassen in respect of the marks. The natural and ordinary inference given the relationship between the companies would be of unity of purpose, rendering redundant any particular illustration of the actual control Trident Foods must have had as the owner of the marks. Unity of purpose is indicative of the existence of actual control vested in Trident Foods as the entity owning the marks over Manassen as the entity using the marks.

47    As to PJ [100(3)] the fact that Ms Swanson considered it unnecessary to give directions in relation to the use of the marks is not irrelevant to the inference of actual control. It supports the unity purpose which itself is indicative of such control.

48    As to PJ [100(4)] the proposition may be accepted given that Ms Swanson was not on the Innovations Committee during the relevant non-use period.

49    As to PJ [100(5)] the fact that every packet sold by Manassen states that Trident is a registered trade mark of Trident Foods supports the inference of control by Trident Foods of the use of the marks it owns.

50    As to PJ [100(6)], the marginal relevance, if any, of the VQM may be accepted given that it refers to neither company and is in general terms.

51    As to PJ [100(7)], given the corporate relationship it is inconceivable that Manassen was using the marks without the knowledge, consent and authority of Trident Foods. This necessarily constitutes more than mere acquiescence by Trident Foods. Mere acquiescence denotes passive acceptance of Manassen’s use but the corporate relationship, common directorships and arrangements between the companies required active engagement by those directors to protect Trident Foods’ valuable goodwill ($10 million in the books of Trident Foods, PJ [161(1)]). Trident Foods’ active consent and authority must constitute an unwritten licence for use of the marks.

52    For these reasons we disagree with the primary judge’s conclusion that Trident Foods had not itself used the marks in Australia during the relevant period. Manasssen’s uses of the marks in that period were authorised uses under s 8(1) of the Act and thus taken to be uses by Trident Foods as the owner of the marks under s 7(3) of the Act. It follows that the statutory pre-conditions to removal of the marks from the Register in s 92(4)(b) of the Act were not satisfied. Contrary to PJ [69] and [103] Trident Foods had rebutted the allegation of non-use of the marks with respect to the goods.

53    For these reasons it is also unnecessary to consider a separate submission of Trident Foods that the fact that each packet stated that Trident was a registered trade mark of Trident Foods itself constituted a use by Trident Foods of the marks.

54    Further, for the sake of completeness only, we note and discuss some other contentions of Trident Foods.

55    Trident Foods submitted that the product Tom Yum Goong Flavour Thai Noodle Soup should have been accepted by the primary judge as involving a use of the TRIDENT mark within the relevant period. “Goong” means prawn in Thai. As “fish” includes crustaceans such as prawns and the Thai word for “prawn” appears on the name of the product, we agree that the requirements for use during the relevant period have been satisfied. The same conclusion must apply to the product Fish Stir Fry Sauce as there was evidence of use of that product within the relevant period.

56    Trident Foods also contended that there were additional factors supporting the exercise of discretion under s 101(3) of the Act. At the time of the hearing Trident Foods’ Trade Mark Application No 1608153 had been lodged but was opposed by Trident Seafoods. Trident Seafoods withdrew its opposition and that mark has been registered. As a result Trident Foods is entitled to use the mark TRIDENT in respect of goods in classes 29 and 30. If it had been necessary to re-exercise the discretion exercised by the primary judge, which it is not, this would have been a cogent factor supporting the exercise of the discretion.

57    We would not be persuaded that use of the first and second marks during the relevant period on dates, tinned Chinese vegetables, and tinned corn constitute similar goods and this would have provided a further factor supporting the exercise of the discretion in s 101(3) if it had been necessary for us to re-exercise the discretion. The fact that those goods emanate from the same producer and are sold in the same shops does not mean that they are similar goods to the fish and fish product goods.

58    We do accept, however, that it should have been found that Trident Foods had a residual reputation in fish and fish products. As Trident Foods submitted:

(a) Trident Foods has registrations for TRIDENT for fish from the 1970s and 1980s; (b) from at least the early 2000s, Trident Foods sold tinned tuna, salmon, herring and other fish and fish products; (c) Trident Foods has sold an abundance of products that contain as an integral ingredient seafood, fish and fish products; (d) there is a close and clear connection between the TRIDENT brand and Asian flavours and ingredients, of which seafood, fish and fish products plays a prime role; (e) TRIDENT branded products bear recipes that include seafood, fish and fish products; (f) Trident Foods sought to protect its valuable and well known TRIDENT brand when it became aware quite unexpectedly that it may be removed for non-use by offering for sale and selling tinned fish/fish products in Australia; (g) Trident Foods would not have recommenced selling tinned fish in Australia if it would have been commercially unviable; (h) sales of tinned fish/fish products have taken place since immediately after the end of the Relevant Period…; (i) Trident Foods has intentions of expanding the tinned fish range to include mackerel in various different types of sauces; (j) when mussels and oysters were not commercially successful, they were not sold for a period, demonstrating Trident Foods’ good faith and commercial approach to what it sells.

59    This reputation would also have been a relevant factor in respect of any re-exercise of the discretion under s 101(3), had that been necessary.

Conclusions

60    For these reasons the primary judge was correct to decide that the application of Trident Seafoods for the first and second marks to be removed from the Register should be rejected, albeit that we would have rejected it on the ground that the condition precedent of non-use by the owner of the mark had not been satisfied. Given the issues in dispute, leave to appeal should be granted to Trident Seafoods but the appeal dismissed with costs.

Trident Foods’ application NSD 2133/2019

61    Trident Foods applied for an extension of time and leave to appeal against the order of the primary judge allowing Trident Seafoods’ appeal, setting aside the decision of the delegate of the Registrar of Trade Marks disallowing Trident Seafoods’ opposition, allowing Trident Seafoods’ opposition application, and the consequential orders for Trident Foods to pay Trident Seafoods’ costs before the Trade Marks Office and in the appeal.

62    As noted, on 7 May 2013 Trident Seafoods filed Australian Trade Mark Application No 1555536 for the Trident Seafoods logo for goods in class 29: Seafood; processed seafood; edible oils; edible fish oils; nutritional oils for food purposes; edible oils and edible fish oils for use as ingredients in foods and beverages.

63    On 18 July 2014 Trident Foods filed Australian Trade Mark Application No 1635410 for the word TRIDENT for goods within class 29: “Coconut oil; Cooked meals consisting principally of fish; Edible oils; Fish products; Fish paste; Fish (not live); Food products made of fish; Food made from fish; Pastes containing fish; Tinned fish”; and class 30: “Fish sauce (condiments); Flavourings made from fish”. Trident Seafoods contended that the application should be rejected except for Class 29, in relation to pastes containing fish, and Class 30.

The primary judge’s reasoning

64    The primary judge identified the relevant statutory provisions at PJ [183] to [184], being ss 44 and 59 as follows:

44

(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

(iii)    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.

59

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.

65    The primary judge noted at PJ [185] that Trident Foods conceded the three elements of s 44(1) of the Act in that:

(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.

66    At this point it is convenient to interpolate that the primary judge had already decided that the first and second marks owned by Trident Foods should not be removed from the Register. Accordingly, those marks would remain and would block the registration of the Trident Seafoods mark. As a result, while s 44(1)(a)(ii) of the Act was engaged by the Trident Foods’ application, the Trident Seafoods’ application could not proceed to registration because of the earlier registered TRIDENT marks owned by Trident Foods.

67    The primary judge identified the relevant issues as:

(1)    whether the Registrar should accept the Trident Foods 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): [PJ [191];

(2)    whether the Trident Foods 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: PJ [192]; and

(3)    issues under s 44(3)(a) (concerning honest concurrent use of trade marks) and s 44(4) (concerning “continuous” use of the TRIDENT mark): PJ [193].

68    As to s 44(3)(a), which requires honest concurrent use of the two trade marks, the primary judge (rightly) said that the provision required the use of both marks, that is the TRIDENT mark and the Trident Seafoods mark. The primary judge said that as the Trident Seafoods mark has not been used in Australia, s 44(3)(a) could not apply: PJ [202].

69    As to s 44(4), the primary judge rejected Trident Foods’ argument that it could succeed if it could demonstrate continuous use of “closely related goods”: PJ [208]. The primary judge held that to succeed Trident Foods had to establish continuous use of goods that are “similar goods” to those the subject of Trident Seafoods, application, being “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”: PJ [209].

70    The primary judge said:

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.

71    We have explained above why the use by Manassen is use by Trident Foods, and thus disagree with the primary judge’s reasoning in [211].

72    As to s 44(3)(b) the primary judge, having recorded the competing submissions of the parties, said:

216 Following the approach of Lander J in Hills Industries [Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94; (2011) 214 FCR 396], 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 [sic] that precondition had not been satisfied.

73    As to s 59, the primary judge said:

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.

Trident Foods’ proposed appeal grounds - consideration

74    We have explained above that Manassen’s use is taken to be the use of Trident Foods as provided for in s 7(3) of the Act. Contrary to the primary judge’s conclusion at [217] Trident Foods did not merely acquiesce in Manassen using its marks. For the reasons given it should be inferred that Trident Foods authorised and controlled the use of the marks. As the primary judge concluded, however, s 44(3)(a) is inoperative because Trident Foods has not identified any concurrent use of by Trident Seafoods of its mark.

75    Section 44(3)(b), which involves a discretion, should be considered next. The primary judge proceeded on the basis that the discretion was to be exercised having regard to the fact that Trident Foods was not using the first and second marks (rather, the use was by Manassen other than as an authorised user) and, thereby, did not intend to use the mark the subject of the application. For the reasons already given, we disagree with the primary judge’s conclusion that Manassen was not an authorised user of the first and second marks. It necessarily follows that the primary judge’s exercise of the discretion under s 44(3)(b) miscarried. The same problem affects the primary judge’s approach to s 59 concerning Trident Foods’ intention to use the mark the subject of the application.

76    If, as we consider, Trident Foods is taken to have been using the first and second marks because Manassen was its authorised user of those marks, then there is no reason to infer that Trident Foods did not have an intention to use the mark the subject of the application in precisely the same way.

77    Even if Trident Foods was not using the first and second marks because Manassen was not an authorised user, there cannot be any doubt that when Trident Foods lodged its trade mark application it intended that Manassen be the authorised user of the mark.

78    First, the very act of applying for registration of the mark supports the inference that Trident Foods either intended to use the mark itself or has authorised or intended to authorise another person to use the mark. These are the only options permitting application under s 27(1)(b) of the Act and it is well-established that the filing of an application is prima facie evidence of an intention to use the mark: Aston v Harlee Manufacturing Company (1960) 103 CLR 391 at 401.

79    Second, the relevant intention is the subjective intention of the applicant: Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 at [161]. It is not to the point that, considered objectively (and assuming Manassen was not an authorised user of the first and second marks), Trident Foods may have misunderstood the law and not effectively constituted Manassen as an authorised user of the first and second marks. Given the circumstances of Trident Foods and Manassen, the former owning the marks and being a wholly owned subsidiary of the latter which was using the marks and the common directors between the two companies, it would not be inferred that Trident Foods’ subjective intention was for Manassen to be anything other than an authorised user of the marks.

80    Third, this inference applies with greater force to the mark the subject of Trident Foods’ trade mark application as the relevant subjective intention of Trident Foods for that mark is its use in the future. It would be odd, to say the least, to infer that Trident Foods subjectively intended Manassen to use the mark in some capacity other than as an authorised user of the marks for the purposes of the Act.

81    In Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 at [67] the Full Court said that “a very low threshold has been set with regard to intention to use in that the very act of making the application is, without more, sufficient to establish the requisite intention”. In the present case no circumstance displaced the presumption of Trident Foods’ intention to use the mark. As we have said, even if we are incorrect about Manassen being an authorised user of the first and second marks, the relevant subjective intention of Trident Foods was the future use of the mark the subject of the application. It could not reasonably be inferred that Trident Foods intended that Manassen would use the mark as anything other than an authorised user under Trident Foods’ control as to use given Trident Foods ownership of the mark.

82    Given that we consider the primary judge’s exercise of discretion under s 44(3)(b) involved error, it is necessary that we also consider the exercise of the discretion ourselves. In our view, there are compelling reasons why it would be concluded that because of other circumstances, it is proper that the mark the subject of Trident Foods’ application should proceed to registration. As we have said, the barrier to registration is Trident Seafoods’ application for a mark which cannot proceed to registration. In and of itself, that fact is a circumstance which makes it proper for the Trident Foods’ application to proceed to registration of the TRIDENT mark on the goods specified in the application.

83    Apart from this, we agree with Trident Foods’ submission that, contrary to the approach of the primary judge, the better view is that s 44(3)(b) involves an exercise of discretion in the circumstances as they exist at the time the discretion is exercised rather than as at the priority date of the application. While a different view was expressed in Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94; (2011) 214 FCR 396 at [177] to [178], no relevant distinction can or should be drawn between the discretions in s 44(3)(b) and s 101(3) in this regard. In Austin Nichols at [41] the Full Court said that the discretion in s 101(3) should be exercised having regard to the circumstances which apply at the time the discretion is exercised. Section 44(3)(b) calls for the same approach.

84    On this basis, and if it were necessary to identify other circumstances indicating that the TRIDENT mark the subject of the application should proceed to registration, we would call in aid the licence agreement dated 3 November 2017 which establishes Trident Foods’ intention that Manassen be an authorised user of the various TRIDENT marks and the fact that another Trident Foods application, No 1608153, for the TRIDENT mark for other foodstuffs had proceeded to registration after Trident Seafoods withdrew its opposition to that registration. The result was that Trident Foods was able to use its TRIDENT mark on a wide range of foodstuffs excluding, however, the foodstuffs which were exclusive to the trade mark application where registration had been prevented by Trident Seafoods application for a mark which could not itself proceed to registration.

85    In summary, as to s 44(3)(b) we consider that the submissions of Trident Foods to the primary judge in support of its mark proceeding to registration as follows should be accepted:

(1)    The Trident Seafoods 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 application will not proceed to registration.

(2)    The Trident Foods 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 application (18 July 2014) does not predate the priority date of the Trident Foods’ registered mark Nos 266625, 400953 and 400954.

(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 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 Foods’ 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.

(8)    The recent registration of trade mark No 1608153 for TRIDENT in classes 29 and 30 which proceeded to registration on 18 January 2018 after Trident Seafoods withdrew its opposition to it in the period between the hearing before the primary judge and the date of the judgment.

86    In these circumstances it is unnecessary to deal with s 44(4) and apparent that the opposition based on s 59 of the Act cannot succeed.

Conclusions

87    Trident Foods should be granted an extension of time and leave to appeal and its appeal should be allowed.

Associate:

Dated:    20 June 2019