A trade mark can survive a non-use attack even when the registered owner cannot initially prove that it used the mark during the relevant period. It can also be used by a related company without a formal written licence and, in the right circumstances, still amount to use by the registered owner.
Those issues sat at the centre of the long-running dispute between Trident Seafoods Corporation and Trident Foods Pty Limited. What began as an attempt by a United States seafood company to clear older Australian TRIDENT registrations from the Register eventually produced two Trade Marks Office decisions, two appeals to the Federal Court and a further appeal to the Full Court.
The litigation reached an important conclusion about trade marks used within corporate groups. Although Trident Foods was a subsidiary and its parent company, Manassen Foods Australia Pty Ltd, was the company actually selling the TRIDENT branded goods, the Full Court held that Manassen’s use could be treated as authorised use by Trident Foods. The existing registrations therefore survived, and Trident Foods was also permitted to register a further TRIDENT mark.
Background of the dispute
Trident Foods has a long history in the Australian food market. The word mark TRIDENT was registered in 1973 for “fish and fish products” in Class 29 under trade mark registration no. 266625. A second TRIDENT registration, no. 400953, was obtained in 1983 for a broader range of Class 29 goods including meat, fish, poultry and game, with specific references to sardines, mackerel, pilchards, crab, oysters, mussels and prawns. A third registration, no. 400955, covered goods in Class 31.
Trident Seafoods Corporation is a US seafood company. On 7 May 2013 it applied in Australia to register a TRIDENT SEAFOODS logo for seafood, processed seafood and various edible oils in Class 29.
That application encountered Trident Foods’ existing registrations.
Trident Seafoods first sought consent from Trident Foods. When consent was not provided, it filed applications on 7 February 2014 seeking removal of the three earlier TRIDENT registrations for non-use. The relevant non-use period was 7 January 2011 to 7 January 2014.
The dispute then developed a second branch. On 18 July 2014, while the non-use proceedings were underway, Trident Foods filed a new application, no. 1635410, for the word TRIDENT. It covered goods including coconut oil, cooked meals consisting principally of fish, fish products, fish paste, tinned fish and edible oils in Class 29, together with fish sauce and flavourings made from fish in Class 30.
Trident Seafoods opposed that application.
The result was that the parties were fighting on two fronts. Trident Seafoods was trying to remove Trident Foods’ older registrations so that its own application could move forward, while also trying to prevent Trident Foods from securing a new registration for TRIDENT.
The first Trade Marks Office decision: Non-use established, but the marks survived
The first decision was Trident Seafoods Corporation v Trident Foods Pty Ltd [2016] ATMO 45.
The evidence presented a problem for Trident Foods. Although there was a substantial history of TRIDENT branded products in Australia, much of the evidence concerning the relevant goods was undated or insufficiently specific. The delegate was unable to determine whether the relevant marks had actually been used for the relevant goods during the statutory non-use period. Trident Foods therefore failed to discharge its burden of establishing use.
Ordinarily, that finding places a registration in serious difficulty. Section 101(3) of the Trade Marks Act 1995 (Cth), however, gives the Registrar a broad discretion not to remove a trade mark even where the ground of non-use has been established.
The delegate exercised that discretion for registrations 266625 and 400953.
Several matters were important. Trident Foods had not abandoned the TRIDENT marks. There was a longstanding reputation associated with the brand, there had been sales following the end of the non-use period, and the delegate considered that removing the registrations could create a risk of consumer confusion if Trident Seafoods entered the Australian market using its own TRIDENT branding. The delegate concluded that it would not be in the public interest to remove the two Class 29 registrations.
Registration 400955 was different. There was no comparable evidence concerning the Class 31 goods, which included grains, living animals, fresh fruit and vegetables, seeds, plants, flowers and malt. That registration was removed.
The second Trade Marks Office decision: The new TRIDENT application
The second proceeding resulted in Trident Seafoods Corporation v Trident Foods Pty Limited [2017] ATMO 39.
This time, Trident Seafoods relied principally on sections 44 and 59.
The section 44 issue appeared, at first, to favour Trident Seafoods. Its earlier application had an earlier priority date, the respective goods overlapped, and the delegate found the marks deceptively similar. The word TRIDENT was the essential and striking feature of the Trident Seafoods logo, while Trident Foods’ application was simply for TRIDENT as a word mark. The delegate considered there to be a real and tangible danger of confusion.
That did not end the matter.
Under section 44(3)(b), an application may nevertheless be accepted where, because of “other circumstances”, it is proper to do so. The delegate relied on Trident Foods’ two earlier TRIDENT registrations, its long history of use across numerous food products, its significant Australian sales and the substantial effort it had made to protect its brand. The discretion was exercised in Trident Foods’ favour.
The section 59 allegation, that Trident Foods lacked a genuine intention to use the new mark, also failed. The delegate was not prepared to infer from the timing of the application and the relatively small quantities of fish products sold that the use was merely strategic rather than genuine commercial activity.
The application was therefore permitted to proceed.
The dispute reaches the Federal Court
Trident Seafoods appealed both decisions to the Federal Court. The two matters were determined together by Gleeson J in Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490.
Importantly, an appeal from a Registrar’s decision of this kind is heard as a hearing de novo. The Court determines the matter for itself rather than merely examining the delegate’s decision for legal error.
The Federal Court reached different conclusions on the two appeals.
What did “fish and fish products” actually cover?
Before dealing with use, the Court had to determine the scope of Trident Foods’ older registrations.
Trident Seafoods argued for a relatively narrow understanding of “fish and fish products”. Gleeson J disagreed.
Her Honour considered the Nice Classification applicable at the dates when the registrations were obtained, together with dictionary meanings, and concluded that the relevant descriptions extended to seafood including molluscs and crustaceans. Mussels, oysters, prawns and crabs could therefore fall within the registrations.
That did not mean that any food containing fish automatically became a “fish product”.
The Court drew an important distinction between a product and its ingredients. Applying a trade mark to a particular food generally constitutes use in relation to that food, not separately in relation to every ingredient it contains. A noodle soup containing some fish sauce or shrimp, for example, would not necessarily amount to use of the mark for “fish products”.
This part of the decision is a useful reminder that the wording of a trade mark specification matters greatly in non-use proceedings. It is not enough to identify some connection between the product being sold and the registered goods.
Who was actually using TRIDENT?
A more difficult issue arose because Trident Foods itself was not selling the products.
Since around 2000, sales of TRIDENT branded products had been undertaken by its parent company, Manassen. Trident Foods remained the registered owner of the trade marks, but the commercial activity was occurring through another group company.
Under sections 7 and 8 of the Act, use by an authorised user can be treated as use by the registered owner. The critical question was whether Manassen was using TRIDENT “under the control of” Trident Foods.
There were several features suggesting a close relationship. The companies shared directors, formed part of the same corporate group, operated within a group-wide quality framework, and products identified TRIDENT as a registered trade mark of Trident Foods. In 2017, the companies also entered into a written licence which stated that an unwritten licensing arrangement had existed since 2000.
Gleeson J nevertheless found the evidence insufficient to establish the required actual control during the relevant period.
The corporate relationship alone did not establish control by the subsidiary over its parent. Nor was there enough evidence of Trident Foods actually directing or supervising Manassen’s use of the marks. The later written licence could not, by itself, prove that the necessary control had existed years earlier.
Accordingly, Manassen’s use was not treated as authorised use by Trident Foods for the relevant period.
Non-use was established, but the Federal Court still refused removal
Despite that conclusion, Trident Seafoods still did not obtain removal of registrations 266625 and 400953.
Gleeson J exercised the discretion under section 101(3) to leave them on the Register.
The Court accepted that there had been later sales of TRIDENT branded tinned tuna, smoked mussels and smoked oysters. Those sales had occurred in reaction to the non-use proceedings and were relatively limited, but the Court was not satisfied that they were sham transactions or merely “colourable” use. They were genuine commercial sales. Trident Foods also intended to use the mark for tinned mackerel, the relationship with Manassen had since been formalised through a licence, and TRIDENT continued to have a substantial reputation across a broad range of food products.
The possibility of confusion was also significant. The Court considered that consumers could associate TRIDENT branded food products with a single commercial source and could therefore be confused if Trident Seafoods began selling seafood under its TRIDENT SEAFOODS logo.
Trident Seafoods’ appeal concerning the old registrations was therefore dismissed.
Trident Seafoods succeeds on the new application
The result was different in relation to Trident Foods’ 2014 application.
Gleeson J accepted that section 44 was engaged. Honest concurrent use under section 44(3)(a) was unavailable because Trident Seafoods had not itself used its mark in Australia. The Court also rejected reliance on prior continuous use under section 44(4), finding a substantial gap in relevant fish and seafood sales.
There was one powerful circumstance in Trident Foods’ favour. Trident Seafoods’ earlier application, which was creating the section 44 obstacle, was itself prevented from registration by Trident Foods’ surviving earlier registrations.
Even so, Gleeson J declined to exercise the section 44(3)(b) discretion. Her Honour’s earlier finding concerning Manassen was decisive. As Trident Foods had not itself used the mark and had not established authorised use by Manassen at the relevant time, the Court considered that a fundamental requirement for registration had not been satisfied.
For similar reasons, Trident Seafoods succeeded under section 59. The Court inferred that, at the priority date, Trident Foods did not intend itself to use, or validly authorise the use of, the mark in relation to the specified goods.
The first appeal was therefore dismissed, preserving the older registrations, while the second appeal was allowed in favour of Trident Seafoods.
That split result set the stage for the Full Court.
The Full Court takes a different view of authorised use
In 2019, Trident Seafoods sought leave to appeal the refusal to remove the older marks. Trident Foods, in turn, sought an extension of time and leave to appeal the decision preventing its new application from proceeding.
The Full Court, comprising Reeves, Jagot and Rangiah JJ, granted leave in both matters. Trident Seafoods’ appeal was dismissed. Trident Foods’ appeal was allowed, and application no. 1635410 was ordered to proceed to registration.
The most significant difference concerned the relationship between Trident Foods and Manassen.
The Full Court considered that too much emphasis had been placed on whether Trident Foods, as a subsidiary, could control Manassen as its parent company. That was not the statutory question. The question was whether Trident Foods controlled Manassen’s use of the trade marks.
The companies had the same directors. Trident Foods owned the marks, while Manassen sold the goods. The Full Court considered it commercially unrealistic, in those circumstances, to treat Trident Foods as merely passively acquiescing in its parent’s use.
The common directors had obligations relating to the value of Trident Foods’ assets, including its trade marks. Both companies operated with a common commercial purpose of maintaining and enhancing the TRIDENT brand. That “unity of purpose”, together with the corporate relationship and common directorships, supported an inference of actual control over use of the marks.
The Court went further. It considered it inconceivable that Manassen had been using the marks without Trident Foods’ knowledge, consent and authority. The active consent and authority amounted to an unwritten licence.
Manassen was therefore an authorised user. Its use was taken under section 7(3) to be use by Trident Foods itself. As a result, the statutory condition necessary for removal under section 92(4)(b) had not been established at all.
The old registrations survived for an even more fundamental reason than the discretionary basis relied upon by Gleeson J.
The Full Court also found no error requiring intervention in the way Gleeson J had exercised the section 101(3) discretion. In particular, the later use of the marks on fish products could legitimately be taken into account, even though it had followed the commencement of the non-use proceedings. The fact that the use was reactive did not make it commercially artificial or lacking in good faith.
The Full Court reverses the result on the new TRIDENT application
The authorised use finding also changed the outcome of the second proceeding.
Gleeson J’s reasoning under sections 44(3)(b) and 59 had depended heavily on the conclusion that Manassen was not an authorised user. Once the Full Court rejected that conclusion, much of the foundation for refusing Trident Foods’ new application disappeared.
The Full Court also made an important point about intention to use.
Filing an application is prima facie evidence that the applicant intends to use the mark itself or intends to authorise someone else to use it. Given the relationship between Trident Foods and Manassen, the Court saw no proper basis for concluding that Trident Foods intended Manassen to use the new mark in some legally unauthorised capacity. The threshold for establishing an intention to use is relatively low, and the evidence did not displace it.
There was also a broader issue concerning section 44(3)(b).
The Full Court held that the “other circumstances” discretion should be exercised by reference to circumstances existing when the discretion is actually exercised, rather than being confined to circumstances existing at the application’s priority date.
That mattered considerably here.
By the time the discretion was being exercised, Trident Foods’ older registrations had survived the non-use attack. Trident Seafoods’ application therefore remained blocked by those registrations and could not itself proceed to registration. The Full Court considered it difficult to justify allowing that pending application to prevent Trident Foods from registering its own mark.
The later 2017 licence agreement and the registration of another TRIDENT application after Trident Seafoods withdrew its opposition were also circumstances capable of being considered.
The Full Court therefore ordered that Trident Foods’ application no. 1635410 proceed to registration. Its appeal was allowed, while Trident Seafoods’ appeal concerning the older registrations was dismissed.
Commercial significance
The decision shows that non-use proceedings involve considerably more than checking whether invoices exist during a particular three-year period.
Firstly, evidence remains critical. Trident Foods encountered difficulty at the outset because much of its evidence was undated or insufficiently connected to the relevant goods and the relevant period. A brand owner defending a non-use application should be able to produce dated invoices, packaging, catalogues, advertising material, sales records and other evidence tying the mark to the precise goods or services covered by the registration.
Secondly, use within a corporate group needs careful attention. The Full Court did not establish a rule that use by any related company automatically counts as use by the registered owner. The question remains one of actual control. However, common directors, shared commercial purposes, knowledge and authorisation of the use, and the manner in which the businesses operate may together support an inference of control even where the registered owner is a subsidiary of the company making the sales.
The safer course remains to put appropriate licensing and quality control arrangements in place from the outset. Trident Foods ultimately succeeded, but only after years of proceedings in which the absence of a contemporaneous written licence became a central issue.
Thirdly, use after a non-use period can still matter. It will not retrospectively create use during the statutory period, but it may be highly relevant to the discretionary question under section 101(3). A genuine return to commercial use, an existing reputation and the prospect of marketplace confusion can justify leaving an otherwise vulnerable registration on the Register.
Fourthly, the Full Court’s approach to section 44(3)(b) confirms that the discretion is not necessarily frozen at the priority date. Later developments may affect whether it is ultimately “proper” to accept an application. That can be especially important in long-running opposition proceedings where the position of related registrations or applications changes while the dispute is underway.
Finally, the case illustrates the importance of looking closely at the goods covered by older registrations. Historical versions of the Nice Classification may assist in construing older specifications, but a connection at the level of ingredients will not automatically amount to trade mark use for those ingredients.
The TRIDENT litigation ultimately came down to a distinction that is easy to overlook. The entity whose name appears on the Register does not necessarily have to be the entity issuing every invoice or putting every product on a supermarket shelf. What matters is whether the commercial use of the trade mark can, under the Act, properly be attributed to its registered owner. In this case, the Full Court concluded that it could.
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