In brief 6 min read
It can be troubled waters all round when an offshore giant attempts to take on a longstanding local user of a mark.
How does it affect you?
- This case illustrates the difficulties large offshore food and beverage brands may encounter when attempting to enter the Australian market, particularly where there is a longstanding local user of the same or a similar mark.
- It also confirms the strict approach the courts take when determining whether use of a trade mark by a licensee (including within the same corporate group) has been ‘under the control of’ the trade mark owner.
- Owners of food and beverage trade marks should be aware that the use of the mark in respect of an ingredient will not normally amount to use in respect of the ‘product’ the subject of the trade mark.
Which ‘Trident’ is which?
Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490 is the third decision in a longstanding trade mark feud between Trident Seafoods Corporation (TSC) and Trident Foods Pty Ltd (Trident Foods) over the right to use the word mark TRIDENT for seafood products.
TSC is the biggest seafood company in the United States, and one of the largest vertically integrated seafood distributors internationally. Its house brand, TRIDENT SEAFOODS, harvests, processes, markets and distributes fresh, tinned and frozen seafood products. TSC has not to date attempted to sell seafood products in Australia using the Trident Seafoods logo, but has rather sold its products in Australia under the brand BOUNTIFUL.
Australian brand Trident Foods first filed for registration of the word mark TRIDENT in relation to seafood products on 15 March 1973, the year of the company’s founding. The TRIDENT brand is traditionally known for its Asian flavours and ingredients, like sweet chili sauce or coconut milk, but has a high penetration in the Australian market for a variety of different food products. Manassen Foods Australia Pty Ltd (Manassen) acquired Trident Foods in 2000, and has sold TRIDENTbranded products since that time. However, it wasn’t until 2017 that Manassen was officially authorised to do so via a formal trade mark licence agreement.
Background
On 7 May 2013, TSC filed a trade mark application for its TSC logo in class 29 in respect of seafood and edible oils (among other things), which was refused by the Registrar of Trade Marks on the basis of three prior trade mark registrations for ‘TRIDENT’ held by Trident Foods.
Consequently, TSC initiated non-use removal actions under section 92(4) of the Trade Marks Act 1995 (Cth) against those three Trident Foods trade mark registrations for the non-use period of 7 January 2011 to 7 January 2014. Trident Foods opposed the removal actions. One registration was successfully removed for non-use by the Registrar of Trade Marks, while two remained on the Register as per the delegate’s discretion. TSC unsuccessfully appealed this decision.
In July 2014, TSC further opposed an application by Trident Foods for the word mark TRIDENT in class 29 (in respect of coconut oil, food made from fish and tinned fish, among other goods) and class 30 (in respect of fish sauce (condiments)). TSC was unsuccessful in its opposition, both at first instance and on appeal.
The Federal Court decision
On appeal to the Federal Court from the delegate of the Registrar of Trade Marks, Justice Gleeson found that Trident Foods had not used two of the trade marks in relation to ‘fish’ or ‘fish products’ during the relevant non-use period. This was the case even though TRIDENTbranded products had been sold by Manassen with Trident Foods’ express knowledge and permission since 2000.
In particular, Justice Gleeson pointed to the fact that their corporate relationship was not one whereby Trident Foods could exercise quality or financial control over Manassen. Rather, the mere fact Trident Foods owned the trade marks that Manassen placed on products it supplied did not prove use of the trade mark by Trident Foods, even though the parties had formalised their licence arrangement in 2017.
Although TSC was able to establish non-use of Trident Foods’ TRIDENT trade marks during the relevant period, the two registrations were not removed. Crucially, Justice Gleeson exercised the discretion as per s101(3) of the Trade Marks Act to keep the two registrations on the Register.
TSC partially succeeded in opposing registration of Trident Foods’ pending application, with the application allowed to proceed to registration for limited goods only.
Significance for the food industry
This case demonstrates just how careful food companies need to be to ensure that they are using their trade marks as registered. For example, the trade mark should be used in respect of the ‘products’ the subject of the registration, rather than those products only being contained as ingredients. One of the issues in the first appeal before Justice Gleeson was which goods fell within the description of ‘fish’ and ‘fish products’, as per Trident Foods’ trade mark registrations in class 29. Her Honour determined that ‘fish products’ referred to seafoods (including molluscs), crustaceans and foods that were prepared from seafoods. Trident Foods tried to rebut the allegation made under s92(4)(b) by arguing that the application of a trade mark to goods containing an ingredient is a use of the trade mark ‘in relation to’ that ingredient. However, Justice Gleeson clearly stated that the application of a trade mark to a particular food product is use in relation to the goods only, and not to the ingredients from which the goods are made more broadly. That said, a product like fish sauce might still be classified as a seafood product, as the main ingredient is fish.
Justice Gleeson’s decision also illustrates that even establishing nonuse of a trade mark does not necessarily mean its registration will be removed. Crucially, Her Honour’s focus on public policy, the parties’ conduct after the relevant non-use period had concluded, and the general perceptions of the consumer, were key in outweighing the non-use removal application.
First, after the non-use period, Trident Foods began to sell new fish products in Australia bearing the TRIDENT trade mark (such as tinned mussels), which did constitute ‘use’ of the trade mark. While clearly a reaction to the ongoing court battles it was facing, Her Honour did not believe Trident Foods’ actions lacked good faith. If anything, Her Honour was content that Trident Foods still had an intention to use the mark on the relevant goods, and that the changing use of the trade marks in relation to seafood products reflected the varied circumstances of the marketplace.
Second, Justice Gleeson stipulated that it was in the public interest to keep the TRIDENT marks on the Register, due to the residual reputation in the trade marks. Indeed, consumers were likely to associate the mark with Trident Foods, fish products and the group of companies of which it is a member. The removal of Trident Foods’ registrations and any use of TSC’s trade mark in the future was likely to confuse consumers, as the reputation of the TRIDENT mark had already been created by Manassen (with Trident Foods’ knowledge and express permission).
The outcome at this stage is that international seafood giant TSC is unable to sell fish products under its desired brand in Australia. The trade mark battle between the two Tridents shows that it can be troubled waters all round when an offshore giant attempts to take on a longstanding local user of a mark.