INSIGHT

Unity of porpoise means no mere aqua-escence in latest Trident decision

By Amelia van der Rijt
Food & Beverage Patents & Trade Marks

In brief 4 min read

The latest appeal decision in a longstanding trade mark feud between US-based seafood giant Trident Seafoods Corporation and Australian company Trident Foods Pty Ltd has eased the burden of establishing authorised use of a trade mark by companies within the same corporate group. Lawyer Amelia van der Rijt and Intern Taylah Gray discuss.

How does it affect you?

  • Where members of a corporate group act with a 'unity of purpose' in respect of a trade mark owned by one member but used by another, this can be consistent with the existence of control by the trade mark owner and not 'mere acquiescence' in the use.
  • Applying your trade mark to a product with an essential ingredient protected by the classes for which your mark is registered might constitute a sufficient 'use' of the mark.
  • While best practice is to use your mark in respect of the goods for which it is registered, continuing to use a mark in respect of related products could also assist you in retaining a residual reputation in respect of the products for which your mark is registered.

Who's who?

Trident Foods Pty Ltd (Trident Foods) is an Australian company, and the registered owner of two TRIDENT word marks in respect of fish and fish products. It first filed for registration of the word mark TRIDENT in relation to seafood products in 1973, the year of the company's founding. Manassen Foods Australia Pty Ltd (a related company) (Manassen) acquired Trident Foods in 2000 and, since that time, has sold TRIDENT-branded products, notwithstanding that Trident Foods continued to own the marks. It wasn't until 2017 that a formal trade mark licence agreement was entered into by Trident Foods and Manassen.

Trident Seafoods Corporation (Trident Seafoods) is the biggest seafood company in the United States and is a large international seafood distributor. In 2014, Trident Seafoods challenged Trident Foods' registration for the TRIDENT marks on the basis of non-use.

Use of a mark: unity of purpose indicative of actual control

The Full Federal Court overturned Justice Gleeson's first instance decision that Trident Foods did not relevantly use the TRIDENT marks during the non-use period. The key question for the Full Court was whether Trident Foods, even as Manassen's subsidiary, had actual control over Manassen's use of the marks.

Justice Gleeson had found that Trident Foods 'merely acquiesced' to Manassen's use of the marks, since the corporate relationship did not allow Trident Foods to exercise the necessary quality or financial control over Manassen. The Full Court disagreed, however, saying it must be inferred from the evidence that the two companies operated with a 'unity of purpose' consistent with actual control, since:

  • at all relevant times, Trident Foods and Manassen had the same directors;
  • Trident Foods' directors had obligations to ensure the marks continued to be of value to that company;
  • the purpose of the directors of Trident Foods and Manassen was common: namely, to maximise sales and enhance brand value;
  • it was not surprising that Trident Foods could produce no particular illustration of actual control, given the commonality of directors;
  • the fact that Manassen's packaging acknowledged that Trident Foods owned the TRIDENT marks supported the inference that Trident Foods had control of its marks; and
  • it was 'inconceivable' that Manassen was using the marks without Trident Foods' knowledge, consent and authority, given the corporate relationship.

For the Full Court, the idea that two companies with common directors could 'merely acquiesce' to use of the marks was 'alien' and 'commercially unrealistic'. The Full Court's decision in this respect is a helpful and pragmatic one which recognises the commercial reality of trade mark owners operating within corporate groups.

What's a fish?

The Full Court's decision in this respect is a helpful and pragmatic one which recognises the commercial reality of trade mark owners operating within corporate groups.

Trident Seafoods argued Justice Gleeson had erred in treating 'fish' and 'fish products' as including mussels, oysters, prawns and crabs. The Full Court, however, agreed with Justice Gleeson's assessment, noting both the Nice Classifications and Oxford English Dictionary extend the definition of 'fish' to include 'various aquatic animals', such as cetaceans, crustaceans and molluscs.

The Full Court did, however, overturn Justice Gleeson's finding that there was no use of the TRIDENT mark on Trident Foods' Tom Yum Goong Flavour Thai Noodle Soup, since 'goong' in Thai means 'prawn'. Similarly, the Full Court found there was a 'use' of the mark on Fish Stir Fry Sauce.

The Full Court's decision suggests that applying your trade mark to a product with an essential ingredient protected by the classes for which your mark is registered might constitute a sufficient 'use' of the mark.

 

Shore-ing up residual reputation

While it was not necessary to the decision to refrain from removing Trident Foods' marks, the Full Court agreed with Justice Gleeson's finding that Trident Foods had a residual reputation in fish and fish products. While the Full Court relied on a number of factors in coming to this conclusion, some relevant considerations included:

  • The 'abundance' of products sold by Trident Foods and Manassen with fish or fish products as an essential ingredient;
  • The TRIDENT brand had become closely associated with Asian flavours and ingredients, in which seafood products 'play a prime role'; and
  • Recipes on TRIDENT branded products incorporated seafood products.

While best practice is to use your mark in respect of the goods for which it is registered, the Full Court's decision suggests that continuing to use your mark in respect of related products might also assist to shore up your residual relationship in respect of the products for which your mark is registered.