Trident Seafoods Corporation v Trident Foods Pty Limited

[2019] ATMO 22

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Trident Seafoods Corporation to registration of trade mark application 1800705 (29, 30) – TRIDENT (Device) - in the name of Trident Foods Pty Limited

Delegate:	Nicholas Smith
Representation:	Opponent: Written Submissions by Terry Trade Mark Attorneys Applicant: Shauna Ross of Counsel instructed by IP Solved (ANZ) Pty Ltd
Decision:	2019 ATMO 22 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 and 59 considered – neither established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Trident Seafoods Corporation (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Trident Foods Pty Limited (‘Applicant’): 

Application Number:	1800705
Filing Date:	5 October 2016
Goods:	Class 29: Canned milk; canned vegetables; canned soups; cheese; cheese mixtures; chicken (not live); chicken stock; chilli; chop suey; Chow Mein; coconut butter; coconut cream; coconut milk for cooking; consommes; cooked meals consisting principally of meat; cooked meals consisting principally of vegetables; cooked meat dishes; cooked vegetables; dairy products; dried fruit; dried fruit products; vegetable food products; dried soup; dried vegetables; tinned vegetables; food preparations having a base of vegetables; fruit-based snack foods; mixed vegetables; peanut paste; preparations for making soup; prepared meat dishes; prepared vegetable products; relishes (pickles); soups; soup mixes; soup preparations; 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; chilli Class 30: Chutneys; barbecue sauce; bakery products; batter mixes; condiments; pastries consisting of vegetables and meat; couscous; crackers; curry mixes; curry paste; curry sauces; curry spices; dried pasta; dressings for food; flavourings in the form of concentrated sauces; foodstuffs made of rice; foodstuffs made from farinaceous products; instant noodles; mixes for preparing sauces; miso (seasoning); noodles; pasta; pappadums; pasta containing fillings; pasta products; pasta sauce; pastry for spring rolls; pastries; pizza; sambals; preparations made from cereals; prepared meals containing (principally) rice; prepared meals containing (principally) pasta; preserved herbs (seasonings); rice; rice based snack foods; rice crackers; salt for cooking; table salt; salad dressings; samosas; sauces (condiments); savoury sauces; satay sauces; sauce mixes; sauces in a pouch; seasonings; snack food products made from rice; sesame snacks; snack foods made from cereals; soy sauce; spice mixes; spice preparations; spring rolls; sweet and sour sauce; tabouleh; tacos; tea (not medicinal); tomato sauce; vegetable pastes (sauces); vegetable purees (sauces); vinegar; wontons; fish sauce (condiments); flavourings made from fish; chilli sauce (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)

2. Following the advertisement on 2 March 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 2 May 2017.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 1 June 2017. The SGP raised the ground of opposition under s 44 of the Act. The Applicant filed a Notice of Intention to Defend on 29 June 2017.

3. On 24 October 2018, as part of its submissions the Opponent sought to amend its SGP to add the ground of opposition under s 59 of the Act. Further correspondence on this point was exchanged between the parties on 26 and 29 October 2018 respectively. The issue of the addition of the s 59 ground is dealt with later in the decision.

Evidence

4. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 4 October 2017.  This evidence consists of a declaration by Albert Terry, trade mark attorney with Terry Trade Mark Attorneys, the Opponent’s representative, made on 4 October 2017 together with Annexures AT-1 and AT-2 (‘Terry Declaration’).

5. The Applicant filed Evidence in Answer (‘EIA’) on 10 January 2018.  This evidence consists of a declaration made on 10 January 2018 by Helen Peachy, trade mark attorney with IP Solved Pty Ltd, the Applicant’s representative, with Exhibits HP-1 to HP-6 (‘Peachy Declaration’).  The Opponent chose not to file evidence in reply

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 3 May 2018 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 7 November 2018 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 4 September 2018 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 24 October 2018 (‘Opponent’s Submissions’) and indicated that they would not be present at the oral hearing.  The Applicant filed written submissions on 31 October 2018 (‘Applicant’s Submissions’).  Due to illness of Counsel the hearing was postponed to 30 January 2019 and held in Sydney.  At the hearing Shauna Ross of Counsel represented the Applicant, appearing in person.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.[1]  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

[1] I note that the Opponent’s Submissions appear to refer to a discretion in s 55 to refuse to register the mark even if the grounds on which the Trade Mark was opposed have not been established. I have been provided with no submissions that suggest that this discretion exists, but even if it does I have not been provided with a basis to apply it.

The Opponent

8. The EIS provides no information about the Opponent other than that it is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1555536	7 May 2013	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

The Applicant

9. The EIA provide no details of the Applicant. 

10.     The Peachy Declaration contains a series of extracts from searches of the Register of Trade Marks, corresponding to the searches conducted by the Examiner at this office at the time of examination.

Grounds of Opposition, Onus and Standard of Proof

11. As indicated above in the SGP the Opponent nominated the ground of opposition under s 44 of the Act. To successfully oppose the application the Opponent needs to establish the s 44 ground, or the Registrar needs to allow the amendment to the SGP and the Opponent needs to establish the s 59 ground of opposition.

12.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 5 October 2016 (‘relevant date’), being the priority date of the application in Australia.[4]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

13. The relevant provisions s 44 of the Act s 44 are reproduced below:

Section 44 - Identical etc. trade marks

(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)it 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.

Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).

(2)…

(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. 

Note:  For limitations see section 6.

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

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

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

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

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

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

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

2. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  I consider that at least some of the goods for which the Opponent’s Trade Mark is registered are similar to some of the Applicant’s Goods, as both marks are for various forms of edible oil and seafood products.  The first and third requirements are satisfied. 

   Substantially identical and/or deceptively similar

   17.      Although the Opponent did not specifically assert that the respective trade marks are substantially identical in the SGP, I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

   [5] (1963) 109 CLR 407, [12].

   18.     The Trade Mark and the Opponent’s Trade Mark are set out below:

   19.     On a side by side comparison there are clear differences between the respective trade marks in that one consists of a stylized device of some form, that while the other consists of a trident device along with various other elements.  While the Opponent submits that the Trade Mark depicts a trident, in the absence of a shaft the Trade Mark does not give the impression of being a trident, rather the impression in the abstract is of a three-headed crown or three arrows pointing upwards.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

   20.      The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[6]

   [6] Ibid [13].

   21.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[11]

   [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [11] [2012] FCA 1022, [38]-[46].

   22.      The Opponent’s Submissions on the issue of deceptive similarity focus strongly on the conceptual impression conveyed by the respective marks.  The Opponent submits that the Trade Mark depicts a trident, while the Opponent’s Trade Mark consists of a trident and the word ‘trident’.  The Opponent notes that a word and an equivalent pictorial representation may be found to be deceptively similar given that they create the same overall impression.

   23.      The Applicant’s Submissions set out the number of differences between the marks that are apparent visually.  The Applicant then submits that given the various elements in the mark including the word ‘seafoods’, the Trade Mark does not convey the sole idea of a trident.

   24.      While I accept the principle outlined in the Opponent’s Submissions that a device mark and a word that describes the device mark can be deceptively similar, the Opponent’s Submissions overstate the conceptual similarity between the marks; the respective marks that are being compared here are not a device that is clearly a trident and the word ‘Trident’.  As such, the Opponent’s reference to Constellation Australia Limited v Littore Family Wines Pty Ltd[12] does not assist – that involved the comparison between a device mark and a word mark that perfectly described the device element.

   [12] [2011] ATMO 47.

   25.      In this matter, the device that constitutes the Trade Mark could, in the absence of a shaft, be seen as a three-pronged fork or three arrows in a semi-circular pattern or a stylised crown. There are no words in the Trade Mark to give context to the device element and without such I do not think that it is obviously a trident.  The ambiguity of the device element in the Trade Mark coupled with the fact that the Opponent’s Trade Mark is comprised of various elements is such that I find that the marks are sufficiently visually and conceptually different when considered as wholes.  Even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark. 

   26. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 59

   27. The Opponent has sought, under r 5.12 of the Trade Marks Regulations 1995, to amend the SGP to add a ground of opposition under s 59 of the Act.

   28. Section 59 of the Act is reproduced below:

   59 - Applicant not intending to use trade mark

   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.

   29.     The basis for the request to amend (and the ground itself) is the recent Federal Court decision in Trident Seafoods Corporation v Trident Foods Pty Ltd[13] and in particular a finding at [100] that the use of the trade mark TRIDENT by the Applicant’s parent company Manassen Foods Australia Pty Ltd was not authorized used under the meaning of s 8 of the Act.

   [13] [2018] FCA 1490

   30. This issue can be dealt with simply. Even if I were inclined to grant the request to amend the SGP to allow consideration of the s 59 ground of opposition, there is no evidence before me that would allow the Opponent to establish this ground. The conclusion reached by the Federal Court in Trident Seafoods Corporation v Trident Foods Pty Ltd[14] relates to a separate mark and is made on the basis of evidence that is not before the Registrar. The onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention.[15] Given the absence of any evidence in support of the s 59 ground before me, no such prima facie case has been established or could be established. Consequently the Opponent has failed to establish a ground of opposition pursuant to s 59 of the Act.

   [14] [2018] FCA 1490

   [15] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] 75 IPR 478, [160]-[163].

   Decision

   31.      The Opponent has failed to establish any of the grounds of opposition it pursued at the hearing.  Trade Mark application no. 1800705 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

   32. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   12 February 2019