Trident Seafoods Corporation v Trident Foods Pty Limited

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 1635410 – TRIDENT - in the name of Trident Foods Pty Limited

Delegate: Bianca Irgang

Representation: Opponent: Andrew Fox of Counsel instructed by Terry Trade Mark Attorneys
Applicant: Sue Chrysanthou of Counsel instructed by IP Solved

Decision: 2017 ATMO 39
Trade Marks Act 1995 - Section 52 opposition: sections 44 and 59 pressed –no ground of opposition established.
Background

Trident Foods Pty Limited (‘the applicant’), filed trade mark application number 1635410 on 18 July 2014 in classes 29 and 30 of the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark:  TRIDENT (the ‘Trade Mark’)
Trade mark application no: 1635410
Filing Date:  18 July 2014
Specification:  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
Class 30:Fish sauce (condiments); Flavourings made from fish
Endorsements:                    Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.
Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 12 February 2015. Subsequently Trident Seafoods Corporation (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars[1].
[1] Taken together I will refer to them as the ‘Notice’.
The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 25 January 2017. The opponent was represented by Andrew Fox of Counsel instructed by Terry Trade Mark Attorneys. The applicant was represented by Sue Chrysanthou of Counsel instructed by IP Solved (ANZ) PTY. LTD. Both parties’ representatives made oral and written submissions.
Grounds of Opposition
The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Only those grounds under sections 44 and 59 were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3] Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services, there is no requirement for me to consider the other grounds of opposition.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[3] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133]
In any event, the other grounds under the Act would be available to the opponent should this decision be appealed to the court.
Evidence
The evidence in this matter consists of the following declarations being:
Opponent’s Evidence
·Declaration of Albert Terry (“Terry 1”) dated 14 January 2015 with annexures AT-1 to AT-28
·Declaration of Albert Terry (“Terry 2”) dated 2 September 2015
·Declaration of Albert Terry (“Terry 3”) dated 3 March 2016 with annexure AT-1.
Applicant’s Evidence
·Declaration of Wayne Andrew McIntosh (“McIntosh 1”) dated 2 October 2015 accompanied by exhibits 1 to 16
·Declaration of Wayne Andrew McIntosh (“McIntosh 2”) dated 27 March 2015 accompanied by exhibits WMcI-1 to WMc-9
·Declaration of Wayne Andrew McIntosh (“McIntosh 3”) dated 14 December 2015 accompanied by exhibits WMcI-1 to WMc-3
Discussion
Section 44 – Deceptive similarity
Section 44(1) of the Act is reproduced below:
(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
To establish section 44(1) of the Act the opponent must show all of the following:
ØThat a trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
ØThat the trade mark in the name of the other person must be in respect of similar goods or closely related services; and
ØThat the priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.
The opponent has specified one trade mark application in support of the s 44 ground of opposition. The details of this registration are as follows:
Trade Mark:   (the ‘Trident Seafoods mark’)
Trade Mark application no:           1555536
Filing Date:  7 May 2013
Specification:  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
I note that the above Trident Seafoods mark has an earlier priority date than the Trade Mark and its broad claim for food goods such as 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 in class 29 are the same or at least of the same description as those goods claimed in class 29 by the Trade Mark.
The opponent has not argued that its Trident Seafoods mark is substantially identical to the Trade Mark and I say briefly, that the trade marks are not substantially identical according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (“Shell”).[4] There are a substantial number of differences between the trade marks which preclude them from being substantially identical. Therefore, the key issue for me to decide is if the Trade Mark is deceptively similar to the Trident Seafoods mark.
[4] (1963) 109 CLR 407 at 414
Deceptive similarity is defined by s 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the Trident Seafoods mark, to the impression that they would form from the Trade Mark[5].
[5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [415] (Windeyer J)
According to the authorities[6] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. Justice French in Registrar of Trade Marks v Woolworths Ltd[7] observed in relation to the expression “likely to deceive or cause confusion”:
… The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …
[6] Clark v Sharp (1898) 15 RPC 141, [146]; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411
[7] Woolworths (1999) 45 IPR 411
The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[8]:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
[8] (1979) RPC 410 at 423
Thus I need to decide whether the concurrent use of the respective trade marks in relation to the relevant goods in class 29 and 30 is likely to result in a real and tangible danger of confusion or deception. The thrust of the opponent’s arguments for the respective trade marks being deceptively similar may be summarized as:
·The essential element of the respective trade marks is the word TRIDENT , the image of the trident in the Trident Seafoods mark reinforces the essential feature of the marks and the same can be said for the additional graphic and word elements in the Trident Seafoods mark;
·The goods of the Trident Seafoods mark comprise of “seafood” and “oils” as included in the specification of the Trade Mark;
·The priority date of the Trident Seafoods mark is earlier than the priority date of the Trade Mark;
·That a 44(3) and s 44(4) do not apply to the Trade Mark as the evidence relied on by the applicant does not establish prior continuous use of the Trade Mark sufficient to overcome a s 44 ground of opposition.
I agree with the opponent that the trade marks are deceptively similar. The essential and striking element in the Trident Seafoods mark is the word TRIDENT which is presented in large text with graphic devices namely a trident and ocean waves which only serve to emphasis the word TRIDENT in the consumers mind. The Trade Mark is the word TRIDENT solus. Thus, I am satisfied that the trade marks are deceptively similar, that they cover the same goods and goods of the same description and that the Trident Seafoods mark has an earlier priority date than the Trade Mark.
Taking all the above factors into the assessment of judging the respective wholes of the two trade marks I find that there is a real and tangible danger that Australian consumers would imperfectly recall the opponent’s trade mark and be deceived or confused as a result on encountering the applicant’s goods bearing the Trade Mark. Section 44 is subject to paragraphs 44(3) and (4) of the Act which make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.
In order to consider the potential prior use and honest concurrent use or other circumstances which may allow the applicant to overcome the section 44 ground I turn to the applicant’s evidence. Exhibit WMcI-1 accompanying McIntosh 3 is a copy of the statutory declaration he completed on 2 October 2014 in relation to previous opposition matters undertaken by the applicant. This statutory declaration states that the applicant first adopted the Trade Mark and used it in the 1970s. An application was first filed in 1973 to register TRIDENT for fish and fish products as demonstrated by trade mark registration no. 266625 in class 29. In August 2000, Manassen Foods Australia Pty Ltd (‘Manassen’) acquired the applicant and its business. Exhibit 2 accompanying this early declaration contains a list of fish products sold under the TRIDENT trade mark in 2000 in Australia and exhibit 3 contains images of fish products and food products sold under the TRIDENT trade mark in 2000. Further to this, Mr McIntosh avers that the Trade Mark has been used and continues to be used in relation to fish products and an undated image of tinned tuna bearing the Trade Mark is contained in exhibit 13. I also note the photographs in exhibit 9 which contain images of tinned tuna and smoked oysters bearing the Trade Mark stacked on shelves for sale in Australian supermarkets.
Mr McIntosh declares that since Manassen acquired the applicant in 2000 it has varied the range of goods from time to time to re-invigorate the Trade Mark. He outlines the history of Manassen which commenced in 1952 with Simon Manassen selling sardines and olive oil along with other goods in Sydney. The business expanded and went through a few different sales before being bought by Roy Manassen – the son of Simon Manassen. Under Roy Manassen the company’s operations grew through the acquisition of other food processing and food producing companies including the applicant. Mr McIntosh points to the wide variety of food sold under the Trade Mark in the Australian Marketplace sold through a variety of retail outlets such as Woolworths, Coles, IGA Supermarkets and independent food retailers. Mr McIntosh states that he believes that goods bearing the Trade Mark had been sold through Coles and Woolworths since at least 2000.
It is clear that the applicant has sold tinned fish, sauces containing fish, edible oils and the relevant goods during its time actively trading in the marketplace. However, the opponent has argued in response that the applicant has only applied its Trade Mark to the relevant fish and fish products since October 2014 and that the most favourable view of the evidence for the applicant, the latest possible pre-2014 use is in December 2007 and the earliest next subsequent use is January 2014. The opponent asserts that the small amount of use demonstrated in 2014 is also not genuine commercial use and reminds me that the applicant bears the onus to prove that it made prior continuous use of the Trade Mark in relation to the claimed goods from before 7 May 2013 until 18 July 2014. The opponent states that the applicant cannot do this and as such that subsections 44(3) and 44(4) cannot be applied.
The applicant has argued that there is no set time period for which it must demonstrate use of the Trade Mark in order to be successful under section 44(3)(b)[9]. The position with respect to extent and duration is generally to be assessed as at the priority date. The applicant points me to a number of cases, that, in the case of the other circumstances ground under section 44(3)(b) regard evidence of events after the priority date may be admitted to illuminate the likelihood of confusion as at the priority date[10].
[9] PB Foods Ltd Malanda Dairy Foods Limited [1999] FCA 1602 [60]
[10] Ford Motor Co v Hino Motor Sales Australia Pty Ltd [2002] ATMO 75; Miskin v Time Inc [1997] ATMO 39; Analyses Conseils Informations ACI v Iguassu (No 16) Pty Ltd & Al Gray Nominees Pty Ltd [2001] ATMO 4
The applicant has used its Trade Mark on the relevant goods and while there may appear to be a gap in production, Mr McIntosh makes the point that since there is continuous innovation and development of new products the range of food products offered under the Trade Mark evolves to take into account changing consumer demands. I note that this is not an unusual practice in the marketplace where the tastes of the public can change and demand in products can rise and fall depending on those tastes and current cuisine fads, not to mention how the demands of manufacture may alter due to supply etc. Ultimately I am faced with an applicant who has:
·Two earlier trade mark registrations no.(s) registered 266625 and 400953 for substantially identical trade marks being the word TRIDENT which cover the same goods (although I note that Court action and non-use action is pending on both registrations);
·A long history of the applicant using its Trade Mark on various edible foods ranging from Asian sauces, noodles and coconut cream to smoked oysters and tinned tuna which collectively produces significant sales figures across Australia each year; and
·An applicant who has invested significant time and money into rigorously defending its Trade Mark both in IP Australia and the Courts.
While the sales figures provided by the applicant are not broken down to show how much revenue was generated by the sale of the relevant goods, the figures are very impressive given the relatively low cost of the food items bearing the Trade Mark. The use of the Trade Mark also appears to span a considerable number of years even if the applicant’s evidence is limited. Taken all together, I am satisfied that it is appropriate to apply section 44(3)(b). Therefore, the opponent has not established the ground of opposition under section 44.
Section 59 – No intention to use
Section 59 states:
Applicant not intending to use 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.
Note: For applicant see section 6.
The opponent has argued that the applicant does not intend to use the Trade Mark on the relevant goods and states that the intention of the applicant is an ongoing intention not limited by the state of mind at the time of filing the application. In this case the opponent states that the relevant intention is an intention to use the Trade Mark in good faith[11] and that such an intention may be absent when the application was filed for strategic purposes. However, I note the finding in Food Channel Network Pty Ltd v Television Food Network GP[12] where the relevant date for the purposes of section 59 is the priority date of the Trade Mark although use after the date of application may be relevant in drawing inference as to the issue of intention as at the date of application.
[11] Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165 [57] to [64]
[12] [2010] FCAFC 58
The opponent points to a time line involving its own application, the removal applications it applied for in regards to the applicant’s earlier registrations and the subsequent timing of the applicant’s application for the Trade Mark and sales of small numbers of tinned fish products. The opponent claims that this time line and the small amount of the use of the Trade Mark in relation to limited tinned fish products since 2014 is not genuine commercial use, and does not assist the applicant for the purpose of section 59. However, when I consider the facts and the opponent’s arguments as to the applicant’s use (the requirements under section 59 considerably differs from the requirements of defending an application for removal for non-use) I am confronted with evidence of limited value and asked to draw conclusions on the basis of arguments which are generally unsupported by that evidence.
In considering the opponent’s argument it becomes clear that the opponent is requesting that I make a lot of inferences on the basis of timing of the applicant’s re-release of its fish products after an apparent period of inactivity. However, the evidence to support the applicant’s apparent lack of intention to use the Trade Mark in good faith at the time of filing is lacking. I am expected to draw a number of negative inferences from a time line and ignore the fact that the applicant has actually used the Trade Mark on the relevant goods (continuously in the case of sauces containing fish and edible oils) in the past and is using the Trade Mark on the relevant goods once again. There is no evidence before me that the applicant abandoned its Trident trade mark at any point and indeed, Mr McIntosh makes it clear that at no time has the applicant abandoned its Trade Mark. While the opponent can argue that the small scale sale of tinned fish products does not amount to genuine commercial use there is not sufficient evidence before me to support that it is not genuine commercial use or that the applicant’s intention in making the sale is purely strategic rather than an intention to sell the goods in good faith. There are many reasons why small numbers of a new or returning product are sold initially by traders and without more evidence before me, I cannot be satisfied that the applicant lacked an intention to use the Trade Mark in good faith. Therefore, the opponent has not established this ground of opposition.
Decision

Section 55 of the Act provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, 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.
Note: Forlimitationssee section 6.
The opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been decided or discontinued.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
3 May 2017

Delegate:	Bianca Irgang
Representation:	Opponent: Andrew Fox of Counsel instructed by Terry Trade Mark Attorneys Applicant: Sue Chrysanthou of Counsel instructed by IP Solved
Decision:	2017 ATMO 39 *Trade Marks Act 1995* - Section 52 opposition: sections 44 and 59 pressed –no ground of opposition established.

[2017] ATMO 39

3 May 2017