Trident Seafoods Corporation v Trident Foods Pty Ltd - [2016] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by Trident Foods Pty Limited to three applications under s92 of the Act by Trident Seafoods Corporation to remove registered trade marks 266625, 400953, 400955 (29,31) - TRIDENT – in the name of Trident Foods Pty Limited.

Delegate:

Cristy Condon

Representation:

Opponent: Sue Chrysanthou of Counsel instructed by Helen Peachy of Hodgkinson McInnes Patents

Applicant: Andrew Fox of Counsel instructed by Albert Terry of Terry Trade Mark Attorneys

Decision:

2016 ATMO 45

Section 92(4)(b) Application for removal of registered trade marks under sub-ss92(4)(b) – established 400955; Registrar’s discretion applied 266625 and 400953 trade marks to remain on the Register - 400955 to be removed from Register - No costs award – each party to bear its own costs.

Background

This matter concerns three non-use applications (‘the applications’) for removal of three trade marks from the Register of Trade Marks (‘the Register’) under s92(4)(b) of the Trade Marks Act 1995 (‘the Act’).
All three applications were filed by Trident Seafoods Corporation (‘the removal applicant’) on 7 February 2014 and each sought removal of the relevant trade mark in respect of all the goods for which it is currently registered.
Details of these registered trade marks (‘the Trident Trade Marks’) are extracted below:
·Trade Mark No.: 266625
Trade Mark: TRIDENT
Owner: Trident Foods Pty Limited
Specification of goods:
Class 29: Fish and fish products
Registered from: 15 March 1973
·Trade Mark No.: 400953
Trade Mark: TRIDENT
Owner: Trident Foods Pty Limited
Specification of goods:
Class 29: Meat, fish, poultry and game, including sardines, mackerel, pilchards, crab, oysters, mussels, and prawns; meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, preservatives and pickles
Registered from: 8 December 1983

·Trade Mark No.: 400955
Trade Mark: TRIDENT
Owner: Trident Foods Pty Limited
Specification of goods:
Class 31: Grains not included in other classes; living animals, fresh fruits and vegetables, seeds; live plants and flowers; malt
Registered from: 8 December 1983

The ‘relevant goods’ means all the goods in all three Trident Trade Marks.
In due course the applications were advertised in the Australian Official Journal of Trade Marks, following which time Trident Foods Pty Limited (‘the removal opponent’) filed a Notice of Intention to Oppose each application, giving the following reasons in the Statement of Grounds and Particulars for opposing removal of the trade marks:
a) The opponent has used the Trident Trade Marks in good faith in Australia.
(b) The Registrar should exercise her discretion not to remove the Trident Trade Marks from the Register.
Both parties provided evidence to support their respective positions as provided for by the Trade Mark Regulations 1995 (‘the Regulations’). Once most of the evidence had been served and filed the parties requested to be heard. Each party has also filed out of time evidence and has requested consideration of this information under regulation 21.19.
I conducted the hearing as a delegate of the Registrar in Canberra on 22 March 2016. The removal opponent was represented by Sue Chrysanthou of Counsel, instructed by Hodgkinson McInnes Patents. The removal applicant was represented by Andrew Fox of Counsel, instructed by Terry Trade Mark Attorneys. On behalf of the removal applicant, Albert Terry observed the hearing by telephone.

Legislative framework

Section 92

Grounds for removing registered trade marks on the basis of non-use may be found in section 92 of the Act which relevantly provides:
92 Application for removal of trade mark from Register etc.
(1)      Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, Registered.
(3)      An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note:   For prescribed court see section 190.
(4)      An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark            was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) 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 to which the non-use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed
(b)         that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1: For file and month see section 6.
Note 2: If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

Section 100

Section 100 of the Act provides that the burden of proof lies with a removal opponent to establish that it has used the trade marks during the relevant period. The relevant sub-section is reproduced below.
100 Burden on opponent to establish use of trade mark etc
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For file, month and registered owner see section 6.
Accordingly, for the purposes of s 92(4)(b) the removal opponent has the onus of rebutting the allegation by establishing that the Trident Trade Marks were used in good faith in relation to the relevant goods during the three year period commencing 7 January 2011 and ending on 7 January 2014 (‘the relevant period’). An allegation under s92(4)(b) may also be rebutted by establishing that there was an obstacle to use during the relevant period (per s 100(3)(c)).
Use in good faith may include use of a trade mark in relation to similar or closely related goods and/or services, when determining the matter.[1] The use must be genuine commercial use to accord with the test in Imperial Group Ltd v Philip Morris & Co.[2] A single bona fide use of the Trident Trade Marks during the relevant period may be sufficient to defeat the applications for removal.[3] In the absence of use, the Registrar’s discretion may be evoked to leave these impugned trade marks on the Register.[4]
[1] s 101(4) the Act.
[2] [1982] FSR 72 at 83.
[3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at [16].
[4] s 101(3) the Act.

Section 101

The opposition will be decided pursuant to section 101 of the Act which provides:
Determination of opposed application - general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
Lastly, the burden of proof is the ordinary civil standard of the balance of probabilities.[5]
[5] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

Evidence

The evidence filed in accordance with the Regulations by the parties consists of five declarations in respect of all three applications. These are summarised below:
The Removal Opponent’s Evidence in Support
Declaration made by Wayne McIntosh and dated 2 October 2014 with Exhibits 1- 4 and 7-16 (‘the first McIntosh declaration’)

The Removal Applicant’s Evidence in Answer
Statutory Declaration made by Albert Terry and dated 14 January 2015 with Annexures AT-1- AT28 (‘the Terry declaration’)
Declaration made by Joseph L Bundrant and dated 14 January 2015 with Exhibits 1-2 (‘the Bundrant declaration’)

The Removal Opponent’s Evidence in Reply
Declaration made by Wayne McIntosh dated 27 March 2015 with Exhibits WMcI-1 to WMcI-9 (‘the second McIntosh declaration’)

Preliminary matters

Trade Mark Regulation 21.19

Regulation 21.19 of the Trade Mark Regulations 1995 provides:
Registrar may use information available
(1) If:
(a) information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c) the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must: (d) provide the information to the party; and
(e) give the party a reasonable opportunity to make representations about the information.
(2) For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows
The first McIntosh declaration referred to but did not include Exhibits 5 and 6. On 27 May 2015 the removal opponent filed a declaration made by Helen Peachey dated 27 May 2015 which encloses those exhibits and articulates why they were inadvertently omitted from the first McIntosh declaration. Due to an error in the filing process, the removal opponent was under the mistaken impression that Exhibits 5 and 6, which had been prepared on 2 October 2014 had been filed with Objective Connect. Objective Connect issues a standard notification upon the filing of declarations, and in this case the notification was issued to the removal opponent on 30 March 2015. It did not give the removal opponent any indication that Exhibits 5 and 6 were missing. Indeed, I think it is also reasonable to conclude that the removal applicant has been aware of this information and therefore its probative value for a considerable time. I am satisfied the Exhibits contain relevant information[6] and in these circumstances, I am satisfied I should allow the requested information into evidence under regulation 21.19.
[6] Exhibit 5 is screenshots of the United States Patent and Trade Mark Office (USPTO) Trade Mark Electronic Search System (TESS) and the details of the removal applicant’s trade mark registrations which are registered in that jurisdiction. Exhibit 6 is printed screenshots of the removal applicant’s website and shows the removal applicant’s Trident Trade Mark and how it is applied to its seafood products. The removal opponent’s trade mark has been filed in Australia see trade mark application no. 1555536.
Accordingly, the declaration made by Helen Peachey dated 27 May 2015 and the attached Exhibits 5 and 6 are now included in the evidence and will be considered in this matter
The removal applicant has also made a request for the Registrar to take into account material contained in a further declaration made by Albert Terry[7] under regulation 21.19 but I choose not to allow this declaration into these proceedings. This is primarily due to its low probative value and extremely late filing[8]. I also note that Ms. Chrysanthou, on behalf of the removal applicant, objected to this evidence being considered (for the same reasons I have outlined) and that Mr. Fox, on behalf of the removal applicant, did not take issue with her representations during the oral hearing.
[7] Declaration made by Albert Terry dated 8 March 2016.
[8] Filed 8 March 2016
A brief summary of the history of the parties derived from the considered evidence follows.

The removal opponent

On behalf of the removal opponent Mr. Wayne McIntosh has provided two declarations in support of its oppositions. Exhibits 8 and 10 along with the information disclosed in paragraphs 37, 44 and 45 of the first McIntosh declaration is confidential and if I refer to them in my decision it will be in the broadest of terms.
Mr. McIntosh holds the position of Chief Financial Officer of Trident Foods Pty Ltd (the removal opponent) he has held that position within the organisation since April 2006. The removal opponent (‘Trident’), is a subsidiary of the parent company Manassen Foods Australia Pty Ltd (‘Manassen’) of which Mr. McIntosh is also the Chief Financial Officer.[9]
[9] Per Ms Chrysthanou’s submissions in the oral hearing
In his first declaration Mr. McIntosh deposes that the Trident Trade Mark was first used in the 1970’s and that the trade mark registration was first sought in 1973 to register the word TRIDENT for fish and fish products (see trade mark registration no. 266625 which is registered in class 29 for the aforementioned goods). Over time the range of foods manufactured by Trident expanded and trade mark protection was sought and acquired in 1983 for a wider range of foods - the subject goods of Trident Trade Marks 400953 and 400955. Mr. McIntosh continues:
I advise that Manassen Foods Australia Pty Ltd (Manassen) acquired the registrant, Trident Foods Pty Ltd and its business in August 2000 and in April 2006 I was appointed the director. A list of food products including a range of fish product sold under the TRIDENT trade mark in 2000 in Australia is produced and marked Exhibit – 2.
I understand that TRIDENT food products including fish have been sold for over 40 years in the Australian marketplace. Images of fish products and food products sold under the TRIDENT trade mark in 2000 in Australia are now produced at Exhibit – 3.
Since Manassen acquired the registrant in 2000 it has varied the range of goods from time to time to re-invigorate the mark…These products include fish, coconut creams and milks, curry pastes, dried fruit, noodles, convenient snack foods, rice crackers, rice paper rolls, soups, stir fry sauces, tempura batter mix an vegetables (herein after the food products).
I advise that the TRIDENT trade mark has historically been used in relation to a wide range of food products including fish products sold in Australia and confirm that the TRIDENT trade mark has been used in relation to each food product at least at some point during the period January 2005 to December 2007, I have listed them below as follows:
The list to which Mr. McIntosh refers to is a ‘package size’ list and includes shortened descriptions but the meanings of the items (for the most part) are easily deduced. It is too large to reproduce here (and not dated). For brevity, the list most relevantly includes goods described as: UDON BOWL SEAFOOD, RED SALMON, TUNA S/WATER, TUNA IN BRINE, TUNA MAYO, TUNA TOM YUM SCE, TUNA BASIL & GINGER, TUNA LITE MAYO, PINK SALMON, RED S’EYE SALMON and RED S’EYE SALMON. Mr. McIntosh deposes that TRIDENT was applied to these goods.
The removal applicant sells its TRIDENT branded products (via Manassen) to a large number of Australian retailers, the biggest of which are Coles and Woolworths supermarkets. Mr. McIntosh deposes three categories of use. These being: past use (to which I have referred to above); use during the non-use period (divided into two sub categories between January 2008 to December 2013 and January 2014 to April 2014[10]) and; current and future use.
[10] Most of this period is not use during the non-use period, which ends on 7 January 2014.
I note that the exhibits show TRIDENT is applied to the packaging of food products, including tinned seafood, but these are not dated. The removal opponent has provided some confidential information regarding its sales of TRIDENT branded products at paragraph 37 of the first McIntosh declaration. Without detailing these I will say that they are quite substantial between 2009 and 2014 but I note the figures start to decline from 2011. That said the sales are of such a high level that even in decline they are evidence that a substantial portion of the Australian public purchase and hence are aware of the removal opponent’s products sold under the TRIDENT brand. The removal opponent’s advertising and promotion figures are supplied at paragraphs 44 to 45 and they too demonstrate that the removal opponent has been invested in the promotion of its brand name. At paragraph 46 Mr. McIntosh “confirms that during the period from 2008 and including the non-use period the registrant at least at some point applied the Trident trade mark in relation to the following goods:”. Some examples of this long list of goods include coconut cream, curry pastes, canned vegetables, tempura batter mix, rice paper rolls, dried fruits and various noodles. Missing from this list is any seafood product. The declaration notes, (but this is only relevant in terms of the Registrar’s Discretion), that between January 2014 and April 2014 tinned seafood was again available for sale.
The first McIntosh declaration then goes onto to describe the removal opponent’s future plans:
The Trident trade mark has been used across a variety of food products constantly for a period of over forty years and naturally over that length of time certain food products have changed or new products have been introduced.
However, I can confirm that there has been a constant and on-going presence of the Trident trade mark in relation to a wide and constantly evolving range of food products for the past forty years including the last three years and the use of the mark is still in evidence in the Australian marketplace.

This concludes the removal opponent’s evidence in support of its opposition to the applications for removal.
Naturally I can appreciate the length of time the removal opponent has applied its Trident Trade Marks to many different types of foods[11] which were offered for sale in the Australian marketplace. The evidence filed by the removal opponent presented detailed evidence about the reputation of the TRIDENT brand but did not present comprehensive evidence of the use of the Trident Trade Marks on the relevant goods in the relevant period. It lacked specific dated examples of the Trident Trade Marks in use on the relevant goods in the relevant period. I was referred to long lists of product package sizes and undated copies of photographs of Trident branded products on the shelves of various retailers. I also found the depositions to be expressed in very general terms. I refer to statements like: the trade marks were used ‘at some point’. At the risk of being obtuse- I believe I was directed, for the most part, to appreciate a holistic view of the brand.
[11] The removal opponent describes this food as ‘Asian food’ in its submissions.

The Removal Applicant

On behalf of the removal applicant, Albert Terry has provided two declarations. However, as I have discussed earlier, the second declaration was filed well after the deadline for the removal applicant to file its evidence in opposition and I did not exercise my discretion to have regard to his second declaration under regulation 21.19. In the Terry declaration Mr. Terry briefly describes each of the annexures attached to his declaration. By way of summary these annexures contain copies of the Yellow Pages, the website of Manassen – – which shows Manassen uses the trade marks HOLLAND HOUSE, OCEAN BLUE and KING OSCAR in connection with its seafood products. I note that HOLLAND HOUSE is applied to various marinated seafood goods in jars and fish in a vacuum pack; OCEAN BLUE is applied to smoked salmon in vacuum packs and KING OSCAR is applied to sardines marinated in oil or tomato sauce. The Terry declaration goes on to show how TRIDENT is used on Manassen’s website: TRIDENT is used on various goods including: sauces, curry pastes, noodles, soups and canned vegetables. I note that the drop down menu does not appear to include fish or seafood in the list of TRIDENT products. The Terry Declaration also includes copies of the removal opponent’s website – – the copies in the annexures show both the current website and copies of the website obtained using the Internet Archive Wayback Machine facility which do not show any use of the Trident Trade Marks in respect of the relevant goods which do not show or describe TRIDENT seafood. Finally, I also note that Annexure AT-28 includes a copy of a printout from the ASIC website which details a company extract for Trident Foods Pty Ltd. This shows that Manassen is the registered holder of the Trident Foods business name.
The removal applicant has also filed the Bundrant declaration. Mr. Bundrant is the Chief Financial Officer of Trident Seafoods Corporation (the removal applicant). He deposes the history of the removal applicant and that it ‘was founded in 1972 in the United States and has grown to be the largest seafood distributer in the United States’. He goes on to depose at paragraph 4:
“Trident Seafoods offers products throughout the world, including Australia. In nearly every country that Trident Seafoods offers its products, it uses its house brand TRIDENT SEAFOODS and Design. Its ability to use its TRIDENT SEAFOODS and Design mark is partially evidenced by trade mark registrations in thirteen jurisdictions, including the European Union…
Trident Seafoods has not used its TRIDENT SEAFOODS and Design mark in Australia because of the Australian Trade Mark Registration Nos. 266625 and 400955 held in the name of Trident Foods Pty Ltd. Instead Trident Seafoods has sold product in Australia using the mark BOUNTIFUL.
Using a different brand in Australia forces Trident Seafoods incur substantial costs resulting from using different packaging, marketing materials and sales materials. Because the TRIDENT SEAFOODS brand is an international brand, the use of a different brand in Australia also causes confusion among Trident Seafoods international customers who do not understand why Tridents Seafoods does not use its brand consistently on its products. The quantifiable costs associated with creating and using a different brand in Australia are approximately $10,000 to $15,000 per product.
Examples of the different packaging Trident Seafoods has been forced to use in Australia are attached at Exhibit 2. The Australian packaging includes Trident Seafoods’ commitment to consumers:
Bountiful is one of many fine brands proudly offered [by] Trident Seafoods. At Trident we know the fish we sell because we’ve been catching and processing our own seafood for more than a quarter of a century
The Bundrant declaration also attests the removal applicant attempted to negotiate a coexistence agreement with the removal opponent but these attempts were unsuccessful.

The Removal Opponent’s Evidence in Reply

The removal opponent’s evidence in reply includes the second McIntosh declaration. In his declaration he responds primarily to the Bundrant deposition and expresses concern that the removal applicant’s BOUNTIFUL products are being sold in Australia through the Costco Warehouse Chain, which he states, had warehouses in South Australia, Quennsland, ACT, New South Wales and Victoria. Mr. McIntosh deposes at paragraph 10:
A range of the registrants TRIDENT food products, which apply the the registrant’s TRIDENT mark, including chilli sauce, which can be served with fish, are also sold in the Costco Warehouses including from the Casula Costco Warehouse.
The registrant is concerned that the sale of its food products and the sale of TSC’s[12] products, both bearing the brand “TRIDENT” will cause substantial confusion in the marketplace and will enable TSC to unfairly benefit from the registrants brand established in Australia.
[12] Trident Seafoods Corporation
In response to the removal opponent’s evidence that the rebranding of its products for sale in Australia comes at a substantial cost, Mr. McIntosh states at paragraphs 12-15:
I understand that under Federal Australian Food packaging and labelling laws that TSC could not use its US packaging or labelling for the sale of its foods products into the Australian Marketplace and that it would still have to utilise specific packaging and labelling to sell its food products here…
Mr. McIntosh also comments about the attempted negotiations between the parties. He says they failed because the removal applicant’s seafood products would be:
...in direct conflict with the registrant’s registrations for TRIDENT and its long-usage of the TRIDENT marks in the Australian marketplace for a wide range of goods including seafood as clarified in my earlier declaration. Co-existence with TSC is unacceptable to the registrant because the marks are so similar, and would apply to the same goods or goods of the same description such as to cause confusion in the marketplace and diminish the value of the registrant’s brand.
Both parties also made comprehensive submissions, both written and oral, which I will refer to, where appropriate.

Discussion and Reasons

As indicated earlier, the question under s 92(4)(b) deals with actual use of the trade marks in Australia during the relevant period, being a three year period ending 1 month before the day on which the non-use application was filed but s 93 provides that such an applicant cannot be filed before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.
However, I must first consider whether or not the trade marks have been used in good faith during the relevant period and, if not, whether the removal opponent has established that there were any obstacles to that use.[13]
[13] s100(3) of the Act.
Where the allegation of non-use has not been rebutted I am also required to decide whether or not to exercise the Registrar’s discretion under s101 to remove the any or all of the Trident Trade Marks from the Register in respect of any or all of the goods to which the relevant application relates. The Full Court in AustinNichols & Co Inc. v Lodestar Anstalt[14] (‘Austin Nichols’) stated:
The purpose of part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.
[14] (2012) 287 ALR 221 at [38]
It is appropriate now to consider the ground on which the non-use applications are based in terms of the evidence and submissions of the parties (both written and oral) before it will be necessary to consider the Registrar’s discretion.
Firstly, the removal opponent claims to have used the Trident Trade Marks on the relevant goods during the December 2008 to January 2014 period (which includes the relevant period) and the removal applicant contends that any use during that time was not in good faith (with specific emphasis on the alleged January 2014 release of TRIDENT branded tinned seafood.
The removal applicant’s contention is essentially that the evidence does not support a finding that the relevant goods were available for sale during the non-use period. It was particularly concerned about the alleged sales of TRIDENT branded seafood and submitted that these were at most limited during the non-use period and such sales of tinned seafood (if they existed) were not “substantial and genuine”[15] and were not continued post the relevant period. In that sense the removal applicant submits that the removal opponent’s use of the TRIDENT brand on tinned seafood was disingenuous and was a tactic to derail the non-use applications.
[15] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at [16]
In response the removal opponent submitted that the whole idea of legitimate and real commercial use (as opposed to token commercial use) could not happen on the fly and that it would take months of planning before the products could hit the market. Such planning must have taken place well before the date that the applications for removal for non-use were filed (which was not until 7 February 2014) and it could not be contended that the evidence of use in January 2014 was in response to the non-use actions.
Another contested issue was raised by the removal applicant and concerned Mr. Fox’s submission that Mr. McIntosh was not competent to attest to the past use of the Trident Trade Marks because he was only employed from 2005.
Mr. McIntosh is Chief Financial Officer of both Trident and Manassen and he has access to the financial records (et al) of both Trident and Manassen. Mr. McIntosh deposes:
The statements I make are of my own knowledge and belief or are based on information; I have obtained from the registrants records to which I have full and unrestricted access and from all due and proper enquiries of its servants and agents[16]
[16] The first McIntosh declaration at paragraph 2
I note the statement in the first McIntosh declaration referred to above and respectfully dismiss Mr Fox’s submissions on this issue.
Lastly, the removal applicant raised the issue that the invoices provided in Exhibit 8 attached to the first McIntosh declaration are not in the name of the removal opponent. They are in the name of Manassen. To this extent, it contended that what had been filed in evidence was not use of the Trident Trade Marks by the removal opponent but use by Manassen.
In regard to this issue Mr. Fox submits the following at [32 – 33] of his written submissions:
The evidence does not suggest that Trident Foods has financial control over Manassen Foods. Whilst paragraph 12 of McIntosh 1 states that Manassen acquired Trident Foods in 2000, Annexure AT-28 to Terry 1 states that Manassen owns the shares in Trident Foods, and that the ultimate holding company of Trident Foods is ‘Bright Food Group Co Ltd’. Paragraph 22 of McIntosh 1 states that “the Chinese government owned Bright Food Group Co. Ltd.” owns 99% of “Manassen Group”. These facts do not disclose a basis on which it could be sensibly or reasonably concluded that Trident Foods has any financial control over Manassen.
A relationship between Manassen and Trident Foods based on shareholding is not sufficient to conclude that Manassen is an authorised user of Trident Foods.
With respect to the submission above, the issue is not whether Manassen is an authorized user of Trident Foods, it is whether Manassen is an authorized user of the Trident Trade Marks.
The invoices (to which I have referred to above at paragraph 46) may be in Manassen’s name (and are the only evidence which is dated and falls within the non-use period), however, they have very little probative value because the Trident Trade Marks do not appear anywhere on these invoices. What does appear is presumably the abbreviation for TRIDENT – TRI or TRID. These abbreviations preface the description of the goods e.g. TRI SWEET CHILLI SCE 12*258ml.
As my ultimate decision does not turn on the issue of these invoices, I see little value to delve any deeper into the question of ‘authorized user’ and ‘authorized use’[17].
[17] s 8 of the Act defines both “authorised user” and “authorised use”

Evidence of Use in the Relevant Period

It is clear from my consideration of the evidence that the removal opponent has shown the Trident Trade Marks have, at some time and in good faith, been applied to the goods claimed in trade marks 266625 and 400953. In fact, the removal applicant conceded in its oral submissions that it was not concerned with such goods as tempura batter[18]. However, as I mentioned earlier it also submitted that in respect of fish products, the use of the Trident Trade Marks should not be regarded as genuine commercial use but rather characterised as contrived use.
[18] The removal opponent only pressed the s92(4)(b) ground in respect of the seafood products.
I am satisfied with the removal opponent’s submissions in response to this issue[19] and I note that in E& J Gallo Winery v Lion Nathan Australia Pty Ltd[20] (‘Gallo’), the Court commented in respect of a commercial quantity:
Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute “ordinary and genuine” use judged by commercial standards. It has been recognised by the Court of Justice of the European Communities, dealing with the expression “genuine use” as used in Arts 10 and 12 of Directive 89/104 of the Council of the European Communities, that use of a mark “need not … always be quantitatively significant for it to be deemed genuine”. On the facts here, it is not necessary to decide whether a single use of the Registered trade mark in good faith would have been sufficient to resist removal.
A commercial quantity of wine, some 144 bottles was imported and offered for sale under the Registered trade mark by Beach Ave during the statutory period. Some 41 sales during that time were proven by reference to invoices and tax paid. There is no suggestion in the evidence that the offering for sale and selling either overseas or in Australia was for any purpose other than making profit and establishing goodwill in the Registered trade mark.
[19] See paragraph [42] of this decision.
[20]
E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15. 241 CLR 144
In Gallo the court decided that 144 bottles of wine was a commercial quantity.
In the matter at hand, I am unable to determine from the undated exhibits or the invoices[21] whether the Trident Trade Marks have been used by the removal opponent for the relevant goods during the relevant period let alone whether such sales were ordinary and general use judged by commercial standards. In addition, no obstacles to use were deposed (per s 100(3)(c)). I appreciate Mr. McIntosh (in both of his declarations) dated each exhibit in the body of the declaration and that the evidence has been broken down into three categories of use being past use, use during the relevant period, and current and future use, however the evidence is highly non-specific. The removal opponent has failed to satisfy its burden to show that the Trident Trade Marks were used in relation to the relevant goods during the relevant period. Moreover, I concur with the reasoning in Ion Management Ltd v Ion Trading UK Limited[22] where the delegate stated “undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period”. It is therefore necessary that I consider whether or not to exercise the Registrar’s discretion under s 101(3).
[21] McIntosh declaration Exhibit 8
[22] [2015] ATMO 124 (24 December 2015) at [21]

Registrar’s Discretion

The Full Court of the Federal Court of Australia in Austin Nichols stated the purpose of Part 9 of the Act is the removal of unused trade marks from the Register [23]. If a trade mark owner does not oppose the application for removal for non-use the trade mark concerned will be removed from the Register without further notice. The Registrar has no discretionary power in this matter. However, if a notice of opposition to the application for removal for non-use is filed then the Registrar has an discretion[24] under s101(3) to allow the trade mark to remain on the Register even if the ground on which the non-use application was made has been made out when it is reasonable to do so.[25]
[23] Austin Nichols at [38]
[24] Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300; 80 IPR 38; [2009] FCA 135 at [167], [172] and [173].
[25] Austin Nichols at [28]
In Pioneer Computers Australia Pty Ltd v Pioneer KK[26] (Pioneer) Bennett J commented:
The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
In Kowa Co Ltd at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[…]
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.
[…]
Pioneer Computers relies upon the policy of the Act to facilitate the removal of an unused trade mark and the public interest in the integrity of the Register which, it submits, will generally demand the removal of an unused trade mark (Shanahan at [15.145]). However, as Shanahan also points out at [15.145], the underlying policy of the Act is to give the court sufficient flexibility to give effect to public interest considerations. This includes the flexibility not to order removal even though the trade mark is unused in the sense required by s 92. The authors suggest that removal may not be appropriate where, for example, the trade mark is nonetheless well-known either from earlier use or from advertising or publicity coming from abroad. A further consideration, as noted by McLelland J in Ritz Hotel and by the registrar in this case, is where removal could be “potentially conducive to public confusion”: Ritz Hotel at NSWLR 162; ALR 224; IPR 424.
[26] at [167]

As the delegate said in CUB Pty Ltd v Elixir Signature Pty Ltd[27]
The factors which have been referred to by members of the judiciary in a number of removal decisions, including by Flick J in Gallo who considered them to be of assistance in considering the exercise of the discretion:
• there had been no abandonment of the trade mark;
• the registered proprietors of the mark still had a residual reputation in the mark;
• there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
• the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;
• the registered proprietors were not aware of the applicant’s sales under the mark.
[27] [2013] ATMO 74
After thorough consideration of the evidence before me I consider it appropriate to exercise the Registrar’s discretion pursuant to s101(3) of the Act and leave two of the Trident Trade Marks on the Register. The removal opponent has not (to my satisfaction) abandoned the Trident Trade Marks and it has a long standing reputation for providing the foods (as specified in trade marks 266625 and 400953) at various times, based on demand and trade mark reinvigoration, in the Australian market under the Trident Trade Marks. Furthermore, it is reasonable to conclude that the sales deposed in the first McIntosh declaration indicate there have been sales under the Trident Trade Mark of the goods specified in trade marks 266625 and 400953 since the relevant period ended. I am also satisfied the removal applicant was aware of the removal opponent’s sales under the TRIDENT Trade Marks.
The removal opponent has established their reputation in the Trident Trade Mark to such an extent that I believe it is reasonable to conclude that if the removal applicant’s trade mark no. 1555536 enter the Australian marketplace this would result in confusion for potential purchasers of TRIDENT branded foods. The removal opponent’s Trident Trade Marks (266625, 400953 and 400955) are presently barriers to the acceptance of the removal applicant’s trade mark 1555536 in 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.
Accordingly, I am satisfied it would not be in the public interest to remove trade marks 266625 and 400953 from the Register. I am exercising the registrar’s discretion pursuant to s101(3) of the Act to leave trade marks 266625 and 400953 on the Register in respect of all the goods for which it is registered. The removal action in respect of trade marks 266625 and 400953 fails.
It is a different story for trade mark 400955 which claims: grains not included in other classes; living animals, fresh fruits and vegetables, seeds; live plants and flowers; malt. I am satisfied that the removal applicant has succeeded in its non-use application with regard to this trade mark under s 92(4)(b). I have nothing before me which indicates the removal opponent ever offered these goods, or any other goods sufficiently similar to these goods, for sale under the Trident Trade Mark at any time in its forty-plus years of trade in the Australian marketplace. At no point has any evidence been adduced in respect of grains not included in other classes; living animals or fresh fruit or vegetables, seeds; live plants and flowers; malt.

Decision

With respect to the s92(4)(b) ground, I am not satisfied that the removal opponent has discharged the onus upon it, expressed in s100, however, I am applying the Registrar’s discretion articulated in s101(3) in regard to trade marks 266625 and 400953.
The application for removal succeeds in respect of trade mark 400955. I accordingly direct that registration 400955 be removed from the Register, in respect of all of the goods for which it relates in the application, one month from the date of this decision. If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

Costs

Costs usually follow the event. However, in this matter neither party has fully achieved its objectives so I decide that each party shall bear its own costs.

Cristy Condon

Hearing Officer/Trade Mark Attorney

Trade Marks Hearings

30 June 2016