Something smells fishy! Don’t let your trade mark go past its used by date

Trident Foods Pty Ltd (Trident Foods) owns Australian trade mark “TRIDENT”. “TRIDENT” is registered in relation to various goods, including “fish” and “fish products”.1

Trident Foods is a wholly owned subsidiary of Manassen Foods Australia Pty Ltd (Manassen).

Trident Foods has operated in Australia since the early 1970s. However, Trident Seafoods (a US corporation) wished to enter the Australian market, to sell seafood products under its own “TRIDENT SEAFOODS’” brand.

In 2013, Trident Seafoods filed an Australian trade mark application for “TRIDENT SEAFOODS”. The application was made in relation to similar goods covered by the “TRIDENT FOODS” marks.

Registration of the application was blocked by the trade marks held by Trident Foods.

In response, Trident Seafoods applied to remove Trident Foods’ marks for non-use.

Use of the trade marks

The Federal Court considered whether Trident Foods’ trade marks should be removed from the Australian Trade Mark Register (Register) for non-use.2

The Trade Marks Act 1995 (Cth) (Act) allows applications to remove a trade mark that has not seen use over a continuous period of 3 years.3

Trident Seafoods alleged that Manassen (the parent company), rather than Trident Foods (the subsidiary and registered trade mark owner) sold “TRIDENT” products. Accordingly, Trident Foods never actually used the marks (Manassen did). If correct, it would follow that Trident Foods had failed to use its marks.    

Trident Foods argued that, although it did not strictly use the “TRIDENT” mark, Manassen was an “authorised user”, and that by virtue of section 7(3) of the Act, use by Manassen constituted use by Trident Foods.4

The Court rejected this argument. To be an “authorised user”, the use of the mark must be subject to actual control by its registered owner. Despite sharing common directors, the Court found that Trident Foods did not control Manassen’s use.

However, the Court exercised its discretion under section 101(3) of the Act, holding that the marks not be removed from the Register.5 

The Court took into account the long-standing use of the “TRIDENT” brand by Manassen, and Trident Foods’ knowledge and acceptance of Manassen’s use.

Lavan Comment

If a parent company uses a trade mark owned by its subsidiary, steps must be taken to ensure that it does so as an “authorised user” for the purposes of the Act. A simple solution is to enter into a licence agreement with the related entity, prior to using the trade mark. This also applies where a subsidiary uses a mark owned by its parent company.

Failure to evidence sufficient control may leave the trade mark vulnerable to removal for non-use. Although (in this case) the Court used its discretion not to remove the marks from the Register, those who fail to evidence control, do so at their own peril.

If you require assistance in this regard, please contact Iain Freeman or Andrew Sutton.

AUTHOR
Iain Freeman
Partner
SERVICES
Intellectual Property and Technology


FOOTNOTES

[1] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490 at [4].

[2] Ibid at [69].

[3] Trade Marks Act 1995 (Cth), section 92(4)(b).

[4] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490 at [70], [85].

[5] Ibid at [179].