Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100

Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100

The Full Court held that Manassen’s use of the marks was authorised use by Trident Foods under s 7(3) and s 8, meaning statutory pre-conditions for removal for non-use were not satisfied. The primary judge’s discretion under s 101(3) regarding removal was properly exercised, with evidence of good faith use and potential for consumer confusion. For the application to register the TRIDENT mark, discretion under s 44(3)(b) should be exercised in favour of Trident Foods, considering actual intention to use and barriers to registration imposed by marks not used in Australia. The appeal by Trident Seafoods was dismissed, and Trident Foods' appeal allowed.

Jurisdiction
Australia
Judgment Date
20 June 2019
Procedural Posture
Appeal / Final Judgment
Outcome
Trident Seafoods' appeal dismissed; application for leave to appeal granted. Trident Foods' appeal allowed; application for extension of time and leave granted.
Legal Topics
['trade Marks' 'non Use Removal' 'opposition to Registration' 'extension of Time' 'discretion Under Trade Marks Act']
['intellectual Property'] ['trade Marks' 'non Use Removal' 'opposition to Registration' 'extension of Time' 'discretion Under Trade Marks Act']

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Procedural Posture

Appeal / Final Judgment

Legal Issues

  1. 1 ['Whether removal of trade marks for non-use was warranted under s 92(4)(b) of the Trade Marks Act 1955 (Cth)' 'Whether use by parent company constituted authorised use by subsidiary under s 7(3) and s 8 of the Act' 'Exercise of discretion under s 101(3) regarding removal of trade marks' 'Application of discretion under s 44(3)(b) for trade mark registration' 'Intention to use the trade mark under s 59 of the Act']

Ratio Decidendi

The Full Court held that Manassen’s use of the marks was authorised use by Trident Foods under s 7(3) and s 8, meaning statutory pre-conditions for removal for non-use were not satisfied. The primary judge’s discretion under s 101(3) regarding removal was properly exercised, with evidence of good faith use and potential for consumer confusion. For the application to register the TRIDENT mark, discretion under s 44(3)(b) should be exercised in favour of Trident Foods, considering actual intention to use and barriers to registration imposed by marks not used in Australia. The appeal by Trident Seafoods was dismissed, and Trident Foods' appeal allowed.

Court Disposition

Trident Seafoods' appeal dismissed; application for leave to appeal granted. Trident Foods' appeal allowed; application for extension of time and leave granted.

Orders

  • ['Leave to appeal granted (NSD 1951/2018)' 'Appeal dismissed (NSD 1951/2018)' "Appellant to pay respondent's costs (NSD 1951/2018)" 'Time for filing application for leave to appeal extended (NSD 2133/2018)' 'Leave to appeal granted (NSD 2133/2018)' 'Appeal allowed (NSD 2133/2018)' 'Orders made 31 October 2018 set...