Who owns Neptune’s fork?: Trident Seafoods Corporation v Trident Foods Pty Limited [2017] ATMO 39 (3 May 2017)

A trident, the indicia of the Poseidon, Greek god of the sea (or Neptune for those of a preference for Roman mythology), is one of those valuable symbols which are highly suggestive of marine or maritime goods and services, but which is not descriptive. It is valuable real estate from a marketing perspective. It is entirely unsurprising that there has been an ongoing trade mark-based argument in Australia over the word “TRIDENT” in respect of seafood.

On 18 July 2014, Trident Foods Pty Limited (the Applicant) filed an Australian trade mark application for the trade mark “TRIDENT” under classes 29 and 30 goods covering various coconut and fish-related food products and condiments. The application was subsequently opposed by Trident Seafoods Corporation (the Opponent), nominating numerous grounds of opposition, but ultimately focusing only on ss 44 and 59 during the hearing.

This was the second decision to arise from a trade mark opposition between these two parties.  The previous dispute related to three non-use applications – see Trident Seafoods Corporation v Trident Foods Pty Ltd [2016] ATMO 45 (30 June 2016). In that matter, two of the Removal Opponent’s trade marks were left on the Registrar. This was as a consequence of the Registrar’s delegate exercising a discretion to do so because, amongst other things, the removal opponent had not on the evidence abandoned two of the three registrations under attack.

That partially successful removal application, we assume, invited this opposition.


Deceptive Similarity Ground


Under their s44 ground of opposition, the Opponent relied upon its registered trade mark 1555536 (the Trident Seafoods mark), which had a filing date of 7 May 2013. It consists of the following logo , and covers class 29 goods as it pertains to various seafood and fish oil products.

The hearing officer noted, “ 17.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.”

But the Applicant argued that it had been varying the range of goods that the Trident mark is being used on, in order to re-invigorate the Trade Mark. This had been ongoing since 2000. While the Applicant had only used the TRIDENT mark in relation to fish and fish products since October 2014, there is no set time period for which use of the trade mark must be demonstrated.

The Applicant also drew the hearing officer’s attention to two earlier Australian trade mark registrations,  266625 and 400953, for substantially identical trade marks. The applicant had a long history of use of its trade mark on various edible foods ranging from Asian sauces, noodles and coconut cream to smoked oysters and tinned tuna which collectively resulted in significant sales figures across Australia each year. The Applicant also presented proof that it had spent time and money into defending their trade mark before both IP Australia and in court. That was enough for the delegate. The s44 ground of opposition failed.

The interesting aspect of the decision was that the hearing officer recognised a marketing strategy of innovation and flexibility in the market offering as a relevant consideration: “ 23.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.”

That is, with respect, a very commercial and practical approach to the issue of use. The nature of “use” by a business endeavouring to sustain or increase market share, as consumers’ wants and needs change, should not be set in stone.


No Intention to Use


The Opponent also argued that the Applicant had no intention to use the Trade Mark on the relevant goods, and that the intention of the Applicant is “an ongoing intention not limited by the state of mind at the time of filing the application.” This is an interesting argument because it was supported by the Applicant’s evidence, but the delegate did not agree. This argument was tantamount to requesting the delegate to make “a lot of inferences on the basis of timing of the applicant’s re-release of its fish products after a period of inactivity.” Again, commercial flexibility prevailed.

Also, the evidence demonstrating the applicant’s lack of intention to use the Trade Mark in good faith at the time of filing was found to be “lacking”. Instead, there was ample proof that the Applicant had used the Trade Mark on the relevant goods and is using the Trade Mark on the relevant goods. While the delegate acknowledged that the Applicant’s sale of tinned fish products during a certain period was of such a small scale so as to encourage the Opponent to argue that this was not genuine commercial use, there is insufficient evidence to support such an argument. Thus, the s59 ground for opposition also failed.

With the Opponent unable to establish any of their grounds of opposition, the application has been allowed to proceed to registration, barring any appeal.

Poseidon was a cranky deity, and was also the god responsible for earthquakes. There is not anything especially earth-shattering about this decision. But it is commendable for its understanding of how businesses adapt and are responsive to the market.