Trade mark owners: use your trade mark, or risk losing it (a vital reminder)

By Ben Hamilton 

The recent Federal Court decision in Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 serves as an important reminder for Australian trade mark owners to ensure active use of their registered trade marks in connection the goods and services for which trade marks are registered, or risk losing their registration.

Background: ‘7NOW’

Seven Network (Operations) Limited (Seven Network) has been the registered owner of the ‘7NOW’ word mark (7NOW Mark) since 7 August 2013, in respect of:

• Class 9: computer software;
• Class 35: advertising including the promotion and sale of goods and services for others…;
• Class 38: broadcasting services; and
• Class 41: entertainment service.

On 23 March 2020, 7-Eleven Inc (7-Eleven) applied to register a trade mark, encompassing the term '7NOW’, in relation to Class 35, covering services such as 'online retail convenience store services for a wide variety of consumer goods featuring home delivery service and in-store pickup.'

On examination of 7-Eleven's application, IP Australia cited Seven Network’s 7NOW Mark as conflicting with, and therefore blocking 7-Eleven’s application.

In response, 7-Eleven filed a non-use application in respect of Seven Network’s 7NOW Mark under section 92(4)(b) of the Trade Marks Act 1995 (Cth) (TMA) to have the registration removed.^[1] 7-Eleven contended that Seven Network had not used the 7NOW Mark during the three years between 10 June 2016 and 10 June 2019 (Non-Use Period) in relation to the designated goods and services and that, therefore, the 7NOW Mark registration should be removed.

IP Australia found in favour of 7-Eleven, determining that the 7NOW Mark should be removed from the trade mark register.

Seven Network appealed this finding to the Federal Court.

Federal Court proceedings

The Federal Court considered whether Seven Network had in fact used the 7NOW Mark during the Non-Use Period and was to be removed in respect of the following goods and services:^[2]

• Class 9: Computer software;
• Class 35:
  • the promotion and sale of goods and services for others;
  • retail and wholesale services; and
  • the bringing together, for the benefit of others, of a variety of goods enabling customer to conveniently view and purchase those goods.
• (together, Defended Goods and Services)

Seven Network argued that it had used its 7NOW Mark in respect of the Defended Goods and Services during the Non-Use Period in two ways:

• firstly, through the domain name of 7now.com.au, which automatically redirected users to the 7PLUS website (7plus.com.au) from 24 July to 1 April 2019. It was argued that this website featured streamed television programs and promoted goods and services on behalf of third parties; and
• secondly, established the 7NOW website from 1 April 2019 to 10 June 2019. On this website, a banner of the 7NOW Mark was predominantly displayed. The 7NOW website promoted television content which was available through Seven Network’s online platform and provided links to third-party retail services that consumers could access.

Seven Network further submitted that, even if the Court found that Seven Network did not use the 7Now Mark, the Court should exercise its discretion under s 101(3) of the TMA to allow its 7NOW Mark to remain on the trade mark register, as removal would ’seriously prejudice’ Seven Network’s private interests.^[3]

Decision and reasoning

The Federal Court rejected Seven Network’s arguments outlined above and found that:

• the 7NOW Mark in Seven Network’s domain name (7now.com.au) did not constitute use of the mark when redirecting users to 7PLUS as the 7NOW Mark did not appear on the 7PLUS website. At no time was a user taken to a 7NOW website where any goods or services were being offered under the 7NOW Mark. Accordingly, it was reasonable to infer that the 7NOW Mark was not in use at all as a trade mark; and
• despite the 7NOW website banner, most consumers would naturally think that the 7NOW Mark was associated with other Seven Network entities and that Seven Network was using the 7NOW Mark to promote its own television shows and business on the 7NOW website. Accordingly, the typical consumer wouldn't think Seven Network was using the 7NOW Mark to promote and advertise the activities of other businesses (rather the 7NOW website was simply hosting links to access those other businesses). Furthermore, because the 7NOW Mark wasn't shown on those third-party business websites, these links couldn't be seen as retail services provided under the 7NOW Mark.

The Federal Court also considered the application of section 101(3) of the TMA, which allows the Court the discretion to not remove a registered mark even where the use of the mark has not been established.

Here, the Federal Court chose not to exercise its discretion. The Federal Court did not consider it reasonable to exercise this discretionary power given that it was unlikely that consumers would assume there was a connection between 7-Eleven's convenience stores and Seven Network’s broadcasting business.^[4] Further, the Federal Court did not believe that removing the 7NOW Mark from the trade mark register in relation to the Defended Goods and Services would cause any substantial prejudice to Seven Network’s interests.^[5]

Accordingly, Seven Network’s appeal was dismissed, and the 7Now Mark was removed from the trade mark register in respect of the Defended Goods and Services.

Implications

This case serves as a clear reminder that 'use' of a trade mark entails more than a mere website banner or domain name. Trade mark owners must substantiate that they have actively provided the relevant goods and services using that trade mark.

Furthermore, the case indicates that a Court is likely to be hesitant when it comes to exercising the discretionary power under s 101(3) of the TMA to maintain a registered trade mark when the owner’s rights are not under any threat of prejudice. As a result, it may prove challenging for trade mark owners to request such discretion in their favour.

This article was written with the assistance of Andrea Franco, Law Graduate.

[1] Trade Marks Act 1995 (Cth), section 92(4)(b).
[2] Trade Marks Act 1994 (Cth), section 101.
[3] Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 at [122].
[4] Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 at [146].
[5] Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 at [144].