Seven Network loses its 7NOW trade mark for now

What you need to know

• 7-Eleven was successful in having Seven Network's 7NOW mark removed on the ground of non-use before the Australian Trade Marks Office.
• However, the dispute is not over yet because Seven Network has appealed the decision to the Federal Court.

What you need to do

• Ensure that you make genuine use of any registered marks for all of the goods and services for which they are registered.
• Be aware that use of a trade mark in a domain name, without more, in most cases is not sufficient to establish use of the trade mark.

Why was 7-Eleven seeking removal of the 7NOW mark?

Seven Network registered the trade mark 7NOW in February 2013 for various goods and services in classes 9, 35, 38 and 41 including broadcasting and entertainment services and most relevantly, retail and wholesale services.

In July 2020, 7-Eleven launched a delivery app under the name 7-NOW. 7-Eleven applied to register the word mark 7-NOW and the 7-Now Device (depicted below) for class 35 services (retail convenience stores including online stores).

7-Eleven's applications were objected to by the Trade Marks Office for being too similar to Seven Network's mark. Therefore, 7-Eleven applied to remove Seven Network's mark for non-use to allow its applications to proceed to acceptance.

To defend the non-use application, Seven Network needed to show use of its mark during the three year period ending 10 June 2019.

Did Seven Network use the 7NOW mark during the relevant period?

Seven Network argued that it had used the 7NOW mark in the domain name 7now.com.au and in the device form (depicted below) to promote its entertainment, broadcasting and advertising services.

Seven Network argued that use of the device form was use of the registered 7NOW word mark with alterations not substantially affecting its identity and could therefore be considered use of the word mark. This was not disputed by 7-Eleven and the Hearing Officer proceeded on that basis. Accordingly, the Hearing Officer was able to consider evidence about the use of the device form also.

Use of the mark in the 7now.com.au domain name

The Hearing Officer was not satisfied that the 7NOW word mark was used during the relevant period in relation to any of the registered goods and services, even for broadcasting and entertainment services.

The 7now.com.au domain name was registered in 2011. For a large part of the relevant period the 7now.com.au domain name did not host a website but rather redirected to another of Seven Network's domains, 7plus.com.au. The 7plus.com.au website contained links to other websites for Seven Network's channels and programs such as 7Two and Seven News. When the domain name redirected at no point was the consumer presented with the 7NOW domain or the mark in any other form. The Hearing Officer dismissed Seven Network's argument that the 7now.com.au domain name acted like a sign on a shop to indicate the goods and services Seven Network was providing.

While the Seven Network asserted that from 1 April 2019 (shortly before the end of the relevant period), the 7now.com.au domain name stopped redirecting and went to the 7now.com.au webpage which displayed the 7NOW device, the screenshots submitted supporting this assertion were from after the end of the relevant period. Therefore, the Hearing Officer was not satisfied that they amounted to evidence of use during the relevant period.

Exercise of Registrar's discretion

Even where there is a finding that no use has been made of the mark in the relevant period, the Hearing Officer has the power to exercise the Registrar's discretion under s 101(3) of the Trade Marks Act to retain the registration.

One of the key factors relevant to the exercise of the discretion is whether the Hearing Officer believes there has been an abandonment of the mark. Seven Network argued that it had not abandoned the mark because it had been used after the relevant period (on the 7now.com.au website) and it has filed a new application for the same mark in classes 35 and 41 (it has since also filed for the mark in classes 9 and 38).

The Hearing Officer dismissed the argument that Seven Network had continued to use the mark after the relevant period. This is because he found that the use of the mark on the website was not use in the course of trade in relation to the registered goods and services. At best the Hearing Officer stated that the website provides the service of providing links to other websites. However, those services do not fall within the goods and services covered by the registration.

The Hearing Officer also found that the new application does not completely support the lack of abandonment argument because the application only covers some of the services covered by the current registration. The Hearing Officer stated that this actually indicates that Seven Network does intend to abandon the mark for the other goods and services. Seven Network's later filing in other classes is likely intended to address this matter.

Considering this and the other relevant factors such as the public interest and the parties' private interests, the Hearing Officer concluded that it was not appropriate to exercise the Registrar's discretion to retain the 7NOW registration and ordered that it be removed.

What happens now?

Seven Network has appealed this decision to the Federal Court. It will be interesting to see the arguments that Seven Network makes and whether it focuses on trying to establish that there was use, or rather that the Registrar's discretion should be exercised.

Authors: Annika Barrett, Senior Expertise Lawyer; Kellech Smith, Partner.