Seven Network (Operations) Limited (Seven) is the owner of registered trade mark 1540574 for “7NOW” (7NOW TM).
The 7NOW TM is registered in connection with various goods and services, including:
Seven holds the licence to use the domain name “7now.com.au” (7NOW Domain).
From 24 July 2018, the 7NOW Domain redirected end users to the website located at “7plus.com.au” (7PLUS Website). This website did not feature the 7NOW TM; rather, it prominently displayed the “7PLUS” brand alongside its on-demand video services.
From 1 April 2019, the 7NOW Domain ceased redirecting users to 7PLUS Website. The 7NOW Domain now directed users to a website with a banner featuring the 7NOW TM (7NOW Website). The 7NOW Website provided users with links to various other offerings provided under Seven’s broader operations.
7 Eleven Inc (7/11) applied for the removal of the 7NOW TM for non-use. 7/11 is a household name, operating convenience stores globally. 7/11 argued that during the period from 24 July 2018 (when the redirection went live) until the date 7/11 filed its application, Seven had failed to use the 7NOW TM in connection with the goods and services identified above.
7/11 succeeded in its application before a delegate of the Registrar of Trade Marks. Seven then appealed this decision to the Federal Court of Australia for determination de novo.
Seven’s appeal was dismissed for (amongst others) the following reasons:
There is often uncertainty on the extent to which the incorporation of a brand into a domain name constitutes use as a trade mark. This decision illustrates that the answer will often depend on a case-by-case analysis of the facts. Seven’s use of the 7NOW Domain (and, subsequently, the 7NOW Website to direct users to affiliated content) did not do enough to meet the threshold of use.
Use is a vital component of trade mark law. If you are uncertain whether your trade marks are in actual use, then it is important to obtain legal advice, or face potentially losing those marks when challenged.
Do not hesitate to contact Iain Freeman or Andrew Sutton if you require advice.