7 & Out. Seven Network loses bid to save trade mark

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:

• Class 9 – Computer software.

• Class 35 - The promotion and sale of goods and services for others including through the distribution of on-line promotional material and promotional contests; retail and wholesale services including retail trading via television programmes and by telephone and electronic means including the Internet; the bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods including by mail order, telecommunications, website or television shopping channels.

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:

• The 7NOW Domain redirected to the 7PLUS Website. The goods and services featured on the 7PLUS Website did not bear the 7NOW brand. The mere use of the 7NOW Domain to redirect users to a location where goods and services were offered (under different brands) was not enough to constitute use as a trade mark.
• The 7NOW Website provided users with convenient links to a range of different Seven affiliated goods and service offerings. For example, users could follow links:
  • to download the 7PLUS App;
  • direct to streaming of popular television shows (e.g. MKR, The Morning Show); and
  • direct to live television channel streams.
• As each of these linked offerings featured their own brands (e.g. 7NOW App, MKR), it did not follow that the “7NOW” brand had been used in connection with those offerings. Therefore, despite the 7NOW Website acting as a convenient hub to access Seven affiliated content, it could not be said to have been used in relation to that affiliated content.
• The Federal Court elected not to exercise its discretion to allow the 7NOW TM to remain on the register, despite its non-use.

Lavan comment

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.