Bangkok Broadcasting & T.V. Co Ltd v Seven Network (Operations) Limited

This matter concerned an application by Seven Network (Operations) Limited (the Applicant) to remove a trade mark registered by Bangkok Broadcasting & T.V. Co Ltd (the Opponent) from the Register under sections 92(4)(a) and (b) of the *Trade Marks Act 1995* (Cth). The Applicant sought removal on the grounds of non-use.

The legal issues before the court were whether the Opponent had used the trade mark in Australia for the specified goods and services during the relevant period, and if not, whether the Registrar should exercise discretion under section 101(3) of the Act to allow the trade mark to remain on the Register for certain services. The court was required to consider the definition of "use" and the principles governing the exercise of the Registrar's discretion, balancing public interest in the integrity of the Register with the private commercial interests of the parties.

The court determined that as the trade mark had been registered for more than five years, it only needed to consider the application for removal under section 92(4)(b). The Opponent provided evidence of its use of various logos containing the number '7' in Australia for television broadcasting and related services, which the court found demonstrated use of the trade mark for some of the services. However, for the remaining goods and services, the court found no evidence of use or intention to use the trade mark by the Opponent in Australia. Applying the principles from *E & J Gallo Winery v Lion Nathan Australia Pty Limited*, the court considered that removal of the trade mark for these remaining services would not result in consumer confusion or practically impact the Opponent's interests, and therefore, it was not appropriate to exercise discretion in favour of the Opponent.

Consequently, the court ordered that the trade mark registration would not be removed in its entirety. Instead, the specification of services was to be amended to reflect those for which use had been established, namely Class 38 (Television broadcasting; Hi-speed Internet or broadband Internet broadcasting) and Class 41 (television entertainment). The trade mark would be removed from the Register in respect of all remaining goods and services. Each party was ordered to bear its own costs, reflecting the partial success of both parties.