Re Opposition by Seven Network (Operations) Limited to application by 7-Eleven Inc for removal of trade mark 1540574 (9, 35, 38, 41) - 7now in the name of Seven Network (Operations) Limited
[2021] ATMO 58
•30 June 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Seven Network (Operations) Limited to application by 7-Eleven Inc for removal of trade mark 1540574 (9, 35, 38, 41) – 7NOW - in the name of Seven Network (Operations) Limited
Delegate: Robert Wilson
Representation: Opponent: Renee Burgess of Herbert Smith Freehills
Applicant: Juergen Bebber of Corrs Chambers Westgarth
Decision: 2021 ATMO 58
Trade Marks Act 1995 (Cth) - Section 96 opposition: opposition to application for removal pursuant to s92(4)(b) unsuccessful – Registrar’s discretion not exercised in favour of opponent to removal – trade mark to be removed from Register
Background
1. Seven Network (Operations) Limited (‘Seven Network’) is the registered owner of trade mark registration 1540574, relevant details of which are as follows:
Trade Mark Number:
1540574
Filing Date:
13 February 2013
Goods and Services:
An indicative specification is provided here. For the full specification see Annexure 1 to this decision.
Class 9: Computer software
Class 35: (including) Advertising including advertising provided by television; retail and wholesale services; television commercials and production of television commercials
Class 38: (including) Broadcasting services, including … free-to-air and subscription television broadcasting services
Class 41: (including) Entertainment services including those provided by, or in relation to, television, television broadcasting, television programmes and interactive television programmes, sporting events
(‘the Challenged Goods and Services’) [1]
Trade Mark:
7NOW
(‘the Challenged Trade Mark’)
[1] The Challenged Goods and Services are all of the goods and services for which the trade mark is registered.
2. Unless otherwise indicated, any references to Parts, sections or regulations, below, are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.
3. On 10 July 2019, 7-Eleven Inc (‘7-Eleven’) filed an application based on s 92(4)(b) seeking removal of the Challenged Trade Mark from the Register (‘the Application’), alleging that the Challenged Trade Mark was not used in good faith in relation to the Challenged Goods and Services during the three year period ending on 10 June 2019 (‘the Relevant Period’). Seven Network subsequently filed a Notice of Opposition consisting of a Notice of Intention to Oppose and a Statement of Grounds and Particulars. In response, 7-Eleven filed a Notice of Intention to Defend.
Evidence
4. Seven Network filed the following Evidence in Support of its opposition:
·Declaration made on 2 March 2020 by Veronique Helene Maury, Legal Counsel for Seven Network, with Exhibits VM-1 to VM-23 (‘Maury 1’).
5. 7-Eleven filed the following Evidence in Answer:
·Declaration made on 1 June 2020 by Jennifer Louise Wrigley, a Senior Associate in the intellectual property department of Corrs Chambers Westgarth, the representative of 7-Eleven, with Annexures JLW-1 to JLW-4.
6. Seven Network filed the following Evidence in Reply:
·Declaration made on 3 August 2020 by Veronique Helene Maury with Exhibits VM-1 to VM-4.
7. Once the time allowed for filing evidence had ended the parties requested to be heard. It has fallen to me, as a delegate of the Registrar of Trade Marks, to decide the matter. The hearing was held on 2 June 2021. Renee Burgess of Herbert Smith Freehills appeared on behalf of Seven Network. Juergen Bebber of Corrs Chambers Westgarth appeared on behalf of 7-Eleven. The oral submissions of both representatives were supplemented by written submissions which were filed prior to the hearing.
Seven Network
8. According to Maury 1:
[Seven Network] is one of five main free-to-air television networks in Australia and simulcasts both in high definition and standard definition.
In addition to [Seven Network’s] prime Channel 7, it also has digital broadcast channels, 7HD, 7TWO, 7mate, 7flix, 7food network (1 December 2018–28 December 2019) and racing.com, as well as digital BVOD (broadcast video on demand) service and digital news platform Network] has commercial television networks in each metro city and regional Queensland.
[Seven Network] has regional affiliates broadcasting [Seven Network’s] content in New South Wales, Victoria, Western Australia, the Northern Territory and Tasmania.
Seven Studios is Australia’s largest production company, and manages [Seven Network’s] content creation, commissioning and distribution activities.[2]
[2] ‘Seven Studios’ is not defined in Maury 1; however, amongst a list of trade mark registrations provided by Seven Network is one for ‘SEVEN STUDIOS’ which is owned by Seven Studios Pty Limited. There is no indication beyond the statement in this paragraph of the relationship between Seven Network and Seven Studios.
9. According to Maury 1, Seven Network and its related entities are the owners of a large number of registered trade marks which comprise, or have as elements, the numeral ‘7’, the word ‘SEVEN’—for example 7MATE, 7WEST, SEVENWEST, SEVEN CARES—or devices similar to those shown below.
Seven Network’s trade marks referred to above are registered for a wide range of goods and services in addition to television broadcasting services and/or entertainment services. Included amongst Seven Network’s trade marks are defensive trade marks which cover a broad range of goods and services including retail services.
10. On 12 May 2021, Seven Network filed a new application to register the Challenged Trade Mark (‘the New Application’). The New Application claims services in Classes 35 and 41 only. With some additions, it covers largely the services in those classes for which the Challenged Trade Mark is already registered. The full specification of the New Application appears in Annexure 2 of this decision.
7-Eleven
11. 7-Eleven was founded in the United States of America in 1972 and now operates an international chain of convenience stores. 7-Eleven has filed the applications detailed below:
Application Number:
2077255
Priority Date:
23 March 2020
Services:
Class 35: Retail convenience stores; online retail convenience store services for a wide variety of consumer goods featuring home delivery service and in-store pickup
(‘7-Eleven’s goods and services’)
Trade Mark:
7-NOW
Application Number:
2077257
Priority Date:
23 March 2020
Services:
7-Eleven’s goods and services
Trade Mark:
12. 7-Eleven confirmed during the hearing that the motivation for the Removal Application was that the Challenged Trade Mark had been cited as an impediment, under s 44, to each of the above trade mark applications. The examiner of those applications raised the citations on the basis of the similarity of the trade marks and the existence of the claims for ‘retail and wholesale services in Class 35’ of the Challenged Trade Mark.
Pre-hearing amendment to specification
13. On 19 May 2021, Seven Network requested an amendment to the specification of goods and services for which the Challenged Trade Mark was registered. That request was to delete four classes and various goods and services. The Challenged Goods and Services reflects the specification as amended.
Legal Framework
14. Part 9 governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101. The Application specified that it was made according to the provisions of s 92(4)(b). Section 92 relevantly provides:
Section 92. Application for removal of trade mark from Register etc
(1) … a person may apply to the Registrar to have a trade mark that is … registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
…
(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
…
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1: For file and month see section 6.
15. Sections 100(1)(c) and 100(3) mandate that Seven Network bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Challenged Trade Mark (or the Challenged Trade Mark with additions or alterations which do not substantially affect its identity) was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. Seven Network has not asserted that there was a relevant obstacle to use, so that question need not be considered further. I proceed on the basis that the standard of proof required is on the balance of probabilities.[3]
[3] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.
16. Section 101(1) provides the Registrar with the discretion to remove the Challenged Trade Mark from the Register ‘in respect of any or all of the goods … to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove the impugned trade mark (if the Registrar is satisfied that it is reasonable to do so), even if the ground on which the Application was made has been established.
Discussion
17. To successfully oppose the Application, Seven Network must establish that it used the Challenged Trade Mark in the course of trade in respect of the Challenged Goods and Services, in good faith, during the Relevant Period. Evidence of use which is not clearly dated or which falls outside of the Relevant Period is generally of little or no assistance to Seven Network in establishing use during that period.
18. Seven Network submitted:
The evidence confirms that [Seven Network] used [the Challenged Trade Mark] within the Relevant Period, both in the domain name 7now.com.au and in the stylised form shown below, including as a slogan to promote its entertainment, broadcasting and advertising services:
‘the 7NOW logo’
19. 7-Eleven conceded in submissions that ‘despite Seven Network’s flimsy and circumstantial evidence [it is] prepared to proceed on the basis that [the Challenged Trade Mark] has been used in [the Relevant Period]’; however, 7-Eleven submitted that the use had been
in relation to a very narrow service, being the provision of information about entertainment services, being television shows, television channels, magazines, newspapers, health information, gambling and provision of information about personal loans and an online marketplace allowing users to outsource tasks.
20. It was confirmed by Seven Network at the hearing that it is not relying on evidence of use of the Challenged Trade Mark during the Relevant Period in connection with all of the Challenged Goods and Services. In particular, Seven Network indicated that in respect of its Class 9 claim for computer software, and its claim for retail and wholesale services it is relying on the Registrar’s discretion—this it did without conceding that it did not use the Challenged Trade Mark in respect of those goods and services during Relevant Period.
21. Seven Network submitted that its use of the 7NOW logo was, in accordance with s 100(3)(a), ‘use of the Challenged Trade Mark with stylisation that amounts to alterations not substantially affecting its identity’. This was not disputed by 7-Eleven. I am in agreement with Seven Network’s submission and proceed on the basis that use of the 7NOW logo constitutes use of the Challenged Trade Mark.
The evidence of use
22. Maury 1 consists of some 623 pages and 23 annexures. Very few of those are related to evidence use of the Challenged Trade Mark during the Relevant Period. Seven Network is relying entirely on use associated with the domain name <7now.com.au> (‘the 7NOW domain’). According to Maury 1, the 7NOW domain was registered on 27 July 2011 and that from 24 July 2018 to 31 March 2019 the domain redirected to another of Seven Network’s domains <7plus.com.au> (‘the 7PLUS domain’). It is also declared that from 1 April 2019 the 7NOW domain resolved to a single web page which displayed its own content. Seven Network relies on these periods to support its use of the Challenged Trade Mark—these will be discussed in turn below. There is no evidence or statements as to what, if anything, would be reached had someone attempted to access the 7NOW domain from the start of the Relevant Period to 23 July 2018; consequently, it is assumed that there was no use during that period.
The redirection period
23. According to Maury 1, from 24 July 2018 to 31 March 2019 the 7NOW domain was redirected to the 7PLUS domain. The 7PLUS domain is declared to have hosted ‘on demand and catch up streaming TV services’. The exact effect of the redirection and how it operated is unclear. Typically, what occurs when domain name redirections are in place is that a person who, for example, typed the 7NOW domain into a web browser would automatically end up at the website at the 7PLUS domain without any notification that a redirection had occurred.
24. It is unclear, also, exactly how a person might have come to access the 7NOW domain. It was suggested by the Seven Network that ‘NOW’ was common in broadcasting to indicate websites which provided on demand content. Possibly, persons might have assumed that entering the 7NOW domain into a web browser would have taken them to a website of the Seven Network which provided ‘on demand’ content. There is no evidence before me that during the redirection period a person undertaking a search using an internet search engine might have come up with a search result which provided the 7NOW domain as a search result.
25. Seven Network submitted that the above constituted use of the Challenged Trade Mark in connection with ‘at least entertainment, broadcasting, and advertising services in classes 35, 38 and 41’ on the basis that these are (asserted to be) services which were provided at the 7PLUS domain. Seven Network cited Edegtech International Pty Ltd v Zippykerb (NSW) Pty Ltd[4] to support this submission. There is no submission, nor is there evidence before me, that the Challenged Trade Mark appeared on the website which is hosted at the 7PLUS domain.
[4] [2012] FCA 281 (Reeves J) (‘Edgetech’).
26. In Edgetech, the plaintiff, Edgetech International Pty Ltd (‘Edgetech’), claimed that the respondents, Zippykerb (NSW) Pty Ltd (‘Zippykerb’) and a Mr George May (‘May’), had infringed its trade mark Kwik Kerb. May was ‘the main individual behind Zippykerb’.[5] May had registered domain names including the following:
·< and
·< Ibid [1].
[6] Ibid [4].
27. Edgetech complained that all of the above domains were ‘linked to a single website: Zippykerb acknowledged that May’s domain names were used to redirect internet users to Zippykerb’s website.[7] Specifically, Zippykerb stated that ‘use of the website is only for the purpose of redirecting users to the Respondents’ website Reeves J stated in Edgetech:
[U]se of a domain name to redirect potential customers to a website displaying one’s goods and services is analogous to using those words as a sign on the front of a shop to indicate the goods or services that are sold within: see Solarhart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544; [2011] FCA 700 at [50] per Perram J; Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519, [2010] FCA 664 at [153] per Kenny J and Mantra Group at [53].[9]
[7] Ibid [13] and [21].
[8] Ibid [13].
[9] Ibid [24].
28. In response to Seven Network’s submissions, 7-Eleven submitted:
Whilst use of a mark as part of a domain name which redirects to another website can constitute use as a trade mark (akin to a sign on the front of a shop to indicate the goods or services that are sold within),[10] 7-Eleven submits that this is not the role played by [the Challenged Trade Mark] in this factual scenario. Once a consumer attempted to access the website located at the [7NOW domain] during [the Redirection Period], they were automatically redirected to the 7Plus Website prominently bearing the mark 7Plus …
As was held by Kenny J in the case of Sports Warehouse Inc v Fry Consulting Pty Ltd,[11] ‘whether or not use of a mark in a domain name is use as a trade mark within the meaning of the Trade Marks Act will always depend upon the context in which the domain name is used’.[12] We submit that the reason applied by O’Callaghan J in the recent case of Taxiprop Pty Ltd v Neutron Holdings Inc should be adopted in this case.[13] In Taxiprop, the website at < ceased to operate and, thereafter, users navigating to < were taken to the 13CABS website (but still saw the < domain name in their browser). In those circumstances, O’Callaghan J held that:
Taking the process as a whole, where a user has navigated to the Lime domain and been instantaneously repointed or redirected to the 13CABS website, it seems to me that the conclusion that a reasonable member of the public would draw is that the mark LIME is no longer in use, because, upon arriving at the 13CABS website, it is readily apparent that the Lime domain name is not a sign for online services identified by the LIME mark. On the contrary, those services are identified by the 13CABS mark.[14]
For this reason, O’Callaghan J concluded that Taxiprop had not established that the redirection of the Lime domain name to the 13CABS website constituted use of the mark during the non-use period.
We submit that the same reasoning should apply here and even more clearly given that there is no evidence that a consumer who was redirected to the 7Plus Website continued to see the 7Now Domain Name in their browser.
[10] Ibid [24].
[11] [2010] FCA 664 (‘Sports Warehouse’).
[12] Ibid [153].
[13] [2020] FCA 1565, [145] (‘Taxiprop’).
[14] Ibid.
29. I am inclined to 7-Eleven’s view on this question. I am not satisfied that in the context surrounding the redirection of the 7NOW domain to the 7PLUS domain that the 7NOW domain was acting ‘akin to a sign on a shop’. In particular, it is assumed that in attempting access the 7NOW domain persons typed the 7NOW domain into the address bar of a web browser. This act is not use of the Challenged Trade Mark by Seven Network any more than a person writing 7NOW on a piece of paper would be use of the Challenged Trade Mark by Seven Network. Once ‘return’ was pressed—or whatever other action might be taken—to attempt to access the website at the 7 NOW domain the person would, it is assumed, be transparently and instantaneously redirected to the 7PLUS domain. Nowhere in that process is the 7NOW domain presented to the person by Seven Network. On this basis, I am not satisfied that Seven Network used the Challenged Trade Mark during the redirection period.
The 7NOW content page period
30. It is declared in Maury 1 that from 1 April 2019 to the date the declaration was made, the 7NOW domain no longer redirected but instead resolved to a single webpage which had its own content (‘the 7NOW content page’). This webpage, part of which is shown below, contains a large number of icons which are declared to be ‘icons for a range of television programs and offerings from Seven, its related entities and investments … The icons promote and separately hyperlink to specific webpages for those television programs and offerings’.
31. The example screenshot above was provided as the first page of Exhibit VM‑3 of Maury 1. The exhibit consists of three pages. The other two pages provided the rest of the webpage which would have been seen were the viewer of the page to scroll down. The screenshot provided was taken on 25 February 2020: more than eight months after the Relevant Period. Ms Maury declared:
The Internet Archive Wayback Machine has not captured a screenshot of this webpage within [the Relevant Period], however I am informed that since 1 April 2019 it has appeared the same as the current screenshots exhibit.
It is not stated who informed Ms Maury as to the appearance of the webpage during this period or how they might be qualified to provide that information to Ms Maury. In any event, Seven Network’s evidence does not include, for example, a declaration from a person who might have been responsible for the content of the website during the Relevant Period. Ms Maury’s statement as to the appearance of the 7NOW content page during the Relevant Period is hearsay of a statement by an unknown person—I am not prepared to afford Ms Maury’s statement any weight.
32. As noted above, 7-Eleven indicated that ‘despite Seven Network’s flimsy and circumstantial evidence’ it was ‘prepared to proceed’ on the basis that Seven Network used the Challenged Trade Mark during the Relevant Period, albeit in respect of a limited range of services. That is, in my view, a generous concession for 7‑Eleven to have made, and a concession which seemingly reflects its desired outcome from these proceedings—being simply the removal of the trade mark in respect of the services which form the impediment to acceptance of their applications to register their 7-NOW trade marks. Nevertheless, the Application as filed seeks removal of all of the Challenged Goods and Services and 7-Eleven’s concession is not taken as amending the Application.
33. On the evidence before me I am not satisfied that that the Challenged Trade Mark was used during the Relevant Period in respect of any goods or services. On this basis I find that that the ground on which the Application was made have been established. However, that is not the end of the matter as the fate of the Application remains to be determined in accordance with s 101. 7‑Eleven’s concession will be considered again in making that determination.
Determination of the opposed application
34. Section 101 deals with the determination of the opposition to the Application. Section 101(1) states, essentially:
If the Registrar is satisfied that the grounds on which the application was made have been established the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
35. The inclusion of ‘may decide to remove’ in s 101(1) indicates that the decision of the Registrar to remove a trade mark from the Register is discretionary. Section 101(2) provides a similar discretion to ‘the court’. Section 101(3) explicitly states, seemingly redundantly, that there is a discretion available to the Registrar; although the discretion under s 101(1) is expressed as a discretion to remove, whereas the discretion under s 101(3) is expressed as a discretion not to remove. Seven Network has submitted that the discretion ought to be exercised in its favour and the Challenged Trade Mark should remain on the Register for all of the Challenged Goods and Services.
Consideration of the Registrar’s Discretion
36. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[15] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent to removal.[16] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent to removal has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:
There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[17]
[15] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35].
[16] Ibid [69].
[17] [2002] FSR 51 (Ch) 790, [19].
37. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[18] Flick J stated:
Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[19] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[20] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[21]
[18] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934.
[19] Kowa Co Ltd v Organon [2005] FCA 1282, [92].
[20] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].
[21] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210]. (Note that Flick J’s decision was overturned on appeal to the Full Federal Court, although not on this point.)
38. Flick J also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:
·whether there has been abandonment of the trade mark;
·whether the registered proprietors of the mark still had a residual reputation in the mark;
·whether there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended; and
·whether the opponent to removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[22]
[22] Ibid, [202]–[203].
39. Seven Network bears the onus of establishing that the discretion should be exercised in its favour: it is not for 7-Eleven to establish that it should not.[23] In addressing the application of the factors to be considered, Seven Network made submissions in respect of abandonment, its reputation and potential confusion arising out of that reputation, the public interest, and private interests. These submissions will be considered in turn.
Abandonment
[23] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44].
40. In asserting that it has not abandoned the Challenged Trade Mark, Seven Network submitted:
[Seven Network] has used [the Challenged Trade Mark] during the Relevant Period and has not abandoned the trade mark.
[Seven Network] has maintained [the 7NOW domain] and the website it resolves to displaying [the 7NOW logo], after the end of the Relevant Period. It continues to do so as at the date of the submissions.
[Seven Network] has filed a new trade mark application for 7NOW in classes 35 and 41, which a priority date of 12 May 2021. The filing of a new application clearly evidences an intention not to abandon the trade mark.
There are three aspects to Seven Network’s submissions on abandonment. The first, is an assertion of use during the Relevant Period. That assertion has been dealt with above, and in considering abandonment it will be assumed that the Challenged Trade Mark was not used during the Relevant Period. The second aspect relates to the 7NOW content page. That aspect will be dealt with next before moving onto the third aspect, being the New Application.
The 7NOW content page
41. It is necessary at this point to consider in more detail the nature of the 7NOW content page, whether the appearance on that website of the 7NOW logo is use of it in the course of trade, and, if so, in respect of what goods or services. A description and an example of the 7NOW content page was provided earlier in this decision. Seven Network’s submissions as to which goods and/or services that page shows use in connection with are brief and are as follows:
[Seven Network used the 7NOW domain] to resolve to a website featuring [the 7NOW logo] and icons, together with links, to [Seven Network’s] popular entertainment programs and business ventures. The links on [the 7NOW content page] not only advertise [Seven Network’s] broadcasting services (class 38), but also direct consumers to Seven’s popular video on demand services for its entertainment programs (classes 38 and 41). These are inextricably linked to Seven’s advertising services (Class 35), from which core revenue is realised.
42. It seems likely that Seven Network provides advertising services—such services are an apparent core revenue stream for commercial free-to-air television broadcasters. However, that the 7NOW content page might advertise Seven Network’s ‘popular entertainment programs and business ventures’ does not constitute use of the 7NOW logo, which appears on that page, in connection with advertising services. Advertising services are provided by one person to another person, where the first person promotes the second person’s goods and/or services to a potential market. I proceed on the principle that a person who is exposed to advertising is not a recipient of the service of advertising. Seven Network in advertising its own programmes and business ventures is not providing an advertising service to someone else.
43. There is no submission or evidence before me that any third party has, for example, a contract in place with Seven Network to have a link to its website appear on the 7NOW content page. My finding, therefore, is that the 7NOW content page does not demonstrate use of the 7NOW logo in connection with advertising services. Consequently, I am not satisfied that the current use of the 7NOW content page, of itself, supports a view that Seven Network uses the 7NOW logo in connection with advertising services. Whether it might constitute use in connection with advertising services by another route is considered below. If it were the case that third parties had contracted with Seven Network to, for example, provide links on its website to their own websites this might constitute use in connection with advertising services. Whether the links are considered to be an advertisement will depend on the nature of the link. At one extreme, an unlabelled clickable link is unlikely to be considered an advertisement, whereas a clickable (or non-clickable) icon bearing the third party’s trade mark is more likely to be considered to be an advertisement.
44. Seven Network submitted that because the clickable links on the 7NOW content page take you to other pages which provide a range of services provided by Seven Network this constitutes use of the 7NOW logo in connection with those other services. This assertion is based on the decision in Edgetech, which was discussed above. Again, context is crucial. The nature of the use of the 7NOW logo, and the nature of the 7NOW content page must be taken into account. The 7NOW logo appears at the top of the 7NOW content page, below which appears a grid of icons. Those icons prominently bear what appear to be trade marks, rather than, for example the names of goods or services. No icon bears descriptive words such as ‘Streaming Services’, ‘Shop’ or ‘Advertising Services’.
45. Maury 1 provides examples of what are declared to be ‘screenshots from the webpages hyperlinked from the icons’ on the 7NOW content page. Two illustrative examples are provided below. There is no suggestion that the 7NOW logo (or the Challenged Trade Mark) appears on any of the hyperlinked websites. The linked to websites are clearly and prominently branded with trade marks other than the 7NOW logo.
46. Because of the nature of the 7NOW content page and the nature of the pages to which it links, I am not satisfied that use of the 7NOW logo on the 7NOW content page constitutes use of the 7NOW logo in connection with the services offered at the linked‑to pages. A finding contrary to this would have the potential to give rise to illogical findings were the 7NOW content page at some point to bear links to the websites of other traders. For example, if a hyperlinked icon to a third party’s website were to appear on the 7NOW content page, and car hire services were offered at that website, a finding contrary to that above would lead to a conclusion that Seven Network’s 7NOW logo was used in connection with car hire services—a service not (apparently) provided by Seven Network. The icons on the 7NOW content page are akin to advertisements which appear in a newspaper. It is unlikely that anyone would suggest that the name of a newspaper would be use of that name, as a trade mark in connection with all the goods or services advertised in the newspaper. Similarly, many websites provide links to third party websites via clickable icons or clickable images of one sort or another. A finding that a trade mark which appears at the top of such a page is use in connection with any good or service advertised on that page, or provided at the linked to page, runs counter to good sense. For these reasons, I am of the view that the 7NOW content page does not constitute use of the 7NOW logo in connection with the goods and services provided at the linked-to web pages.
47. The above leaves the question of what goods and/or service(s), if any, are provided by the 7NOW content page. With respect to this question 7-Eleven submitted:
[The 7NOW content page] acts as a static landing page for consumers who somehow end up at the website to allow those consumers to be re-directed to content they may be seeking. …
[The 7NOW content page] is nothing more than a website that provides information about the existence of Seven Network television channels and programs as well as digital platforms, magazines and other disparate activities in which Seven Network has an interest. [The 7NOW content page] allows users to re-direct to content they may wish to access … On the evidence, it is unclear how consumers might locate [the 7NOW content page] as there is no evidence that [the page] is promoted to consumers in any way. …
7-Eleven submits that the use Seven Network has made of [the 7NOW logo] … can be described as ‘provision of information about entertainment services, being television shows, television channels, magazines, newspapers, health information, gambling, and provision of information about personal loans and an online marketplace allowing users to outsource tasks’.
48. 7-Eleven’s assessment of the services provided by the 7NOW content page is, in my view, overgenerous. That the page provides links to other websites is accepted; however, the extent and nature of the information, if any, provided by the icons is extremely limited. For example, the icons below appear on the 7NOW content page and those icons link to various websites—in some instances to the same website.
In some cases the icons provide no information at all about the services provided at the particular websites to which they link, for example, 7PLUS, 7MATE and 7TWO. The remaining icons, 7NEWS.COM.AU, 7SPORT and 7FLIX, at best, hint at the nature of the services which might be found at the linked-to website. That an icon might indicate the nature of the services provided at the website to which it links falls short of providing information about those services. The remaining icons on the 7NOW content page are no more informative. At its highest, the 7NOW content page provides the services of the provision of links to websites and information about the nature of services provided at linked to websites (‘the 7NOW services’). Those services do not fall within the Challenged Goods and Services.
The New Application
49. Seven Network submitted that the filing of the New Application ‘clearly evidences an intention not to abandon [the Challenged Trade Mark]’. The New Application covers services in Classes 35 and 41 but not the remaining two classes of the Challenged Goods and Services—those being Classes 9 and 38. A reasonable conclusion to be drawn from the new application is that Seven Network may still have an interest in using the Challenged Trade Mark in respect of Classes 35 and 41 but no longer has an intention to use it in respect of Classes 9 and 38.
Conclusion on Abandonment
50. In conclusion with respect to abandonment, it is my view that Seven Network currently uses the 7NOW logo (and by extension the Challenged Trade Mark) in connection only with the 7NOW services. I am not satisfied that it uses, or has ever used, the Challenged Trade Mark in respect of any of the Challenged Goods or Services. The New Application suggests that it has abandoned the Challenged Trade Mark in respect of the Class 9 goods and the Class 38 services but retains an interest in using it in respect of the services in Classes 35 and 41.
Seven Network’s Reputation and potential confusion arising out of it
51. In respect of its reputation, Seven Network submitted that:
[Seven Network] is one of the five main free-to-air television networks in Australia. Over 18 million Australians engage with Seven content every month—equating to 90% of the population aged 14+. Between 2006 and 2018, [Seven Network] was the highest rated network in Australia.
[Seven Network’s] reputation in its family of trade marks containing or comprising 7 / Seven is extensive, and the evidence shows it extends to at least the [Challenged Goods & Services] …
Seven invests millions of dollars each year building the strength of the 7 and SEVEN brands in Australia.
A large number of [Seven Network’s] family of 7 / Seven trade marks incorporate the numeral 7 as a prefix, in a similar from to 7NOW. These include, 7PLUS, 7MATE, 7FLIX, 7SPORT, 7NEWS, 7TRAVEL, 7HD, 7TENNIS and 7 STUDIOS. It follows that consumers understand [the Challenged Trade Mark] to form part of [Seven Network’s] family of marks.
[Seven Network’s] reputation in its family of 7 / Seven trade marks is such that it would cause confusion if the Registration were removed, or partially removed, from the Register and a third party allowed to register and use the same mark—as consumers would expect goods and services offered under [the Challenged Trade Mark] to come from Seven Network.
52. 7-Eleven conceded that Seven Network has a strong reputation in the mark 7 / Seven in Australia; however, it submits that reputation is ‘in relation to, broadly speaking, broadcasting and entertainment services’. I agree with this view but would add advertising services to that list. 7-Eleven further submitted:
7-Eleven disputes that this reputation should allow Seven Network to retain broad rights to [the Challenged Trade Mark] (or any 7-formative mark) which Seven Network is not using, particularly when the goods or services are not sufficiently close to the sector in which Seven Network has a reputation. …
Seven Network appears to be of the view that, due to its reputation in the mark 7 / Seven, it should be entitled to file applications broadly and retain that protection, even in respect of goods and services which are not adjacent to Seven Network’s core services and in respect of which it has no intention of ever using. … If Seven Network wishes to expand the scope of the protection of its marks beyond the goods and services it provides, defensive trade mark applications provide an opportunity for it to do so.
53. There is a danger in considering reputation and confusion in the context of the exercise of the Registrar’s discretion that in the circumstances of this case it might seem that Seven Network is, by the back door, and in some sense, opposing 7-Eleven’s application to register the Challenged Trade Mark on s 60 grounds by preventing that application from being accepted. I am mindful of this and stress that the consideration of reputation and confusion is only one factor which is taken into account here in considering the discretion and is not a factor of particular significance either way.
54. That Seven Network, generally, and a number of its 7 / Seven formulative trade marks have acquired a significant reputation in Australia is accepted. However, it is not accepted that in respect of Seven Network’s 7 / Seven formulative trade marks this reputation extends much, if at all, beyond broadcasting, entertainment and advertising services. Nor does the evidence show that the Challenged Trade Mark has acquired a reputation. There is some evidence before me that Seven Network has been, and is, involved in various retailing ventures, for example, according to Maury 1, Seven Network operated a single retail outlet in Martin Place, Sydney, which was branded ‘7Store’, for a decade between 2005 and 2015. Nevertheless, there is no evidence before me that satisfies me that Seven Network, generally or ‘7Store’ specifically has acquired a reputation as a retailer. Neither is there sufficient evidence before me to satisfy me that any 7 / Seven formulative trade mark has acquired a significant reputation in connection with retailing services. Some of Seven Network’s retail ventures use trade marks which are not 7 / Seven formulative. For these reasons use of 7NOW by another trader in connection with retailing, or other services or goods disparate to broadcasting and entertainment, is unlikely to give rise to the confusion as submitted by Seven Network.
Public Interest
55. Seven Network submitted that:
In considering the public interest, prospects of deception or confusion if the mark were removed from the Register, or if it were allowed to remain on the Register, are both relevant considerations to be taken into account.
56. Seven Network’s assertion here is essentially the same as that considered above in respect of reputation and that question need not be considered again. In addition, Seven Network submitted that:
[I]f the Registration was removed either partially or entirely, there would be the possibility for fragmented ownership of similar marks.
This is particularly relevant for the Australian broadcasting industry because it is common for traders to combine their core branding element with the adverb NOW, as Seven has done in [the Challenged Trade Mark]. For example, other broadcasters have the following trade marks:
·FOXTEL NOW
·9 NOW
·9 NEWS NOW
·ABC NOW
·SKY NEWS NOW
·SKY SPORT NOW
Given this trend, consumers are likely to be confused or deceived if a third party were able to register 7NOW with respect to broadcasting, entertainment or advertising services, or other goods and/or services covered by the Registration – as they would expect those services to be provided by Seven.
57. Seven Network’s submissions on this latter point are persuasive to a certain extent, but only insofar as they concern broadcasting services. As submitted, the use of a core branding element with NOW appears to be a trend amongst broadcasters—not amongst, for example, software developers or retailers.
Private Interests
58. In respect of its private interests in the discretion being exercised in its favour, Seven Network submitted that, ‘The Act seeks to accommodate the interests of registered trade mark owners where it is reasonable to do so. Otherwise, there would be no need for the discretion.’[24] Seven Network further submitted:
It is reasonable to accommodate Seven’s private interests in maintaining its 7NOW registration in its entirety, as the mark was used during the Relevant Period for services covered by the Registration and continues to be used to date alongside Seven’s valuable family of 7 / Seven trade marks.
[24] Seven Network referred to Austin Nichols & Company Inc v Lodestar Anstalt (No 1) (2012} 202 FCR 490, [38] to support this submission.
These submissions suffer from being based on the assumption of use during the Relevant Period—I am not satisfied that there was. They also suffer from my finding that the demonstrated ongoing use is in respect of a very narrow range of services which are not part of the Challenged Goods and Services.
59. Seven Network also submitted:
7-Eleven has led no evidence as to its interests in these proceedings. Where a party has filed no evidence, their interests in the exercise of the discretion are unknown and should not be taken into account.
7-Eleven’s private interests in this matter are clear. It has applied to register two trade marks which are similar to the Challenged Trade Mark in respect of the narrow range of services detailed early in this decision. The registration of the Challenged Trade Mark stands in the way of those applications. 7-Eleven also pointed out that it too owns a number of registered 7-formative marks which do not contain the word Eleven, for example, 7 Fresh, 7 Connect and 7 Select.
60. Seven Network further submitted that there is ‘no evidence of any conflicting third party interests which would be served by removing the Registration’. This proposition is accepted.
Other 7-Eleven submissions on the discretion
61. In respect of the discretion 7-Eleven submitted:
This is not a case where Seven Network has used [the Challenged Trade Mark] continuously in good faith in respect of [the Challenged Goods and Services] and should be entitled to retain its title to [the Challenged Trade Mark]. it is not analogous to the case of C A Henschke & Co v Rosemount Estates Pty Ltd[25] where the Court held that there was no useful purpose to be served in removing the mark and, in effect, compelling a fresh application. Indeed … Seven Network has already filed the New Seven Application for a much narrower range of services.
In any event, the removal of the majority of [the Challenged Goods and Services] will not impact on Seven Network’s ability to use [the Challenged Trade Mark], the development of Seven Network’s reputation in [the Challenged Trade Mark] or the extent to which Seven Network’s reputation in [the Challenged Trade Mark] attracts business. Conversely, Seven Network’s reputation will not be enhanced by [the Challenged Goods and Services] remaining on the Register. The maintenance of a trade mark in respect of goods and/or services for which it is not being used cannot add in any meaningful way to the reputation of that mark. …
[I]t is appropriate to amend a broad specification to reflect the actual activities which the trade mark owner has carried on during the Non-use Period …
[25] [2000] FCA 1539.
Decision on Registrar’s Discretion
62. Seven Network’s evidence of use does not satisfy me that the Challenged Trade Mark was used during the Relevant Period. Neither does the evidence demonstrates the Seven Network has an ongoing intention to use the Challenged Trade Mark in respect of any of the Challenged Goods or Services. Balancing the other considerations, I am not satisfied that it is reasonable to exercise the Registrar’s discretion not to remove the Challenged Trade Mark from the Register.
Decision
63. As Seven Network has not rebutted the allegation of non-use, the ground for removal has been established. It is not appropriate to exercise the Registrar’s discretion in favour of Seven Network; consequently, the Challenged Trade Mark is to be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the Challenged Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.
Costs
64. 7-Eleven has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against Seven Network under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
30 June 2021Annexure 1
The Challenged Goods and Services
Class 9: Computer software
Class 35: Advertising including advertising services provided by television and in the nature of dissemination of advertising for others via online global electronic communication networks; rental of advertising space including online; promotional services; 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; television commercials and production of television commercials; including the provision of all the aforesaid services via broadcasts, television, radio, cable, direct satellite, electronic communication networks, computer networks, global computer network related telecommunication and communication services, broadband access services, wireless application protocol, text message services, telephone and cellular telephone; information and advisory services relating to all the aforementioned
Class 38: Broadcasting services, including television broadcasting, interactive broadcasting services, broadcasting of electronic programming guides, free-to-air and subscription television broadcasting services and radio broadcasting services; datacasting; telecommunications and communication services, including interactive telecommunications and communication services; transmission of cable television and interactive audio and video services; personalised and interactive television transmission and programming services; streaming of audio and video material on the Internet; information and advisory services relating to all the aforementioned
Class 41: Entertainment services including those provided by, or in relation to, television, television broadcasting, television programmes and interactive television programmes, sporting events; pay and subscription television services in this class; entertainment services in the nature of producing, distributing and disseminating programs and information; online television entertainment and information services including digital recording of television programs for delayed, interactive and personalised viewing; online provision of television program listings and suggested viewing guides; personalised and interactive entertainment services in the nature of providing personalised television programming and interactive television programming and games; production of films, shows and television programs including interactive programs; news and news reporter services; providing on-line electronic publications; providing digital music, videos and television clips online; including the provision of all the aforesaid services via broadcasts, television, radio, cable, direct satellite and electronic communication networks, including computer networks, global computer network related telecommunication and communication services, broadband access services, wireless application protocol, text message services, telephones and cellular telephones; information and advisory services relating to all the aforementioned
Annexure 2
The New Application’s Goods and Services
Class 35: Advertising including advertising services provided by television and in the nature of dissemination of advertising for others via online global electronic communication networks; rental of advertising space including online; publicity; promotional services; the promotion of goods and services for others including through the distribution of on-line promotional material and promotional contests; the sale of goods for others including through the distribution of online promotional material and promotional contests; marketing services; sponsorship (promotion and marketing services); market research, analysis and survey services; opinion polling, research and analysis; ratings survey and analysis; audience response surveys, monitoring and analysis; compiling and publicising statistical information; systemisation of information into computer databases; creating, providing and displaying business information, advertising and descriptions of products and services of others via an interactive computer communications network; retail and wholesale services including retail trading via television programmes and by telephone and electronic means including the Internet; auction services provided via the television, by telephone and by other electronic or wireless 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; business management and consultancy services; demonstration of goods; television commercials and production of television commercials; arranging and conducting trade shows; including the provision of all the aforesaid services via broadcasts, television, radio, cable, direct satellite, electronic communication networks, computer networks, global computer network related telecommunication and communication services, broadband access services, wireless application protocol, text message services, telephone and cellular telephone; event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); data collection (for others); market research data collection services; compilation or exploitation of statistical data; communications media services, namely providing services for composing, compiling or systemizing communications relating to the promotion and sale of goods and services; information and advisory services relating to all the aforementioned
Class 41: Educational and entertainment services including those provided by, or in relation to, television, television broadcasting, television programmes and interactive television programmes, podcasts, sporting events, news programmes, games, live shows, cinematograph films, video devices, DVDs, CDs and video tapes; providing television programs and films, not downloadable, via video on demand services; entertainment services in the nature of producing, distributing and disseminating programs and information; online television entertainment and information services including digital recording of television programs for delayed, interactive and personalised viewing; online provision of television program listings and suggested viewing guides; provision of electronic programming guides including television viewing guide services; provision of personalised and interactive games; personalised and interactive entertainment services in the nature of providing personalised television programming and interactive television programming and games; publication and information services in relation to providing entertainment via television, cable television, electronic equipment and video devices, games, news, education, sporting and cultural activities; provision of educational courses and educational material (including e-learning); production of radio, films, shows, podcasts, video podcasts and television programs including interactive programs; publishing services; sporting and cultural activities; organisation of competitions; news and news reporter services; arranging and conducting of concerts, workshops and seminars; organisation and production of shows; presentation of live performances; live entertainment; event management services (organisation of educational, entertainment, sporting or cultural events); rental of apparatus for sound and recording, television sets and scenery; providing non-downloadable on-line electronic publications; subtitling; script writing services; gaming services; providing digital music, videos and television clips online; including the provision of all the aforesaid services via broadcasts, television, radio, cable, direct satellite and electronic communication networks, including computer networks, global computer network related telecommunication and communication services, broadband access services, wireless application protocol, text message services, telephones and cellular telephones; information and advisory services relating to all the aforementioned
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