Seven Network (Operations) Limited v 7-Eleven International LLC

[2024] ATMO 72

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Seven Network (Operations) Limited to registration of trade mark application number 2220730 (classes 29, 30 & 32) – 7 SELECT - in the name of
7-Eleven International LLC

Delegate:

Tracey Berger

Representation:

Opponent: Frances St John of Counsel, instructed by Herbert Smith Freehills

Applicant: Megan Evetts of Counsel, instructed by Corrs Chambers Westgarth

Decision:

2024 ATMO 72

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b) & 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition by Seven Network (Operations) Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of 7-Eleven International LLC (‘Applicant’):

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number	Trade Mark	Filing Date	Goods
2220730 (‘Application’)	7 SELECT (‘Trade Mark’)	18 October 2021 (‘Relevant Date’)	Class 29:  Processed fruits and vegetables; salads; dairy products; meats; cheeses; eggs; milk; fruit-flavored milk beverages; chocolate milk; milk-based beverages containing coffee; soya milk; entrees, including frozen, prepared or packaged meals consisting of any combination of meat, poultry, pork, fish and vegetables; home meal replacements; grilled foods, including grilled sausage and hot dogs; meats, including chicken, pork, beef, fish and turkey; chicken wings; meat snacks; beef jerky; potato chips; processed nuts and seeds; dairy and non-dairy snack food dips; bean dip; nut and seed-based snack bars; natural snacks, including dried fruits and nuts; soups; oden Class 30:  Entrees, including frozen, prepared or packaged meals consisting primarily of rice, noodles and/or pasta; rice balls; steamed buns; sandwiches; grilled foods, including taquitos; pizza; bakery products, including bread, cookies, cakes, muffins and donuts; coffee and tea-based beverages; hot chocolate; snack chips and crackers made of corn, wheat and grain; salsa; confectionery products; ice cream; condiments; ice; cereal based energy bars not for use as a meal replacement; snack mix consisting primarily of crackers, pretzels, candied nuts and/or popped popcorn; cereal, corn grain, granola, rice and wheat based snack foods Class 32:  Drinking water; juices; isotonic beverages; soft drinks (‘Applicant’s Goods’)

2.     Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose on 17 May 2022 followed by its Statement of Grounds and Particulars (‘SGP’) on 17 June 2022.  The Applicant filed its Notice of Intention to Defend the opposition on 1 July 2022.

3. The parties then filed evidence in accordance with the Regulations. The Opponent’s evidence in support was filed on 7 October 2022 followed by the Applicant’s evidence in answer on 23 December 2022. No evidence in reply was filed.

4.     Once the evidence stage ended, both parties requested an oral hearing.  I heard this matter via videoconference on 22 February 2024.  Prior to the hearing, the parties each filed a written summary of their submissions.  At the hearing, the Opponent was represented by Frances St John of Counsel instructed by Rebekah Gay, Renee Burgess and Mona Zhang of Herbert Smith Freehills.  The Applicant was represented by Megan Evetts of Counsel instructed by Jurgen Bebber and Nicholas Mason of Corrs Chambers Westgarth.  I make my decision based on the aforementioned materials and written and oral submissions of the parties.

Grounds, onus and Relevant Date

5.     In the SGP, the Opponent particularised grounds of opposition under ss 42(b) and 60.

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The date at which the rights of the parties are to be determined is the Relevant Date. The Relevant Date is also the priority date for the purposes of s 60.

Evidence

8.     The following evidence was filed:

Evidence in support

·      Declaration of Gervais Raymond Laird, Senior Legal Counsel for the Opponent, made on 6 October 2022 with Exhibits GL-01 to GL-92 (‘Laird Declaration’); and

·      Declaration of Renee Elizabeth Burgess, solicitor with Herbert Smith Freehills, made on 6 October 2022 with Exhibits REB-1 to REB-8 (‘Burgess Declaration’).

Evidence in answer

·        Declaration of Jennifer Louise Wrigley, Special Counsel at Corrs Chambers Westgarth, made on 22 December 2022, with Annexures JLW-1 to JLW-3 (‘Wrigley Declaration’); and

·        Declaration of Daniel Noonan, Senior Counsel of the Applicant, made on 21 December 2022 with Annexures DN-1 to DN-15 (‘Noonan Declaration’).

Opponent’s evidence

9.     The Opponent’s evidence is voluminous and it is not feasible to summarise all of the evidence in this decision.  Further, it was not in dispute that the Opponent has a reputation in the marks 7 and SEVEN for tv broadcasting services.  Accordingly, I have briefly outlined the Opponent’s general activities and provided more information about the activities that the Opponent claims demonstrate a reputation in its trade marks for food.

10.     The Opponent is one of Australia’s five free-to-air television networks, broadcasting across Australia since the 1950s in relation to marks comprising or including 7 or SEVEN (‘SEVEN Marks’).  The Laird Declaration outlines the history of the Opponent and its use of the SEVEN Marks.  It has been the highest rated television network from 2006-2018, reaching more than 90% of Australia’s population.  Numerous press releases about the Opponent’s leading position in the industry are annexed to the Laird Declaration.

11.     The Opponent has expanded its offerings provided under the SEVEN Marks beyond traditional television broadcasting services to include:

·     digital channels: 7HD, 7TWO, 7mate, 7flix and 7FOOD NETWORK (December 2018–December 2019);

·     digital BVOD (broadcast video on demand) services: 7PLUS;

·     platforms such as the digital news platform 7NEWS.com.au and e-commerce platform 7Travel from 2017 to 2020;

·     application software including 7Plus, 7Sport and Yahoo7 Food app;[4]

·     retail outlets: 7Store from 2005 to 2011 and online store at from 2006 to 2010; and

·     strategic cross-media business unit and data platforms: 7REF and 7RediQ.

[4] Yahoo7 was a 50/50 joint venture between Seven West Media and Oath Inc from 2006 to 2019.

12.     The Opponent’s channels broadcast and stream some of the most viewed events and programs in Australia including the Olympic Games, AFL Grand Finals, the Australian Open and shows such as My Kitchen Rules (‘MKR’), Home and Away, Sunrise, 7NEWS, The Morning Show, The Voice and Better Homes & Gardens.

13.     The Opponent is part of the Seven Group, all of whom use the SEVEN Marks in connection with their businesses, which includes:

·     Seven West Media, one of Australia’s leading integrated media companies, with a market-leading presence in broadcast television, magazine and newspaper publishing and online;

·     Seven Group Holdings, a diversified operating and investment group which owns businesses in the industrial services, oil and gas and media areas; and

·     Channel Seven (Sydney) Pty Limited which holds a Sydney commercial television broadcasting licence and operates one of Australia’s leading free-to-air television networks, known as 7 or Seven.

14.     The Opponent claims its SEVEN Marks are well-known as a result of their extensive use and promotion.  Copies of the Seven group of companies annual reports for 2007-2020 and examples of its advertising and promotion are provided. 

15. In particular, the Opponent claims that its reputation in the SEVEN Marks extends to food as a result of its 7FOOD NETWORK and the various food, cooking and lifestyle programs broadcast or made available online on Channel 7 and the digital channels, 7Plus and apps outlined at [11] above.

16.     The Opponent’s food and cooking related television program offerings include MKR, Restaurant Revolution, Hell’s Kitchen, My Restaurant Rules, Zumbo’s Just Desserts and Ramsay’s Kitchen Nightmares.

17.     The Opponent attests that MKR has been produced since 2009 by Seven Studios (part of the Seven group of companies) and by September 2017 had been sold across 160 countries.  It was the second most-watched television show in Australia in 2018.  It is extensively promoted by reference to the SEVEN Marks.  By September 2017, MKR had an average audience of 1.8 million viewers and a further 7.2 million streams via the Opponent’s PLUS7 digital platform. 

18.     As part of the promotion of its cooking programs and specifically MKR, the Opponent claims it applied its mark  (‘7 Logo’) to food trucks in 2013 and 2014, cookbooks from 2012-2019, street food stalls in 2019, pop-up restaurants in 2015 and 2017, and food market stalls in 2017.  Members of the public could purchase food from the food trucks and market stalls.  Examples of media coverage of these events are provided.

19.     In addition, the Opponent has collaborated with Coles to promote MKR through brand extensions whereby the 7 Logo has been applied to:

·     80,000 units of MKR/7 pasta sauce sold in 2017;

·     40,000 units of MKR/7tomato sauce sold in 2017;

·     300,000 units of MKR/7 gelato sold in 2018;

·     170,000 units of MKR/7 cookies sold in March 2019; and

·     Slow-cooked pork.

(collectively ‘MKR/7 Products’)

20.     Other collaborations to promote MKR which the Opponent has entered into include with:

·     Jetstar: where contestants had to create a menu for Jetstar passengers with the winning dish offered on Jetstar flights in 2016;

·     Perfect Italiano Australia: for a co-branded cheese sold in 2014-2016;

·     Western Star Butter: for a co-branded butter product sold in 2014-2016; and

·     Masterfoods: for co-branded Mexican Tomato Sauce sold in 2018.

(collectively ‘Collaboration Products’)

21.     The Opponent also maintains social media accounts for MKR which have promoted the aforementioned activities and products.

22.     Other examples of use of the SEVEN Marks in relation to food include:

·     2015: pop-up restaurants in Sydney, Melbourne, Adelaide, Brisbane and Perth as part of the show Restaurant Revolution. 

·     2004-2005: restaurants  operated by contestants as part of the show My Restaurant Rules; and

·     2017: Hell’s Kitchen pop-up marquee set up at community events including Brisbane Good Food Month Noodle Markets on 22 July 2017.

23.     In addition, the Opponent claims to have acquired a reputation in the food industry by having retailers and manufacturers sponsor its programs including Coles’ sponsorship of MKR, Aldi’s sponsorship of Hell’s Kitchen, Woolworths’ sponsorship of the Opponent’s website allrecipes.com.au and Arnotts’ sponsorship of the show Zumbo’s Just Desserts (‘Retailer Sponsorships’).

24.     The Laird Declaration also includes information about the Opponent’s use of the SEVEN Marks for merchandise, competitions, in-program promotions and infomercials as well as its promotional activities such as sponsorships (including of food events) and the Channel 7 Telethon Trust.

25.     Details about the Opponent’s social media accounts, marketing expenditure, advertising and financials are provided.

26.     The Burgess Declaration attests to the results of various online enquiries undertaken including searches of the database records of IP Australia including for marks containing ‘7’ and ‘select’ in the name of the Applicant; all marks containing ‘select’ in classes 29, 30 and 32; and trade mark number 2220967 for 7SELECT in the name of the Opponent in classes 9, 16, 18, 25, 28, 35, 38 and 41. 

Applicant’s evidence

27.     The Applicant was founded in the United States of America (‘USA’) in 1927 and operates an international chain of about 78,000 convenience stores in 21 countries under the mark 7-Eleven.  The mark 7-Eleven was adopted in 1946 and has been continuously used in word and logo forms in relation to the Applicant’s stores in the USA since 1946 and in Australia since 1977.

28.     The Applicant is Australia’s largest convenience and independent petrol retailer by market share and sells a broad range of goods including 7-Eleven gift cards, food and beverages, accessories for technology products, carry bags, coffee cups and apparel.

29.     In 2008, the Applicant started using the Trade Mark for a line of high-quality products that ‘meet or exceed the quality of brand-name equivalents’.  These products include snack foods, bread, sandwiches, grocery and dairy products, ready-made meals, drinks, household products, medicinal products, toiletry, beauty and clothing products.  The goods bearing the Trade Mark were first available for sale in the Applicant’s stores in the USA in 2008 and at the time of the Noonan Declaration were available in nine other North American and Asian countries.

30.     The Noonan Declaration provides details of the Applicant’s 59 registered Australian trade marks with its earliest registration 235196 for a 7-ELEVEN Logo in class 29 registered from 23 December 1969.  Mr Noonan also attests to the history of filing applications for the Trade Mark (both in word and logo forms) since January 2009.

31.     In October 2021, after the Opponent commenced proceedings against the Applicant in the Federal Court of Australia seeking to cancel a number of the Applicant’s trade mark registrations including five registrations for the Trade Mark, the Applicant voluntarily cancelled the registrations for the Trade Mark.  The day after cancelling the existing registrations, the Applicant filed the Application because it still had an intention to use the Trade Mark in Australia.

32.     The Wrigley Declaration attests to online searches conducted of data from the Australian Bureau of Statistics to determine the number of Australians visiting countries in which the Applicant has stores selling 7 SELECT products.  For example, these enquiries revealed that from January 2017 to December 2019, over 3 million Australians visited the USA.

Discussion

Section 60

33.     Section 60 provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

34.     To establish this ground of opposition, the Opponent must demonstrate that a reputation has been acquired in another trade mark in Australia at the Relevant Date.  If reputation is established in a mark, the Opponent must then prove that because of this reputation, use of the Trade Mark is likely to deceive or cause confusion.  

35.     The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers[5] but this is tempered by the nature of the relevant market.  In the present case, the relevant market is very large comprising most Australian households who watch television or stream online content and purchase food.

[5] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

36.     The reputation must also be established as a matter of fact by the Opponent.[6]  Reputation can be demonstrated in a number of ways. For instance, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[7]

[6] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

[7] Ibid [118].

37.     Section 60 does not require the reputation in the other mark to exist in respect of the Applicant’s Goods,[8] nor that the parties operate in the same industry or field of business.[9]

[8] Qantas Airways Limited v Edwards [2016] FCA 729, [143] (Yates J).

[9] Big Screen Video Pty Ltd v Pyramid Circle Holdings Pty Ltd t/a LED Sign Supply [2016] ATMO 16, [27] (Hearing Officer D. Lyons).

Opponent’s Reputation

38.     In its SGP, the Opponent relies on its use of the SEVEN Marks and claimed in its oral submissions that these marks are iconic.  It is apparent from the Opponent’s evidence that the Opponent occupies a prominent position in the relatively small Australian free-to-air television landscape and has widely used various iterations of the mark 7 in relation to television broadcasting, streaming services, and other related services such as advertising as well as production of various television series, news and current affairs programs, and sporting telecasts.  The annual earnings of the Opponent from 2007 to 2020 are impressive as shown in the annual reports for the Seven group of companies and its advertising expenditure is substantial.  A significant proportion of the Australian public was exposed to the SEVEN Marks before the Relevant Date through viewing the Opponent’s television broadcasts and streaming content.  I am satisfied that the Opponent’s evidence demonstrates a reputation in the SEVEN Marks at the Relevant Date for television programming, broadcasting, and the provision of program content online and through application software (‘Program Services’).

39.     However, the Opponent claims that the reputation in the SEVEN Marks extends to food products and the food industry.  In particular, the Opponent alleges that a ‘key aspect’ of its programming content is food and cooking related.  There is no doubt that the Opponent has offered a great number of food, cooking and restaurant related shows and content and that some of these programs are very popular offerings.  The Applicant argues that the Opponent cannot claim to have acquired a reputation in the SEVEN Marks as a result of broadcasting and streaming this content otherwise the Opponent could claim a monopoly in all marks containing the number 7 in relation to any goods or services featured in its programming content.  Further, the food related content and programming is just one of many genres offered on the Opponent’s channels and medium.  The Applicant also notes that it does not appear to be the Opponent’s most successful genre.[10]  Whilst offering other genres does not prevent the Opponent from acquiring a reputation in the SEVEN Marks for food related programming, it does dilute the effect of the SEVEN Marks as consumers are no more likely to associate the Opponent with food related content than any other subject matter.  I agree with the Applicant that simply offering food related content on television, streaming and other channels does not amount to a reputation in the SEVEN Marks for food products.  The reputation generated by the screening of such content is in the broadcasting and streaming services not the subject matter of the content.      

[10] Laird Declaration,  62, 72-74.

40.     The Opponent also notes that it offered food related programming 24 hours a day, seven days a week on its digital channel 7FOOD NETWORK and, although this channel ceased operation in December 2019, the Opponent maintains a Facebook page for 7FOOD NETWORK.  However, the 7FOOD NETWORK operated for only one year and a review of Exhibit GL-25 of the Laird Declaration indicates that around 1,600 people followed this account in early 2020.  Moreover, in my view, whilst this use may have enhanced the Opponent’s reputation in television cooking shows, I do not consider it sufficient to extend the reputation in the SEVEN Marks to food products.

41.     The question is whether the additional use of the SEVEN Marks in connection with cookbooks, MKR/7 Products and challenges, and sponsorships of programs by food retailers, considered together with the Opponent’s broadcasting, streaming and programming of food-related shows, is sufficient to support the Opponent’s claim that it has acquired a reputation in the SEVEN Marks for food products. 

42. The Opponent emphasised the success of MKR which has been watched by millions of Australians, the sale of MKR/7 food products and the provision of food in challenges such as the sale of food items in a food truck challenge and collaborations with third parties as outlined at [22] above. An example of promotion on the Opponent’s MKR Facebook account and illustrations of the mark used in relation to the MKR/7 goods and challenges are shown below. The pop-up restaurants connected with other shows are promoted in a similar way as shown in the 7 Restaurant Revolution branding set out below.

43.     Firstly, I note that the trade mark which is predominantly used is the 7 Logo and not the SEVEN Marks generally.  Whilst some iterations of use of the 7 Logo are arguably use of a composite mark, this is the exception and in general, the 7 Logo is used adjacent (but separate) to another mark.  The Applicant notes that this is similar to the situation in Community First Credit Union Ltd v Bendigo Bank Ltd[11]where Justice Markovic found at first instance that Bendigo and Adelaide Bank Limited had not established a reputation in the mark COMMUNITY BANK because in ‘almost all cases’ that mark appears with Bendigo Bank indicia that was more prominent and ‘is rarely, if ever, used on its own’.[12]  This finding was upheld on appeal.[13]  Here, the Applicant contends that the 7 Logo is never used on its own and is not used as a badge of origin in relation to the food products and services but rather to educate consumers about which channel broadcasts the relevant show.  The Opponent argues that the present circumstances are different in that the 7 Logo is not descriptive and the mark is used to inform consumers of the Opponent’s association with food.  Whilst the 7 Logo is not descriptive, it has a low level of inherent adaptation to distinguish and is used side by side with other more distinctive marks that are displayed more prominently.  In my view, the predominant purpose of the MKR/7 Products and other uses of the 7 Logo in connection with food products and related services is to promote the television programs and the channel which screens them. Any association by consumers of the 7 Logo with food products or services is minimal and only if 7 is used in conjunction with the name of a television program.

[11] [2019] FCA 1553.

[12] Ibid [414].

[13] Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31 (Middleton, Burley and Thawley JJ).

44.     Secondly, the number and quantity of MKR/7 Products is small in the context of the range of food products generally available in supermarkets and other sales channels and each product was only available for a short period of time only through Coles supermarkets.  Moreover, the MKR/7 Products and services are promoted by reference to the show MKR and/or the contestants.  Consumers who seek out the MKR/7 Products likely do so because of the association with MKR not because they are licensed by the Opponent.  Also, in some instances, the SEVEN Marks are not used prominently such as the MKR Cookbooks 2 and 4 where the 7 Logo does not appear on the cover but instead on an index or similar page.  No details are provided about the Collaboration Products so it is not possible to assess whether the sale of such goods had any impact on the reputation in the 7 Logo. 

45.     The Opponent accepts that the Retailer Sponsorships alone does not equate to a reputation in the SEVEN Marks but argues that these sponsorships cause consumers to associate the Opponent and the SEVEN Marks with food.  In my opinion, consumers generally pay little attention to the sponsors of particular television shows and further, consumers understand that the sponsorship is to promote the sponsor’s brand.  In my view, such sponsorships do little to promote an association between the goods or industry of the sponsor and broadcaster of the sponsored program.  In this regard, the present case is not dissimilar to Monster Energy Company v Mixi Inc[14] where Justice Stewart found that:

… [the opponent of the mark in that case] had a strong and distinctive reputation that was restricted to energy drinks. Whilst, as I have found, it was strong and distinctive also within the gaming, eSports, extreme sports and “edgy” music spheres, even in those spheres the reputation was of an energy drinks trader and not of a trader in goods or services in those spheres themselves. The designated goods and services in respect of which registration of the opposed mark is sought covers, as dealt with above, a large number of goods and services within Classes 9 and 41. Those are not goods and services to which the reputation of the relevant opposing marks attaches.

[14] [2020] FCA 1398, [168].

46.     On my assessment of the Opponent’s evidence, whilst I am satisfied that the Opponent has acquired a reputation in the SEVEN Marks at the Relevant Date for the Program Services, I am not satisfied that such reputation extends to food products or the food industry.

47.     I turn now to consider whether because of the reputation acquired in the SEVEN Marks for the Program Services, use of the Trade Mark by the Applicant for the Applicant’s Goods would be likely to deceive or cause confusion.

Likelihood of deception or confusion

48.     The distinction between the concepts of ‘deceived’ and ‘confusion’ was considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J stated:

“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public ... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[15]

[15] [1979] RPC 410, 423.

49.     In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi, the Registrar’s delegate observed:

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[16]

[16] [2012] ATMO 124, [40] (Hearing Officer I. Thompson).

50.     I have found that the Opponent has a strong reputation in the SEVEN Marks for the Program Services.  Also, there is a degree of similarity between the SEVEN Marks and the Trade Mark as a result of the shared element 7 and the Opponent’s tendency to combine this element with another, often non-distinctive, word such as the mark 7PLUS.  However, there is a marked difference between the Program Services and the Applicant’s Goods.  As the paragraph above notes, the respective [goods/services] remains a ‘material consideration to be taken into account’[17] in determining if there is a likelihood of deception or confusion.

[17] Qantas Airways Limited v Edwards [2016] FCA 729, [143].

51.     There are marked differences between the Program Services and the Applicant’s Goods.  Generally, these goods and services are provided by different traders through different trade channels.  Whilst on occasion, the Opponent has used its 7 Logo in relation to a limited range of food products, such use is in conjunction with the name of a television program.  The mere use of the numeral 7 alone or in combination with another word is not enough, in my opinion, for consumers to be caused to wonder whether food bearing such a mark emanates from, is licensed by or otherwise associated with the Opponent.

52.     In the circumstances, I am not satisfied that use of the Trade Mark is likely to deceive or cause confusion.  Accordingly, the s 60 ground of opposition is unsuccessful. 

Section 42(b)

53.     Section 42(b) provides that a trade mark may be opposed on the grounds that its use would be contrary to law.

54.     The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.  The relevant time for assessing whether an application is contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[18] 

[18] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502, [47] (Wilcox J).

55.     In its SGP, the Opponent alleges that use of the Trade Mark would be contrary to law because:

the Seven Group, including the Opponent and related companies, have a family of trade marks comprising or including SEVEN or 7 (the Seven Marks), which have been used since 1956 and had acquired a reputation in Australia in relation to a wide range of goods and services as at the priority date of the Opposed Application, namely 18 October 2021. This included in respect of goods covered by the Opposed Application. 

Because of the Seven Group’s (including the Opponent’s and related companies’) reputation in the Seven Marks, use of the Opposed trade mark would be:

· misleading or deceptive or likely to mislead or deceive;

· a false or misleading representation that the Applicant and claimed goods have the sponsorship and approval of the Seven Group (including the Opponent and/or related companies); and/or

· a false or misleading representation that the Applicant has an affiliation with the Seven Group (including the Opponent and/or related companies),

in contravention of sections 18 and 29 of the Australian Consumer Law as set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth).

56. The test for misleading or deceptive conduct under the Australian Consumer Law (‘ACL’) is more stringent than that for deception or confusion under s 60.[19] Given that the Opponent has failed to establish that the Applicant’s use of the Trade Mark would be likely to deceive of confuse in breach of s 60, I find that the Applicant’s use would not be contrary to ss 18 or 29 of the ACL.

[19] See e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

57.     Accordingly, I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Decision

58.     The Opponent has not established any of the nominated grounds of opposition.  Accordingly, trade mark number 2220730 may proceed to registration one month from the date of this decision.

59.     Should the Registrar be served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark should not occur until the appeal has been decided or discontinued and that any disposition of the Application be in accordance with the court’s orders or direction.

60. Both parties sought an award of costs. As the Opponent was unsuccessful in the opposition, I award costs against the Opponent under s 221 in accordance with the amounts details in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

24 April 2024