Trade Mark Update – Seven Network (Operations) Limited v 7-Eleven Inc [2024] FCAFC 65 (27 May 2024)
This case is a reminder to trade mark owners that their registered trade marks must be used specifically in connection with the goods and services in respect of which they are registered to avoid losing their rights – evidence of use of a sign in a website banner (for example) may not be enough to show the relevant connection with all the claimed goods and services. The decision also highlights the fact that questions of trade mark use will require a close consideration of the full context of use of the mark, and the particular product or service offerings, to see the nature and the extent of the connection between the two.
Background:
This was an application for leave to appeal and appeal of the primary judge’s decision in Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 to remove a range of goods and services in relation to registered trade mark no. 1540574 for the word 7NOW (“7NOW Mark“).
The contest was limited to the question of whether only certain of the goods and services should be removed from the Register for non-use under section 92 of the Trade Marks Act 1995 (Cth) (“TMA“). The Court adopted the primary judge’s division of the defended goods and services below (“the Defended Goods and Services“):
Category 1: computer software (in class 9);
Category 2: the promotion and sale of goods and services for others including through the distribution of online promotional material and promotional contests (in class 35);
Category 3: retail and wholesale services including retail trading via television programmes and by telephone and electronic means including the Internet (in class 35); and
Category 4: 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 (in class 35).
The Primary Judgement
On 8 June 2023, Justice Thawley concluded that the 7NOW Mark had not been used as a trade mark in relation to any of the Categories 1, 2, 3 or 4 goods and services during the non-use period.
Further, discretion was refused under s 101 of the TMA to avoid removing the mark from the Register.
Grounds of Appeal
Seven’s approach was to argue that use as a trade mark could be established in all categories because consumers would perceive 7NOW Mark as a brand and consider 7NOW was being used to promote all of “the offerings on the website” including the Defended Goods and Services.
However, the Full Court considered this approach inadequate and that the use of the mark, and the particular service offerings, “must be assessed in all their context to see the nature and the extent of the connection between the two” [82].
The Court rejected Seven’s submissions and concluded that the primary judge had not erred in concluding that Seven had not established trade mark use, except in relation to the Category 2 services (the promotion of goods and services for others).
Category 1 – computer software (class 9)
Seven contended that the primary judge erred in not finding that the use of the 7NOW banner, linking viewers to the 7plus app, was use of the 7NOW Mark for these goods. Seven argued that consumers would perceive the 7NOW Mark as a brand which the website proprietor was using to indicate a connection in the course of trade between the website proprietor and the goods and services promoted on the site.
Specifically, Seven asserted that the promoted goods in the 7NOW Website included computer software, being the 7Plus app, regardless of whether the users were taken to another page to download the software.
The Court found that, when considering the overall context, it could not be said that use of the 7NOW Mark on the 7NOW website promoted the offerings on the website as:
- The sole appearance of the 7NOW Mark in the banner was relatively small;
- Beneath the banner, was a series of 48 tiles, some of which included 7-formative marks;
- Beneath the tiles, was a set of links in much smaller size compared to the tiles and in plain text;
- There was no use of the words 7Plus app on the 7NOW website.
The conclusion was that there was no clear reference to the very computer software relied upon by Seven in support of its case. Rather, consumers would need to navigate various steps to find any reference to the 7Plus app.
Category 2 – the promotion and sale of goods and services for others (class 35)
Seven contended that the judge wrongly determined that Seven had not used the 7NOW Mark, arguing that the whole purpose of the 7NOW website was to promote goods and services, including the goods and services of others.
On its part, 7-Eleven submitted, the 7NOW Mark was not presented in a manner that indicated the trade origin of any good or service. The website served as a directory that simply listed a range of other websites that were available ‘now’ in connection with the Seven business.
The Court disagreed with the primary judge’s conclusion by indicating that the nature of the services was that they are not services of others but rather the service of promoting and selling goods and services for others. One aspect of such a service was said to include the promotion of services for others by reference to their trade marks.
In the Court’s view, the connection shown on the 7NOW website between the 7NOW Mark, and the actual performance of those promotional services is sufficient to mean that the 7NOW Mark had been used as a trade mark in relation to those services. Additionally, the Court found that the 7NOW website effectively promoted the goods and services of others by displaying a grid of icons linking to other websites. However, the court agreed with 7-Eleven’s submissions that there was no evidence that the 7NOW website was a means of delivering the service of selling goods and services under or by reference to the 7NOW Mark.
Accordingly, the Court found there was error on the part of the primary judge regarding the promotion of goods and services for others but not regarding the sale of such goods and services.
Categories 3 and 4 – retail and wholesale services, and bringing together a variety of goods (class 35)
Seven argued that the judge did not properly consider whether the services on the 7travel and Better Homes and Gardens Shop websites were connected to 7NOW, asserting that providing links to these sites constituted use of the mark for the Category 3 and 4 services.
The Court found there was no error by the primary judge by indicating the mere display of the “7travel” tile on the 7NOW website was not sufficient to establish trade mark use as the typical consumer would not have understood that the services offered on the websites to which they navigated to were being provided under the 7NOW Mark.
Exercise of Discretion
Seven argued the Court on appeal should find, in the exercise of its discretion, that the Category 1, 3 and 4 goods and services and the balance of the Category 2 services ought also to remain on the Register.
The Court refused to exercise discretion on the basis that Seven had not used the 7NOW Mark in relation to any of the Category 1, 3 or 4 goods or services, or the Category 2 services insofar as it concerns the sale of goods and services, before or since the non-use period. It had given no explanation for not doing so. Nor had it provided evidence of any plan to use the 7NOW mark in relation to those goods or services in the future.
In relation to Seven’s arguments that the mark should not be removed on the basis of the reputation, the Court concluded that the reputation is confined to a particular category of services, and, that reputation is not in respect of the 7NOW Mark but for a different collocation of letters in conjunction with the number ‘7’. It also considered the removal of the relevant goods and services from the registration would be likely to cause confusion.
The decision highlights that evidence in trade mark use cases must go further than simply showing the use of a sign on a website – that use must be clearly shown to be trade mark use and, in all the context, use in relation to the specific goods and services in question.