Australia: 7-Eleven removes 7Now trademark from Seven Network
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Seven Network (Operations) Limited v 7 Eleven Inc ATMO 58 (June 30, 2021)
In a recent decision by the Australian Trade Marks Office, the Hearing Officer held that redirecting a domain name containing a mark to a website did not constitute use of that mark where the mark was not visible after the redirect. It was also found that the use of hyperlinks to services on a website did not constitute use of the mark for those services.
In July 2019, international convenience store chain 7-Eleven Inc. (7-Eleven) filed for deregistration of the 7NOW trademark owned by Australian television network Seven Network (Operations) Limited (Seven Network), on the basis of non-use. To defend its registration, Seven Network relied exclusively on the use of its trademark associated with the domain 7now.com.au (domain 7NOW).
Domain name forwarding
Seven Network claimed that the 7NOW domain was redirected to the 7plus.com.au domain (7PLUS domain), which hosted on-demand TV streaming services. By arguing that the redirection amounted to the use of the 7NOW trademark in connection with broadcasting, entertainment and advertising services, Seven Network cited the edgetech1 case in which Reeves J said:
“Using a domain name to direct potential customers to a website displaying its products and services is analogous to using these words as a sign on a storefront to indicate the products or services that are being sold. in“
Although 7-Eleven has acknowledged that there are circumstances in which forwarding a domain name may amount to the use of a trademark, it has successfully argued (citing the recent Court finding federal in the case taxiprop2 case) that there was no use of the 7NOW trademark where the redirect resulted in instant navigation to the 7PLUS website. The 7PLUS website did not display the 7NOW trademark, and actually only displayed the 7PLUS trademark. Moreover, there was no indication that the consumer would continue to see the 7NOW domain name in his browser. In taxipropit was successfully argued that this would lead consumers to believe that the mark at issue was no longer in use.
The Hearing Officer agreed with 7-Eleven’s arguments that no use had been demonstrated during the non-use period, stating that the act of redirection in this case was not the use of the 7NOW mark “no more than a person writing 7NOW on a piece of paper would use the mark challenged by Seven Network”.
7NOW Content Page
Screenshots purporting to show the use of the 7NOW a trademark on a website content page once the 7NOW domain started to resolve to its own content page were not considered compelling as they were outside of the non-use period and not were not accompanied by a statement from a person with direct knowledge of the content during non-use endpoint.
Regarding the question of discretion, Seven Network relied on the content page of the 7PLUS domain, indicating that it included icons and hyperlinks to its entertainment programs and displayed the 7NOW trademark at the top of the page. According to Seven Network, this constituted use of the mark in connection with a wide range of software, advertising, broadcasting and entertainment services.
The Hearing Officer concluded that the display of content advertising Seven Network’s own programs does not constitute the supply of an advertising service – as it does not constitute the supply of an advertising service to someone else.
In addition, the clickable links on the 7NOW the content was resolved on other Seven Network pages and was clearly marked with marks other than the 7NOW trademark. In this context, it was found that the hyperlinks were similar to advertisements appearing in a newspaper, insofar as the services advertised or provided in the linked pages could not reasonably be considered as equivalent to the use of the 7NOW mark in connection with those services, nor is the newspaper mark the use of that mark for the services advertised therein.
In deciding not to exercise his discretion, the Hearing Officer concluded that Seven Network had only used the 7NOW trademark for a limited subset of services related to providing links to websites. These services were not included in its registration, and the evidence did not support that Seven Network had used or intended to use the 7NOW brand for a wider range of services.
On this basis, the registration was deleted for all products and services.
This decision is a good reminder that context is everything when it comes to using a brand. Often, fine distinctions and carefully gathered evidence play a vital role in determining whether use of a mark will be established and for what goods and services.
1 Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd  FCA 281
2 Taxiprop Pty Ltd v Neutron Holdings Inc.  FCA 1565
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