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What happens if I stop using a registered trade mark? If I have registered my trade mark, will it be registered forever? The answers to these questions are important because, unlike claims of copyright ownership or patent invention (which both accrue a distinct right of ownership for a definitive period), a person or company’s right to their registered trade mark is often dictated by whether or not a party has continued to use the trade mark. In circumstances where a party has not continued to use their trade mark, or ceased using their trade mark some time ago, and a third party applies to register the same or similar trade mark, the trade mark may become vulnerable to the Trade Marks Registrar deregistering the trade mark, on the basis of ‘non-use’.
An example of the Trade Marks Registrar taking steps to deregister a trade mark on the basis of ‘non-use’ after a third party applied to have a similar trade mark registered, was recently considered by the Federal Circuit and Family Court of Australia in the decision of Seven Network (Operations) Limited v 7-Eleven Inc [2024] FCAFC 65.
The case involved Seven Network, an Australian television network and 7-Eleven, an international convenience store chain.
The Seven Network was the holder of the ‘7NOW’ trade mark.
This trade mark was registered in 2013 and, since that time, had been used to promote the ‘7NOW’ domain, which hosted on demand, streaming and television services.
In July 2019, international convenience store chain 7-Eleven applied to the Registrar of Trade Marks to remove the registration of the ‘7NOW’ trade mark. The basis for its application was that the Seven Network had not used the trade mark in over three years, and 7-Eleven now wished to use ‘7NOW’ to promote its fast-food delivery service.
The Seven Network defended the application by asserting that it continued to rely on the ‘7NOW’ domain to redirect its customers to its newly established ‘7PLUS’ platform.
The matter was initially considered by the Australian trade marks office after 7-Eleven applied to register its own mark, which included the words ‘7NOW’. When the application was examined by the delegate of the Trade Marks Registrar, ‘7NOW’ was raised as a conflict and the delegate subsequently determined that redirecting a trade mark to a website did not constitute use of that trade mark, particularly given the trade mark was not visible after the redirection. Therefore, the delegate held that ‘7NOW’ had not used its trade mark, and determined that it would be deregistered.
The Seven Network, unhappy with that decision, appealed the matter to the Federal Court of Australia who concluded that the use of ‘7NOW’ as a domain name did not amount to a ‘use’ for the purposes of trade mark registration, as it did not ‘draw a connection’ between goods and services.
The Seven Network ultimately appealed the decision to the Full Court of the Federal Court.
One of the key issues for the Federal Court to consider was whether the Seven Network had continued to use the ‘7NOW’ trade mark. The concept of use of a trade mark is central to the operation of the Trade Marks Act 1995 (Cth).[1]
The starting point for ‘use’ of a trade mark is section 17 of the Act, which states that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person, from goods or services so dealt with or provided by any other person.[2]
In this case, the Federal Court had to consider the somewhat unusual circumstance of whether the use of ‘7NOW’ in a website domain name (which redirected to a ‘7PLUS’ webpage) by the Seven Network, amounted to a ‘use’ of the trade mark.
The specific circumstances of use of the ‘7NOW’ trade mark were as follows:
In considering the circumstances, the Full Court Federal Court concentrated on the use of ‘7NOW’ and its association with the goods and services provided by the Seven Network (being television, streaming and on demand services) from the perspective of a consumer using the ‘7NOW’ domain.
The critical question before the Court was whether it was likely that a consumer would associate the use of ‘7NOW’ in the domain name with the online streaming, demand and television services being offered by the Seven Network.
Ultimately, the Court determined that it was unlikely that a consumer would associate the online streaming, demand and television services presented on the website, to which the ‘7NOW’ domain was redirecting, as being offered by ‘7NOW’ itself (rather than by ‘7PLUS’ or another entity entirely).[3] Therefore, the Full Court concluded that using a trade mark as a domain name did not constitute a ‘use’ eligible for trade mark registration protection.
In reaching its decision, the Court took steps to emphasise the importance of the link between the trade mark in question and the particular goods or services being offered in establishing trade mark use.[4] To put it another way, the Court stated that ‘use’ of a trade mark is use of a mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[5] In this case, the Court considered that the Seven Network had failed to establish the link between the ‘7NOW’ domain name and the online television and streaming products offered by the Seven Network.
This decision is an important reminder that non-use of a registered trade mark places the trade mark at risk of deregistration.[6] Accordingly, registered trade mark holders wishing to preserve their rights should ensure they continue to use the trade mark for its registered purpose.
Although use of a trade mark in a domain name in the way used in the Seven Network case may not be sufficient, the following types of uses may be sufficient (depending on the circumstances and the trade mark in question):
Cooper Grace Ward has an experienced team with expertise in front-end and back-end intellectual property matters. If you would like to discuss this article or trade mark matters, please get in touch with one of our key contacts.
This publication is for information only and is not legal advice. You should obtain advice that is specific to your circumstances and not rely on this publication as legal advice. If there are any issues you would like us to advise you on arising from this publication, please let us know.
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