Seven Network (Operations) Limited v 7 Eleven Inc [2021] ATMO 58 (30 June 2021)

In a recent decision by the Australian Trade Marks Office, the Hearing Officer held that redirecting a domain name containing a trade mark to a website did not constitute use of that trade mark where the trade mark was not visible after the redirection. Use of hyperlinks to services on a website were also found not to amount to use of the trade mark for those services.

In July 2019, international convenience store chain, 7-Eleven Inc. (7-Eleven), applied to remove registration of the 7NOW trade mark 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 use of its mark associated with the 7now.com.au domain (7NOW domain).

Redirection of the domain name

Seven Network asserted that the 7NOW domain redirected to the 7plus.com.au domain (7PLUS domain), which hosted on demand, streaming TV services.  In arguing that that the redirection amounted to use of the 7NOW trade mark in connection with broadcasting, entertainment, and advertising services, Seven Network cited the Edgetech1  case in which Reeves J stated:

"Use 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"

While 7-Eleven acknowledged that there are circumstances where redirection of a domain name can amount to trade mark use, it successfully argued (citing the recent finding of the Federal Court in the Taxiprop2 case) that there was no use of the 7NOW trade mark where the redirection resulted in instant navigation to the 7PLUS website.  The 7PLUS website did not display the 7NOW trade mark, and in fact only displayed the 7PLUS trade mark. Furthermore, there was no evidence that the consumer would continue to see the 7NOW domain name in their browser. In Taxiprop, it was successfully argued that this would lead consumers to believe that the relevant mark was no longer in use.

The Hearing Officer agreed with the arguments by 7-Eleven that no use had been shown during the non-use period, stating the act of the redirection in this case was not use of the 7NOW trade mark "any more than a person writing 7NOW on a piece of paper would be use of the Challenged Trade Mark by Seven Network".

7NOW content page

Screenshots purporting to show use of the 7NOW trade mark on a website content page once the 7NOW domain commenced resolving to its own content page were not considered persuasive as they were outside the non-use period and not accompanied by a declaration from someone with direct knowledge of the content during the non-use period.

Discretion

Turning to the matter of discretion, Seven Network relied on the content page of the 7PLUS domain, indicating that it featured icons and hyperlinks to its entertainment programs and displayed the 7NOW trade mark at the top of the page. This was argued by Seven Network to constitute use of the mark in relation to a broad range of software, advertising, broadcasting and entertainment services.

The Hearing Officer found that displaying content that advertised Seven Network's own programmes did not constitute a provision of an advertising service – as this does not amount to providing an advertising service to someone else.

Further, the clickable links on the 7NOW content resolved to other Seven Network pages and were clearly branded with trade marks other than the 7NOW  trade mark. In this context, it was found that the hyperlinks were "akin to advertisements which appear in a newspaper" insofar as the services advertised or provided in the linked-to pages, could not reasonably be considered to amount to use of the 7NOW trade mark in relation to those services any more than the newspaper trade mark is use of that mark for the services advertised therein.

In deciding not to exercise its discretion, the Hearing Officer found that Seven Network had only used the 7NOW trade mark for a limited subset of services related to the provision of links to websites. Said services were not included in its registration, and the evidence did not support that Seven Network had used or intended to use the 7NOW trade mark for a broader range of services.

On that basis, the registration was removed for all the goods and services.

This decision is a good reminder that context is everything when it comes to trade mark use. Often fine distinctions, and carefully collated evidence, play a critical role in determining whether use of a trade mark will be established and for what goods and services.

Footnotes

1 Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281

2 Taxiprop Pty Ltd v Neutron Holdings Inc.  [2020] FCA 1565

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