The recent decision of Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 is an ongoing reminder that you need to ‘use’ your registered trade mark(s) to prevent the risk of losing it (including your exclusive right to deal in that mark).
- On 23 March 2020, 7-Eleven applied to register ‘7NOW’ as both a word and figurative mark in Class 35 (i.e. in relation to retail convenience stores featuring home delivery and pick-up services).
- This application was refused by a delegate of the Registrar citing that Seven Network had already registered ‘7NOW’ as a trade mark in Classes 9, 35, 38 and 41.
- 7-Eleven made an application to the Registrar to remove Seven Network’s ‘7NOW’ trade mark from the Register on the grounds of non-use by Seven Network, which was upheld by the relevant delegate (and the appeal by Seven Network subsequently dismissed as a result of this decision).
Section 92 of the Trade Marks Act 1993 (Cth) sets out the circumstances in which a person may apply to the Registrar to have a trade mark removed from the Register.
One of these circumstances arises where the trade mark remains registered for a continuous period of three (3) years and the registered owner of a trade mark did not use it in relation to the goods and/or services the subject of the removal application.
In this decision, Seven Network was unable to establish a ‘real commercial use’ or ‘ordinary and genuine use’ in the trade mark during that period, even though they contended that the domain name for 7NOW (which redirected to 7PLUS) was being used in connection with its commercial activity.
While the Registrar maintains a broad discretion to disregard any application for removal made by a third party and preserve the registration of a trade mark (even with grounds for its removal), the discretion was not exercised in this case in favour of Seven Network.
As such, while registration of a trade mark will secure your exclusive right to deal with that mark, the key takeaway from this decision is that you cannot assume that this right will continue if you ultimately decide to abandon that mark for a continuous period of three or more years.
If you would like advice or assistance in relation to the registration of your trade marks, please contact our Accredited Business Law specialists and Partners Justin Thornton on jthornton@marsdens.net.au and Rahul Lachman on rlachman@marsdens.net.au or otherwise by calling them on (02) 4626 5077.
The contents of this publication are for reference purposes only. This publication does not constitute legal advice and should not be relied upon as legal advice. Specific legal advice should always be sought separately before taking any action based on this publication.
