SEVEN NETWORK LOSES TRADEMARKS FIGHT WITH 7-ELEVEN

Seven Network has lost a trademarks battle with convenience store giant 7-Eleven, in a costly Federal Court fight over competing logos bearing the phrase 7NOW.

The international franchise is now a step closer to registering the trademark 7NOW in Australia, allowing it to roll out a delivery app bearing that name. The app is already available overseas.

7-Eleven’s delivery service launched overseas in July 2020 and was promoted at 7now.com, a website that is no longer accessible in Australia.

Seven West Media uses the 7NOW logo and phrase on a site linking to a suite of Seven products including its video-on-demand offering 7PLUS.

“If 7-Eleven succeeds in having its marks registered, it proposes to use them to offer a similar [delivery] service in Australia as is being offered overseas,” Justice Thomas Thawley said in a judgment delivered on Thursday.

As part of its bid to register its trademarks, 7-Eleven applied successfully to the Australian Trade Marks Office in 2021 for Seven Network’s existing 7NOW trademark to be removed from the register because it had not been used by the media company in the three years to June 10, 2019.

The trade marks office found Seven had not used the logo as a trademark, which is a specific form of usage as a brand. During the bulk of the three-year period, the phrase 7NOW had only been used in a domain name that redirected to the 7PLUS site.

Seven asked the Federal Court to overturn that decision. Thawley dismissed Seven’s appeal with costs, subject to a small area of agreement between the parties.

7-Eleven agreed that Seven’s 7NOW trademark could remain on the register in relation to goods and services unrelated to the convenience store’s business, limiting the issues that needed to be decided by the judge.

Seven had argued the 7-Eleven logo was similar to its branding and might cause confusion but Thawley said that “the use of 7NOW by another entity in connection with retailing services is unlikely to cause confusion or damage Seven’s private interests”.

“It can be accepted that if the 7NOW mark were used in the context of broadcasting services, then a consumer would assume a connection with Seven,” he said.

“But, if a consumer saw the 7NOW mark in connection with the sale of food or goods typically found in convenience stores, I do not think any confusion would arise.”

The convenience store chain had argued “Seven should not be able to monopolise all 7-formative marks for wide-ranging goods and services, including services outside its core broadcasting services”, Thawley said.

“I take these submissions into account. Plainly enough, different traders do want to use marks with the digit 7.”

Thawley raised the prospect Seven could continue to use the 7NOW logo “exactly the way it is now” even if its trademark was removed from the register for some categories of goods and services.

“There was no evidence of any different future planned use of the 7NOW [trademark] by Seven,” he said. Thawley found Seven had not used its logo as a trademark in the three-year period. 7-Eleven’s application to have it removed from the register in specific categories succeeded.