Trademark Law Update: Seven Network v 7-Eleven – Key Ruling on Non-Use and Limits of Brand Protection
Background
Seven Network (Operations) Limited owned Australian Trade Mark Registration No. 1769933 for 7NOW, filed on 10 June 2016. The registration covered:
- Class 9: computer software, downloadable applications, and related goods
- Class 35: advertising, promotion, retail and wholesale services
- Class 38: broadcasting, telecommunications and streaming services
- Class 41: entertainment, including television and online content services
When 7-Eleven sought to register 7NOW for its delivery service, Seven opposed. 7-Eleven countered with a non-use removal application under s 92 of the Trade Marks Act 1995 (Cth).
Trademark registration is the process of securing legal protection for a trademark by filing an application with the appropriate intellectual property office or authority of a country such as IP Australia or United States Patent and Trademark Office. It establishes and confirms the exclusive rights of the trademark owner to use the mark in connection with specific goods or services.
Protecting trademarks on an international scale is crucial for businesses seeking to establish and maintain a global presence. The World Intellectual Property Organization (WIPO) offers a comprehensive framework for trademark registration that simplifies and streamlines the process, enabling businesses to secure their valuable intellectual property rights across multiple jurisdictions.
The Decisions
Delegate’s Decision
Ordered removal of the mark across most classes, except for limited services under Class 35.
Federal Court (Primary Judge)
Confirmed the removal. The Court held that:
- Redirecting 7now.com.au to 7PLUS was not trade mark use.
- The “7NOW” website banner was not used as a badge of origin.
Full Federal Court
Upheld most of the removal, preserving only a narrow portion of Class 35.
Trade Mark Outcomes by Class: Seven Network v 7-Eleven
Class | Goods/Services (General Description) | Outcome |
9 | Software, apps, downloadable media | Removed – no evidence of genuine use |
35 | Advertising, promotion, retail/wholesale services | Partially survived – retained only for “promotion and sale of goods and services for others via online promotional material and promotional contests”; all other services removed |
38 | Broadcasting, telecommunications, streaming | Removed – website redirects insufficient |
41 | Entertainment, including TV and online content | Removed – reputation alone not enough without clear trade mark use |
Key Legal Principles on Trade Mark Non-Use
- Use must be as a trade mark: Under section 17, the mark must distinguish goods or services in trade.
- Domain ownership is not trade mark use: Passive or redirecting websites do not qualify.
- Partial removal is possible: A mark can survive for some goods or services even if removed for others.
- Avoid overly broad claims: Wide specifications without evidence of use are vulnerable to challenge.
Implications for Trade Mark Owners, Challengers and Practitioners
- For trade mark owners: Audit your portfolio regularly and make sure your marks are actively used in each class.
- For challengers: Non-use applications remain a strong tool against dormant or defensive registrations.
- For practitioners: Evidence should be contemporaneous, credible, and clearly linked to commercial use.
Practical Takeaway
A trade mark registration will not protect unused rights. Even well-known businesses risk losing coverage if they cannot show genuine use. To maintain protection:
- Register strategically – only for goods and services you actually use.
- Keep dated evidence – retain examples of advertising, packaging, and online use.
- Review regularly – check every few years for classes that may be vulnerable.
In trade mark law, it remains true: use it or lose it.
If you’re unsure whether your trade mark is genuinely in use or at risk of removal, it’s best to get tailored legal advice early. The team at Bookmark IP can review your trade mark portfolio, assess potential vulnerabilities, and guide you on how to maintain and protect your rights.
Contact Bookmark IP today to speak with one of our experienced solicitors for clear, practical advice on trade mark protection, non-use removal, and IP strategy in Australia.
