Seven Network (Operations) Limited v 7-Eleven Inc

• Jurisdiction: Australia Federal only
• Judgment Date: 08 June 2023
• Neutral Citation: [2023] FCA 608
• Date: 08 June 2023
• Court: Federal Court

Federal Court of Australia

Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608

Appeal from:	Seven Network (Operations) Limited v 7 Eleven Inc [2021] ATMO 58; 164 IPR 370
File number(s):	NSD 735 of 2021
Judgment of:	THAWLEY J
Date of judgment:	8 June 2023
Catchwords:	TRADE MARKS – appeal from decision of delegate of Registrar of Trade Marks – whether trade mark should be removed from Trade Marks Register for non-use – whether onus of proof discharged in relation to non-use period –whether Court should exercise discretion under s 101 of the Trade Marks Act 1995 (Cth) not to remove trade mark – public interest and risk of confusion – part of appeal allowed with consent of parties – appeal otherwise dismissed
Legislation:	Trade Marks Act 1995 (Cth) ss 6(1), 17, 92(1), 92(2), 92(4)(b), 100(1)(c), 100(3), 101(2), 101(3), 102
Cases cited:	Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107 E & J Gallo Winery v Lion Nathan [2010] HCA 15; 241 CLR 144 Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281; 98 IPR 1 Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited (No 2) [2021] FCA 1404; 164 IPR 5 Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883 Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115 Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; 30 FCR 326 Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494 Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; 244 FCR 557 McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481; 34 IPR 537 Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; 156 CLR 414 Nature’s Blend Pty Ltd v Nestle Australia Ltd [2010] FCAFC 117; 272 ALR 487 Nissan Motor Company v Nissan Computer Corporation 378 F (3d) 1002 (9th Cir, 2004) PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128; 285 FCR 598 Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719; 141 IPR 463 Seven Network (Operations) Limited v 7 Eleven Inc [2021] ATMO 58; 164 IPR 370 Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 Solahart Industries Pty Ltd v Solar Shop [2011] FCA 700; 281 ALR 544 Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519 Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565; 156 IPR 1 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156; 237 FCR 388 TiVo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438; 61 IPR 242 Woolworths Ltd v BP plc [2006] FCAFC 52; 150 FCR 134
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	174
Date of hearing:	15, 16 March 2023
Counsel for the Applicant:	Mr E Heerey KC with Ms F St John
Solicitor for the Applicant:	Herbert Smith Freehills
Counsel for the Respondent:	Mr C Smith SC
Solicitor for the Respondent:	Corrs Chambers Westgarth

ORDERS

		NSD 735 of 2021
BETWEEN:	SEVEN NETWORK (OPERATIONS) LIMITED Applicant
AND:	7-ELEVEN INC. Respondent

order made by:	THAWLEY J
DATE OF ORDER:	8 June 2023

THE COURT ORDERS THAT:

1. The parties confer with a view to agreeing by 12:00pm on 14 June 2023: (a) orders to give effect to these reasons; and (b) appropriate orders with respect to costs.

2. The proceedings be listed at 9:00am on 15 June 2023 for resolution of any dispute as to appropriate orders.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THAWLEY J:

INTRODUCTION

1. By an originating application filed on 21 July 2021 the appellant, Seven Network (Operations) Limited, appeals to the Court in its original jurisdiction under s 104 of the Trade Marks Act 1995 (Cth) (TMA) from a decision of a delegate of the Registrar of Trade Marks: Seven Network (Operations) Limited v 7 Eleven Inc [2021] ATMO 58; 164 IPR 370.

2. The delegate’s decision addressed a non-use application made by the respondent, 7-Eleven Inc, under s 92(1) of the TMA to remove Seven’s Australian Registered Trade Mark No 1540574 for the word “7NOW” in classes 9, 35, 38 and 41 (the 7NOW Mark). That application was made on the ground mentioned in s 92(4)(b) of the TMA, namely that Seven had not used the 7NOW Mark, or had not used it in good faith, during the three years between 10 June 2016 and 10 June 2019 (the non-use period). The delegate held that the 7NOW Mark should be removed from the register. The delegate was not satisfied that Seven had used the 7NOW Mark during the non-use period and was therefore satisfied that the ground on which 7-Eleven’s application had been made was established. The delegate did not exercise the discretion in s 101(3) of the TMA not to remove the mark.

3. Although s 104 of the TMA furnishes a statutory right of “appeal”, the proceeding is by way of a hearing de novo: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156; 237 FCR 388 at [192](2) (Besanko, Jagot and Edelman JJ). The Court stands in the shoes of the Registrar to consider the relevant issues afresh: Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115 at 119 and 126; Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494 at [21]; Woolworths Ltd v BP plc [2006] FCAFC 52; 150 FCR 134 at [30].

BACKGROUND FACTS The Seven Group

4. Seven West Media Limited is the ultimate holding company of the Seven Group, a group of companies that together operate an integrated multi-media business, with a presence in broadcast television, publishing and online.

5. Seven is the major operating company for the Seven Group and operates the Seven Network, a major Australian commercial free-to-air television network broadcasting across Australia for many years. Seven’s core business operation is to generate revenue from the provision of advertising services and selling advertising space on its television channels. In order to generate that revenue, Seven makes content available for free and...