7-Eleven Inc [2016] NZIPOTM 9 (27 May 2016)


7-Eleven applied to register its stripe colours (shown below) as a trade mark in relation to retail and convenience store services (in Classes 35 and 43).

The New Zealand Trade Marks Office issued a notice of rejection on the basis that the trade mark was not distinctive and the evidence of acquired distinctiveness filed by the applicant was not sufficient to show that the trade mark had, in fact, been used to a level that would allow for acceptance.

The rejection was subject to a Hearing appeal applied for by the applicant.

The applicant’s evidence demonstrated that it had been using the stripe colours since at least 1992 on its own, as well as with the 7-ELEVEN trade mark.

Despite its evidence and arguments, the Assistant Commissioner was not satisfied that the stripe colours were functioning as a trade mark and ‘while some consumers may be attracted to the bright and bold stripes that comprise 7-Eleven’s device mark, I do not consider the mark to be memorable to the extent that its essence will be recalled by the ordinary customer’.

Further, the Assistant Commissioner noted that there was no direct education of the public that the stripe colours were a badge of origin or that the stripe colours is intended to be a distinctive mark indicative of trade source.

Another determinative factor was the nature of convenience store services.  On this point, the Assistant Commissioner noted that there would tend to be a low level of attention paid by the average consumer of the applicant’s services.

Finally, the Assistant Commissioner also noted that a significant portion of the evidence of use included use with the 7-ELEVEN word mark.  Such use fell short of establishing that the stripe colours alone would be seen as a stand-alone trade mark.

The application is to be rejected.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.

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