Fanatics, LLC v FanFirm Pty Limited
[2025] FCAFC 87
•9 July 2025
FEDERAL COURT OF AUSTRALIA
Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87
Appeal from: FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764 File number(s): NSD 1030 of 2024 Judgment of: BURLEY, JACKSON AND DOWNES JJ Date of judgment: 9 July 2025 Catchwords: TRADE MARKS – infringement – s 120 of the Trade Marks Act 1995 (Cth) – use as a trade mark – whether use on information labels is use as a trade mark – whether use on a website is use in relation to goods or use in relation to online retail services – whether goods are of the same description.
TRADE MARKS – defences to infringement – s 122(1)(a)(i) of the Act – good faith use of own name – where infringer had knowledge of prior use of mark – whether good faith use established.
TRADE MARKS – defences to infringement – s 122(1)(f) and (fa) of the Act – whether person using the infringing mark would obtain registration – s 44(3) of the Act – honest concurrent use – whether honest use established – application of s 58 and s 60 of the Act to honest concurrent use defence.
TRADE MARKS – defences to infringement – s 122(1)(e) of the Act – exercising a right to use a trade mark given under the Act – whether products infringed fall within scope of right to use trade mark.
TRADE MARKS – cancellation of registered trade marks – s 88(2)(a) of the Act – application to cancel marks on grounds on which registration could have been opposed – s 58 of the Act – whether owner of the mark as at the filing date.
TRADE MARKS – cancellation of registered trade marks – s 88(2)(a) of the Act – application to cancel marks on grounds on which registration could have been opposed – s 44 of the Act – substantially identical or deceptively similar to registered mark – whether ss 44(3) or (4) made out in defending cancellation under s 44 – whether honest concurrent or prior use established.
TRADE MARKS – cancellation of registered trade marks – s 88(2)(a) of the Act – application to cancel marks on grounds on which registration could have been opposed – s 60 of the Act – whether, because another trade mark had acquired a reputation in Australia, registration would be likely to deceive or cause confusion.
TRADE MARKS – cancellation of registered trade marks – s 88(2)(c) of the Act – whether trade mark likely to deceive or cause confusion.
TRADE MARKS – cancellation of registered trade marks – s 89 of the Act – whether discretion ought to have been exercised against rectification of the Register of Trade Marks.
CONSUMER LAW – alleged breach of s 18 and s 29 of the Australian Consumer Law – passing off.
Legislation: Competition and Consumer Act 2010 (Cth) Schedule 2, ss 18, 29
Federal Court of Australia Act 1976 (Cth) s 37M
Trade Marks Act1995 (Cth) ss 6, 7(4), 17, 20(1)(a), 44(1), 44(2)(a)(i), 44(3), 44(4), 58, 60, 88(1), 88(2)(a), 88(2)(c), 89, 120, 120(2)(a), 122(1)(a)(i), 122(1)(e), 122(1)(f), 122(1)(fa)
Trade Marks Regulations 1995 (Cth) reg 8.2
Cases cited: Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; (2018) 261 FCR 301
Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6; (2018) 259 FCR 514
Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (No 3) [2015] FCA 1436; (2015) 116 IPR 159
Anheuser-Busch v Budejovicky Budvar [2002] FCA 390; (2002) 56 IPR 182
Baume & Co Ltd v AH Moore Ltd [1958] Ch 907
Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; (2018) 354 ALR 353
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258
Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 68; (1994) 31 IPR 375
Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107
Deckers Outdoor Corporation Inc v Farley (No 2) [2009] FCA 256; (2009) 176 FCR 33
Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company [2018] FCA 1014; (2018) 262 FCR 76
E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144
E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334
Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1967] HCA 51; (1967) 116 CLR 254
FanFirm Pty Limited v Fanatics, LLC (No 2) [2024] FCA 826
FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764
Firstmac Limited v Zip Co Limited [2025] FCAFC 30
Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239
Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; (2020) 158 IPR 9
House v The King [1936] HCA 40; (1936) 55 CLR 499
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Py Ltd [1991] FCA 402; (1991) 30 FCR 326
Killer Queen, LLC v Taylor [2024] FCAFC 149; (2024) 306 FCR 199
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876; (2000) 100 FCR 90
McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102
Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380; (2010) 275 ALR 526
Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130; (2011) 197 FCR 67
PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128; (2021) 285 FCR 598
Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28; (1998)194 CLR 355
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10; (2024) 302 FCR 285
Re Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147
Re Parkington & Co (1946) 63 RPC 171
Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403; (2017) 133 IPR 1
Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; (2023) 277 CLR 186
Seven Network (Operations) Ltd v 7-Eleven Inc [2024] FCAFC 65; (2024) 181 IPR 210
Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1953) 91 CLR 592
Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519
The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407
Vivo International Corp Pty Ltd v Tivo Inc [2012] FCAFC 159; (2012) 99 IPR 1
Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 163; (1994) 49 FCR 89
Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 90 IPR 117
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 306 Date of hearing: 5 – 6 November 2024 Counsel for the Appellant: Mr AJL Bannon SC, Mr L Merrick SC and Ms M Evetts Solicitor for the Appellant: King & Wood Mallesons Counsel for the Respondent: Mr C Dimitriadis SC and Ms S Ross Solicitor for the Respondent: Sparke Helmore Lawyers
ORDERS
NSD 1030 of 2024 BETWEEN: FANATICS, LLC
Appellant
AND: FANFIRM PTY LTD
Respondent
AND BETWEEN: FANFIRM PTY LTD
Cross-Appellant
AND: FANATICS, LLC
Cross-Respondent
ORDER MADE BY:
BURLEY, JACKSON AND DOWNES JJ
DATE OF ORDER:
9 JULY 2025
THE COURT ORDERS THAT:
1.The parties are to confer and supply draft short minutes of order giving effect to these reasons (marked up with any points of difference) together with submissions on the question of costs (limited to 5 pages), to the chambers of Burley, Jackson and Downes JJ by 4 pm on 30 July 2025.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
1 INTRODUCTION
[1]
1.1 The appeal proceedings
[1]
1.2 The trade marks
[9]
1.3 Background findings of the primary judge
[15]
1.4 The Orders made
[25]
1.5 Summary of conclusions in the appeal
[27]
2 APPEAL FROM FINDINGS OF TRADE MARK USE BY FANATICS
[28]
2.1 Introduction
[28]
2.2 The primary judge’s findings
[30]
2.3 The information label issue
[54]
2.3.1 The relevant law concerning use as a trade mark
[54]
2.3.2 The submissions
[59]
2.3.3 Consideration
[61]
2.4 The website issue
[76]
2.4.1 The submissions
[76]
2.4.2 Consideration
[78]
2.5 The goods of the same description issue
[113]
2.5.1 The submissions
[113]
2.5.2 Consideration
[114]
3 APPEAL FROM REJECTION OF FANATICS’ AFFIRMATIVE DEFENCES
[124]
3.1 Introduction
[124]
3.2 The primary judge’s findings
[132]
3.3 The submissions
[144]
3.4 Consideration – s 122(1)(a)(i) Good faith use of own name
[148]
3.5 Consideration – ss 122(1)(f) and (fa) and s 44(3) Honest concurrent use
[177]
3.6 Application of s 58 and s 60 in the context of ss 122(1)(f) and (fa)
[186]
3.6.1 Section 58
[188]
3.6.2 Section 60
[200]
3.6.3 The intersection of ss 44(3), 58 and 60
[210]
4 CANCELLATION OF FANATICS’ CLASS 35 REGISTRATIONS
[210]
4.1 Introduction
[210]
4.2 The s 58 challenge
[214]
4.3 The s 44 challenge
[219]
4.4 The section 60 challenge
[225]
4.5 The s 88(2)(c) challenge
[228]
4.6 The exercise of discretion
[233]
5 FANATICS’ CLAIM AGAINST FANFIRM
[256]
5.1 Trade mark infringement
[256]
5.2 Claim under the ACL and passing off
[259]
6 NOTICE OF CONTENTION AND APPLICATION FOR LEAVE TO FILE A CROSS APPEAL
[264]
6.1 Introduction
[264]
6.2 The defence under s 122(1)(e)
[271]
6.2.1 Introduction
[271]
6.2.2 Consideration
[281]
6.2.2.1 The Infringing Goods Issue
[283]
6.2.2.2 The Timing Issue
[296]
6.2.2.3 Leave to Cross Appeal
[296]
7 CONCLUSION
[304]
THE COURT:
1. INTRODUCTION
1.1 The appeal proceedings
This proceeding, like many others brought primarily under the Trade Marks Act1995 (Cth) (Trade Marks Act), raises too many duplicated claims and arguments. At its heart, the dispute concerns the trade mark entitlements of two parties who have decided to use the word “Fanatics” as a trade mark and who, after a period of apparent co-existence, have decided to sue each other for trade mark infringement, each contending that various trade marks of the other are infringed or invalid.
Broadly, the case advanced before the primary judge followed a familiar course. The applicant below and respondent on the appeal, FanFirm Pty Ltd, alleged infringement of two of its registered trade marks. The respondent below and present appellant, Fanatics, LLC, contended that the impugned sign was not used as a trade mark within the scope of goods or services of the trade mark registration. Fanatics contended that for those uses of impugned signs that did amount to trade mark use, it was entitled to rely on four affirmative defences available under the Trade Marks Act. As a fall back, in its cross-claim Fanatics contended that the FanFirm trade marks were invalid and ought to be removed from the Register of Trade Marks. It also alleged that FanFirm had itself infringed its registered trade marks. In response, FanFirm contended that it was entitled to rely on various defences under the Trade Marks Act and also contended that the trade marks asserted should be revoked. Both parties also contended that the other had acted in breach of the Australian Consumer Law (ACL) and engaged in passing off.
Ultimately, Fanatics was found by the primary judge to be liable for trade mark infringement. Her Honour rejected various defences advanced by Fanatics and dismissed its cross claim; FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764.
The learned primary judge picked her way through the welter of issues raised, including duplicated defences and cross-claims for revocation, and found that FanFirm should succeed on its case for trade mark infringement, rejecting defences raised under ss 122(1)(a)(i), 122(1)(f) and 122(1)(fa) (and via those provisions, ss 44(3), 58 and 60), and partially rejecting a defence under s 122(1)(e). She also found that aspects of the trade marks owned by Fanatics should be cancelled under s 88(2)(a) having regard to grounds for opposition under ss 44, 58, 59, 60 and 88(2)(c), and declined to exercise the discretion under s 89(1) not to give effect to the cancellation.
In its Amended Notice of Appeal, Fanatics identifies 19 grounds of alleged error that present as a scattergun of challenges to legal and factual findings of the learned primary judge. Fortunately, Fanatics’ submissions were corralled into four categories that are more coherent, namely, that the primary judge erred as follows. First, in making findings of infringement in favour of FanFirm. Secondly, in finding that three of Fanatics’ own trade marks should be cancelled in relation to class 35 services. Thirdly, in dismissing its cross claim for trade mark infringement against FanFirm. Fourthly, in dismissing Fanatics’ cross claims brought under the ACL and for passing off against FanFirm. Fanatics also contends that the primary judge erred in awarding FanFirm its costs of the proceedings.
FanFirm relies upon a Further Amended Notice of Contention which advances five bases upon which it contends the primary judge ought also to have found in its favour. The first concerns the application of the defences under s 122(1), the second the characterisation of Fanatics as a trade rival or competitor, the third the application of s 122(1)(e) as a defence to infringement to the benefit of Fanatics, the fourth the sale by FanFirm of clothing in the nature of third-party licensed merchandise prior to 2012 and the fifth the availability to FanFirm of a defence to infringement of Fanatics’ trade marks pursuant to ss 122(1)(f) and (fa). FanFirm sought leave to rely on a Notice of Cross-Appeal on the second day of the hearing of the appeal. We address that in section 6 of these reasons.
The principles relevant to consideration of a decision under appellate review are well established and set out in Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; (2018) 261 FCR 301 at [2]–[10] (Allsop CJ) and [45]–[53] (Perram J).
Unless stated otherwise, references to sections in these reasons are to the Trade Marks Act and references to paragraphs are to the primary judgment.
1.2 The trade marks
FanFirm sued on two marks (the FanFirm Marks), being no. 1232983 for the word “FANATICS” in classes 9, 16, 24, 25, 32, 38 and 39 and having a priority date of 2 April 2008 (FanFirm Word Mark) and no. 1232984 for the word “FANATICS” and device in classes 9, 16, 24, 25, 32, 38 and 39 (FanFirm Device Mark) and having a priority date of 2 April 2008, the device being:
The FanFirm Marks are both registered in the following classes:
Class 9: Motion picture films (recorded); for use in multi media (not limited to recordings for television; world wide web and DVD).
Class 16: Printed material used for advertising and promotional material (although not limited to); postcards, books, bumper stickers, calendars, posters, printed publications and printed matter and photographs; paper flags.
Class 24: Banners; flags (not of paper), including textile flags; woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth.
Class 25: Clothing, footwear and headgear, shirts, scarves, ties, socks, sportswear.
Class 32: Mineral and aerated waters and beer.
Class 38: Providing telecommunication services including content and entertainment; television broadcasts and Internet communication; press or information agencies (news).
Class 39: Organisation of transport and travel facilities for tours; functions; sporting and entertainment events for people and products.
In its cross claim, Fanatics asserted that FanFirm infringed two of its trade marks (the FANATICS Word Marks) being no. 1288633 for the word “FANATICS” in classes 35 and 42 and having a priority date of 10 September 2008 (633 TM) and no. 1905681 for the word “FANATICS” in classes 35 and 42 and having a priority date of 9 January 2018 (681 TM).
In addition, the following trade marks owned by Fanatics were relevant to the case before the primary judge: no. 1288632 for the words “FOOTBALL FANATICS” in class 35 and having a priority date of 10 September 2008 (632 TM), no. 1680976 for the words “SPORT FANATICS” in class 35 and having a priority date of 18 May 2010 (976 TM), and no. 1894688 for the word “Fanatics” and device as shown below, in classes 35 and 42 and having a priority date of 15 November 2017 (688 TM or FANATICS Flag Mark):
The trade marks owned by Fanatics which are listed above are registered in the following classes (subject to some slight variations in the specifications, which are not relevant to the present appeal), save that the FOOTBALL FANATICS and SPORTS FANATICS marks are only registered in class 35 ([22]):
Class 35: Business marketing consulting services; customer service in the field of retail store services and on-line retail store services; on-line retail store services featuring sports related and sports team branded clothing and merchandise; order fulfillment services; product merchandising; retail store services featuring sports related and sports team branded clothing and merchandise.
Class 42: Development of new technology for others in the field of retail store services for the purpose of creating and maintaining the look and feel of web sites for others, not in the field of web site hosting; computer services, namely, creating and maintaining the look and feel of web sites for others, not in the field of web site hosting services; computer services, namely designing and implementing the look and feel of web sites for others, not in the field of web site hosting services; computer services, namely, managing the look and feel of web sites for others, not in the field of web site hosting.
We refer to the FANATICS Word Marks and the FANATICS Flag Mark together as the FANATICS Marks.
1.3 Background findings of the primary judge
The primary judge summarised the origins of the FanFirm business from 1997, when Mr Warren Livingstone proposed the idea of a travelling cheer squad for the Australian tennis squad wearing the word or logo “Fanatics” while giving enthusiastic support for Australian sports teams and players ([23]). This developed into organised tours, where attendees wore “FanFirm branded” t-shirts and caps ([25]). Initially, the business focussed on organising tour and event services for particular sporting events and in 2002 the business expanded to providing organised tour and event services for a wide range of non-sport related events including skiing trips to France and Japan, and Anzac Day in Gallipoli ([27]). Many thousands of people have attended such event tours over the years ([27]).
In September 2004, Mr Livingstone incorporated FanFirm and offered the same goods, services and activities that he had personally ([29]). FanFirm has a database of its customers and subscribers who have purchased FanFirm branded merchandise and/or purchased and participated in tours organised by FanFirm. FanFirm had around 160,000 members on the database ([30]). In addition to sending newsletters to customers on the database, FanFirm operated a loyalty and rewards program from its inception, which entitled customers to participate in online communities operated at the website and receive benefits ([31]). FanFirm began operating from this domain name and also had registered and thefanatics.com.au from at least 2003 ([32]). Until around 2020 the primary website of the FanFirm business was with traffic to being redirected to that website ([34]).
The primary judge noted the evidence given by Mr Livingstone and Mr Fenton Coull (a former sports executive who had business dealings with FanFirm and Mr Livingstone while employed at Tennis Australia) that Mr Livingstone, and FanFirm since its incorporation, sold clothing, including third party licensed merchandise, online via the website from 1998 (and later via and and that branded merchandise was sold in the lobbies of hotels where the tour groups were staying ([37]–[38]). The primary judge considered in section 4.1.1 the evidence adduced by FanFirm of sales of merchandise and in 4.1.3 details of its social media presence.
In section 4.1.4, the primary judge addressed the reputation of FanFirm. FanFirm submitted before the primary judge that as at least December 2010 it had a valuable reputation in the word “Fanatics” with respect to sporting and other events tour services and also sports merchandise, including clothing, headgear, sportswear and footwear ([83]). This was not disputed by Fanatics in relation to the use of the word “Fanatics” in connection with the business of promoting and providing sporting and event tour services ([84]). Nor did Fanatics dispute that as part of its tour services business FanFirm supplied items of clothing and headgear to attendees. The dispute concerned whether or not FanFirm has a reputation in relation to the promotion and sale of merchandise under the FanFirm Word Mark other than as an adjunct to its sporting and event tour service business ([85]).
The primary judge considered:
(1)the length of operation of FanFirm’s tours business ([88]);
(2)the evidence of annual gross income for each year from 1997 ([89]);
(3)the size of the database (around 160,000 contact details) of customers ([90]);
(4)the visibility of large numbers of Fanatics supporters who attended prominent events, such as the Davis Cup in 2003 where between 1,000 and 1,300 Fanatics supporters attended ([93]);
and determined that FanFirm had established that as at December 2010 it had a reputation in the FanFirm Marks, including the word “Fanatics”, with respect to sports merchandise including at least clothing, headgear and footwear, which was separate to and not merely an adjunct of its tour business ([99]).
The primary judge then turned to consider the business of Fanatics, noting that it had begun trading as “Football Fanatics” in 1995 as a traditional store selling sporting merchandise related to the Jacksonville Jaguars NFL team in Jacksonville, Florida, before moving to become an online retail store in 1997 ([106]–[107]). After addressing the history of the names used by Fanatics (to which we refer further below) the primary judge found that Fanatics changed its corporate name and brand to “Fanatics” simpliciter on 7 December 2010 ([115]).
The primary judge noted that in addition to its online sale of officially licensed sports merchandise and apparel, another aspect of Fanatics’ business is the design, implementation, maintenance and management of third party partner e-commerce stores (Partner Stores) for sporting teams, leagues and media brands in the United States and other countries such as England ([117]). Fanatics has also offered a rewards or loyalty program called “FANATICS MVP” since 2004 ([122]) and has offered “FANATICS LIVE” events connecting fans with athletes since 2018 (which has since been renamed to “FANATICS PRESENTS”) ([120]).
The primary judge found that Fanatics has sold products to customers in Australia since 2000, initially under the “FOOTBALL FANATICS” brand, with confidential sales figures showing that the volume of sales into Australia slowly increased each year from 2014 to 2020 but has since dropped off. The volumes have been “meaningful but not overwhelming” ([124]). Mr Zohar Ravid, an executive with Fanatics, gave evidence that prior to 2020, Fanatics’ activity in Australia was limited to selling and shipping merchandise to persons present in Australia, but since that date, Fanatics has pursued Australian-based sporting leagues and teams to offer its partner services, including the development of Partner Stores ([125]).
In section 4.3, entitled “Coexistence prior to 2020”, the primary judge found that other than legal skirmishes in the Australian Trade Marks Office in 2010, 2013 and 2019 – when one or the other of the parties opposed the other’s trade mark applications – the parties largely coexisted until 2020, finding at [137]:
…The respondent has since 2010, operated an online retail store selling licensed third-party team apparel for a wide variety of sports, initially focussing on US sporting leagues, such as the NFL and the NBA, and then expanding to every major sporting code around the world. The applicant operated a tour and events company which sold merchandise both directly related to those events and third-party licensed merchandise relating to Australian national sporting teams such as the Wallabies, Socceroos and Matildas.
Her Honour found that the parties were operating in “the same broad field”, with both targeting sports fans and their enthusiasm for sport and selling merchandise to them over the internet. Prior to 2020, FanFirm had a narrower focus on Australian customers and licensed sports apparel for Australian national teams, and Fanatics did not specifically target Australian customers, instead selling sporting merchandise primarily relating to US sporting teams and codes and European football leagues and teams ([138]). The coexistence was possible because, her Honour found, they operated in slightly different “lanes” that did not overlap. However, the status quo changed in 2020 when both moved out of their lanes: Fanatics by making deals with the Australian retailer Rebel Sport and the Australian Football League (AFL), and FanFirm by launching a “retail store” ([140]).
1.4 The Orders made
On 17 July 2024 the primary judge:
(1)made a declaration to the effect that Fanatics has infringed the FanFirm Word Mark by using the FANATICS Word Marks and the FANATICS Flag Mark (together, the Infringing Marks), in relation to clothing, headgear, sportswear, sports bags, scarves, water bottles, towels and blankets.
(2)granted an injunction that Fanatics be permanently restrained:
…from using the FanFirm Word Mark or any signs that are substantially identical with or deceptively similar to the FanFirm Word Mark, including the Infringing Marks, in relation to the goods and services in respect of which the FanFirm Word Mark is registered, without the permission, authority or licence of [FanFirm].
(3)ordered that the Register be rectified by removing the Infringing Marks in respect of the services in class 35 in which they are registered and that Fanatics’ 976 TM (“SPORT FANATICS”) be removed from the Register.
(4)ordered that the Register be rectified by removing the FanFirm Word Mark and FanFirm Device Mark in respect of goods in classes 9, 16 and 32 and services in class 38.
(5)ordered that FanFirm’s claim be “otherwise dismissed” (Order 6).
(6)ordered that Fanatics’ cross claim be dismissed.
(7)ordered that Fanatics pay FanFirm’s costs of the proceedings, including the cross claim.
Issues arise in this appeal concerning the orders referred to in (1) (2), (3), (5), (6) and (7). The orders for the rectification of the Register in (3) and (4) have been stayed pending the determination of this appeal (FanFirm Pty Limited v Fanatics, LLC (No 2) [2024] FCA 826).
1.5 Summary of conclusions in the appeal
For the reasons set out below, we have found that:
(1)the primary judge erred in her evaluation that the packaging labels or care labels used on certain Fanatics goods, in the absence of other Fanatics branding, constitute use of the word “Fanatics” as a trade mark (section 2.3);
(2)with the exception of the Corporate Goods (as defined below) and the “Fanatics Branded” goods sold by Fanatics on its website (as described below), which were correctly found to infringe, the primary judge erred in finding that the use of the FANATICS Marks on Fanatics’ websites constituted use in relation to class 24 and 25 goods and thus infringed the FanFirm Word Mark (section 2.4);
(3)the primary judge erred in finding that towels and blankets fall within FanFirm’s class 24 registration for the FanFirm Marks (section 2.5);
(4)Fanatics has not demonstrated error in the finding that it could not rely on the defence of ‘good faith use of its own name’ under s 122(1)(a)(i) in respect of its infringement of the FanFirm Word Mark in relation to the Infringing Goods (as defined below) (section 3.4);
(5)Fanatics has not demonstrated error in the finding that it could not rely on the defence of ‘honest concurrent use’ under ss 122(1)(f) or (fa) and s 44(3) in respect of its infringement of the FanFirm Word Mark in relation to the Infringing Goods. However, her Honour erred in finding that s 58 would prevent Fanatics from relying on the defence in respect of the FANATICS Flag Mark (sections 3.5 and 3.6);
(6)Fanatics has not demonstrated error in the finding that the FANATICS Marks should be cancelled pursuant to s 88(2)(a), on grounds under ss 44, 58 (in respect of the FANATICS Word Marks only) and 88(2)(c). However, her Honour erred in finding that s 60 provided an additional ground for cancellation of the FANATICS Marks pursuant to s 88(2)(a) (section 4);
(7)as we have upheld the primary judge’s finding that the FANATICS Marks should be cancelled, it was not necessary to consider Fanatics’ appeal regarding its infringement case against FanFirm (section 5.1);
(8)Fanatics has not established error in the finding rejecting its claims under the ACL and passing off (section 5.2); and
(9)the primary judge erred in finding that the defence under s 122(1)(e) was available to Fanatics in respect of its infringement of the FanFirm Word Mark in relation to the Infringing Goods, and erred in making Order 6 otherwise dismissing FanFirm’s claim (section 6).
2. APPEAL FROM FINDINGS OF TRADE MARK USE BY FANATICS
2.1 Introduction
On the question of infringement, Fanatics contends that the primary judge erred in finding:
(1)that its use of the word “Fanatics” in relation to certain swing tags, care label information and packaging amounted to use as a trade mark (information label issue);
(2)that its use of “Fanatics” on the websites fanatics.com and fanatics-intl.com amounted to trade mark infringement (the website issue); and
(3)that certain goods sold by Fanatics were “goods of the same description” as the goods in respect of which the FanFirm Word Mark was registered (the goods of the same description issue).
In its written submissions, Fanatics parenthetically refers to grounds 1–4 and 7–13 as relevant to these three subjects. We deal with Fanatics’ appeal from the primary judge’s findings on its defences to infringement in section 3 below.
2.2 The primary judge’s findings
There was no dispute before the primary judge that the FanFirm Word Mark, which has a priority date of 2 April 2008, is substantially identical to the FANATICS Word Marks ([223]). The primary judge also found that the FANATICS Flag Mark was deceptively similar to the FanFirm Word Mark ([237]), and this was not challenged on appeal. As noted above, we refer to the FANATICS Word Marks and the FANATICS Flag Mark together as the FANATICS Marks.
FanFirm’s infringement case before the primary judge involved allegations first, that Fanatics had used its FANATICS Marks in Australia in relation to clothing, headgear, sportswear, umbrellas, sports bags, scarves, water bottles, towels, flags, footwear and blankets (Impugned Goods) to indicate a connection between the goods and Fanatics ([169]), and that second, Fanatics had offered and promoted loyalty and reward services and services whereby it connected fans to athletes (Impugned Services) in Australia under and by reference to the FANATICS Marks in order to indicate a connection between those services and Fanatics ([170]). The primary judge rejected the allegations of infringement by reference to the Impugned Services ([264], [271]–[272]).
At [160]–[163] the primary judge set out relevant parts of ss 120, 17 and 6 of the Trade Marks Act, and at [166] quoted the decision of the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; (2023) 277 CLR 186 as follows:
23 Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
24 Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not “as a trade mark” was in Irving’s Yeast-Vite Ltd v Horsenail, where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
25 The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.
(Footnotes omitted)
Her Honour noted that there were three categories of dispute going to the question of trade mark infringement by the Impugned Goods.
The first category concerned Fanatics’ use of the FANATICS Marks on branded corporate merchandise ([172(a)], section 6.2.2.1).
The primary judge considered a number of examples of trap purchases tendered as evidence of corporate goods acquired from the Fanatics website at in April 2022 and July 2023 ([181]), and screenshots of the purchasing process ([184]–[185]). Her Honour described the homepage showing the FANATICS Flag Mark displayed at the top left corner of the page and a navigation bar above the product listing on the webpage which included references to “FANATICS CORPORATE GEAR” and the like. Using the menu, the trap purchaser navigated to a navy t-shirt located under “Fanatics Corporate T-Shirts” and a scarf under “Fanatics Corporate Accessories” ([185]). The scarf bears the word “Fanatics” on it in large letters.
Three website pages from are reproduced in the primary judgment at [185], displaying various items of clothing with labels referring to them as “Fanatics Corporate” clothing, as follows:
The primary judge found at [186] that “the above items”, referring, as we understand it, to all of the items identified in [185], are examples of Fanatics using its FANATICS Word Marks as a trade mark in relation to clothing, including sports apparel.
Although in ground 10 of its Notice of Appeal Fanatics contends that the primary judge erred in her conclusions in this section, it addressed no submissions to the primary judge’s findings in this category and we address that ground no further.
The second category of use by Fanatics concerned “third party licenced merchandise” where the argument addressed was as follows:
187The applicant contends that the respondent has advertised and sold clothing, including third party licensed merchandise, by reference to the FANATICS Word and Flag Marks because:
(a)some of the goods bear one of the FANATICS Marks on the goods themselves, such as on the label, barcode, swing tag or packaging labels; and
(b)the goods are displayed on, and are accessible via, the respondent’s websites at and and those websites prominently bear the FANATICS Marks.
Her Honour noted that trap purchases were made by a solicitor, Mr Alastair Cockerton, of a “Hawthorn Fanatics Shirt” from the AFL store at (the Hawthorn Football Club Shirt) and a red Men’s Kansas City Chiefs Hoodie from the “Fangear” section of the Rebel Sport website at Her Honour set out observations made by Mr Cockerton about the product page for the Hoodie and statements on the “Frequently Asked Questions” page on the Rebel Sport website at [189] and [190]. Her Honour also noted at [191] that the Hoodie as tendered had a care label sewn into the garment that referred to, amongst others, FANATICS International and FANATICS (Germany).
At [192] her Honour produced images of the Hawthorn Football Club Shirt and noted Mr Cockerton’s observation that it arrived in packaging labelled “Fanatics Button-up Shirt” and with a swing tab as depicted:
The primary judge also referred to a further purchase from the website made by Mr Cockerton in September 2023 of a turquoise football jersey described as “Australia Women’s National Team Nike Women’s 2023 Away Stadium Replica Jersey – Turquoise” (at [193]).
The primary judge found at [194]:
I consider that the role of the FANATICS Marks on the clothing (stitched or printed on the back) and care labels is to denote the manufacturer of those goods. Mr Swallow said in relation to the FANATICS branded goods: “you can think of ‘Fanatics-branded’ in the same way that we look at, say, an Adidas or a Nike. It’s just that’s the name that we call our own branded merchandise, Fanatics”…
(Emphasis added)
The primary judge rejected a contention advanced by Fanatics that the use of the FANATICS Marks on labels or swing tags does not amount to trade mark use because they are not acting as badges of origin in any relevant sense ([195]). The primary judge relevantly held:
198It would be apparent to any reasonable Australian consumer that the Hawthorn Football Club (or any sporting club) does not manufacture clothing, and that the Hawthorn indicia are part of the design of the shirt material. The use of the FANATICS Marks in these instances are being used as “a badge of origin” to distinguish the respondent’s relevant good from goods manufactured by other sports clothing manufacturers such as Nike or Adidas: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41]–[42] (per French CJ, Gummow, Crennan and Bell JJ).
199The fact that, in some circumstances, the FANATICS Marks are not physically on the clothing itself, but on a tag or label attached to the garment, is not decisive. The phrase “used as a trade mark … in relation to goods” in s 120(1) of the Act does not require the goods be physically branded with the mark but “can include use of the mark on product packaging or marketing such as on a website”: Self Care at [23].
200In this case, the FANATICS Marks on the FANATICS branded goods are being used as a badge of origin and thus the use constitutes trade mark use. The fact that other marks are present on the clothing, such as the logo of the relevant sporting team or league, does not matter. Dual branding is “nothing unusual” and does not have the effect that one of the marks is not being used as a trade mark: see Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (2021) 162 IPR 52 at [66] (per Jagot, Lee and Thawley JJ) and the cases there cited (these comments were not disturbed on appeal in Self Care). See also Anheuser at [189] and [191] (per Allsop J).
On appeal, Fanatics does not dispute that where the FANATICS Word Mark or Flag Mark appears stitched into the inside collar of a shirt the finding of trade mark use is properly made. However, it contends that the primary judge erred in finding that use of the word “Fanatics” on various care labels, packaging barcodes, swing tags or postage packaging (which Fanatics describes as information label use) could, on the evidence in this case, be described as “trade mark use” within the authorities.
The third category concerns third party licensed merchandise sold on the Fanatics websites that are not visibly branded with the FANATICS Marks, such as jerseys for a football team manufactured by Nike or Adidas ([201]).
The primary judge found that the vast majority of goods sold by Fanatics are not themselves branded with FANATICS Marks ([203]) and noted that the point of departure between the parties was that whereas Fanatics accepted that the domain name constitutes use of the FANATICS Word Marks as a trade mark in relation to its online retailing services, it disputed that the domain name constitutes use of the FANATICS Marks in relation to the clothing and apparel offered for sale at that site ([207]).
The primary judge cited a number of first instance decisions concerning the question of whether online use of a sign may amount to trade mark use in relation to goods that it promotes as well as services, noting at [213] that Fanatics’ use of FANATICS on its website was not limited to its use as part of the domain name, and included displays of the FANATICS Flag Mark on the top left of each page and employing the word FANATICS in relation to the goods displayed for sale on the website.
The primary judge found:
201The next issue is whether third party licensed merchandise sold on the FANATICS websites that are not FANATICS branded goods, such as jerseys for a football team manufactured by Nike or Adidas, are being sold by reference to the FANATICS Marks. Namely, whether use of a domain name can constitute trade mark use in relation to goods sold on that website.
202For the reasons set out below, I consider the respondent’s sale of third party licensed merchandise to be a sale of goods by reference to the FANATICS Marks and to constitute use of FANATICS as a trade mark.
…
214I consider that the use of FANATICS in the respondent’s domain name and on its website on the webpages displaying goods for sale constitutes use of the FANATICS Word Marks as a trade mark. However, the question remains as to whether these uses are simply use in respect of online retail services, as the respondent contends, and whether that is a different use to use in respect of the goods depicted on the website.
….
220The respondent invites consumers to visit its website at At that website, goods are available for purchase under the name FANATICS as part of the domain name, displayed in page headings and in references to products. I consider that this constitutes use of the FANATICS Marks as trade marks in relation to the goods for which the applicant’s FanFirm Marks are registered, including clothing, sportswear and headgear.
(Emphasis added)
Fanatics contends on appeal that the primary judge erred in reaching this conclusion, which we address below as the “website issue”.
The primary judge next relevantly considered whether the uses by Fanatics of the impugned signs amounted to use in relation to goods or services of the same description as or closely related to those in respect of which the FanFirm Word Mark is registered. In relation to services, the primary judge found that the services that Fanatics offers under the FANATICS MVP sign are not services of the “same description” as the services that FanFirm’s Marks are registered for, and are also not “closely related” to any of the goods FanFirm’s marks are registered for ([257], [264]). While her Honour found that the services provided under Fanatics’ FANATICS LIVE mark fell within FanFirm’s registration for class 38, she noted her earlier finding that neither FANATICS MVP nor FANATICS LIVE is deceptively similar to the FanFirm Word Mark, and hence it followed that there was no infringement by those marks ([271]–[272]). These findings are not the subject of appeal.
However, Fanatics takes issue with the findings of the primary judge in relation to goods of the same description at [242]–[256]. There was no dispute before the primary judge that clothing, headgear, sportswear, scarves, flags and footwear as promoted and sold by Fanatics fell within the goods in respect of which the FanFirm Marks were registered ([243]). However, the parties disagreed as to whether or not umbrellas, sports bags, water bottles, towels and blankets fell within the scope of the registration.
The primary judge cited the decisions in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; (2020) 158 IPR 9 at [277]–[286] (Burley J) and McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 (Kenny J) at [18] and concluded that blankets, throws and towels are goods of the same description as “woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth” (being part of the class 24 registration) ([245]) and that sports bags and water bottles are goods of the same description as “sportswear” (being part of the class 25 registration) ([251]–[253]). Fanatics challenges these findings on appeal, which we address below as the “goods of the same description issue”.
2.3 The information label issue
2.3.1The relevant law concerning use as a trade mark
Section 17 of the Trade Marks Act provides that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Subsection 7(4) provides that “use of a trade mark in relation to goods” means “use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)”.
The word “sign” is defined in s 6 of the Trade Marks Act as follows:
sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
The authorities establish that context is all-important. Not every use of a sign that is identical with or deceptively similar to a registered trade mark will infringe within s 120 of the Trade Marks Act. In The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, Kitto J (Dixon CJ, Taylor and Owen JJ agreeing) noted at 425 that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the viewer as:
… possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant.
That statement has been followed on many occasions. The test has also been framed as a question of whether or not the use in question has been use as a “badge of origin”: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144 at [43]; Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107 at [19]; Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876; (2000) 100 FCR 90 at 103 [15]–[16] per Burchett J (Hill and Branson JJ agreeing); RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10; (2024) 302 FCR 285 at [53]. As we have noted above, the primary judge set out considerations relevant to the question as most recently formulated by the High Court in Self Care.
2.3.2The submissions
Fanatics contends that the primary judge erred in finding that reference to the name “Fanatics”, on care labels, packaging barcode labels, stickers on swing tags and postage packaging relating to third party licensed merchandise, whether alone or with other words such as a corporate name, was use in a trade mark sense. It submits that such information labels could not function as a trade mark because they could not be seen in the course of trade, all of them being visible only after an online order had been placed and delivery made. It submits that the primary judge failed to make an objective and contextual assessment of the use made and exemplifies the error by reference to the care labels sewn into the inner seam of garments, the barcode stickers and stickers applied to packaging materials. Taking the Hawthorn Football Club Shirt as an example (at [192]), Fanatics submits that a reasonable consumer would regard Hawthorn (Hawks) or the AFL as the brands indicating the trade source of the product and that the reference to Fanatics would not be perceived to be used as a badge of origin.
FanFirm defends the approach of the primary judge. It submits that the nature and purpose of the word “Fanatics” on the information labels is to identify or connote the source of the goods and that not only what precedes the customer’s receipt of the clothing, but also the receipt of the labels themselves, is important. It submits that when proper regard is had to the context it is plain that the examples relied upon by Fanatics were being used to indicate a connection between the goods and the user of the mark.
2.3.3Consideration
The contention advanced on appeal is that the primary judge erred in finding that the use of the word “Fanatics” on swing tags, barcodes and packaging labels amounted to trade mark use. As a preliminary point we note that although there may be some ambiguity in her Honour’s reasons in this regard at [220], FanFirm does not dispute that the primary judge’s findings, and the declaratory and injunctive relief ordered, encompass each such uses where the word “Fanatics” appears independently of other uses in relation to the goods in question (that is, each use of “Fanatics” on the swing tags, barcodes, care and packaging labels is an independent instance of trade mark use).
The distinction between use of a sign in relation to goods and use of a sign as a trade mark is not always easy to apply. Whether a sign has been used in a relevant trade mark sense is to be assessed objectively by reference to the context in which it is used in the relevant trade. Paraphrasing the passage from Shell Co at 425, the question becomes whether, in the setting in which the particular words referred to were presented, they would have appeared to the consumer as possessing the character of devices, or brands, which Fanatics was using in relation to the goods in respect of which the FanFirm Marks were registered, or so as to indicate a connection in the course of trade between those goods and Fanatics.
Fanatics first submits that the primary judge erred by taking into account the appearance of the goods after they had been purchased online and had been delivered. By that time, it submits, the course of trade had been completed and an acquisition had been made. FanFirm submits that in the online context a collection of goods are offered for sale on the website and the consumer can select them and make a purchase, and the first time that the consumer sees the particular goods is when they are delivered. Only then does the purchaser receive the packaging and is able to handle the goods, thereby revealing (for the first time), the swing tag, the bar codes and the care labels. It submits that in online retailing, returns are provided, and were offered on the website under consideration, and until a return period expires the goods remain in the course of trade.
In Gallo the question of where the course of trade may be said to start and when it stops was considered. The High Court at [46] approved the following reasoning of Windeyer J in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1967] HCA 51; (1967) 116 CLR 254 at 266–267:
[W]hen it is said that a trade mark is used to distinguish the goods of one man from those of another, that abbreviated statement obviously does not refer to the goods of the owner of the mark in the sense of goods which he owns or possesses. After the goods have been sold by him his mark may still, using the definition of trade mark in the Act, be used in relation to those goods for the purpose of indicating a connexion in the course of trade between them and him, the registered proprietor of the mark. The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.
The High Court in Gallo went on to dismiss the notion that either Windeyer J or the Full Court of the High Court upholding the decision on appeal meant that the trade mark owner in such a circumstance must knowingly project its trade mark into other markets (at [48]–[49], [51]). It is apparent from the final sentences of this passage that, regardless of intermediate transfers from wholesale to warehouse to retail, once goods are bought for consumption, they cease to be in the course of trade. Put another way, from that point they cease to perform the task of distinguishing the goods of the registered owner from the goods of others. That is because upon the completion of a retail sale, the goods are no longer on the market.
FanFirm submits that goods remain in the course of trade where, in the online context, the consumer has an opportunity to return them after they are received. It cites Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 163; (1994) 49 FCR 89 as supporting the proposition that where goods are sold but subsequently re-enter the market as second hand goods, they are still in the course of trade. However, in our view this authority provides no analogous assistance to FanFirm. The Full Court (per Sheppard J, Wilcox J agreeing) found that when Wingate, who reconditioned LEVIS branded jeans and re-labelled them REVISE, put the REVISE branded jeans on the market, they did so to “put them back into the course or flow of trade” (at 104). The continuum of the course of trade having ceased at some point upon sale and consumption or use by the consumer and being revived later. That is not the present position. Nor do we consider that the circumstances of online sales are materially different to in-store physical sales such as to alter the analysis. The stimulus that leads a consumer to purchase an item online is the material presented to them on the relevant website promoting the sale. It is at that point that there will be trade mark use. The fact that after a sale the consumer may prefer to return the good once it is received and unwrapped cannot distract attention from the fact that the purchasing decision is made on the basis of the stimulus made available online.
The primary judge did not in her reasons explicitly consider the question of whether it was appropriate to have regard to post-sale materials. This was perhaps because, amongst the welter of issues raised by the parties, this issue did not receive top billing. However, contrary to the submission advanced by FanFirm, we do consider that the point was sufficiently made in oral submissions that the information label uses would not have reached a consumer until after the transaction was completed and that accordingly they did not amount to a trade mark use.
This finding is sufficient to allow the appeal in relation to the information labels.
However, Fanatics makes the further submission that, even if one were to take into account the goods that were delivered after an online purchase was complete, each of the uses of the word “Fanatics” on the care labels, packaging and swing tags alone would be insufficient to amount to trade mark use. We agree.
In our respectful view, the primary judge erred in her evaluation that the packaging labels or care labels would be regarded objectively by a reasonable consumer as involving use of the word “Fanatics” as a trade mark.
We take first as an example the Hoodie. Fanatics provided during the course of argument photographs of exhibit A2 which include the uses of “Fanatics” on the care label, and on the packaging (as the return sender) in which the parcel arrived. The care label is partially depicted below. It is located on an inside seam and consists of three separate tags or pages, stitched together into the seam. The tags bear dense writing in multiple languages providing care instructions. A number of different names are mentioned on the fifth and sixth pages as depicted in the right hand image below. The Hoodie otherwise has on its collar an NFL emblem and a swing tag with the same emblem and a reference to “NFL.com”. The front of the Hoodie bears the name of the Kansas City Chiefs.
In our view the obscurely placed care label that bears reference to the words: “DE: Fanatics (Germany) GMBH”, “JP: Fanatics Japan G.K.” and “GB: Fanatics International” would not, in the context of a garment not otherwise bearing the word “Fanatics”, be regarded by a consumer as being a use of that word as a trade mark. In this regard the position is analogous to that in Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403; (2017) 133 IPR 1 (Burley J) at [327].
An example of the packaging, also depicted in photographs of exhibit A2 and provided during argument on appeal is as follows:
In our view, the reference to “Fanatics” as providing the return to sender address on the packaging would not be regarded by a consumer as use of the word as a trade mark in relation to the contents of the packaging. It is not a use as a trade mark having regard to when the consumer would see it (after sale and shipping) or how they would see it (on the exterior of a grey plastic package).
Finally, the swing tag appearing on the Hawthorn Football Club Shirt is depicted in section 2.2 above. The collar of the shirt bears the logo of the AFL as does the swing tag, which also contains the word “ashtabula” and a corporate name. Beneath these, a sticker has been added to the swing tag bearing the words “Fanatics Button-Up Shirt”. We recognise, as her Honour did at [196], that the use of a word may have more than one purpose and that a product may have more than one trade mark on it: Anheuser-Busch v Budejovicky Budvar [2002] FCA 390; (2002) 56 IPR 182 at [189]. However, having regard to its size, position and the fact that it is placed on a sticker just on the swing tag, in our view a consumer would be more likely than not to consider that this is a Hawthorn Hawks shirt made with the approval of the AFL by Ashtabula of a style known as a “Fanatics Button-Up Shirt” (that is, using the word “Fanatics” descriptively to refer to the style of shirt as being for dedicated followers). We do not consider that the small sticker appearing on the swing tag would be perceived by the consumer as a trade mark used on or in relation to the shirt.
2.4 The website issue
2.4.1The submissions
Fanatics submits that the primary judge erred in finding that the use of the FANATICS Marks as branding for its websites constituted use in relation to the merchandise retailed on those sites. It submits that the primary judge failed to consider the context of the use of the word on the website which, from a consumer’s perspective, indicates that the branding was of use not in relation to goods but as an online retail service, citing Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130; (2011) 197 FCR 67. It submits that objectively considered, an online retailer does not present to the consumer as the manufacturer of the products but as the retailer from which the products can be purchased, even though the use on the website displays not only the retailer’s trade mark but also trade marks of the products offered for sale. It submits that where a consumer views the site, unless the goods themselves bear the retailer’s trade mark, the use will not be in relation to goods but to online retail services.
FanFirm defends the reasoning of the primary judge and distinguishes Optical 88. It submits that in the present case there is a range of goods promoted for sale on the Fanatics websites which is all under the Fanatics brand, including “Fanatics Branded” goods, and the FANATICS Marks are applied to all of these goods by way of the branding on the website. Accordingly, there is no clear line between use in relation to online retail services and use in relation to goods and it was open to the primary judge to find that an online retail service selling goods is nothing more than the sale of goods via a website (at [158], [431]).
2.4.2Consideration
The case advanced before the primary judge was that by reason of its use of the word “Fanatics” in its web address and also in various forms on the website operated by Fanatics from time to time, Fanatics had engaged in conduct in breach of s 120(1) of the Trade Marks Act, which requires that the infringing trade mark be used “in relation to goods or services in respect of which the [allegedly infringed] trade mark is registered” ([174], [201]). The FanFirm Marks were not registered in respect of online retail services. Accordingly, the question considered by the primary judge was whether Fanatics’ use of the word “Fanatics” as part of its website address and in various forms on the website was use in relation to goods advertised and sold, or whether it was use only in respect of retail services. The question of whether the particular goods sold on the website fell within the classes of goods in respect of which the FanFirm Word Mark was registered was considered separately (at [242]–[256]).
There is no dispute that the use of a domain name or uniform resource locator, either alone or together with language used on a website, may amount to trade mark use either for goods or services, depending on the content of the website in question and the likely perception of consumers. In that sense, the analysis is technology neutral, and the same considerations identified in Shell Co (which were articulated in the context of the then novel use (in 1961) of moving images in advertising) to which we have referred in section 2.3.1 above will apply; see Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at [146]; Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544 at [50]; Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239 at [58]–[62].
It was not in dispute before the primary judge that the use by Fanatics of the word “Fanatics” on its website in various forms amounted to trade mark use, at least in relation to online retail services, by reason of a combination of its use in the web addresses and also the use of the word on the website itself. Although the primary judge characterised the question before her as being whether use of a domain name per se can constitute trade mark use in relation to goods sold on that website (at [201]), after answering that theoretical question in the affirmative, the primary judge went on to consider whether or not the Fanatics website should be characterised as involving use of the word “Fanatics” on or in relation to goods depicted on the website, as FanFirm contended, or whether it was limited to use in respect only of online retail services, as Fanatics contended (at [214]).
The primary judge made a general finding that FanFirm had established its case that Fanatics had used the word “Fanatics” in relation to goods as well as online retail services at [220].
On appeal, Fanatics challenges the generality of that finding. It accepts that there are parts of the website that involve use of the word “FANATICS” as a trade mark in respect of its own corporate branding (within the first category of trade mark use found by the primary judge at [180]–[186]) and that a finding that this constitutes use of the FANATICS Marks in respect of clothing is apposite. However, it challenges the balance of the finding at [220], namely that “goods are available for purchase under the name FANATICS as part of the domain name, displayed in page headings and in reference to products” where the goods promoted are not branded with the word “Fanatics”, but which bear other marks such as Adidas or Nike.
The dispute may be understood by reference to several of the many web page screenshots in evidence. Three are included within the judgment at [185] and are reproduced in section 2.2 above. These are located on the website.
As the primary judge explains at [185], a navigation bar above the product listing on the webpage includes references to “FANATICS CORPORATE GEAR”, “FANATICS CORPORATE” and “FANATICS CORPORATE ACCESSORIES”. Using the menu, Mr Cockerton had selected “Fanatics Corporate Gear”, then “Fanatics Corporate”. The navy t-shirt pictured in [185] of the primary judgment was located under “Fanatics Corporate T-shirts” and the scarf under “Fanatics Corporate Accessories”. The primary judge found that these uses on and in relation to the Fanatics “Corporate Goods” amounted to trade mark use in relation to clothing, including sports apparel, within the scope of the goods in respect of which the FanFirm Marks are registered ([186]). As we have noted, although included within its grounds of appeal, in oral submissions Fanatics made clear that no challenge is made to that finding.
However, numerous other items of clothing are promoted for sale on the Fanatics website beyond the Corporate Goods, and the central submission advanced by Fanatics in this aspect of the appeal is that the primary judge erred in failing to explain how a use in relation to an online retail service for the sale of goods is use in relation to goods. We were taken to a number of web pages during the course of argument, but the point advanced by Fanatics may be made having regard to the following.
An example of a Fanatics landing page in May 2014 is below:
It will be seen that multiple products are promoted, with drop down menus displaying more options.
In April 2020 one page of the website was as follows (the top part of the page is depicted on the left):
It may be seen that the FANATICS Flag Mark appears on the top left of the page. The goods displayed bear no visible Fanatics trade marks but do display other trade marks, including a prominent Adidas logo and the names of sporting teams and sponsors. At the conclusion of the page are the words “MLS Shop: MLS Apparel and Gear from Fanatics” with the words:
Keep up with the exciting chase to for the MLS Cup this season by browsing the MLS Shop at Fanatics.com. Regardless of which MLS team you call your own, you’ll find the MLS Apparel and Gear you need to support your club 2019 MLS Jerseys in adidas styles for every club and player, like a MLS home jersey or away kit. Find all the top sellers of MLS Gear for clubs like the New York Red Bulls, Portland Timbers and Philadelphia Union. Fans can also find jerseys for their favorite players, including top stars like Zlatan Ibrahimovic and Carlos Vela or any other MLS player. Fanatics is your best match for top-rate customer service and free shipping options on officially licensed MLS Gear for your favorite club, so snatch up the best sellers and head to the pitch in team spirit.
Beneath these words are three columns, the third including the heading “Information” and a click-through menu for a list of items, including “FanCash Rewards” and “Fanatics Presents”. Next to this column is a trade mark for ticketmaster and the FANATICS Flag Mark.
This page, considered as a whole, would appear to the consumer to be promoting the sale, via the website, of goods that are not Fanatics products, but rather are shirts and other third party branded apparel offered for retail sale at a Fanatics website. That impression is confirmed by the heading “MLS Shop” and reinforced by the language in the paragraph that follows, which advises that “adidas styles” are available – drawing attention to goods not manufactured by or with the involvement of Fanatics.
We note that there are, or at some point were, products offered on the Fanatics websites which were described as “Fanatics Branded”, which are not the Corporate Goods. In September 2023, one page of the website was as follows (which has been cropped to show the relevant goods):
It may be seen that the FANATICS Flag Mark appears on the top left of the page, and three category headings are shown above the displayed goods, being “Evander Holyfield”, “Golden Boy Promotions”, and “Mike Tyson”. Five goods are displayed, including two shirts. What appears to be the product name is displayed beneath each shirt, being “Golden Boy Promotions Fanatics Branded T-Shirt – Navy” and “Golden Boy Promotions Fanatics Branded Women’s V-Neck T-Shirt – Navy” respectively. The front of each shirt contains a ‘Golden Boy’ logo, and they do not have any visible Fanatics branding.
On the left-hand side of the page, there is a column listing categories by which the products may be sorted. This includes a category named ‘Featured Brands’, below which are ‘Fanatics Authentic’ and ‘Fanatics Branded’.
Also in September 2023, one page of the website, appearing to be the search results for the term ‘cycling’ on the website, was as follows (again, cropped to show the relevant goods):
The first five goods appearing in the search are shirts and a hoodie, each bearing the words ‘CYCLING’ or ‘PARA-CYCLING’ and ‘TEAM USA’, accompanied by an image of a cyclist or para-cyclist (with the exception of the hoodie, which bears no image). Once again, the product name is displayed beneath each good and includes the phrase ‘Fanatics Branded’. For example, the first shirt is named “US Paralympic Cycling Fanatics Branded Radiating Victory T-Shirt – Heather Gray”.
Other than these first five products, the remaining goods displayed on the search page bear third-party brands both on the product and in the product name, and their product names do not include the words “Fanatics Branded”. For example, the sixth good appearing is a hoodie named ‘Piedmont Lions ProSphere Cycling Pullover Hoodie – Green”, which bears the Piedmont University logo on its front.
FanFirm submits that, in relation to goods such as those extracted above at [92] and [95], even though the Fanatics brand does not appear on the goods they are described as “Fanatics Branded”. FanFirm argues that there is an intermingling of these “Fanatics Branded” goods with other clearly third-party branded goods (such as those extracted above at [88]) offered on the Fanatics website.
We note that these “Fanatics Branded” goods do not fall in the same category as the Fanatics branded Corporate Goods, as unlike the Corporate Goods the “Fanatics Branded” goods do not visibly bear the word “Fanatics”. Rather, the words “Fanatics Branded” are used solely in the name of the product and in some instances their categorisation on the website.
Fanatics appeared (during argument) to accept that where it has told the consumer a good is “Fanatics Branded” on the website by way of the product name and category, that good is indeed a product of Fanatics. Fanatics argues that this establishes that the remaining goods, such as the shirts set out above at [88], are not being offered by reference to the Fanatics brand.
We have set out in section 2.2 above [201], [202], [214] and [220] of the primary judge’s reasons. For convenience, we repeat [220]:
The respondent invites consumers to visit its website at At that website, goods are available for purchase under the name FANATICS as part of the domain name, displayed in page headings and in references to products. I consider that this constitutes use of the FANATICS Marks as trade marks in relation to the goods for which the applicant’s FanFirm Marks are registered, including clothing, sportswear and headgear.
(Emphasis added)
The difficulty with this passage is that it does not differentiate the types of use in contemplation. As we have explained, the primary judge found that the goods promoted online characterised as the Corporate Goods which included the FANATICS Marks on them infringed. In the third category (see [46] above) her Honour was considering third party licensed merchandise, being goods that were not visibly branded with the word “FANATICS”.
The evidence that we have surveyed above indicates that within this category are two sub-categories. The first, and vastly larger sub-category, is goods branded by third parties’ trade marks that are merely sold via the appellant’s online store. The second, much smaller sub-category, is of goods branded by third parties’ trade marks which are referred to on the website as “Fanatics Branded” goods. There is no dispute on appeal that use in the latter sub-category is infringing use. However, the appellant challenges any finding of the primary judge that may be suggested in the reasoning at [220] or the form of injunction granted that the first sub-category amounts to a trade mark use within the scope of the respondent’s trade mark registrations. That suggestion finds traction in [430] of the primary judgment. In the different context of s 122(1)(e), the primary judge considered whether FanFirm can defend an allegation of infringement of the FANATICS Word Marks in class 35 by its use of that mark in relation to “clothing” in class 25. Her Honour said at [430]–[431]:
… I see no difference between selling goods by displaying them for sale, and taking orders and payment on a website, and online retail services involving the online sale of sports merchandise.
Accordingly, I consider that the applicant’s registration of the FanFirm Word Mark in class 25 in respect of goods, including sports merchandise, includes the sale of goods online by reference to that mark.
For the reasons set out below, to the extent that the primary judge found that the use of the FANATICS Marks in the domain name, on the heading of the webpages and otherwise on the website to promote the retail sale of items on the website was infringing use, we consider that her Honour erred. In our view, such use did not amount to trade mark use in respect of the goods for which the FanFirm Marks were registered.
Sections 7(4) and (5) of the Trade Marks Act provide:
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
Section 9 of the Trade Marks Act provides:
(1)For the purposes of this Act:
(a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and
(b)a trade mark is taken to be applied in relation to goods or services:
(i) if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or
(ii) if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and
(c)a trade mark is taken also to be applied in relation to goods or services if it is used:
(i) on a signboard or in an advertisement (including a televised advertisement); or
(ii) in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
(2) In subparagraph (1)(b)(i):
covering includes packaging, frame, wrapper, container, stopper, lid or cap.
label includes a band or ticket.
The question of whether or not an impugned use of a sign amounts to use in relation to the goods or services in respect of which a trade mark is registered is a question of mixed fact and law, having regard to the particular circumstances of the case; Optical 88 at [21]. The fact that there has been use of a trade mark in relation to retail services for goods does not automatically mean that there will be use of the same mark in relation to goods; Optical 88 at [10], [21]. Although FanFirm sought in its submissions to distinguish Optical 88 on its facts, the legal proposition to which we have referred was not, as we understand it, challenged. It is, in our respectful view, plainly correct.
In each case it will be a question of consideration of the statutory test in the context of the goods and services in respect of which the asserted trade mark is considered. In this respect, this court is in a position on appeal to evaluate whether or not the use of FANATICS Marks on the Fanatics website, including in the domain name and in page headings, constituted use in relation to the goods which displayed no visible Fanatics branding (such as the examples described above at [86]–[97]).
The evidence indicates that the Fanatics websites aggregate and sell an extensive range of third party branded products. It is true that, as her Honour found at [220], Fanatics invites consumers to visit its website and acquire goods for purchase. But that invitation is to acquire a large range of apparel much of which has no Fanatics branding on it.
Many of the products, like the shirts set out above at [88], are plainly branded with other prominent brands including Adidas and Nike. We do not consider that a consumer is likely to perceive that the use of Fanatics branding on the website extends beyond branding relevant to the online retail sale of clothing in relation to these products.
Some of the products, like those set out above at [92] and [95], have no Fanatics branding on them but are named and categorised as “Fanatics Branded” on the websites. Fanatics appears to have accepted in oral submissions, and we agree, that the naming of the goods using the words “Fanatics Branded” (even if the goods themselves bear no Fanatics branding) constitutes trade mark use in relation to those products.
However, unless the consumer’s attention is specifically drawn to the particular products that are either the “Fanatics Branded” goods or the Corporate Goods, we do not consider that a consumer is likely to perceive that the general use of Fanatics branding on the website extends beyond branding relevant to the online retail sale of clothing. With the exception of those goods – which Fanatics accepts amounts to a use of the mark in respect of clothing – we find that Fanatics succeeds on this ground.
2.5 The goods of the same description issue
2.5.1The submissions
Fanatics submits that the primary judge failed to apply the relevant matters identified in Goodman and McCormick in concluding that blankets, throws, towels, sports bags and water bottles are goods of the same description as those covered by the FanFirm Marks. It contends that the primary judge’s reasoning, specifically in relation to the finding that sports bags and water bottles are sold in the same “trade channels” as sportswear, was without a factual basis and is incorrect. FanFirm defends the reasoning of the primary judge. Ground 9 of Fanatics’ Notice of Appeal is said to be relevant to this aspect of the appeal.
2.5.2Consideration
Section 120(2)(a) of the Trade Marks Act provides that a substantially identical or deceptively similar sign will infringe a registered trade mark if the sign is used as a trade mark in relation to “goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered”.
For the purposes of the argument before the primary judge, as considered in her Honour’s reasons in section 6.6, the question was whether blankets, towels, sports bags and water bottles were goods of the same description as goods within the following classes ([242]):
Class 24: Banners; flags (not of paper), including textile flags; woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth.
Class 25: Clothing, footwear and headgear, shirts, scarves, ties, socks, sportswear.
The findings of the primary judge in relation to ss 44 and 58, which we have upheld above at sections 4.2 and 4.3, signify that there are twin public policy reasons for the rectification of the register. The first arises from the statutory requirement under s 44 that no mark be registered in respect of similar goods or closely related services for marks that are substantially identical with or deceptively similar to each other. That policy may be ameliorated by the circumstances set out in s 44(3), but, as we have noted above, honest concurrent use has not been established. The second arises from the requirement under s 58 that only the owner of the mark remain on the register. The primary judge addressed the submission advanced by Fanatics going to an absence of evidence of confusion and a period of concurrent use by reference to her finding that both parties have expanded their operations such that they are likely to compete more directly ([383]). This her Honour expressed by reference to the parties’ expansion outside their “lanes”, a matter that her Honour considered enhanced the likelihood that consumers may be caused to wonder whether the goods of one (which we take to mean the goods and services of one) be those of the other. As this was in the context of the exercise of discretion, her Honour was entitled to consider this expansion despite it being well after the filing date of the cancelled FANATICS Marks (being the context in which the grounds for cancellation under s 88(2)(a) are considered). In circumstances where Fanatics’ use of the FANATICS Marks ought not to have been the exercise of a right granted under the Trade Marks Act because, at the time of the grant of the right, ss 44 and 58 applied, the primary judge was in our respectful view, correct to conclude that this was a consideration that told against the exercise of discretion. The expansion would enhance the likelihood of confusion caused by a use that was not sanctioned under the Trade Marks Act.
Having reached this conclusion, it is not strictly necessary for us to consider the exercise of discretion under s 89(1), which concerns the s 60 ground (which we have not upheld) and the ground under s 88(2)(c) (which we have upheld, but does not alter the outcome of the findings in relation to cancellation under the ss 44 and 58 grounds). However, for completeness we do so, but with no different outcome.
In this regard we note that the submissions advanced before the primary judge relied on three factors being, first the contended honest concurrent use, secondly, a substantial reputation in the FANATICS Marks and thirdly an absence of confusion. We have already upheld her Honour’s rejection of the first of these arguments, and similarly have upheld her conclusion that the convergence of the parties’ activities from 2020 means that Fanatics’ previous reputation in Australia did not eliminate a likelihood of confusion. As to the matters in reg 8.2 to which we have referred above, while Fanatics placed no separate reliance on them, in re-exercising the discretion we will take each of those matters in turn. In relation to reg 8.2(a), it is not apparent that the public interest will be adversely affected if the registration is cancelled. On the other hand, if it is not cancelled, then for the reasons set out above, the state of the Register will serve to enhance a likelihood of confusion. In relation to reg 8.2(b), it would appear that the circumstances that led to the conclusion under s 88(2)(c) (likelihood of confusion) have not ceased to exist. In relation to regs 8.2(c) and (d), no separate submission was advanced by Fanatics to the effect either applied.
Accordingly, having separately exercised the discretion under each of ss 88(1) and 89(1), we are not satisfied that the FANATICS Marks ought to remain on the Register in respect of class 35 services.
5. FANATICS’ CLAIM AGAINST FANFIRM
5.1 Trade mark infringement
Fanatics advanced a trade mark infringement case against FanFirm in relation to its online retail store located at which FanFirm had conducted since at least 2021. As noted above, the primary judge found that the FANATICS Marks in respect of online retail store services for sports merchandise in class 35 should be cancelled ([421]) with the consequence that the infringement case brought against FanFirm must fail ([423]).
The primary judge, however, in a picture of thoroughness, considered whether, if she is found to be wrong in her conclusion as to cancellation, any of the defences against infringement raised by FanFirm would apply. In ground 15 of the appeal, Fanatics contends that the primary judge erred in dismissing the infringement case. That ground adds nothing to ground 14 which contends that the primary judge erred in finding that the FANATICS Marks should be revoked. We have addressed that subject in section 4 above.
In ground 16, Fanatics contends that the primary judge erred in finding that FanFirm would have been entitled to defences to infringement under ss 122(1)(e), 122(1)(f)(a) or 124. We have upheld the primary judge’s finding that the FANATICS Marks should be cancelled. Accordingly, we do not consider it necessary to consider the alternative case.
5.2 Claim under the ACL and passing off
In section 14 of the judgment the primary judge addressed Fanatics’ claims under the ACL and in passing off. Fanatics contended that the relevant date at which to assess whether there has been a contravention of either ss 18 or 29 of the ACL is around 2020, when FanFirm changed its business and opened its retail store. This, it contended, was a “new species” of conduct when compared with FanFirm’s pre-existing sporting tour and events services business and should be considered separately to that business ([61], [482]).
The primary judge had earlier recited the relevant legal principles in considering an allegation of breach of s 18 of the ACL at [393], quoting Self Care at [80] (per Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ):
Determining whether a person has breached s 18 of the ACL involves four steps: first, identifying with precision the “conduct” said to contravene s 18; second, considering whether the identified conduct was conduct “in trade or commerce”; third, considering what meaning that conduct conveyed; and fourth, determining whether that conduct in light of that meaning was “misleading or deceptive or … likely to mislead or deceive”.
Her Honour noted at [486] that the relevant date for assessing whether conduct contravened the ACL is the date of commencement of the impugned conduct, citing Optical 88 SJ (Yates J) at [334].
In rejecting the argument advanced by Fanatics, her Honour found at [487] that the relevant conduct of FanFirm had commenced at least by September 2004 and continued over the years prior to Fanatics’ change of corporate name and beyond to the present day. That finding flowed from her Honour’s earlier consideration of the history of the use by FanFirm of the FanFirm Marks and her finding that FanFirm had in the early 2000s sold merchandise under and by reference to the FanFirm Word Mark in addition to its offering of tours and events ([44]–[47], [67], [74]). This led her Honour to find that FanFirm had not engaged in substantially new or different conduct by launching its online retail store in 2021 such as to warrant the conclusion that the 2021 conduct was of a new or different character to that which had been undertaken for many years.
In our view, Fanatics has established no error of fact in the findings of the primary judge or the conclusions of law that she reached in rejecting Fanatics’ claims under the ACL. Accordingly, ground 18 must be dismissed.
6. NOTICE OF CONTENTION AND APPLICATION FOR LEAVE TO FILE A CROSS APPEAL
6.1 Introduction
We have addressed some, but not all of the grounds raised in the Notice of Contention during the course of our reasons above. We now address each in turn.
Grounds 1 and 2 of the Notice of Contention advance an alternative argument to support the primary judge’s conclusions regarding the refusal of the defences raised under s 122(1)(a)(i) (good faith use of own name) and ss 122(1)(f) and (fa) via s 44(3) (honest concurrent use). As we have concluded in section 3.4 and 3.5 that her Honour’s conclusions should be upheld, no occasion arises for us to consider the alternative arguments raised.
Ground 3 of the Notice of Contention concerns the primary judge’s findings in relation to s 122(1)(e) and the form of Order 6 ultimately made, which was to dismiss FanFirm’s claim.
Section 122(1)(e) provides a defence against infringement where a person exercises a right to use a trade mark given to that person under the Trade Marks Act. Fanatics raised this defence by reference to three of its registered trade marks, being the FANATICS Marks (that is, the FANATICS Word Marks and the FANATICS Flag Mark) ([302]). The primary judge found that the Register should be rectified in respect of each such mark by the removal of the class 35 registrations ([359], [365], [369], [377]). However, the parties disagree as to the effect of the primary judge’s reasoning and orders.
Fanatics contends that in section 7.2 of her reasons, as reflected in Order 6, the primary judge found that the cancellation took effect only from the date of the order for cancellation, with the consequence that Fanatics had a successful defence to infringement under s 122(1)(e) and thus it was appropriate to dismiss the proceedings. This is because the injunction in place from the date of cancellation means that there is no need for any further steps to be taken in the proceeding, such as any enquiry into the availability of pecuniary relief. FanFirm contends that the primary judge found that the s 122(1)(e) defence failed in its entirety, citing [15(a)] and [347] of the primary judgment. In the alternative, it relies on ground 3 of the Notice of Contention to argue that the primary judge ought to have found that the ground under s 122(1)(e) failed for two reasons. First, FanFirm argues that the section was never available in respect of the goods found to infringe because the FANATICS Marks were only registered in respect of services under class 35 and not goods under class 25. Secondly, FanFirm argues that in any event, a defence under s 122(1)(e) cannot survive the cancellation of the marks. We address this in section 6.2 below.
Turning to ground 4 of the Notice of Contention, FanFirm submits that the primary judge found, in favour of its argument that it was the first to use the FanFirm Word Mark in a retail setting online, that it had offered for sale third party licensed merchandise co-branded with a FanFirm Mark on its website in about 2006/2007 at [44], [487], [52]–[57] and [367], and that [150] of her Honour’s reasons should be understood consistently with those findings. In ground 4 of the Notice of Contention, FanFirm contends that to the extent that it is found at [150] that there was not such use, the primary judge erred. We have found above in section 3.6.1 at [193(4)] that her Honour found that FanFirm had sold third party merchandise of Australian national sporting teams co-branded with FanFirm Marks, such as the 2006/7 Ashes merchandise extracted at [44] of the primary judgment. Our interpretation of her Honour’s statements at [150] is that prior to 2012, FanFirm sold third party merchandise of Australian national sporting teams co-branded with FanFirm Marks, but did not sell “straight resale” licensed (or “authorised”) merchandise until after 2012 (see [49]). The primary judge noted at [60], however, that nothing turned on this distinction of when FanFirm first sold “third party, straight resale, licensed merchandise” (as opposed to just third party branded merchandise), because (as she noted at [157]) the relevant services under class 35 are online retailing services for sports related and sports-team related merchandise (regardless of whether this is licensed or “straight resale” merchandise). Indeed, her Honour found that FanFirm was providing class 35 services as early as 2004 by selling FanFirm-branded products online, even if these products were not co-branded with a third party sports team ([158]). Accordingly, we find that her Honour’s statement at [150] is not inconsistent with her finding that FanFirm had offered third party merchandise co-branded with a FanFirm Mark on its website in about 2006/2007, and had been offering class 35 services under the FanFirm Marks as early as 2004.
Ground 5 of the Notice of Contention concerns defences to infringement advanced in the alternative by FanFirm in the event that it is otherwise found to infringe the asserted Fanatics trade marks. In short, it contends that to the extent that the primary judge did not find at [432] to [440] and [445] that its defence under ss 122(1)(f) and (fa) was successful, her Honour ought to have made that finding. As we have upheld the primary judge’s finding that the asserted FANATICS Marks are not valid and are liable to be removed, it is unnecessary for us to consider this ground of contention as the application of those defences do not arise.
6.2 The defence under s 122(1)(e)
6.2.1Introduction
We have summarised in section 1.4 above the Orders made by the primary judge. They include orders permitting injunctive relief against infringing conduct on the part of Fanatics (order 2) and Order 6 dismissing FanFirm’s claims.
The dismissal of FanFirm’s claims has the consequence, as Fanatics pointed out in its oral submissions in chief on the appeal, that there is no option available for FanFirm to seek pecuniary relief consequent on findings of infringement. Fanatics submits that this conclusion was correct and follows from the primary judge’s findings in section 7.2 of the judgment in relation to the defence raised by Fanatics to infringement based on s 122(1)(e). Fanatics submits that the primary judge found that this defence is successful because the cancellation of the FANATICS Marks had no retrospective effect, and consequently there was no infringement prior to the rectification of the Register and hence no option available in the orders for FanFirm to seek pecuniary relief.
Section 122(1)(e) provides:
(1)In spite of section 120, a person does not infringe a registered trade mark when:
…
(e)the person exercises a right to use a trade mark given to the person under this Act.
Fanatics relied on its trade mark registrations for the FANATICS Word Marks (being the 633 TM and 681 TM) and the FANATICS Flag Mark (being the 688 TM) (being the FANATICS Marks) as forming the basis of its defence under s 122(1)(e) ([305]). The primary judge found in section 8 of her reasons that each of those marks should be cancelled in class 35 pursuant to s 88(2)(a) (for grounds based on ss 44, 58 and 60) and s 88(2)(c). We have in section 4 above upheld those findings (with the exception of the finding in relation to s 60, noting though that this does not alter the conclusion that the FANATICS Marks should be cancelled).
The primary judge proceeded to consider the application of s 122(1)(e) on the basis of her findings as to revocation. As the primary judge noted at [306], there was a live issue as to whether or not the defence under s 122(1)(e) could survive the cancellation of those marks. This was a shorthand reference to the contention advanced by FanFirm that the defence cannot apply once a trade mark upon which it is based has been cancelled. Fanatics disputed this and the parties referred to the reasoning in E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334 at [1]–[11] (per Flick J), Gallo at [71]–[72] (per French CJ, Gummow, Crennan and Bell JJ), Dunlop at [214]–[215] (per Nicholas J) and Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 90 IPR 117 at [285]–[288] (per Middleton J). We refer to this below as the Timing Issue.
The primary judge noted at [306] that FanFirm contended that even if the Timing Issue was resolved in Fanatics’ favour, the defence under s 122(1)(e) could not in any event apply because Fanatics does not have a registration in respect of class 25 clothing goods (the Infringing Goods Issue).
The primary judge referred to the Timing Issue in this part of the reasons:
307For the reasons set out above, I consider that the respondent’s sale of the Infringing Goods online by reference to the FANATICS Word Marks and Flag Mark is conduct which infringes the FanFirm Word Mark. I also consider, for the reasons below, that the respondent’s FANATICS Marks registered in class 35 should be cancelled pursuant to ss 44, 58, 60 and 88 because the applicant was the first to use the “Fanatics” mark in Australia with respect to online retail services, and had a prior reputation in Australia in the FanFirm Marks in relation to sporting clothing and the online sale of sporting clothing.
308The question is then whether an order for cancellation is retrospective (as the applicant contends) — in which case the respondent could not now rely on the defence in s 122(1)(e) as it never had a right under the Act to use those trade marks — or prospective, meaning that cancellation would be no bar to the operation of the defence in s 122(1)(e) in relation to the infringing conduct up until cancellation, but that it would not protect infringing conduct after the cancellation.
After referring to the authorities above, the primary judge observed that it is a strange result that the owner of a trade mark registration that was not validly made could obtain the benefit of a defence for trade mark infringement against an applicant who has established that the owner was never entitled to the registration ([313]). However, on the basis of the analysis of Nicholas J in Dunlop at [208] and the plain wording of s 122(1)(e), her Honour concluded that the cancellation did not have a retrospective effect such as to remove Fanatics’ defence to infringing conduct during the time that three marks relied upon were registered. Prior to the order for cancellation, her Honour found that the marks remained a valid basis for the defence to infringement under s 122(1)(e).
On appeal, FanFirm contends that, despite the language used by the primary judge in section 7.2 of her reasons, her Honour did not in fact conclude that the defence under s 122(1)(e) was available because it is apparent, reading the judgment as a whole, that the defence was rejected in its entirety, relying on [15(a)], [347] and her Honour’s declaration of infringement. If that argument is not accepted, FanFirm relies on ground 3 of the Notice of Contention which raises two points, namely the Infringing Goods Issue and the Timing Issue. In relation to the Infringing Goods Issue, FanFirm submits that the primary judge failed to address its argument that, regardless of the cancellation of the marks, the defence under s 122(1)(e) could not apply to any finding of infringement in relation to clothing because the relevant registrations in issue (which were cancelled) extended only to services in classes 35 and 42, not goods in class 25. In relation to the Timing Issue, FanFirm contends that the primary judge erred in concluding that the authorities supported a finding that the s 122(1)(e) defence operated up until a trade mark relied upon for that purpose is cancelled.
Finally, FanFirm seeks leave to rely on a Notice of Cross-Appeal against the order dismissing its infringement claim (the leave to cross appeal issue). Fanatics opposes that leave.
6.2.2Consideration
We consider that it is tolerably clear from the reasoning set out in section 7.2 of the judgment that her Honour found that there was no infringement of the FanFirm Marks prior to the date of the cancellation of the FANATICS Marks. Her Honour’s summaries of findings at [15(a)] and [347] are not inconsistent with that conclusion insofar as they state that none of Fanatics’ defences to infringement have been successful. As a broad conclusion, that is consistent with her Honour’s finding in section 7.2 that the registered trade marks relied upon by Fanatics were to be cancelled because, on her Honour’s findings, from the date of cancellation the defence under s 122(1)(e) failed and accordingly injunctive relief would be granted. We do not think that the fact that the declaration made is couched in the past tense is sufficient to dislodge that conclusion.
Accordingly, it is necessary to consider the two arguments raised by FanFirm by reference to ground 3 of the Notice of Contention.
6.2.2.1The Infringing Goods Issue
FanFirm submits that the primary judge ought to have, but did not, consider the Infringing Goods Issue. That submission is well founded. Although her Honour identified the argument in her reasons at [306], she did not return to give it consideration. We now address it on appeal.
The primary judge found that Fanatics’ sale of the Infringing Goods (being clothing, headgear, sportswear, sports bags, scarves, water bottles, towels, flags, footwear and blankets) online by reference to the FANATICS Marks was conduct that infringed the FanFirm Word Mark in respect of classes 24 and 25 ([307]). She did not find infringement in respect of any of the services for which FanFirm’s Word Mark was registered ([257]–[272], [273]). In section 2 above we have upheld the finding of infringement made by the primary judge, subject to two qualifications:
(1)the Infringing Goods are to be limited to clothing, headgear, sportswear, sports bags, scarves, water bottles, flags and footwear (that is, not including towels and blankets);
(2)the infringement finding only extends to the Infringing Goods sold online by Fanatics which were either the Corporate Goods or the “Fanatics Branded” goods as set out above in section 2.4.2.
The 633 TM and the 681 TM (the FANATICS Word Marks) were filed on 10 September 2008 and 9 January 2018 respectively and the FANATICS Flag Mark was filed on 17 November 2017. The registrations were in respect of services in class 35, including online retail store services featuring sports related and sports team branded clothing and merchandise, product merchandising, retail store services featuring sports related and sports team branded clothing and merchandise, and class 42.
We have in section 2.4 above observed the difference between the application of a trade mark on or in relation to goods and the application of a trade mark in relation to retail services for the sale of goods. Indeed, as we note, it was a central submission advanced by Fanatics in its appeal from the infringement findings of the primary judge that use in relation to a online retail service for the sale of goods is not use in relation to those goods. In section 2.4 we have upheld that aspect of the appeal where we find that (with the exception of Fanatics’ Corporate Goods and the “Fanatics Branded” goods) the use of FANATICS in relation to the retail service of online sale of goods is not a use in relation to the goods in class 25 in respect of which the FanFirm Marks remained registered. This finding also applies in the context of s 120(1)(e) (contrary to her Honour’s finding at [430]–[431] of the primary judgment).
Section 122(1)(e) ensures that a registered owner of a trade mark cannot be held liable for infringement of another registered trade mark if it does no more than exercise a right conferred on him or her as the registered owner. This includes the exclusive right to use the registered mark in relation to goods or services in respect of which it is registered, under s 20(1)(a) of the Trade Marks Act.
The registrations of the FANATICS Marks in respect of services in class 35 and class 42 (which are set out in [13] above) will not provide a defence to infringement under s 122(1)(e) because the Infringing Goods do not fall within the scope of a right to use the marks conferred by those registrations.
This finding is sufficient to support the conclusion that ground 3 of FanFirm’s Notice of Contention should be upheld.
6.2.2.2The Timing Issue
The Timing Issue raises the question of whether a defence under s 122(1)(e) remains available if it is established at trial that the registered marks relied upon ought not to have been registered as at their priority dates. That was the case here, where the primary judge found that the Fanatics Marks could have been opposed on the basis of ss 44, 58 and 60.
In Gallo Winery, Flick J considered that s 101(2) made no allowance for the court to order a retrospective removal of a mark for non-use for two reasons. First, because of a significant public interest in maintaining the integrity of the Register established under s 207 (at [7]). Secondly, because there is an absence of any indication in s 101(2) that the power to remove the trade mark may be exercised in that manner, particularly in light of ss 79 and 98 which, unlike s 101(2), make provision for removal of a mark to take place at a particular time (at [8]).
In Dunlop, Nicholas J considered the separate question of the effect of cancellation of a mark under s 88 on any acts of infringement that occurred before orders are made for such cancellation. His Honour observed at [208] that it followed from s 20 that an applicant in a proceeding seeking relief for trade mark infringement must establish that it is the registered owner of the trade mark in question and that it has been infringed. A person who was once, but is no longer, the registered owner of the mark because the trade mark has been cancelled at or prior to the time of judgment in the proceeding has no entitlement to relief for trade mark infringement. In addressing an argument arising from Gallo Winery and the interlocutory decision of Tracey J in Deckers Outdoor Corporation Inc v Farley (No 2) [2009] FCA 256; (2009) 176 FCR 33 at [47]–[56], his Honour observed that this was not because the order for cancellation operates retrospectively, but because an order cancelling a trade mark registration deprives the registered owner of the standing that is an essential element of the statutory cause of action (at [208]).
His Honour went on to say at [209], in the context of an application for the cancellation of a trade mark under s 88:
Secondly, it is important to recognise that s 88(1) is the source of the power to cancel a registered trade mark on various grounds including those that relate to the registered owner’s entitlement to register the mark in the first place. These grounds (some of which I have already discussed) arise under s 88(2)(a) and include the various grounds specified in ss 58-62A of the Act. It would be a very strange result if a trade mark owner could obtain relief against a respondent who, for the purpose of making out a cross-claim seeking an order under s 88(1), established that the registered owner was never entitled to obtain registration of the mark in the first place.
The question presently arising under s 122(1)(e) is different again and raises the question of whether, analogously to Dunlop, a party relying on s 122(1)(e) has the standing to do so in respect of otherwise infringing conduct that takes place before an order for cancellation is made in circumstances where the grounds for cancellation establish that the trade mark ought never to have been registered. Competing policy considerations arise for consideration. In addition to the points made in Gallo Winery, the learned authors of Australian Trade Mark Law (Burrell R and Handler M, 3rd ed, LexisNexis Australia, 2024) observe at p 606, [12.11] that the defence may be understood as helping to underpin the information function of the Register, and providing registered owners with an additional degree of certainty while providing a spur to owners of potentially conflicting marks to ensure that they police their rights at opposition stage.
These matters were not fully canvassed before us. Nor is it necessary for us to resolve them in light of our conclusion that the defence under s 122(1)(e) is not available to Fanatics following our resolution of the Infringing Goods Issue. Accordingly, we decline to decide the point.
6.2.2.3Leave to Cross Appeal
Finally, it is necessary to address the submissions advanced in relation to the form of the Orders.
Fanatics contends that Order 6, where the primary judge dismissed the application, was necessary and appropriate having regard to the fact that the primary judge found that the defence under s 122(1)(e) applied until the date when the registration was cancelled. The consequence was that there is no need for the proceedings to remain on foot as there could be no occasion for any enquiry as to quantum, all past acts of infringement being excused by operation of the defence under s 122(1)(e).
FanFirm disputes this characterisation. It submits that it was always the intention that the trial proceed to determination on quantum in the event that an infringement was found. That intention is apparent, it submits, from the further case management steps undertaken by the primary judge following delivery of judgment and the making of orders. It submits that it addressed the potential for error (if its construction of the primary judge’s reasoning in section 7.2 was incorrect) in ground 3 of its Notice of Contention; however, it was not until senior counsel for Fanatics opened orally on the appeal that it realised that Order 6 was in error and that a Notice of Cross-Appeal was required.
During the hearing, FanFirm sought leave to rely on a Notice of Cross-Appeal alleging error in the making of Order 6 on the basis, relevantly, set out in ground 3 of the Notice of Contention. In support of the application for leave, FanFirm relies on an affidavit sworn by Ms Shannon Platt, solicitor acting for FanFirm.
Fanatics opposes the grant of leave, contending that the application is too late, is insufficiently supported by the evidence of Ms Platt and that the argument raised in relation to whether s 122(1)(e) applied to the Infringing Goods was not run before the primary judge although it does accept that the Timing Question was advanced before the primary judge.
Ms Platt gives evidence on information and belief that neither she, counsel nor the principal of FanFirm, Mr Livingstone, realised that it would be necessary to appeal against Order 6 prior to hearing the oral opening of Fanatics. She also gives evidence, attaching the transcript, of a case management hearing conducted following delivery of judgment and the making of the Orders, where the primary judge was requested to, and did, grant leave to appeal from the judgment on the basis that liability had been heard separately and before questions of quantum of relief and on that basis leave was necessary. In our view this suggests that FanFirm, and possibly the primary judge, considered that in light of the judgment the hearing would proceed to consideration of quantum. It supports the direct evidence of Ms Platt. We are satisfied that FanFirm did not realise at that point that Order 6 precluded any consideration of the entitlement to pecuniary relief. We also accept the explanation for the lateness of the present application.
We have reviewed the written submissions advanced before the primary judge and find that, contrary to Fanatics’ submission, the Infringing Goods issue was squarely raised before the primary judge, as [306] of the judgment demonstrates. As both of the relevant points applicable to the proposed Notice of Cross-Appeal were advanced before the primary judge, we see no basis upon which it may be concluded that Fanatics suffered any forensic disadvantage as a result of the late application for leave to cross appeal. The grounds relied upon in challenging Order 6 are the two set out in the Notice of Contention. We have found in favour of FanFirm in relation to the Infringing Goods Issue ground. Accordingly, we consider that a substantial injustice would occur if leave were not granted.
We grant leave for FanFirm to rely on the Notice of Cross-Appeal. For the reasons given, we allow the cross appeal.
7. CONCLUSION
We have summarised our conclusions in section 1.5 above. In short, Fanatics has had some limited success on appeal insofar as it concerns its challenge to findings of infringement based on trade mark use in the context of the goods and services of the FanFirm Marks. It has had some very limited success in the context of its defences under s 122(1) of the Trade Marks Act, none of which are consequential. Put another way, it has succeeded in part on its first move on the chess board, but not on the others.
The byzantine complexity of these proceedings is reflected in the lengthy primary judgment and in these reasons. It is also a reflection of the skill of the legal practitioners involved whose understanding of the Trade Marks Act is deep. However, an aspect of that skill must also be the ability of practitioners to winnow the wheat from the chaff. It is not consistent with the operation of s 37M of the Federal Court of Australia Act 1976 (Cth) (the FCA Act) for numerous and repetitive grounds to be advanced to the same end. This applies particularly to trade mark cases. We have referred in section 3.6 above to the several alternative arguments raised in the infringement case advanced by FanFirm against Fanatics. Similar complexity applied to the cross claim advanced by Fanatics against FanFirm. Both parties contributed to these complexities. Such an approach does not advance the administration of justice or the quick and inexpensive resolution of proceedings to which Part VB of the FCA Act refers. In our view, legal practitioners bear a responsibility to confine the case of their clients to a reasonable compass. It is regrettable that this is not evident in the conduct of many contemporary cases involving the infringement of trade marks, of which this case is an example.
We will direct that the parties prepare draft orders giving effect to these reasons and providing for them to exchange short submissions (of no more than five pages) on the question of costs.
I certify that the preceding three hundred and six (306) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justices Burley, Jackson and Downes. Associate:
Dated: 9 July 2025
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