Fanatics, LLC v FanFirm Pty Limited

The appeal in Fanatics, LLC v FanFirm Pty Limited concerns several issues surrounding the use and infringement of trade marks, as well as potential breaches of consumer law. The case was heard in the Federal Court of Australia, where Fanatics, LLC challenged several findings made by the primary judge in the earlier proceedings. The primary judge had ruled on the use of the word "Fanatics" on certain goods and websites, and the validity of trade mark registrations held by FanFirm. Fanatics also contested the cancellation of its trade marks and alleged breaches of consumer law by FanFirm.

The court was required to decide whether the use of "Fanatics" on information labels and websites constituted use as a trade mark, and if so, whether this amounted to infringement. The court also needed to determine the applicability of various defences to infringement, including the use of one's own name in good faith, honest concurrent use, and exercising a right to use a trade mark. Furthermore, the court had to assess the validity of the trade mark registrations, considering issues such as deceptive similarity and likelihood of confusion. Finally, the court needed to evaluate the consumer law claims made by Fanatics against FanFirm.

In its judgement, the court found several errors in the primary judge's decisions. Firstly, the court disagreed with the finding that the use of "Fanatics" on information labels constituted use as a trade mark, and also disagreed with the finding that the use on websites amounted to infringement. The court clarified that for use to be considered as a trade mark, it must be used in a manner that distinguishes the goods or services of one trader from those of others. The court found that the use of "Fanatics" on information labels and certain website content did not meet this criterion. Additionally, the court found that the primary judge had erred in classifying certain goods as being of the same description as those registered by FanFirm. Regarding the defences, the court upheld the primary judge's findings on the inapplicability of the good faith use of one's own name and honest concurrent use defences, but corrected an error regarding the application of section 58 in relation to the FANATICS Flag Mark. The court also upheld the cancellation of the FANATICS Marks under certain provisions, but found an error in the application of section 60. The court dismissed Fanatics' consumer law claims and found an error in the application of section 122(1)(e).

The parties are to confer and provide draft minutes of order reflecting these findings, along with submissions on costs, to the chambers of Burley, Jackson and Downes JJ by 4 pm on 30 July 2025.