FanFirm Pty Limited v Fanatics, LLC

[2024] FCA 764

FEDERAL COURT OF AUSTRALIA

FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764

File number:

NSD 963 of 2022

Judgment of:

ROFE J

Date of judgment:

17 July 2024

Catchwords:

INTELLECTUAL PROPERTY – trade marks – alleged infringement of registered marks under s 120 of the Trade Marks Act 1995 (Cth) – deceptive similarity – misleading or deceptive conduct – alleged breaches of s 18 and s 29(1)(g) and (h) of the Australian Consumer Law (ACL) – tort of passing off.

TRADE MARKS – infringement – deceptive similarity – s 120 of the Act – non-use – cancellation of registered trade marks – honest and concurrent use – own name defence
– defences under ss 122(1)(e), 122(1)(f), 122(1)(fa) of the Act – whether discretion should be exercised not to cancel the registrations – cross-claim for trade mark infringement, cancellation of trade marks or rectification of the Register of Trade Marks in respect of them.

CONSUMER LAW – misleading or deceptive conduct – false or misleading representation – alleged breaches of s 18 and s 29(1)(g) and (h) of the ACL – passing off – contravention not established.

Legislation:

Competition and Consumer Act 2010 (Cth)

Trade Marks Act 1995 (Cth)

Trade Mark Regulations 1995 (Cth)

Cases cited:

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 124 IPR 264

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (2021) 162 IPR 5

Anchorage CapitalPartners Pty Ltd v ACPA Pty Ltd (2018) 129 IPR 255

Anheuser-Buschv Budejovicky Budvar (2002) 56 IPR 182

Australian Postal Corporation v Digital Post Australia (2013) 105 IPR 1

Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641

Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226

Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587

Bob Jane Corp Pty Ltd v ACN 149 801 141 Pty Ltd (2013) 97 ACSR 127

Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 129 IPR 482

Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd (2023) 170 IPR 195

Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45

Carnival Cruise Lines Incv Sitmar Cruises Ltd (1994) 31 IPR 375

Change Group International PLC v City Exchange Mart Pty Ltd [2013] FCA 1048

De Cordova v Vick Chemical Company (1951) 1B IPR 496

DunlopAircraft Tyres Ltd v Goodyear Tire and Rubber Company (2018) 134 IPR 22

E & J Gallo Winery v Lion Nathan (No 2) (2008) 78 IPR 334

E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144

Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd (2012) 98 IPR 1

Energy BeveragesLLC v Cantarella Bros Pty Ltd (2023) 170 IPR 281

Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239

Goodman Fielder Pte Ltd v Conga Foods Pty Ltd (2020) 158 IPR 9

Henley Arch Pty Ltd v Henley Constructions Pty Ltd (2021) 163 IPR 1

Hermes Trade Mark [1982] RPC 425

Hy-line Chicks Pty Limited v Swifte (1966) 115 CLR 159

Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1

McCormick & Co Inc v McCormick (2000) 51 IPR 102

McD Asia Pacific LLC v Hungry Jack’s Pty Ltd (2023) 175 IPR 397

MID SydneyPty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561

Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816

Optical 88 Ltd v Optical 88 Pty Ltd (2011) 93 IPR 20

Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457

PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 160 IPR 174

Pham GlobalPty Ltd v Insight Clinical Imaging Pty Ltd (2017) 141 IPR 1

RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10

Re Ducker’s Trade Mark (1946) 45 RPC 397

Re Parkington & Co (1946) 63 RPC 171

Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 408 ALR 195

Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd (2019) 141 IPR 463

Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407

Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd [2024] FCA 248

Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 92 IPR 165

Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited (1954) 91 CLR 592

Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300

Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (2021) 157 IPR 498

Taylor v Killer Queen, LLC (No 5) (2023) 172 IPR 1

Unilever Aust Ltd v Karounos (2001) 52 IPR 361

Urban AlleyBrewery Pty Ltd v La Sirene Pty Ltd (2020) 150 IPR 11

Vivo International Corp Pty Ltd v Tivo Inc (2012) 99 IPR 1

Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97

Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 90 IPR 117

Division:

General Division

Registry:

New South Wales

National Practice Area:

Intellectual Property

Sub-area:

Trade Marks

Number of paragraphs:

497

Date of last submission/s:

5 April 2024

Date of hearing:

11−13 March, 2 April 2024

Counsel for the Applicant and Cross-Respondent:

C Dimitriadis SC with S L Ross

Solicitor for the Applicant and Cross-Respondent:

Sparke Helmore

Counsel for the Respondent and Cross-Claimant:

L Merrick SC with M Evetts

Solicitor for the Respondent and Cross-Claimant:

King & Wood Mallesons

ORDERS

NSD 963 of 2022

BETWEEN:

FANFIRM PTY LIMITED

Applicant

AND:

FANATICS, LLC

Respondent

AND BETWEEN:

FANATICS, LLC

Cross-Claimant

AND:

FANFIRM PTY LIMITED

Cross-Respondent

ORDER MADE BY:	ROFE J
DATE OF ORDER:	17 JULY 2024

THE COURT DECLARES THAT:

1.The respondent/cross-claimant has infringed the applicant/cross-respondent’s registered word mark (Australian Registered Trade Mark Number 1232983) (FanFirm Word Mark) in contravention of s 120(1) and (2) of the Trade Marks Act1995 (Cth) by using the FANATICS word marks (Australian Registered Trade Mark Numbers 1288633 and 1905681) and FANATICS Flag Mark (Australian Registered Trade Mark Number 1894688) (together, Infringing Marks) in relation to the following goods (Infringing Goods):

(a)clothing;

(b)headgear;

(c)sportswear;

(d)sports bags;

(e)scarves;

(f)water bottles;

(g)towels; and

(h)blankets.

THE COURT ORDERS THAT:

Injunction

2.The respondent whether by itself, its directors, employees, servants, agents, related bodies corporate, or others, 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 the applicant.

Rectification 

3.The Register of Trade Marks be rectified by removing the Infringing Marks (Australian Registered Trade Mark Number 1288633, 1894688 and 1905681) in respect of the services in class 35 in which they are registered.

4.The Register be rectified by removing the respondent’s SPORTS FANATICS mark (Australian Registered Trade Mark Number 1680976) from the Register.

5.The Register be rectified by removing the applicant’s FanFirm Word Mark (Australian Registered Trade Mark Number 1232983) and device mark (Australian Registered Trade Mark Number 1232984) in respect of:

(a)The goods in classes 9, 16 and 32 in respect of which they are registered; and

(b)The services in class 38 in respect of which they are registered.

Other

6.The applicant’s claim is otherwise dismissed.

7.The respondent’s cross-claim is dismissed.

Costs

8.Subject to paragraph 9 below, the respondent pay the applicant’s costs of the whole proceeding, including the cross-claim.

9.If either party seeks a variation of the costs orders in paragraph 8 above, it may, within 14 days, file and serve a written submission (of no more than two pages). The issue of costs will be determined on the papers.

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

REASONS FOR JUDGMENT

1       INTRODUCTION	[1]
2       WITNESSES	[16]
3       TRADE MARKS – CLASSES	[21]
3.1      Applicant’s trade marks	[21]
3.2      Respondent’s trade marks	[22]
4       BACKGROUND	[23]
4.1      The applicant’s business	[23]
4.1.1        Sale of merchandise	[37]
4.1.2        Alleged change in applicant’s website	[65]
4.1.3        Applicant’s social media	[81]
4.1.4        Applicant’s reputation	[83]
4.2      The respondent’s business	[100]
4.2.1        Early history	[106]
4.2.2        Change of name from “FOOTBALL FANATICS” to “FANATICS”	[111]
4.2.3        The respondent’s third party partner e-commerce business	[117]
4.2.4        FANATICS LIVE	[120]
4.2.5        FANATICS MVP (formerly FANATICS REWARDS)	[122]
4.2.6        The respondent’s sales figures 2010 – 2014	[123]
4.2.7        The respondent’s presence in Australia intensifies in 2020	[124]
4.3      Coexistence prior to 2020	[133]
5       FIRST USE OF FANATICS IN AUSTRALIA	[143]
6       APPLICANT’S TRADE MARK CLAIMS	[160]
6.1      Principles	[164]
6.2      Use as a trade mark	[168]
6.2.1        Respondent’s admissions	[175]
6.2.2        Respondent’s use of the FANATICS Marks	[180]
6.3      Substantially identical – FANATICS Word Marks	[223]
6.4      Deceptive similarity – FANATICS Flag Mark	[224]
6.5      Deceptive similarity – FANATICS MVP and FANATICS LIVE Marks	[238]
6.6      Section 120(2) – goods and services of the same description	[242]
6.6.1        Sports bags	[251]
6.6.2        Water bottles	[252]
6.6.3        Umbrellas	[254]
6.6.4        FANATICS MVP and FANATICS LIVE	[257]
6.7      Conclusion – applicant’s allegations of infringement	[273]
7       RESPONDENT’S DEFENCES	[275]
7.1      Own name defence – s 122(1)(a)(i)	[277]
7.2      Exercising a right to use a trade mark – s 122(1)(e)	[302]
7.3      Respondent would obtain registration if it applied – ss 122(1)(f) and (fa)	[315]
7.3.1        Section 44 – honest concurrent user	[325]
7.3.2        Section 58 – applicant not the owner of the mark	[334]
7.3.3        Section 60	[338]
7.3.4        Conclusion on defences	[346]
8       SECTION 88 CANCELLATION	[348]
8.1      Section 58	[352]
8.2      Section 44	[361]
8.3      Section 60	[366]
8.4      Section 59	[370]
8.5      Section 88(2)(c)	[375]
8.6      Section 89 – exercise of discretion not to cancel	[377]
8.7      Effect of cancellation	[383]
9       APPLICANT’S NON-USE CASE	[385]
10     APPLICANT’S ACL AND PASSING OFF CLAIMS	[390]
10.1     ACL Principles	[392]
10.2     Applicant’s ACL claims	[398]
10.2.1      Respondent’s conduct	[402]
10.2.2      Relevant context	[406]
10.3     Applicant’s passing off claim	[416]
11     RESPONDENT’S TRADE MARK INFRINGEMENT CASE	[418]
11.1     Respondent’s claim for trade mark infringement	[418]
11.2     Applicant’s admissions	[424]
11.3     Applicant’s defences	[427]
11.3.1      Section 122(1)(e)	[427]
11.3.2      Sections 122 (1)(f) and (fa)	[431]
11.3.3      Section 124 – prior continuous use	[440]
11.3.4      Conclusion – defences	[444]
12     RESPONDENT’S CANCELLATION CLAIM	[445]
13     RESPONDENT’S NON-USE CLAIM	[461]
14     RESPONDENT’S ACL AND PASSING OFF CLAIMS	[480]
14.1     ACL	[480]
14.2     Passing off	[491]
15     CONCLUSION	[493]

ROFE J:

1.               INTRODUCTION

1. At its core, this is a dispute about the trade mark “Fanatics” and its use in Australia with respect to clothing and online sales of clothing (including third party licensed sports merchandise).

2. The applicant, FanFirm Pty Limited, is an Australian company, the business of which has been run by Mr Warren Livingstone since its inception in 1997. The applicant began as a travelling cheer squad for the Australian Davis Cup tennis team and expanded into offering travel, tours and merchandise for (primarily) international sporting events. 

3. The respondent, Fanatics, LLC, is a United States corporation based in Florida that operates an online retail store for sports merchandise.

4. The respondent maintains that both parties coexisted in Australia for over two decades until the applicant changed its business in mid-2020 to 2021 to promote and sell licensed sports merchandise, which it says is the genesis of the current dispute.

5. The applicant maintains that the Australian based activities of the respondent were minimal at best until about 2020 when it entered into agreements with the retailer Rebel Sport, the Australian Football League (AFL) and some AFL clubs to sell branded apparel.

6. The applicant is the owner of the following Australian Trade Mark Registrations:

   (a)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

   (b)1232984 for the word “FANATICS” and device in classes 9, 16, 24, 25, 32, 38 and 39 and having a priority date of 2 April 2008, using the following device (FanFirm Device Mark or Logo):

   (together, the FanFirm Marks).

7. The applicant says it first used the FanFirm Word Mark in Australia in 1997 and has continuously used it since then.

8. The respondent is the owner of the following Australian Trade Mark Registrations:

   (a)1288632 for the words “FOOTBALL FANATICS” in class 35 and having a priority date of 10 September 2008 (632 TM);

   (b)1288633 for the word “FANATICS” in classes 35 and 42 and having a priority date of 10 September 2008 (633 TM);

   (c)1680976 for the words “SPORT FANATICS” in class 35 and having a priority date of 18 May 2010 (976 TM);

   (d)1905681 for the word “FANATICS” in classes 35 and 42 and having a priority date of 9 January 2018 (681 TM); and

   (e)1894688 for the word “Fanatics” and device (flag device) as shown below, in classes 35 and 42 and having a priority date of 15 November 2017 (688 TM or FANATICS Flag Mark):

   .

9. The respondent’s marks primarily at issue in this dispute are the 633 TM and 681 TM (FANATICS Word Marks) and the FANATICS Flag Mark (688 TM) which together I will call the “FANATICS Marks”.

10. To avoid confusion, I will use upper case letters when referring to the respondent’s marks and lower-case letters when referring to the applicant’s marks.

11. Both parties have alleged that the other party has:

    (a)infringed its registered marks under s 120 of the Trade Marks Act 1995 (Cth);

    (b)contravened s 18(1) and s 29(1)(g) and (h) of the Australian Consumer Law (ACL) as contained in Sch 2 of the Competition and Consumer Act 2010 (Cth); and

    (c)engaged in the tort of passing off.

12. Both parties seek cancellation of some of the other’s marks under s 88 of the Act. There is no dispute that each party is a person aggrieved for the purposes of its s 88 challenge.

13. Both parties also largely rely upon the same defences to trade mark infringement. Most of the issues in this case can be resolved by determining which party first used the “Fanatics” trade mark in Australia with respect to the relevant goods and services, and assessing the nature of each party’s reputation and when that reputation can be established in Australia.

14. This hearing was on the issue of liability only.

15. By way of summary, and for the reasons that follow, I am satisfied that:

    (a)The applicant has established that the FANATICS Marks infringe the applicant’s FanFirm Word Mark in relation to certain goods (class 25), and that none of the defences raised by the respondent are successful;

    (b)I should exercise my discretion to cancel the respondent’s registrations of the FANATICS Word Marks and FANATICS Flag Mark in class 35 (online retail services) pursuant to s 88(2)(a) and one or other grounds of cancellation;

    (c)The FANATICS Word Marks and FANATICS Flag Mark registered in class 42 should not be cancelled;

    (d)The respondent’s SPORTS FANATICS Mark should be removed from the Register pursuant to s 88 and s 59 of the Act and for non-use under s 94(4)(a) and (b);

    (e)The applicant has not infringed the respondent’s registered trade marks because it can successfully rely on several defences to infringement;

    (f)The registration of the FanFirm Marks in classes 9, 16, 32 and 38 should be removed for non-use under s 92(4); and

    (g)Neither party has contravened the ACL or engaged in passing off.

    2.               WITNESSES

16. The applicant read affidavits from the following lay witnesses:

    (a)Mr Warren David Livingstone, who made four affidavits dated 28 April 2023, 17 October 2023, 12 December 2023 and 8 March 2024. Mr Livingstone is the Managing Director, sole director and secretary of the applicant.

    (b)Mr Alastair Rhys Cockerton, who made one affidavit dated 28 September 2023. Mr Cockerton is a solicitor at Sparke Helmore, the legal representative of the applicant. 

    (c)Ms Shannon Elizabeth Platt, who made two affidavits dated 28 September 2023 and 19 February 2024. Ms Platt is a partner at Sparke Helmore.

    (d)Mr Fenton Coull, who made one affidavit dated 11 October 2023. Mr Coull is a former sports executive who had business dealings with the applicant and Mr Livingstone while employed at Tennis Australia.

    (e)Mr Dean Woodbury, who made one affidavit dated 27 October 2023. Mr Woodbury is a barrister but previously worked with Mr Livingstone on a partnership with Flight Centre (discussed below) and attended a number of the applicant’s tours and events.

    (f)Ms Vahini Naidoo, who made one affidavit dated 12 October 2023. Ms Naidoo is a solicitor at Sparke Helmore.

    (g)Mr Christopher Butler, who made one affidavit dated 21 November 2023. Mr Butler is the Office Manager at Internet Archive who gave evidence about Wayback Machine data.

17. Only Mr Livingstone was cross-examined.

18. The respondent read affidavits from the following lay witnesses:

    (a)Mr Brian C Swallow, who made one affidavit dated 13 December 2023. Mr Swallow is the Senior Vice President for Strategy and Business Development of the respondent.

    (b)Mr Zohar Ravid, who made three affidavits dated 25 October 2023, 14 November 2023 and 21 December 2023. Mr Ravid joined the respondent in June 2018, and has held various roles since then. Since January 2022, Mr Ravid has been the Senior Vice President, Global Head of Corporate Development for the respondent. Mr Ravid gave evidence as to the corporate history of the respondent since the formation of FOOTBALL FANATICS in Florida in February 1995. Mr Ravid also gave evidence as to the respondent’s business since he joined in 2018.

    (c)Ms Diana Liu, who made three affidavits dated 17 October 2023, 9 November 2023 and 4 December 2023. Ms Liu is a solicitor at King & Wood Mallesons, the legal representative of the respondent.

    (d)Ms Sylvia Cui, who made one affidavit dated 6 March 2024. Ms Cui is a Staff Engineer, Commerce Science Global Brand Insight of the respondent.

    (e)Mr Wade Tonkin, who made one affidavit dated 7 March 2024. Mr Tonkin is Director, Global Affiliate Marketing of the respondent.

    (f)Mr Mustafa Abdelfatah, who made one affidavit dated 6 March 2024. Mr Abdelfatah is the Senior Analyst, Web Analytics – Site Experience of the respondent.

    (g)Ms Erin Body, who made one affidavit dated 7 March 2024. Ms Body is the Senior Manager, Merchandise Insights and Reporting of the respondent.

    (h)Mr Lee Goodall, who made one affidavit dated 7 March 2024. Mr Goodall is the Senior Director of Buying and Merchandising of Fanatics International.

    (i)Ms Brittanie Boone Gracey, who made one affidavit dated 8 March 2024. Ms Gracey is the Senior Director, Merchandising Analytics of the respondent.

    (j)Ms Gu Mi, who made one affidavit dated 8 March 2024. Ms Mi is the Senior Analyst, Strategy and Analytics of the respondent.

1. Only Mr Swallow and Mr Ravid were cross-examined.

2. Neither party called any expert witnesses.

   3.               TRADE MARKS – CLASSES

   3.1             Applicant’s trade marks

3. The applicant’s FanFirm Marks are registered in the following classes:

   (a)Class 9: motion picture films (recorded); for use in multimedia (not limited to recordings for television; world wide web and DVD).

   (b)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.

   (c)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.

   (d)Class 25: Clothing, footwear and headgear, shirts, scarves, ties, socks, sportswear.

   (e)Class 32: Mineral and aerated waters and beer.

   (f)Class 38: Providing telecommunication services including content and entertainment; television broadcasts and Internet communication; press or information agencies (news).

   (g)Class 39: Organisation of transport and travel facilities for tours; functions; sporting and entertainment events for people and products.

   3.2             Respondent’s trade marks

4. The respondents’ marks, other than FOOTBALL FANATICS and SPORTS FANATICS (which are only registered in class 35), are registered in the following classes:

   (a)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.

   (b)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.

   4.               BACKGROUND

   4.1             The applicant’s business

5. In 1997, Mr Livingstone attended the US Open tennis men’s singles final in New York. His enthusiastic support earnt him an invitation to attend a post-match celebration with the winner of the final, Pat Rafter. Also in attendance were John Newcombe and Tony Roche (the Australian Davis Cup team coach). At that meeting, Mr Livingstone proposed the idea of a travelling cheer squad for the Australian tennis squad. Part of the concept was that these people would wear clothing branded with the word or logo “Fanatics” while giving enthusiastic support for Australian sports teams and players, and would be given preferential seating at these sporting events.

6. A collaboration with Tennis Australia then commenced in about October 1997 and the name “The Fanatics” (later shortened to “Fanatics”) was chosen by Mr Livingstone.

7. The first Fanatics tour took place in April 1998 to Mildura for the Davis Cup. Attendees wore “FanFirm branded” t-shirts and caps (ie, one or both of the FanFirm Marks were on the items, typically the FanFirm Logo).

8. Mr Coull had a longstanding association with the applicant’s business in his professional capacity, including as the General Manager of Operations and Events for Tennis Australia from 1998 to 2008. He gave evidence that the “Fanatics supporter group was so popular with the players that in or about 2003, [he] was asked by the Australian professional tennis players to allocate to the Fanatics supporter group preferential seating at each Davis Cup Tie”. Mr Coull also gave evidence of a tradition on the night after the Davis Cup Tie was completed where the players attended the post-match function wearing FanFirm branded T-shirts.

9. Mr Woodbury and Mr Livingstone gave evidence of various other tours and events organised by the applicant. Initially, the business focused on organising tour and event services for particular sporting events; first tennis, and subsequently other sports such as rugby, soccer, cricket and golf.  In 2002, the applicant’s business expanded to providing organised tour and event services for a wide range of non-sport related events, such as Oktoberfest in Germany; Running of the Bulls in Pamplona, Spain; Anzac Day in Gallipoli, Turkey; St Patrick’s Day in Dublin, Ireland; and skiing trips to France and Japan. Many thousands of people have attended the applicant’s tours over the years.

10. In 2002, Mr Livingstone entered into a joint venture arrangement with Flight Centre, a travel agency business. As part of this arrangement, Flight Centre and Mr Livingstone sold tours and merchandise under the FanFirm Marks through various channels and websites. The joint venture came to an end in 2004. Mr Livingstone gave oral evidence that the reason the joint venture terminated was because it was “too focused on travel” and the applicant wanted to “do tours and merchandise and all those kind of things”.

11. In September 2004, Mr Livingstone incorporated the applicant. Upon incorporation, the applicant became responsible for, and continued to offer, all of the same goods, services and activities that Mr Livingstone had previously offered in his own right. From that time, Mr Livingstone has been the Managing Director of the applicant.

12. From the outset, Mr Livingstone and subsequently the applicant has maintained a database of its customers and subscribers (or as Mr Livingstone calls them “the Fanatics”). The customers in the database have purchased FanFirm branded merchandise from the applicant and/or purchased and participated in tours organised by the applicant. The majority of the people recorded in the database reside in Australia. The applicant uses the database to send newsletters to the customers, and inform them about new tours, FanFirm branded merchandise available for purchase and news of recent and upcoming Fanatics events. The applicant currently has around 160,000 members in its customer database.

13. Mr Livingstone also gave evidence that the applicant operated a loyalty and rewards program from its inception. Membership of the rewards program entitles a person to participate in the online communities which are operated at the website and receive benefits including news of forthcoming sporting events and results of the Australian teams and sportspeople at the events. The Wayback Machine extracts set out at [44] and [46] below of the applicant’s website from 2007 and 2002, respectively, show a “member login” tab.

14. The applicant operates websites from three domain names:

    (1) – registered in 2000.

    (2) – registered in 2003.

    (3)thefanatics.com.au – registered in 2003.

15. It also operated a fourth domain name, until about 2000.

16. Mr Livingstone’s evidence was that has always been redirected to save for a few discrete periods. As such, up until around 2020, the primary website of the applicant’s business was

17. The applicant contends that there have been, and continue to be, three distinct parts to the applicant’s business, each of which is promoted and provided under and by reference to the FanFirm Marks:

    (a)“Tour Services” involving sports, festival and leisure tours conducted in Australia and in various countries around the world;

    (b)“Sports-related Merchandise”, including clothing, sportswear, footwear and headgear. These have been, and continue to be, offered as a separate standalone offering, as well as in conjunction with the tour services referred to in (a); and

    (c)“Sale Services”, involving selling the merchandise referred to in (b) on an online retail store.

18. The applicant rejects the respondent’s assertion that its business underwent a “dramatic change” in mid-2020. The applicant contends that it has been using its marks in relation to the same kinds of goods and in the same way, including on its website, since well before mid-2020, and there has been no change to its business or manner of using its marks after that date.

    4.1.1Sale of merchandise

    4.1.1.1Prior to 2020

19. Mr Livingstone gave evidence that since 1998, the applicant (and Mr Livingstone before it) has sold clothing (including third party licensed merchandise) online via the website Since about 2000, the merchandise that was offered for sale and promoted via the website (and from time to time) was offered and promoted to tour and event attendees. However, according to Mr Livingstone, it was not limited to those people.

20. Mr Coull gave evidence that in the early days, Mr Livingstone would sell surplus FanFirm branded merchandise in the lobby of the hotels where the Fanatics supporter group members were staying, and at the match venue.

21. The FanFirm Marks are registered in class 25 and the applicant submits that it has sold goods under those marks, including clothing, sportswear, footwear and headgear, since at least September 2004, and earlier via Mr Livingstone.

22. The applicant contends that it promotes, supplies and sells three categories of goods (including clothing, sportswear, footwear and headgear), by reference to the FanFirm Marks:

    (a)FanFirm branded merchandise relating to a particular tour or event (such as a t-shirt relating to a particular Davis Cup tie or cricket tour). This category can be divided into:

    (i)merchandise branded with the word “Fanatics” or the FanFirm Device Mark only; and

    (ii)merchandise co-branded with a FanFirm mark and with indicia of the relevant sporting code – for example, a cricket shirt with the FanFirm Device Mark and the Cricket Australia logo;

    (b)FanFirm branded merchandise used to promote the FanFirm business generally, rather than a particular tour or event. For example, a pair of FanFirm branded Dunlop Volley shoes were advertised as a “New product” on the applicant’s website in 2011;

    (together, FanFirm branded merchandise)

    (c)Official or third party licensed merchandise provided by way of a straight resale and not branded with either of the FanFirm Marks.

23. It is this last category of merchandise, and in particular its sale online by the applicant before 2020, that the respondent takes issue with. The respondent says that the applicant did not sell third party licensed merchandise prior to 2020 (or, if it did, any such sales were infrequent and negligible) and, therefore, the sale of such merchandise from mid-2020 signified a departure from the applicant’s ordinary activities.

    4.1.1.1.1Evidence of category (a) and (b) merchandise

24. There was evidence of the existence, promotion and supply of category (a) and (b) FanFirm branded clothing, sportswear, footwear and headgear going back to 1997. This included photographs of t-shirts (some dated on their face), newspaper articles showing the supporter group wearing the FanFirm branded merchandise and Wayback Machine extracts from 2002, 2003, 2004 and 2005 depicting people wearing FanFirm branded merchandise. Some of these examples are set out below.

25. A further example of the use of the FanFirm Marks in relation to sportswear, footwear and headgear is a booklet created for the 2006/2007 Ashes cricket tour. The “Fanatics clobber” and gear pictured in the booklet was said to be available online at Set out below are the booklet and Wayback Machine extracts of the website (dated 23 November 2007) where the FanFirm branded merchandise promoted in the booklet could be purchased.

26. The Ashes 2006/2007 merchandise is third party licensed co-branded merchandise (category (a)(ii) at [40] above). The goods promoted in the booklet (second and third rows below) are co-branded with Cricket Australia logos and the FanFirm Device Mark. The items are also displayed for purchase on the website extract below.

27. There is no dispute that the applicant has promoted, supplied and sold FanFirm branded merchandise in relation to tours and to promote the business generally. The respondent accepts that the evidence shows that from around 2002, such goods were promoted via a “Merchandise” page on the website

28. For example, the Wayback Machine extract set out below from 24 May 2002 shows a “Merchandise” link on the left-hand side and, on the right-hand side, a photograph of John Newcome holding what Mr Livingstone described as “a shirt from ‘99”. When asked in cross-examination about the “tile” with “MERCHANDISE: Coming soon!” written underneath, Mr Livingstone explained that in the

    early days we sold merchandise differently … there wasn’t an online shop per se. In the early days, you clicked on merchandise, you went to a page which had a couple of photos of merchandise and then people would call us, email us, send us a cheque and we would take the cheque and send the merchandise. 

29. There was evidence that the applicant had, since 2002, sold merchandise on its website, including the Wayback Machine extract from 2007 displaying Ashes merchandise set out above and the Wayback Machine extract from 14 June 2005 set out below:

30. The applicant’s website in 2011 (displayed below) included a “SHOP” tab in the menu bar at the top of the page.  There was a “Shop Help” in the vertical side bar, and the Shop section in the site map at the bottom of the page listed the following under “Shop”: “What’s new, All categories, Men’s T-shirts, Men’s boardies, Ladies T-shirts, Retro, Flags, Headgear, Kids, Official Merchandise, Your trolley Returns and Size guide”.

    4.1.1.1.2Evidence of category (c) merchandise

31. There is evidence that from at least January 2012, FanFirm sold via its website third party “straight resale” licensed merchandise, including Qantas Socceroos Jerseys, Qantas Wallabies Official Jerseys, and Australia ODI Cricket Shirts. Extracted below are Wayback Machine extracts of FanFirm’s website from 25 January 2012 showing third party licensed merchandise offered for sale:

32. These Wayback Machine extracts are the earliest documentary evidence of the applicant selling third party licensed merchandise.

33. Mr Livingstone gave evidence of some licensing arrangements and deals, including those concerning clothing, that the applicant and its predecessors have done with various sporting bodies and teams. This included Tennis Australia, the USA National Football League (NFL), Cricket Australia, USA National Hockey League (NHL), the Wallabies and Football Australia. Mr Livingstone gave evidence that in 1999 he produced 3,000 shirts co-branded with the NFL. The shirts had the NFL logo on the left-hand side and either the Denver Broncos or the Los Angeles Chargers logos on the right-side, and the FanFirm Device Mark on the back. 1,500 of these shirts were distributed to purchasers of tickets to the 1999 America Bowl in Australia. Mr Livingstone was cross-examined in relation to these arrangements. He agreed that FanFirm did not have any current affiliation with any of these sporting bodies or teams.

34. In his second affidavit, Mr Livingstone gave evidence that the applicant had, from around 2004, promoted for sale licensed merchandise from the NFL, National Basketball Association (NBA), NHL, English Premier League, FIFA, UEFA Champions League, Rugby Australia, Tennis Australia, Netball Australia, Soccer Australia, Cricket Australia, National Rugby League (NRL), National Basketball League (NBL), Olympics and the AFL. There were no examples in the applicant’s evidence of the applicant selling any third party licensed merchandise other than for Cricket Australia, Rugby Australia and Soccer Australia prior to 2021.

35. In cross-examination, Mr Livingstone gave evidence that the applicant sold third party licensed merchandise from as early as 2006 in relation to the 2006 Football World Cup in Germany (Germany World Cup). At that time, the applicant was involved in a partnership with Football Australia. Mr Livingstone explained that the applicant:

    won a deal with Football Australia whereby [it] managed the sale of their tours and their tickets and their merchandise to the 2006 Football World Cup. [The applicant] produced about 20,000 units of merchandise for Football Australia – which we designed, which we produced – and [it] then sold them to Australians on tour or Australians picking up their tickets in Frankfurt, or people picking up just merchandise.

36. Mr Livingstone explained that this partnership came about because the applicant “had a lot of experience in … selling online merch”. He said that the applicant approached Football Australia as they had “more experience than any other person – any other company in Australia”.  Mr Livingstone said that the Football Australia merchandise “all had a Football Australia logo on them. They had Fanatic swing tags. Some of them had Fanatics logos”. The 20,000 units of merchandise encompassed shirts, board shorts, visors, jerseys, thongs and outerwear.

37. Mr Livingstone gave evidence that the Germany World Cup merchandise was available on which was not redirected to during 2005 and 2006. The domain name operated as a standalone website during this time where people could purchase merchandise, irrespective of whether they had already booked the tour to the Germany World Cup.

38. The respondent rightly notes that there is no documentary evidence to support Mr Livingstone’s account of the Football Australia partnership in 2005 and 2006, such as Wayback Machine extracts. As such, there is no evidence of what the website looked like during those periods, what the merchandise was or the manner in which it was made available. Nor is there any evidence of how many customers visited the website or invoices to show how many of these units were purchased.

39. Despite these criticisms, the respondent seems to accept Mr Livingstone’s description of the applicant selling third party licensed Football Australia merchandise in 2005 and 2006 via a standalone website. It was not put to Mr Livingstone that those sales did not take place. Nor did the respondent submit in closing that the Court should not give any weight to this evidence because it was not supported by documentary evidence and only raised for the first time in re-examination.

40. The extent of the respondent’s criticism was that Mr Livingstone’s evidence on this episode was “vague” and does “not advance FanFirm’s position in any way” because it merely describes a single, isolated incident of the applicant’s business.

41. However, the respondent criticises Mr Livingstone as a witness generally. The respondent claims that Mr Livingstone was argumentative in cross-examination, gave long answers unresponsive to questions, failed to make appropriate concessions, sought to pre-empt the direction of cross-examination and raised matters that had not be set out in his four affidavits. The respondent contends that Mr Livingstone’s evidence as a whole should therefore be treated with caution.

42. Mr Livingstone was, perhaps understandably, passionate in giving evidence about his business.  I consider that he generally gave relevant and credible evidence. His evidence about the Football Australia partnership for the Germany World Cup in 2006 was very self-serving and unsupported by any contemporaneous document or raised in his affidavit. However, for the reasons explained below at [157]–[158], I do not consider that anything turns on when the applicant first sold third party, straight resale, licensed merchandise.

    4.1.1.22020 onwards

1. The respondent alleges that in about March 2021, the applicant made a “dramatic change” to its business, departing from its longstanding sporting and event tour organisation business by launching what the respondent calls the FanFirm “Retail Store”. The Retail Store is at the domain name

2. As noted above, has always been redirected to In cross-examination, Mr Livingstone accepted that the re-direction came to an end by no later than some time in 2020 and now and are two separate, standalone websites.

3. The respondent contends that the Retail Store now promotes both licensed sports merchandise (ie “straight resale”) and a selection of FanFirm branded merchandise. The applicant continues to promote and sell its sporting tour and event services from the website at

4. The respondent says that the Retail Store is a significant departure from the applicant’s previous activities for two reasons. First, the applicant has transitioned away from being a business focused on tour and event services to operating a freestanding online retail store selling third party, straight resale, licensed merchandise. Second, the website’s colour theme and style are significantly different from the applicant’s website at and its previous iterations since the early 2000’s. The respondent contends that these changes are the genesis of the current dispute and amount to misleading and deceptive conduct in contravention of s 18(1) of the ACL.

   4.1.2Alleged change in applicant’s website

5. The respondent contends that the change in the presentation of the website located at is best illustrated when the following “before” and “after” screenshots from the Wayback Machine are compared:

6. The side-by-side comparison does, indeed, show a significant difference in appearance between the website at those two points in time.

7. However, a review of the evidence as to the appearance of the applicant’s website over the years from its earliest days shows that the colour scheme and style of the applicant’s website has changed many times over the years, and the respondent has selected the examples that look the most different. Set out in the table below are a selection of Wayback Machine extracts from various webpages of over the years. These are not an exhaustive list and are set out to illustrate how the website has changed overtime.

Year	Website
2002
2006
2009
2010
2013
2014
2015 – 2017
2021–2022

1. The applicant’s website has recycled many of the different designs over time. For example, in May 2021, the website adopted the theme of the suitcase with stickers (in the 2014 row of the table) whereas in October 2021 it adopted the light blue theme (in the final row of the table).

2. It is evident from these examples that, contrary to the respondent’s contention, the Australian green and gold theme has not always been a consistent and prominent theme of the applicant’s website. The green and gold theme was prominent in the early years, but since 2009 the website has frequently adopted other designs, such as the light blue background or the suitcase design.

3. A key element that has been present in almost every iteration of the website and its various webpages over the years is the presence of the FanFirm Device Mark in the top left-hand corner.

4. The biggest change to the website is not in colour and design, but in the description of the applicant’s business, the focus of the business and the product offering.

5. The applicant has consistently described itself as a tour and event business on its website. For example, between at least 2002 and 2003, the website at contained the following (or a very similar) description:

   The Fanatics began in 1997 with an aim to form an organised, passionate & patriotic support group that would follow Australian Sport at home & around the world.

   Over the last five years, The Fanatics have worked with Tennis Australia, Australian Rugby, Australian Cricket Board, AOC, NFL & various other national sporting organisations.

   Here you will find the history of the fanatics, photos, tour reviews, topical articles about Australian sport, & information about upcoming tours at home & around the world.

6. The “About Us” page on in September 2023 contained a broadly similar description:

   Fanatics officially began in 1997 with the aim of forming an organised, passionate & patriotic support group that would follow Australian Sport at home & around the world.

   These days over 115,000 members receive our newsletters & we’ve organised travel for over 130,000 punters since we started. We still run regular jaunts to a wide range of sports and party events around the world, while working closely with Rugby Australia, Cricket Australia, Football Australia, the NRL & ARL, Tennis Australia & various other international sporting organisations.

   We now concentrate on two main things – firstly, organising events for passionate Australian sports fans to congregate at the biggest and best sporting events at home and overseas.

   We also operate affordable travel options to the world’s biggest and craziest festivals and parties, sailing along the Croatian coast during the European summer, plus the annual Anzac Day commemorations at Gallipoli.

   Fanatics are dedicated to ensuring we continue to offer the best range of tours and events anywhere in the world. So whether you want to join our supporter bays & tours to all the big sporting events in Aus, our massive tours to the World Cups and major international sporting events around the globe, our amazing range of annual party & festival events throughout Europe, or commemorating the Anzacs at Gallipoli, there is something for you!

   We hope you enjoy our website & look forward to seeing you on tour soon!

7. The focus of the website has consistently been tours and events. Merchandise has always been available for purchase and advertised on the homepage, but the primary offering is clearly tours and events.

8. In contrast, since at least 2021, the applicant has described itself on the Retail Store at as follows:

   OFFICIAL LICENSED MERCHANDISE

   Fanatics are a global leader in official sports merchandise & team apparel. Choose the latest jerseys, caps & other merchandise from the worlds [sic] leading sports teams & Fanatics supporter merchandise.

   Fanatics Est. 1997

   (Emphasis added.)

9. The Retail Store does not refer to tours and events promoted by the applicant or provide a link to However, the Retail Store does sell FanFirm branded merchandise.

10. Finally, prior to 2021, the applicant only sold third party licensed merchandise from Australian national sporting teams, such as the Socceroos, Matildas, Wallabies and Cricket Australia. There is no evidence that the applicant sold merchandise relating to domestic or international sporting leagues, such as the AFL, NRL, NFL, NBA or English Premier League. The Retail Store at now offers merchandise in relation to all these sporting codes and seems to have done so since at least December 2020.

11. The applicant does not manufacture this third party, straight resale, licensed merchandise and Mr Livingstone said that the applicant does not have any agreement with any of these leagues in relation to the supply of such merchandise.

12. The respondent gave evidence of a “trap purchase” of an AFL Sydney Swans jersey from the Retail Store.  The evidence showed that, to fulfil the order, the applicant purchased that jersey from Rebel Sport, marked it up and on-sold it.

13. The respondent contends that the applicant designed the Retail Store at some time in 2019 and launched it at some time in 2020, transitioning away from being a business focussed on sporting and event tour services to the operation of a freestanding online retail store selling the same types of goods as the respondent. However, the respondent did not put these allegations to Mr Livingstone directly.

    4.1.3Applicant’s social media

14. Mr Livingstone gave evidence of the applicant’s social media presence. The applicant has been active on Facebook since 2006, YouTube since 2008, X (Twitter) since 2009 and Instagram since 2018. The FanFirm Marks, particularly the Device Mark, are used on the applicant’s social media accounts, as illustrated by the examples below.

15. The applicant relies on its social media presence as further evidence of its significant reputation in the name Fanatics for tour services, sales services and merchandise.

    4.1.4Applicant’s reputation

16. The applicant contends that as at December 2010 (and indeed earlier), it had a valuable reputation in the word “Fanatics” with respect to sporting and other events tour services and sports merchandise, including clothing, headgear, sportswear, footwear.

17. The respondent does not dispute that the applicant has a reputation in Australia in the word “Fanatics” in connection with its business of promoting and providing sporting and event tour services. The respondent accepts that the applicant has promoted its sporting and event tour services business by reference to that name via its websites, newsletters to subscribers, and social media. Nor does the respondent deny that as part of its sporting and event tour services business, the applicant has supplied items of clothing and headgear to attendees of its tours and events.

18. However, the respondent rejects the proposition that the applicant has a reputation in relation to the promotion and sale of merchandise under the FanFirm Word Mark, including clothing, headgear, sportswear, and footwear, other than as an adjunct to its sporting and event tour service business.

19. The respondent contends that the promotion and sale of merchandise was an incident of, and on the evidence, a minor part of, the applicant’s tour and event services. According to the respondent, there is no basis to think that the promotion and sale of the merchandise in question would have occurred were the applicant not providing its tour and event services. The respondent says that consumers did not transact with the applicant on the basis that they were acquiring a retail service, but transacted with the applicant to obtain a tour or event service, and perhaps relatedly a piece of merchandise. The respondent submits that Mr Livingstone’s first trade mark application made in October 2002 supports its case as the registration was sought in class 39 for “[t]ravel services being services offered by travel agents in this class”.

20. The nature and extent of the applicant’s reputation in the word “Fanatics” is critical to several aspects of the case. First, both parties’ ACL cases. Second, both parties’ resort to s 60 and s 88(2)(c) of the Act in their attempt to cancel the other’s marks. Third, it is relevant to discretionary considerations.

21. Rather than extensive evidence of sales volumes and revenue to establish the existence of its reputation, the applicant relied on:

    (a)the lengthy period of operation of its sporting and event tours business including the background matters set out above;

    (b)evidence of the thousands of people who have attended its organised tours and events and attended those tours and events attired in FanFirm branded merchandise;

    (c)widespread newspaper reports (including photos) of the activities of groups of Fanatics attending sporting matches and events whilst attired in FanFirm branded clothing; and

    (d)the separate sale of FanFirm branded merchandise, including clothing, headgear, sportswear and footwear via its website.

22. The applicant also relied on evidence of its annual gross income for each year from 1997 to establish its reputation. Aside from 2020 and 2021 which were affected by the Covid-19 pandemic, the applicant’s gross annual income since 2002 has been substantial and, for the most part, increasing annually. The volume of sales are in the order to be expected from the “thousands” of people that have partaken of the applicant’s sporting tours and events over the years the applicant has been conducting its business.

23. The applicant also relied on its extensive customer database, which it said included around 160,000 contact details, as evidence of the large number of people in Australia aware of the applicant’s use of the word “Fanatics”. 

24. Mr Coull gave evidence of large numbers of attendees at Davis Cup matches wearing clothing bearing the FanFirm Marks. He also gave evidence, noted above, that Australian professional tennis players requested that Fanatics supporter groups were given preferential seating.

25. For example, at the 2003 Davis Cup held in Australia, Lleyton Hewitt requested the match stadium seating allocation be organised so that the Fanatics supporter group (all of whom were wearing FanFirm branded t-shirts and hats) were given preferential seating, close to the court near where Mr Hewitt would receive balls from the ball kids when serving.

26. Mr Coull also gave evidence that around 1,000 to 1,300 Fanatics supporters attended each Davis Cup event with which he was associated.

27. Mr Woodbury, now a member of the New South Wales Bar Association, first attended a tour organised by the applicant to watch Australia v Zimbabwe in the first round of the Davis Cup hosted in Mildura in March 1998. He gave evidence of attending several FanFirm tours over the years where attendees wore FanFirm branded merchandise.

28. The applicant had relationships with sporting bodies such as Tennis Australia (1999–2017), Australian Rugby Union (2002–19) and Cricket Australia (2006) and famous Australian athletes such as Lleyton Hewitt. Thousands of people had been on the applicant’s tours and attended events. Those attending sporting events, such as the Davis Cup or cricket matches, sat together in highly visible groups wearing their FanFirm branded merchandise. Many more people had purchased FanFirm apparel.

29. The respondent criticises the applicant’s lack of evidence as to the volume or value of its sales of merchandise. The respondent notes that it was open to the applicant to adduce evidence of sales and submits that an inference should be drawn that such evidence would not have advanced the applicant’s case on reputation in relation to sports merchandise, including clothing, headgear and footwear.

30. At [86] of McCormick & Co Inc v McCormick (2000) 51 IPR 102, Kenny J observed that:

    it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things.

    (Citations omitted.)

31. Evidence of sales volume and revenue or advertising spend may be a common method from which to infer reputation, but they are not the only ways to establish the existence of reputation. The Full Court in Vivo International Corp Pty Ltd v Tivo Inc (2012) 99 IPR 1 at [57] (per Keane CJ, Dowsett J agreeing), in the context of s 60, endorsed the primary judge’s observation that a mark may acquire a reputation in Australia by the means of “direct preliminary marketing, direct advertising, indirect advertising, exposure in radio, film, newspapers and magazines or television”. The applicant’s evidence in support of its reputation included newspaper articles, Wayback Machine extracts from its website and evidence from Mr Coull and Mr Woodbury who had attended many of the applicant’s tours and events.

32. I consider that the applicant has established that as at December 2010, it had a reputation in the FanFirm Marks, including the word mark “FANATICS”, with respect to sports merchandise including at least clothing, headgear and footwear. This reputation was separate to, and not simply an adjunct of, the applicant’s sporting and events tour business.

    4.2             The respondent’s business

33. The respondent is a US business that sells licensed sports merchandise across the globe, including clothing, accessories and memorabilia. Mr Ravid described the respondent’s business as a global online retailer of officially licensed sports merchandise and apparel via e-commerce stores.

34. The merchandise sold by the respondent includes both straight resale third party licensed merchandise and what the respondent calls “FANATICS branded” goods. “FANATICS branded” goods are third party licensed merchandise which is manufactured by the respondent which typically bear FANATICS Marks, denoting that the goods are manufactured by the respondent. The respondent also sells “corporate merchandise” which has the FANATICS Flag Mark prominently on the clothing and is primarily sold to its employees (but is still available publicly).

35. The respondent has also conducted, from at least 2020, services which connect fans to athletes, such as FANATICS PRESENTS (which used to be called FANATICS LIVE), where fans are invited to meet athletes, both in person and online, and these events are filmed. I will refer to this service as FANATICS LIVE.

36. Mr Ravid’s evidence was that the respondent owns “many thousands of domains”, including:

    (a) (recently subsumed into and

    (d)>

    According to Mr Ravid, since at least 2018, the respondent has offered for sale officially licensed sports merchandise and apparel including clothing (such as sweatshirts, t-shirts, jackets and jerseys), accessories (such as watches, hats, beanies, gloves, scarves and bags), and memorabilia (such as cups, pillows, rugs, mascots, flags and mugs) via its online stores, including at the domains at [103] above.

37. The company history of the respondent is not in dispute. The history involves a number of name changes, only some of which are relevant and worth noting. 

    ·On 27 January 1995, the respondent was formed as “Football Fanatics Inc”.

    ·On 7 December 2010, the respondent changed its name to “Fanatics, Inc”.

    ·On 20 December 2021, the respondent settled on its current corporate name “Fanatics, LLC”.

    ·The respondent’s business currently operates internationally via a number of subsidiaries, including Fanatics UK Holdings Limited (UK), Fanatics (International) Limited (UK) and Fanatics Australia Pty Ltd (an Australian company, incorporated on 21 July 2022).

    4.2.1Early history

38. The respondent’s business was founded as “FOOTBALL FANATICS” by two brothers, Alan and Mitchell Trager, in February 1995 in Jacksonville, Florida. Originally, the business traded as a bricks-and-mortar store selling merchandise relating to the recently formed Jacksonville Jaguars NFL team.

39. The respondent’s business moved into online sales in around 1997 when it opened an online retail store at a collective marketplace located in Jacksonville. In 1998, the online store was moved to a website controlled by the respondent — By 1999, a wide range of team apparel for local NFL and college sporting teams was being promoted and sold from this online store. These products were able to be shipped nationally and internationally.

40. Prior to 2010, the respondent’s corporate predecessors acquired a large number of different domain names to establish new e-commerce stores including the name FANATICS in combination with different sports and sporting terms or target audiences. Examples included (2006), (2007), (2007), (2008), (2008), (2008), (2009) and (2009). The respondent also had separate branding for the e-commerce stores located at these domains. Mr Swallow gave evidence about the operation of a blog entitled “We are Fanatics” from around 2008, located at type="1">

41. A key aspect of the respondent’s business is said to be the operation of online retail stores. The majority of this aspect of its business involves the promotion and sale of licensed sports merchandise, being goods that bear third party brands (mainly sporting clubs or leagues from the US or Europe) from its websites and

42. Mr Ravid’s evidence was that since at least 2018, the officially licensed merchandise and apparel has included North American sporting leagues and associations such as the NFL and NBA, and international sporting leagues and teams including English Premier League soccer and Formula 1 car racing.

    4.2.2Change of name from “FOOTBALL FANATICS” to “FANATICS”

43. Mr Swallow gave evidence that in about 2001 or 2002, the respondent began to see the word “football” in its online presence as a constraint on its ability to grow the business in relation to other sports, including baseball and basketball. Over the course of the next decade, the respondent focussed on expanding its business into other sports. To this end, in about 2004 or 2005, the respondent registered several sports-related domain names such those referred to above at [108]. It unsuccessfully tried to acquire the domain from a third party, but the price was prohibitive.

44. The respondent was eventually successful in acquiring the domain name on 9 November 2009. Between November 2009 and November 2011, visitors to the domain name were re-directed to the site. From mid-2010 to mid-2011, the logo that appeared in the website banner of the site varied, and included the following alternatives which prominently featured the word FANATICS:

    .

45. However, from late November 2011 onwards, the domain hosted its own content and has been the primary domain used by the respondent ever since. As Mr Swallow explained, this transitional period of 2009 to 2011 involved the respondent’s business “weaning” itself off the domain name so that when the domain name became independently active, it would have sufficient commercial momentum.

46. In 2017, the respondent acquired which also operates as a free-standing online retail store.

47. Mr Swallow gave evidence that in about 2010, the respondent began to consider re-branding its business. A range of possibilities were tested, including FANATICS, FANATICS CENTRAL, FANATICS WORLD and FANATICS BRAND. However, the business ultimately settled on FANATICS. The name of the brand was changed from FOOTBALL FANATICS to FANATICS on 7 December 2010.

48. The re-branding process eventually led to the respondent settling on the following logo:

    .

    4.2.3The respondent’s third party partner e-commerce business

49. In addition to its own online sale of officially licensed sports merchandise and apparel described above, Mr Ravid’s evidence was that another aspect of the respondent’s business is the design, implementation, maintenance and management of third party partner e-commerce stores (Partner Stores) for the:

    (a)major North American sporting leagues (such as the NFL’s North American sports media brands (including NBC Sports, CBS Sports and Fox Sports); and

    (c)several international sporting leagues and teams (including the official sites of English Premier League teams Manchester United, Chelsea and Everton).

50. The respondent’s management of its Partner Stores covers the end-to-end customer experience, such as product manufacture, online sales, order fulfilment and customer service. Mr Ravid gave evidence as to the respondent’s investment in, and development of, technology to support the development and management of its Partner Stores and the end-to-end customer experience of those stores across all devices. One example given of the technology was the Fanatics Cloud Commerce Platform. Other examples provided by Mr Ravid of the services offered by the respondent included global payments methods, functionality to support auctions, personal product recommendations, “hyperspeed shipping”, search engine optimisation, comparison shopping engines and retargeting.

51. Prior to 2020, the respondent had no Australian third party partners or Australian Partner Stores.

    4.2.4FANATICS LIVE

52. Mr Ravid gave evidence about the respondent’s live events inviting fans to connect with athletes and obtain signed merchandise, that the respondent has hosted since 2018. As noted above, “FANATICS LIVE” has since been renamed “FANATIC PRESENTS” and rather than hosting live events, the business now relates to an online virtual marketplace for buying and selling collectables.

53. According to Mr Ravid, FANATICS LIVE events were marketed to customers of the respondent’s e-commerce stores who either purchased products from the store or signed up to the mailing list. Prior to 2020, the marketing of FANATICS LIVE was directed to customers with a billing or shipping address within the vicinity of the event (in most cases in North America). Since 2020, during the pandemic, FANATICS LIVE events were also offered virtually and attracted a more global audience.

    4.2.5FANATICS MVP (formerly FANATICS REWARDS)

54. According to Mr Swallow, the respondent has offered a rewards program since around 2004. Visitors to the respondent’s websites could elect to join the loyalty program to receive exclusive member only deals, special discounts, early access to sales and new collections and marketing emails which provided information about their favourite teams, details of new products and collections and sales.

    4.2.6The respondent’s sales figures 2010 – 2014

55. The respondent relied on confidential figures of sales into Australia as evidence of its reputation in Australia. These figures were not particularly helpful as the figures were not detailed or readily identifiable as sales made into Australia and the sales were not all in Australian Dollars. In any event, the volume of sales into Australia was not extensive.

    4.2.7The respondent’s presence in Australia intensifies in 2020

56. The respondent has sold products to Australia since 2000, initially under the FOOTBALL FANATICS brand. The confidential sales figures show that the volume of sales from to Australia slowly increased each year from 2014 to 2020 but has since dropped off. The volume of sales each year over that time has been meaningful but not overwhelming.

57. Mr Ravid accepted that prior to 2020, the respondent’s activity in Australia was limited to selling and shipping merchandise to persons present in Australia. His evidence was that since around 2020, the respondent has been pursuing Australian-based sporting leagues and teams offering its partner services, including the development of Partner Stores.

58. In 2020, Mr Ravid commenced discussions with the AFL and a select few AFL teams as potential Australian partners for Partner Stores. The respondent formed relationships with the AFL and the Essendon Football Club to sell licensed merchandise. The first Australian Partner Store for the Essendon Football Club was launched on 1 November 2023. The AFL and Essendon Partner Stores are currently managed by Fanatics Australia Pty Ltd.

59. A Wayback Machine extract from 7 November 2023 of the Essendon Partner Store showed the home page including a reference to Fanatics, Inc in the copyright notice in the footer and displaying in the top left corner the mark below:

    .

60. In 2020, the respondent entered into a 10-year deal with the Australian retailer Rebel Sport to sell FANATICS branded apparel. A press release dated 24 August 2020 described the respondent as “the global leader in licensed sports merchandise” and said that the new deal would “provide sports fans across Australia with access to the most comprehensive range of licensed sports merchandise available anywhere in the country”. The release continued:

    Fanatics and rebel are partnering to … offer Australian fans over 100,000 officially licensed products from some of the biggest sports leagues in the world, such as NFL, NBA, all major European Football Clubs, MLB and Formula 1.

    The long-term deal, which will come into effect mid 2021, will see Fanatics enter its first significant partnership with an Australian retailer, as it becomes the exclusive supplier of all ‘non-Australia’ licensed team merchandise on the rebel website.

61. Mr Ravid accepted that these deals signified that the respondent had “intensified” its activities in Australia. Prior to 2020, the respondent did not have any official partnerships with Australian sporting codes or retail stores. I observe that the press release for the Rebel Sport deal does not mention licensed sports merchandise relating to Australian sporting codes, leagues or teams.

62. A Wayback Machine extract from the Rebel Sport website from January 2022 shows a page with the heading “THE ULTIMATE FANGEAR DESTINATION” which displays licensed sports apparel from overseas sporting leagues. On the webpage is displayed the following mark:

    .

63. There is no evidence that prior to 2020 the respondent sold licensed merchandise for Australian national sporting teams or Australian sporting leagues such as the AFL. The respondent pointed to a Wayback Machine extract of its website from 15 January 2012 which promoted for sale a “Puma Australia Home Replica Jersey 10/11 – Red” as evidence that it sold Australian national team merchandise prior to 2020. That printout is exhibited below.

64. The product displayed is clearly a jersey for the Switzerland national team, with the Swiss flag emblazoned on the left breast. Whether the product has been incorrectly labelled on the website or the incorrect photo has been displayed is unclear and therefore this printout does not support the respondent’s claim.

    4.3             Coexistence prior to 2020

65. The respondent contends that prior to the applicant launching the Retail Store in 2020, the two parties had engaged in “peaceful” co-existence for over twenty years. The applicant was operating tours and events, and the respondent was operating an online retail store. Therefore, they were operating in largely different commercial spheres.

66. The applicant rejects that characterisation of the parties’ relationship, pointing to several skirmishes in the Australian Trade Marks Office. The first dispute was in August 2010 when the respondent opposed the applicant’s trade mark applications for the FanFirm Marks in class 25. This occurred three months before the respondent changed its name from FOOTBALL FANATICS to FANATICS. The respondent withdrew those oppositions in June 2013.

67. Second, in 2013, the applicant opposed the respondent’s trade mark application for the 632 TM, FOOTBALL FANATICS. On 5 April 2017, the opposition decision was made in favour of the respondent. Third, in 2019, the applicant opposed the respondent’s trade mark application for the 688 TM, the FANATICS Flag Mark, but discontinued that process in August 2020. This proceeding commenced in November 2022.

68. The applicant says that the present dispute has arisen because the respondent intensified its activities in Australia in 2020 by developing relationships with AFL teams and a partnership with Rebel Sport.

69. I consider that, other than a few skirmishes in the Australian Trade Marks Office, the parties have largely coexisted until 2020. 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.

70. I consider that the parties were operating in the same broad field. Both were targeting sports fans and their enthusiasm/love for their sport, and selling sports merchandise to fans over the internet. Prior to 2020, the applicant had a narrower focus on Australian customers and licensed sports apparel for Australian national sporting teams (save for the few discrete examples raised by Mr Livingstone in cross-examination in relation to the 1999 NFL America Bowl in Australia, a deal with the NHL in 2003 and the NBA in 2011). The respondent did not specifically target Australian customers, instead it sold sporting merchandise primarily relating to US sporting teams and codes and European football leagues and teams.

71. The respondent says it has no complaint against the applicant with respect to the applicant’s activities prior to 2020. The applicant, on the other hand, does now complain about the respondent’s conduct prior to 2020.

72. Although both parties operate in the broad same field, they largely managed to coexist at a commercial level until 2020 by, to put it colloquially, operating in slightly different lanes that largely did not overlap. The status quo changed in 2020 by both parties moving out of their lanes: the respondent through the Rebel Sport and AFL deals, and the applicant by launching its Retail Store.

73. Two further examples of the respondent moving out of its lane emerged during cross-examination. First, the respondent entered into a deal with Ticketmaster in 2018 whereby Ticketmaster customers are presented with FANATICS merchandise and consumers can purchase tickets through one of the respondent’s websites. Second, the respondent opened a bricks and mortar NBA store in Melbourne.

74. The respondent correctly notes that these two examples are irrelevant to the applicant’s claims of trade mark infringement, misleading or deceptive conduct and passing off because they were not pleaded. Further, no evidence was provided that the FANATICS Marks were used in relation to the NBA store or that Australian consumers could purchase tickets to events through the Ticketmaster partnership. I agree that, as these instances were not pleaded, they can play no greater role than providing a possible explanation for the applicant’s decision to commence the proceeding.

    5.               FIRST USE OF FANATICS IN AUSTRALIA

75. The issue of which party first used the word “Fanatics” as a mark and in respect of what goods and services in Australia is relevant to several issues in the proceeding. As such, it is convenient to deal with it here before considering each parties’ trade mark infringement claims.

76. The respondent changed its name to FANATICS from FOOTBALL FANATICS in December 2010. The respondent did not use FANATICS as a standalone brand or mark in Australia prior to that time. Mr Swallow gave evidence that until November 2011, when a person went to they were redirected to On the basis of this evidence, senior counsel for the respondent essentially conceded in closing submissions that the respondent’s first use of the FANATICS Marks in Australia was in late 2010 or 2011. I discuss the respondent’s adoption of its name further below.

77. Accordingly, I am satisfied that the respondent first used the FANATICS Marks as trade marks in Australia in December 2010 at the earliest. As will be clear from my discussion below, nothing turns on whether the date selected for the respondent’s first use is 2010 or 2011.

78. The applicant contends that it first used the FanFirm Marks in relation to clothing (class 25) in around 1998 when its predecessor, Mr Livingstone, supplied t-shirts and caps to attendees of the Davis Cup event in Mildura which bore iterations of the FanFirm Marks. The respondent says that the applicant can only claim first use from the date of its incorporation on 30 September 2004 because it has not adduced any evidence that Mr Livingstone transferred title in the FanFirm Marks to the applicant. This disagreement is immaterial given that the respondent’s first use was no earlier than December 2010.

79. The applicant provided invoices from July 2006 for orders of Wallabies merchandise. This was the earliest evidence of the applicant’s actual orders or sales of merchandise. However, Wayback Machine extracts of the applicant’s website from as early as March 2004 show that customers could “browse the shop” for merchandise at that date.

80. Accordingly, I am satisfied that the applicant first used the FanFirm Marks in Australia in relation to clothing from at least September 2004.

81. The only real dispute is whether the applicant operated an online retail store for clothing before December 2010.

82. As noted at [45] above, the respondent accepts that the applicant (and before it, Mr Livingstone) sold clothing via a “merchandise” page on the website from around 2002. The clothing sold on that page was limited to FanFirm branded merchandise relating to Australian sporting teams until 2012 (not third-party licensed merchandise). In 2012, it also sold third-party licensed merchandise for a select few Australian national sporting teams such as the Wallabies, Socceroos and Matildas.

83. This is sufficient to establish first use by the applicant in relation to the following class 35 services for which the respondent’s marks are registered:

    (a)on-line retail store services featuring sports related and sports team branded clothing and merchandise;

    (b)order fulfillment services; and

    (c)product merchandising.

84. The respondent contends that the applicant has not used the FanFirm Marks in relation to clothing or online retail services because the relevant goods and services were only provided as an adjunct to the applicant’s core business of tour and event services. That contention cannot be sustained. I consider that the applicant’s sale of sports-related merchandise from its website was more than an incidental aspect of the provision of its sports and events tour services: MID SydneyPty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 at 566–7 (per Burchett, Sackville and Lehane JJ).

85. Customers could purchase clothing from the applicant’s website from 2002 whether or not they had purchased a ticket for one of the applicant’s tours or events. Although it may be assumed that most people who purchased clothing from the applicant’s website did so in relation to a tour or event, there is no necessary relationship between tours and events and merchandise, such as to characterise the use of the trade mark as use other than in relation to the sale of goods. 

86. Markovic J in Taylor v Killer Queen, LLC (No 5) (2023) 172 IPR 1 found that the artist Katheryn Hudson (known by her stage name as Katy Perry) had used the mark “Katy Perry” as a trade mark in relation to clothing in Australia. That is despite the fact that the clothing was sold primarily in relation to Ms Hudson’s concerts. Her Honour observed at [595]:

    The evidence before me establishes that the Katy Perry Mark has been used in connection with the advertising, offering for sale and sale of clothes in Australia in conjunction with Ms Hudson’s tours and the release of her albums as well as through websites and some retailers. In that regard I accept the respondents’ submission that the advertising, offering for sale, sale of clothes and the clothes themselves bearing the Katy Perry Mark have been closely tied to Ms Hudson’s role as a popular music artist in Australia. Indeed most of the clothes offered for sale and sold bear images of Ms Hudson or graphics that are related to her albums or individual songs. That is, there is a close connection between Ms Hudson and the use of the Katy Perry Mark on much of the merchandise offered for sale, including clothes and, to the extent I am found to be wrong, goods of the same description. 

87. Markovic J’s findings on this issue were not challenged on appeal and I respectfully agree with her Honour. Using a trade mark on goods does not cease to be “use as a trade mark … in relation to goods” for the purposes of s 120(1) of the Act simply because the sale of the relevant goods is “closely tied” or an adjunct to some service offered by the applicant which is their primary or core business. In any event, I do not consider that the sale of merchandise on the applicant’s website to be merely an adjunct to its main business of providing tour and event services.

1. Taking into account the surrounding circumstances and immediate context, I am not convinced that a sports fan seeking to purchase licensed sporting merchandise is likely to be misled or deceived as alleged by the applicant. Accordingly, I do not consider that the respondent has contravened s 18 or ss 29(g) and (h) of the ACL.

   10.3           Applicant’s passing off claim

2. The applicant relies upon the same conduct of the respondent in relation to its ACL claim to assert that the respondent has engaged in the tort of passing off. I have detailed the relevant principles in relation to passing off claims in Bed Bath at [525]–[529].

3. For the same reasons that I do not consider that the respondent has contravened the ACL, I do not consider that the applicant has established its passing off claim.

   11.             RESPONDENT’S TRADE MARK INFRINGEMENT CASE

   11.1           Respondent’s claim for trade mark infringement

4. The respondent’s trade mark infringement case is limited to the applicant’s use of the word “Fanatics” in relation to an online retail store located at conducted since at least 2021, through which the applicant promotes, offers for sale and sells licensed sports merchandise.

5. The respondent’s infringement case does not extend to the applicant’s use of the applicant’s FanFirm Device Mark.

6. For the reasons set out above, I consider that the respondent’s FANATICS Marks should be cancelled in respect of online retail store services for sports merchandise (class 35). That registration is the basis of the respondent’s claim for infringement.

7. The effect of s 20(2) of the Act is that it is only the registered owner of the trade mark that is entitled to obtain relief under the Act for infringement of the trade mark. Thus, the “person who was once, but is no longer, the registered owner of the mark because the trade mark has been cancelled at the time of judgment in the proceeding has no entitlement to relief for trade mark infringement”: Dunlop at [208] (per Nicholas J).

8. As I concluded above that the respondent’s FANATICS Marks should be cancelled, the respondent’s trade mark infringement claim on the basis of those marks fails.

9. In the event that I am wrong that the FANATICS Marks should be cancelled, I consider the respondent’s trade mark infringement claims below.

   11.2           Applicant’s admissions

10. FanFirm admits that it has used the word “Fanatics” as a trade mark in Australia in relation to services within the specification class 35 of the respondent’s FANATICS Word Marks registrations. These include the conduct of an online retail store and the promotion and sale of licensed merchandise.

11. The applicant also admits that its FanFirm Word Mark is substantially identical with, or deceptively similar to, the respondent’s marks.

12. However, the applicant contends that it has the benefit of the defences in ss 122(1)(e), (f), (fa) and 124 of the Act.

    11.3           Applicant’s defences

    11.3.1Section 122(1)(e)

13. Section 122(1)(e) provides that a person does not infringe a registered trade mark if “the person exercises a right to use a trade mark given to the person under this Act”.

14. The respondent contends that the defence under s 122(1)(e) cannot assist the applicant because the applicant does not hold any registrations in respect of online retail services in class 35. The operation of the defence is limited to the goods or services covered by the registrations relied upon: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (2021) 157 IPR 498 at [272] (per O’Bryan J).

15. As I observed above, 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.

16. 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. I consider that the applicant is exercising a right to use its registered trade mark in respect of the goods for which it is registered, and that it is entitled to the defence under s 122(1)(e) on that basis.

    11.3.2Sections 122 (1)(f) and (fa)

17. The applicant relies on ss 122(1)(f) and (fa) in the event that s 122(1)(e) does not provide a complete defence to infringement.

18. The respondent contends that the applicant’s use of the FanFirm Word Mark in relation to online services cannot be considered to constitute honest concurrent use. The respondent submits that the applicant has not put forward any evidence relating to its decision to launch the redesigned Retail Store in around 2019 and 2020. The respondent submits that Mr Livingstone could have addressed whether the applicant turned its mind to the launch of the Retail Store and whether it would be likely to cause confusion by reference to the respondent’s marks, but chose not to do so. The respondent submits that, in these circumstances, the Court could not draw any inference favourable to the applicant and should proceed on the basis that there is no evidence addressing the applicant’s honesty for this purpose.

19. The respondent further contends that “remarkably”, there is no evidence at all as to the extent, volume and value of the applicant’s sales from the Retail Store since about 2020. The respondent also notes there is only limited evidence of the nature, volume and value of the products sold from both before and after the launch of the Retail Store in around 2020. The respondent contends that the Court should therefore infer that evidence as to the nature of the products sold and the volume and value of sales would not have assisted the applicant to establish an honest concurrent use defence.

20. Finally, the respondent contends that the relative inconvenience does not favour the applicant and there is no evidence relied on by the applicant in relation to this issue. According to the respondent, the applicant could readily revert to its previous method of promoting and selling merchandise via the website located at as part of its organisation of tours and events services.

21. On the basis of its prior and continuous use of the word “Fanatics” as a trade mark in Australia in relation to sports merchandise, the applicant submits that none of the available grounds of opposition would prevent its hypothetical application for the FanFirm Mark in class 35 from proceeding to registration.

22. As I found earlier, the applicant was the first user of the “Fanatics” mark in relation to sports merchandise, including the sale of such merchandise online. The applicant has an earlier registration in respect of the mark in class 25, which I consider provides a defence to the allegation of infringement based on class 35 (online retail services).

23. To the extent that there is any difference between the use of a mark in relation to goods which are offered for sale online, and the use of a mark in relation to retail services involving the sale of goods online, I consider that the applicant was the prior user of the mark FANATICS in relation to such services, and thus would obtain registration pursuant to s 58 as the owner of the mark.

24. I do not consider it necessary to determine whether the applicant would be entitled to obtain registration as an honest concurrent user. However, I note the following matters. The applicant was the first user of the “Fanatics” mark in Australia. It adopted the Fanatics, FanFirm Word Mark, in Australia well before the respondent began to use the mark in Australia. Mr Livingstone gave detailed evidence as to the circumstances of his adoption of the “Fanatics” mark in 1997 and 1998. As the respondent was not using the mark in Australia at all at that time, or on its own overseas (ie, it was only using FOOTBALL FANATICS), there was no requirement for Mr Livingstone to give evidence that he held an honest belief that no one would be confused, as at the time of adoption of the mark, because there was no other user of the mark in Australia. In those circumstances, beyond setting out the background to the adoption of the Fanatics mark, nothing further was necessary to establish the good faith adoption of the mark.

25. I consider that the alleged change in conduct of the applicant by its sales of third party licensed merchandise online, is covered by its existing registration in class 25. There was thus no need for the applicant to lead extensive evidence of its sales of third party licensed merchandise in order to enliven the ss 122(1)(f) and (fa) defences.

    11.3.3Section 124 – prior continuous use

26. To have the benefit of the exemption for prior use under s 124 of the Act, in this case, the party seeking to rely on the defence must establish:

    (a)a use by them of the unregistered trade mark (or a mark that is substantially identical or deceptively similar to the registered mark);

    (b)continuously in relation to the services similar to the services in respect of which the mark is registered; and

    (c)from a time before registration of the mark.

27. These principles were set out in Hy-line Chicks Pty Limited v Swifte (1966) 115 CLR 159 at 161–2 (per Windeyer J) and Urban AlleyBrewery Pty Ltd v La Sirene Pty Ltd (2020) 150 IPR 11 at [228] (per O’Bryan J).

28. The applicant does not have a registration for the FanFirm Word Mark in class 35 for online retail services relating to the sale of sports apparel and merchandise.

29. For the reasons discussed above in section 5, the applicant has made prior continuous use of the Fanatics mark in relation to the sale of sports merchandise via its online store at its domain In other words, the applicant has been providing online retail services in relation to sports merchandise by reference to the FanFirm Word Mark since at least 2004, well before the priority date of the respondent’s marks. The applicant is therefore entitled to rely on the prior user defence under s 124.

    11.3.4Conclusion – defences

30. The applicant’s defences to the alleged trade mark infringement are successful. By reason of the existence of the defences, the applicant has not engaged in trade mark infringement.

    12.             RESPONDENT’S CANCELLATION CLAIM

31. The respondent seeks cancellation of the applicant’s FanFirm Word Mark pursuant to s 88(1) and s 88(2)(c) on the basis that the use of the mark in relation to the class 25 goods would be likely to deceive or cause confusion as at 25 January 2023, the date of the Notice of Cross-claim.

32. Section 88(2)(c) provides that an application for cancellation may be made on the ground that “because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion”.

33. Confusion includes being left in doubt, having cause to wonder or being perplexed or mixed up: Southern Cross Refrigerating at 594–5 (per Kitto J); Swancom at [227] (per O’Bryan J).

34. The question to be addressed is whether consumers will be at least caused to wonder if the person’s goods or services might come from the same source. A mere possibility of confusion is not enough, there must be a real and tangible danger. It will be “sufficient if the ordinary person would entertain a reasonable doubt whether the two products come from the same source”: Swancom at [172]–[173] (per O’Bryan J).

35. The respondent submits that it has, and had as at 25 January 2023, a substantial and valuable reputation in Australia in the name and trade mark FANATICS in connection with the promotion and sale of licensed sports merchandise (including clothing and accessories). The respondent contends that as a consequence of that reputation, consumers seeing the FanFirm Word Mark used in relation to the class 25 goods would be caused to wonder whether the sports merchandise sold by the applicant actually emanated from the respondent.

36. As I discussed earlier under the heading “coexistence prior to 2020” in section 4.3 and above at [410]–[411], the parties have largely coexisted until 2020, including the period from the respondent’s adoption of its new corporate name through to around 2020.

37. As noted earlier, the status quo changed in 2020 when both parties moved out of their core businesses: the respondent through the Rebel Sport and AFL deals, and the applicant by launching its Retail Store.

38. I consider that as at 25 January 2023, a consumer encountering a website offering for sale licensed merchandise for US sporting teams by reference to the applicant’s FanFirm Word Mark, may be caused to wonder whether those goods came from the respondent.

39. Section 89 provides that the Court has a discretion whether to grant the rectification sought under s 88(2)(c) if the registered owner of the trade mark satisfies the Court that the ground relied on by the applicant for rectification has not arisen through any fault of the registered owner. In considering whether to exercise its discretion, the Court must take into account the matters prescribed in reg 8.2 of the Regulations, which were listed above at [379].

40. For the reasons which follow, in the circumstances of this case, I will exercise my discretion not to cancel the applicant’s registration in class 25.

41. First, for the reasons outlined above, I consider that the respondent’s use of its FANATICS Marks in relation to the online sale of sports merchandise and apparel constitutes infringement of the applicant’s Word Mark. I also consider that the respondent’s registration for FANATICS in class 35 should be cancelled. Thus, going forward, the basis for any likelihood of potential deception or confusion will be removed.

42. Second, although the respondent puts the blame for the present state of affairs solely at the applicant’s feet by reason of its change in business by the opening of the Retail Store in 2020, the respondent is not without blame.

43. When selecting its new corporate name, the respondent canvassed a number of choices, all of which would be much less likely to have led to the current position. The respondent made its choice of corporate name with knowledge of the applicant and its business at that time, which included the online sale of sports merchandise, albeit with an Australian sporting team focus.

44. The respondent contends that the applicant took no steps to prevent the respondent’s activities and continued expansion into Australia. As I have repeatedly noted, the parties were managing to coexist until around 2020. At a high level, their businesses overlapped, but their focus was different. The applicant focussed on Australia and Australian sporting teams, and the respondent focussed on the US and US sporting teams, with some expansion into European sporting teams.

45. At about the same time, each party took steps which encroached upon the existing business of the other. For the applicant’s part, its choice to sell third party licensed sports merchandise for teams other than Australian sporting teams, fell within its class 25 registration for its FanFirm Word Mark. As I found above, the applicant was the first user of the word “Fanatics” as a trade mark in relation to the sale of sports merchandise, including third party licensed apparel.

46. Once the applicant became aware of the respondent’s foray into the area of Australian sports and licensed Australian team sports merchandise, the applicant commenced this proceeding. Thus, there can be no suggestion of any “blameworthy” delay in acting or acquiescence on the part of the applicant.

    13.             RESPONDENT’S NON-USE CLAIM

47. Section 92 of the Act provides two bases for removal. First, on the basis that the owner had no intention to use the mark in good faith in relation to the goods or services to which the mark relates at the time of filing: s 92(4)(a). Second, on the basis that the mark has not been used within the relevant non-use period: s 92(4)(b).

48. The respondent has confined its removal of the applicants’ Marks for non-use pursuant to s 92(4)(b) of the Act to the registered goods and services other than the class 25 and class 39 services.

49. The combined effect of ss 92(1) and 92(4)(b) is that a person may apply to have a registered mark removed from the Register of Trade Marks on the basis that the mark: (a) has remained registered for a continuous period of, in this case, five years ending one month before the day on which the non-use application is filed; and (b) during that period, the owner of the mark has not used the mark, or used it in good faith, in relation to the goods and/or services to which the non-use application relates.

50. The respondent contends that the applicant has not used each of its registrations in good faith in respect of the goods and services in classes 9, 16, 24, 32 and 38 in the non-use period. The relevant non-use period for the purposes of s 92(4)(b) is 25 December 2019 to 25 December 2022.

51. The applicant accepts that, pursuant to s 100, the onus falls on it to rebut the respondent’s allegation of non-use. Non-use can be rebutted by showing actual good faith use during the non-use period. The applicant contends that a single good faith use during the relevant period is sufficient, referring to Unilever Aust Ltd v Karounos (2001) 52 IPR 361 at [64] (per Hill J). I accept that submission.

52. Under s 101(1), if the Registrar is satisfied that a ground for removal is established, the Registrar “may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates”. This may involve the deletion of parts of the specification or a modification to reflect the nature of the actual use.

53. Section 101(3) provides a discretion not to remove the trade mark from the Register even if the grounds on which the application was made have been established. The matters which may be taken into account in exercising that discretion are not limited. However, s 101(4) provides that the Registrar may take into account whether the registered owner has used the mark in relation to similar goods or closely related services to those for which removal is sought. The operation of this discretion was addressed in some detail by the Full Court in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 160 IPR 174 at [153] (per Jagot, Nicholas and Burley JJ).

54. The applicant submits that the evidence demonstrates that it used in the FanFirm Word Mark during the relevant period in relation to the goods in classes 9 and 24 and the services in class 38. The applicant accepts that there is no use in the relevant period in respect of the goods in classes 16 and 32.

55. The applicant’s FanFirm Word Mark is registered for:

    (a)goods in class 9: motion picture films (recorded); for use in multimedia (not limited to recordings for television; world wide web and DVD);

    (b)goods in 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;

    (c)services in class 38: providing telecommunication services including content and entertainment; television broadcasts and Internet communication; press or information agencies (news).

56. The applicant relies on the following instances of use:

    (a)Classes 9 and 38: six videos posted to the applicant’s Facebook page. The videos appear to be taken by people attending sporting events to which the applicant has arranged tours. One of the videos is entitled “We’re putting the finishing touches on our Qatar 2022 package, in the…”. The printout showing the videos is dated 28 September 2023, but the videos appear to be posted some time earlier; “43 weeks ago”, “a year ago”, “4 years ago”.

    (b)Class 24: three photographs, which Mr Livingstone described as being taken in connection with the Croatia Sailing tour of 2021:

    (i)a group of people standing on shore in front of a boat with a banner on which is the word “Fanatics” alongside the two heads of the FanFirm device;

    (ii)a boat with a banner on which is the word “Fanatics” alongside the two heads of the FanFirm device;

    (iii)a group of women lying on an inflated pontoon which has both the FanFirm Word Mark and the FanFirm Device Mark printed on the four sides of the top surface.

1. The respondent contends that all the instances of use of its marks relied upon by the applicant are uses outside Australia, and thus are not sufficient to rebut the non-use application. The respondent contends that there are no matters that warrant the exercise of the discretion to allow the FanFirm Marks to remain on the Register for the broader goods and services in classes 9, 16, 24, 32 and 38.

2. The applicant contends that, to the extent that there is no use for particular goods or services within the registrations, the discretion in s 101(3) should be exercised to preserve the applicant’s marks in relation to those goods or services on the basis of the factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425.

3. The discretion under s 101(3) is broad and unfettered “in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation”: PDP Capital at [153] (per Jagot, Nicholas and Burley JJ). The scope and purpose of the Act strikes a balance between the interest of consumers, in avoiding deception of confusion as to the origin of goods, on the one hand and the interest of traders on the other. The non-use provisions of the Act are “designed to protect the integrity of the Register and in that way the interests of consumers” (PDP at [153]). Their Honours went on to say that “the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies with the trade mark owner to persuade the court that it is reasonable to exercise the discretion in favour of the owner”.

4. The factors in Hermes relevant to the exercise of the discretion were summarised by the Full Court in PDP Capital at [153] and include whether or not:

   (a)there has been abandonment of the mark;

   (b)the registered proprietor of the mark still has a residual reputation in the mark;

   (c)there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

   (d)the applicant for removal had entered the market in knowledge of the registered mark;

   (e)the registered proprietors were aware of the applicant’s sales under the mark; and

   (f)the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.

5. The respondent does not challenge the applicant’s registrations in classes 25 and 39. The applicant relies on its reputation in the FanFirm Marks in relation to sporting tours and events and the sale of sports clothing online, to submit that removal of the marks from the Register in the other classes will be conducive to public confusion.

6. The applicant has not pointed to any uses of the FanFirm Marks in the classes for which removal is sought after the relevant period to support the exercise of the discretion in its favour.

7. Whilst the respondent (the applicant for removal) was aware of the applicant’s marks when it entered the market, given my findings as to the respondent’s marks, I do not consider that factor adds anything to the consideration of whether to exercise the discretion.

8. There is no evidence that the applicant has used its marks in Australia in respect of any of the goods and services in classes 9, 16, 24, 32, and 38, before, during or after the relevant non-use period. The examples of use in evidence include the use of a Fanatics banner (use on a class 24 good) albeit overseas. I consider that banners and flags are goods that are closely related to the applicant’s tour and event services. The use by someone other than the applicant of the mark “Fanatics” on a banner or flag, particularly in connection with tour or event services, would be likely to cause consumers to wonder as to the identity of the supplier of those services. Accordingly, I consider that it is reasonable for the class 24 registration to remain on the Register and I will exercise my discretion not to remove the applicant’s registration for its marks in class 24.

9. Given the applicant’s reputation in Australia, and the absence of any use by the applicant of its marks in the remaining classes, I do not consider that it is reasonable for those marks to remain on the Register in classes 9, 16, 32 and 38, and I will not exercise my discretion to allow them to remain on the Register.

   14.             RESPONDENT’S ACL AND PASSING OFF CLAIMS

   14.1           ACL

10. The relevant principles are set out above in the discussion of the applicant’s ACL and passing off claims.

11. The respondent contends that the relevant date at which to assess whether there has been a contravention of s 18 or s 29 of the ACL is around 2020 when the applicant changed its business and opened the Retail Store. The respondent contends that the applicant’s operation of its Retail Store is a “new species” of conduct for the applicant when compared with its pre-existing sporting tour and events services business, and should be considered separately to that pre-existing business.

12. The respondent contends that the conduct of the applicant in operating an online retail store under and by reference to the FanFirm Word Mark “Fanatics” on the website is such as to constitute misleading or deceptive conduct, or conduct that was likely to mislead or deceive, in contravention of s 18 of the ACL. The respondent further contends that, pursuant to s 29(1)(g) and (h), the same conduct of the applicant constitutes false representations that:

    (a)its products have the sponsorship or approval of the respondent;

    (b)it has the sponsorship or approval of, or an affiliation with, the respondent.

13. There was no dispute that the relevant conduct of the applicant was in trade and commerce.

14. The applicant contends that its relevant conduct has not changed since at least 2006. Since that time, the applicant has been selling sports merchandise (including third party licensed sports merchandise) via its websites by reference to the FanFirm Word Mark. The applicant further contends that prior to December 2010, the respondent had no reputation in the name “Fanatics” because the respondent’s activities were conducted by reference to the mark FOOTBALL FANATICS and were limited to selling and shipping merchandise to Australia. The respondent had not yet changed its corporate name to FANATICS.

15. The relevant date for assessing whether the applicant’s conduct contravened the ACL is the date of commencement of the impugned conduct: Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457 at [334] (per Yates J); Brick Lane Brewing at [46]–[48] (per Stewart J); Anheuser at [237] (per Allsop J).

16. The relevant conduct of the applicant commenced at least by September 2004, and continued over the years prior to the respondent’s change of corporate name and beyond to the present day. From at least September 2004, the applicant has maintained a website via which consumers can purchase sports merchandise by reference to the FanFirm Word Mark. Certainly prior to the respondent’s change of corporate name, the applicant had offered for sale on its website some third party licensed merchandise. That merchandise was not “straight resale” merchandise but was nevertheless third party licensed merchandise co-branded with a FanFirm Mark and with the indicia of the relevant sporting code (such as Cricket Australia). Further, there is evidence that, from as early as 2012, the applicant sold third party “straight resale” licensed merchandise. The applicant may have intensified its sale of third party “straight resale” licensed merchandise through launching and operating the Retail Store. However, I do not consider that the applicant has engaged in substantially new or different conduct by launching the Retail Store in March 2021, such as to “reset” the date of commencement of the relevant conduct for the purposes of the ACL analysis. Nor do I consider, for the reasons given above in section 4.1.2, that the colour theme and style of the Retail Store is such a “significant departure” from the applicant’s previous websites such as to reset the relevant date. 

17. In Henley Arch Pty Ltd v Henley Constructions Pty Ltd (2021) 163 IPR 1, Anderson J considered whether a change in activity on the part of the respondent reset the date for consideration of the ACL claim. The impugned conduct began in 2007, and there was alleged to be a significant change in conduct in about 2017, which the applicant submitted was such as to reset the relevant date for consideration of the ACL claim to 2017. The applicant pointed to increasing use of the mark in suit by the respondent from 2017 including: the launch of a completely re-designed version of the respondent’s website with a significantly greater amount of content, a redesigned logo, commencing promotions on Facebook and Instagram, and commencing sponsorship of sporting clubs and community organisations (at [517]).

18. Anderson J accepted that the respondent’s marketing and promotional activity had “ramped up” from April 2017, in that it had sought to promote itself to a broader section of the public by escalating its marketing activity and expanding the channels through which it advertised, including by way of social media platforms (at [342]–[343] and [553]). However, Anderson J assessed the reputation of the applicant for the purposes of the ACL claim at the earlier 2007 date (at [554). His Honour observed that his approach was consistent with the principles outlined by Edmonds J in Change Group International PLC v City Exchange Mart Pty Ltd [2013] FCA 1048, where his Honour stated at [172]:

    In Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526 at [329]–[334], Yates J considered a proposition, said to be based on what Gummow J said in Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302 and 303, that if a complainant “reinforces” its reputation, such that, between the date of commencement of the impugned conduct and the commencement of proceedings, its reputation is “stronger”, it is entitled to rely on that “stronger” reputation in the proceeding for the purpose of establishing that a contravention has occurred. I agree with what Yates J said in Optical 88 at [333] in rejecting the proposition:

    In my view the … proposition cannot be derived (or even discerned) from the proposition discussed by Gummow J in Thai World. If, in the present case, the applicant can establish that, as at the date of commencement of the impugned conduct (August 1993), it had a sufficient reputation to sustain its claim that the first respondent has contravened s 52 of the Trade Practices Act, it does not need to rely on any intervening strengthening of that reputation in the period before the commencement of proceedings, although any strengthening of its reputation may be a matter that is relevant to the question of relief: Nature’s Blend Pty Ltd v Nestle Australia Ltd (2010) 86 IPR 1 at [13]. If, on the other hand, the applicant cannot establish that, as at the date of commencement of the impugned conduct, it had a sufficient reputation to sustain its claim, I cannot see how any after-acquired reputation can assist it in the face of what would otherwise have been the legitimate commencement and continued conduct of the first respondent’s business.

    (Emphasis added.)

19. At [555] Anderson J also referred to Beach J’s statement in Flexopack at [275] that “[t]he relevant date for assessing whether a respondent’s conduct amounts to misleading or deceptive conduct is the date the conduct commenced”.

20. Until December 2010, the respondent had operated its business by reference to FOOTBALL FANATICS. As at 2004, 2006 and even 2010, the respondent had no reputation in the word FANATICS in Australia. Accordingly, no consumers were likely to be misled or deceived by the applicant’s conduct at September 2004 (or 2006 or 2010).

    14.2           Passing off

21. The respondent alleges that the applicant has passed off, and continues to pass off:

    (a)itself as being associated with the respondent;

    (b)its business as being associated with the respondent;

    (c)itself as having the sponsorship or approval of, or an affiliation with, the respondent;

    (d)its business as having the sponsorship or approval of, or an affiliation with, Fanatics;

    (e)its products as being associated with the respondent;

    (f)its products as having the sponsorship or approval of the respondent.

22. The relevant date for assessing whether the applicant’s conduct amounts to passing off is the same as for the ACL claim, the date of commencement of the impugned conduct: see Brick Lane Brewing at [46] (per Stewart J). For the same reasons as the ACL case, the respondent’s passing off case must fail.

    15.             CONCLUSION

23. I have found that the applicant’s claim of trade mark infringement succeeds in relation to the Infringing Goods. I have also determined that the Register of Trade Marks be rectified by:

    (a)Removing the respondent’s SPORTS FANATICS (976 TM) for non-use;

    (b)Cancelling the respondent’s registrations of the FANATICS Word Marks (681 TM and 633 TM) and FANATICS Flag Mark (688 TM) in class 35 on various grounds; and

    (c)Cancelling the applicant’s registrations of the FanFirm Word Mark and FanFirm Device Mark in classes 9, 16, 32 and 38 for non-use.

24. I will make orders to that effect.

25. The applicant’s passing off and ACL claims against the respondent do not succeed. The respondent’s claims against the applicant of trade mark infringement, passing off and contravention of the ACL wholly fail (except in relation to rectification of the applicant’s marks in classes 9, 16, 32 and 38 for non-use) and therefore the cross-claim should be dismissed.

26. Finally, I consider that the usual rule as to cost should apply, and therefore the respondent should pay the applicant’s costs of the proceeding. However, I will give the parties seven days to apply for a variation of that costs order if there is some reason to justify a different costs order. Accordingly, I will make costs orders to the following effect:

    (1)Subject to (2) below, the respondent pay the applicant’s costs of the whole proceeding, including the cross-claim.

    (2)If either party seeks a variation of the costs orders in (1) above, it may, within 14 days, file and serve a written submission (of no more than two pages). The issue of costs will be determined on the papers.

I certify that the preceding four hundred and ninety-seven (497) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe.

Associate:

Dated:       17 July 2024