FanFirm Pty Ltd v Fanatics, Inc

FanFirm Pty Ltd (the Applicant) sought to register a trade mark, and Fanatics, Inc (the Opponent) opposed this application. The dispute concerned whether the goods and services for which the Opponent held registered trade marks were similar or closely related to the services the Applicant sought to register, and whether the trade marks themselves were substantially identical or deceptively similar. The matter was heard by Iain Campbell Thompson, a Hearing Officer.

The primary legal issue before the court was to determine if the grounds of opposition raised by Fanatics, Inc. were established. This involved assessing whether the goods and services of the Opponent were "similar" or "closely related" to the services of the Applicant, as defined by section 14 of the Act, and whether the trade marks were "substantially identical or deceptively similar" under section 44 of the Act. The court was required to consider the relevant date for assessing these grounds, which was the priority date of the opposed application.

The Hearing Officer applied the principles established in cases such as *Registrar of Trade Marks v Woolworths* and *MID Sydney Pty Ltd v Australian Tourism Co Ltd*, which outline that the determination of whether goods are closely related to services logically precedes the assessment of deceptive similarity between marks. The court considered the definition of "similar services" under section 14 of the Act, which includes services that are the same or of the same description. Drawing on established case law regarding "goods of the same description," such as *Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd* and *Re J Lyons & Co Ltd’s Application*, the Hearing Officer noted that this assessment involves considering the nature and characteristics of the goods or services, their respective uses and functions, and the trade channels through which they are marketed or sold, judged in a business sense.

Ultimately, the Hearing Officer found that the Opponent had not established its grounds of opposition. Consequently, the Registrar was directed to register the trade mark, subject to an amendment to the endorsement. The Opponent was ordered to pay the Applicant's costs.