Trade Mark Matters Keep Australian Courts Busy

The Australian courts have been kept very busy over the past year including with cases involving allegations of trade mark infringement and counter claims involving the use of the word ‘Fanatics’ as a trade mark. 

Given that the vast majority of trade mark disputes are settled out of court, it has been fascinating to watch these various complex proceedings unfold. In the Fanatics case, the Court had to deal with numerous trade mark issues including infringement, ownership, first use, non-use, similarity of goods and services, cancellation, passing off and the requirement for honest concurrent use as a defence – and there were some very interesting outcomes (and lessons to be learnt). 

The first hearing

The initial hearing involved a dispute between FanFirm (Pty) Ltd, an Australian company which was both the applicant and respondent on the appeal and Fanatics LLC, a US corporation based in Florida which was the respondent as well as the appellant. 

Background to the Fanatics wars

FanFirm was started by Australian businessman, Warren Livingstone as a travelling fan club for the Australian Davis Cup team.  The company subsequently expanded into sports-related goods and services including tours and travel arrangements, apparel and other merchandise and had used the FANATICS trade mark for a few years before registering it in Australia in 2008 for a number of classes of goods and services.

Fanatics LLC operates an online store for sports merchandise and had been using the trade mark FOOTBALL FANATICS before changing its branding in 2010 to be just the word FANATICS accompanied by a stylised logo.  The company registered the name and the logo in Australia for two classes of services that were different to those claimed by FanFirm. 

What led to the Fanatics conflict

The two businesses had co-existed for over two decades using the same name (Fanatics), and they had opposed each other’s Australian trade mark applications years ago. Ultimately, each being allowed to register their respective FANATICS names.  The conflict escalated in 2020 when Fanatics LLC signed an agreement with a major Australian sports retailer to sell branded merchandise of local professional sports teams.

Both parties alleged that the other had infringed on their registered trade marks in Australia with respect to clothing, headgear, sportswear, sports bags, scarves, water bottles, towels and blankets as well as with respect to online sales of clothing (including third party licensed sports merchandise). 

Fanatics contended that the disputed sign had not been used as a trade mark within the scope of goods or services of FanFirm’s trade mark registration while also alleging that FanFirm itself had infringed Fanatics’ registered trade marks.  Fanatics’ cross claim centred on the premise that the FanFirm trade marks were invalid and should be removed from the register. 

Both parties also alleged that the other had breached Australian Consumer Law and engaged in the tort of passing off.  Both sought cancellation of some of the other’s marks and both largely relied upon the same defences to trade mark infringement.

The first verdict

In what was seen by some as a David vs Goliath victory, Justice Rofe determined that Fanatics was liable for trade mark infringement and dismissed its cross claim.  Justice Rofe also found that aspects of the trade marks owned by Fanatics should be cancelled and she awarded FanFirm its costs of the proceedings.

In an interview with 9News after the initial judgement was handed down, Livingstone said ‘We’ve been fighting it for 14 years … eventually we could prove we’ve been around longer (than) them.’

An appeal followed. 

The appeal process

Fanatics LLC appealed the primary judgement and launched an Amended Notice of Appeal in which it identified 19 grounds of alleged error by the primary judge.   In response, Fanfirm lodged a Further Amended Notice of Contention which put forward a number of issues which it believed the primary judge should have ruled were in its favour.

In July 2025, the Full Court handed down its decision whereby it upheld the primary judgment and dismissed the appeal.

Key points of the judgement

• The Court found that FanFirm’s claim of trade mark infringement was successful and determined that Fanatics’ ‘Sports Fanatics’ trade mark be removed from the register for non-use and that their Fanatics word marks and flag mark be cancelled.
• The Court also determined that FanFirm’s registrations of the FanFirm Word Mark and FanFirm Device Mark be cancelled for non-use.
• The Court also found that FanFirm’s passing off claims against Fanatics had failed and dismissed the cross-claim. Fanatics were ordered to pay FanFirm’s costs of the whole proceeding, including the cross-claim.
• One of the most notable point in our view is that this judgement cements the fact use of a brand on goods is not the same as using that trade mark in the context of providing a retail service or vice versa.
• Whilst Fanatics had limited success in its appeal, Honourable Justices Burley, Jackson and Downes commented that “…it has succeeded in part on its first move on the chess board, but not on the others”.

This post on LinkedIn provides an excellent summary by Craig Smith SC of the case as well as of the outcome of the latest court proceedings.

Lessons to be learned from the Fanatics dispute

One of the judges acknowledged the protracted case as having been particularly challenging, referring to the ‘byzantine complexity’ of the two parties’ numerous duplicated defences and cross-claims.

The judges remarked on the skills of the legal practitioners and their depth of understanding of Trade Mark Law, but also commented upon the repercussions that advancing numerous and repetitive grounds to the same end had on the efficiency, speed and cost of the legal process.

To quote the judges: ‘In our view, legal practitioners bear a responsibility to confine the case of their clients to a reasonable compass.’

What I’ve learned as a trade marks attorney

I’m a strong advocate for round table negotiation as a means of resolving disputes. Of course, unfortunately, this is not always possible    

As a trade marks attorney, I am naturally aware litigation is far more expensive, more stressful, more time-consuming and can be more damaging for all parties concerned – and, where possible, it is always preferable to seek alternate methods of resolution.

We know hindsight is a perfect science, but this case provided plenty of important reminders for businesses which use a trade mark as well as for anyone intending to launch a new brand.

• Research and investigate first: if you’re applying for a new trade mark, you need to do a comprehensive trade mark search to ascertain that your intended mark is not substantially identical with, or deceptively similar to, an existing trade mark. Based on the Fanatics case, and, others that have come out in the past couple of years, the failure to conduct these searches seems to be cropping up more often – the idea being if you did not conduct the appropriate searches or obtain proper advice, it is then hard to argue you are an honest and concurrent user should the need arise in the future.
• Be vigilant : keep constant surveillance on trade marks being used in your industry or any closely related industries for potential areas of infringement.
• Be precise in your use of your trade mark: Businesses need to proceed with care and caution when it comes to their trade mark strategies and how they use their brands.   A trade mark has to be used for the goods or services it is registered for.
• Keep records of your trade mark use: Australia is a ‘First-to-use’ jurisdiction for trade marks, so evidence of first use can be essential to the enforceability of rights. 

Got a query about a trade mark infringement?

If you think your intellectual property rights are being infringed – or if you’re concerned you may be infringing on another party’s rights – you’re welcome to contact us for a friendly, obligation-free chat. 

The team at Mark My Words Trademark Services has extensive experience in all trade mark-related matters, and we understand that when it comes to the topic of infringement, there’s no such thing as a silly question – so please ask away!