FEDERAL COURT OF AUSTRALIA

Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87

ORDERS

THE COURT ORDERS THAT:

1.    The parties are to confer and supply draft short minutes of order giving effect to these reasons (marked up with any points of difference) together with submissions on the question of costs (limited to 5 pages), to the chambers of Burley, Jackson and Downes JJ by 4 pm on 30 July 2025.

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

REASONS FOR JUDGMENT

THE COURT:

1.    INTRODUCTION

1.1    The appeal proceedings

1    This proceeding, like many others brought primarily under the Trade Marks Act 1995 (Cth) (Trade Marks Act), raises too many duplicated claims and arguments. At its heart, the dispute concerns the trade mark entitlements of two parties who have decided to use the word “Fanatics” as a trade mark and who, after a period of apparent co-existence, have decided to sue each other for trade mark infringement, each contending that various trade marks of the other are infringed or invalid.

2    Broadly, the case advanced before the primary judge followed a familiar course. The applicant below and respondent on the appeal, FanFirm Pty Ltd, alleged infringement of two of its registered trade marks. The respondent below and present appellant, Fanatics, LLC, contended that the impugned sign was not used as a trade mark within the scope of goods or services of the trade mark registration. Fanatics contended that for those uses of impugned signs that did amount to trade mark use, it was entitled to rely on four affirmative defences available under the Trade Marks Act. As a fall back, in its cross-claim Fanatics contended that the FanFirm trade marks were invalid and ought to be removed from the Register of Trade Marks. It also alleged that FanFirm had itself infringed its registered trade marks. In response, FanFirm contended that it was entitled to rely on various defences under the Trade Marks Act and also contended that the trade marks asserted should be revoked. Both parties also contended that the other had acted in breach of the Australian Consumer Law (ACL) and engaged in passing off.

3    Ultimately, Fanatics was found by the primary judge to be liable for trade mark infringement. Her Honour rejected various defences advanced by Fanatics and dismissed its cross claim; FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764.

4    The learned primary judge picked her way through the welter of issues raised, including duplicated defences and cross-claims for revocation, and found that FanFirm should succeed on its case for trade mark infringement, rejecting defences raised under ss 122(1)(a)(i), 122(1)(f) and 122(1)(fa) (and via those provisions, ss 44(3), 58 and 60), and partially rejecting a defence under s 122(1)(e). She also found that aspects of the trade marks owned by Fanatics should be cancelled under s 88(2)(a) having regard to grounds for opposition under ss 44, 58, 59, 60 and 88(2)(c), and declined to exercise the discretion under s 89(1) not to give effect to the cancellation.

5    In its Amended Notice of Appeal, Fanatics identifies 19 grounds of alleged error that present as a scattergun of challenges to legal and factual findings of the learned primary judge. Fortunately, Fanatics’ submissions were corralled into four categories that are more coherent, namely, that the primary judge erred as follows. First, in making findings of infringement in favour of FanFirm. Secondly, in finding that three of Fanatics’ own trade marks should be cancelled in relation to class 35 services. Thirdly, in dismissing its cross claim for trade mark infringement against FanFirm. Fourthly, in dismissing Fanatics’ cross claims brought under the ACL and for passing off against FanFirm. Fanatics also contends that the primary judge erred in awarding FanFirm its costs of the proceedings.

6    FanFirm relies upon a Further Amended Notice of Contention which advances five bases upon which it contends the primary judge ought also to have found in its favour. The first concerns the application of the defences under s 122(1), the second the characterisation of Fanatics as a trade rival or competitor, the third the application of s 122(1)(e) as a defence to infringement to the benefit of Fanatics, the fourth the sale by FanFirm of clothing in the nature of third-party licensed merchandise prior to 2012 and the fifth the availability to FanFirm of a defence to infringement of Fanatics’ trade marks pursuant to ss 122(1)(f) and (fa). FanFirm sought leave to rely on a Notice of Cross-Appeal on the second day of the hearing of the appeal. We address that in section 6 of these reasons.

7    The principles relevant to consideration of a decision under appellate review are well established and set out in Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; (2018) 261 FCR 301 at [2]–[10] (Allsop CJ) and [45]–[53] (Perram J).

8    Unless stated otherwise, references to sections in these reasons are to the Trade Marks Act and references to paragraphs are to the primary judgment.

1.2    The trade marks

9    FanFirm sued on two marks (the FanFirm Marks), being no. 1232983 for the word “FANATICS” in classes 9, 16, 24, 25, 32, 38 and 39 and having a priority date of 2 April 2008 (FanFirm Word Mark) and no. 1232984 for the word “FANATICS” and device in classes 9, 16, 24, 25, 32, 38 and 39 (FanFirm Device Mark) and having a priority date of 2 April 2008, the device being:

10    The FanFirm Marks are both registered in the following classes:

Class 9: Motion picture films (recorded); for use in multi media (not limited to recordings for television; world wide web and DVD).

Class 16: Printed material used for advertising and promotional material (although not limited to); postcards, books, bumper stickers, calendars, posters, printed publications and printed matter and photographs; paper flags.

Class 24: Banners; flags (not of paper), including textile flags; woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth.

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

Class 32: Mineral and aerated waters and beer.

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

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

11    In its cross claim, Fanatics asserted that FanFirm infringed two of its trade marks (the FANATICS Word Marks) being no. 1288633 for the word “FANATICS” in classes 35 and 42 and having a priority date of 10 September 2008 (633 TM) and no. 1905681 for the word “FANATICS” in classes 35 and 42 and having a priority date of 9 January 2018 (681 TM).

12    In addition, the following trade marks owned by Fanatics were relevant to the case before the primary judge: no. 1288632 for the words “FOOTBALL FANATICS” in class 35 and having a priority date of 10 September 2008 (632 TM), no. 1680976 for the words “SPORT FANATICS” in class 35 and having a priority date of 18 May 2010 (976 TM), and no. 1894688 for the word “Fanatics” and device as shown below, in classes 35 and 42 and having a priority date of 15 November 2017 (688 TM or FANATICS Flag Mark):

13    The trade marks owned by Fanatics which are listed above are registered in the following classes (subject to some slight variations in the specifications, which are not relevant to the present appeal), save that the FOOTBALL FANATICS and SPORTS FANATICS marks are only registered in class 35 ([22]):

Class 35: Business marketing consulting services; customer service in the field of retail store services and on-line retail store services; on-line retail store services featuring sports related and sports team branded clothing and merchandise; order fulfillment services; product merchandising; retail store services featuring sports related and sports team branded clothing and merchandise.

Class 42: Development of new technology for others in the field of retail store services for the purpose of creating and maintaining the look and feel of web sites for others, not in the field of web site hosting; computer services, namely, creating and maintaining the look and feel of web sites for others, not in the field of web site hosting services; computer services, namely designing and implementing the look and feel of web sites for others, not in the field of web site hosting services; computer services, namely, managing the look and feel of web sites for others, not in the field of web site hosting.

14    We refer to the FANATICS Word Marks and the FANATICS Flag Mark together as the FANATICS Marks.

1.3    Background findings of the primary judge

15    The primary judge summarised the origins of the FanFirm business from 1997, when Mr Warren Livingstone proposed the idea of a travelling cheer squad for the Australian tennis squad wearing the word or logo “Fanatics” while giving enthusiastic support for Australian sports teams and players ([23]). This developed into organised tours, where attendees wore “FanFirm branded” t-shirts and caps ([25]). Initially, the business focussed on organising tour and event services for particular sporting events and in 2002 the business expanded to providing organised tour and event services for a wide range of non-sport related events including skiing trips to France and Japan, and Anzac Day in Gallipoli ([27]). Many thousands of people have attended such event tours over the years ([27]).

16    In September 2004, Mr Livingstone incorporated FanFirm and offered the same goods, services and activities that he had personally ([29]). FanFirm has a database of its customers and subscribers who have purchased FanFirm branded merchandise and/or purchased and participated in tours organised by FanFirm. FanFirm had around 160,000 members on the database ([30]). In addition to sending newsletters to customers on the database, FanFirm operated a loyalty and rewards program from its inception, which entitled customers to participate in online communities operated at the website www.fanatics.com and receive benefits ([31]). FanFirm began operating from this domain name and also had registered www.fanatics.com.au and thefanatics.com.au from at least 2003 ([32]). Until around 2020 the primary website of the FanFirm business was www.fanatics.com, with traffic to www.thefanatics.com.au being redirected to that website ([34]).

17    The primary judge noted the evidence given by Mr Livingstone and Mr Fenton Coull (a former sports executive who had business dealings with FanFirm and Mr Livingstone while employed at Tennis Australia) that Mr Livingstone, and FanFirm since its incorporation, sold clothing, including third party licensed merchandise, online via the www.thefanatics.com website from 1998 (and later via www.thefanatics.com.au and www.fanatics.com.au), and that branded merchandise was sold in the lobbies of hotels where the tour groups were staying ([37]–[38]). The primary judge considered in section 4.1.1 the evidence adduced by FanFirm of sales of merchandise and in 4.1.3 details of its social media presence.

18    In section 4.1.4, the primary judge addressed the reputation of FanFirm. FanFirm submitted before the primary judge that as at least December 2010 it had a valuable reputation in the word “Fanatics” with respect to sporting and other events tour services and also sports merchandise, including clothing, headgear, sportswear and footwear ([83]). This was not disputed by Fanatics in relation to the use of the word “Fanatics” in connection with the business of promoting and providing sporting and event tour services ([84]). Nor did Fanatics dispute that as part of its tour services business FanFirm supplied items of clothing and headgear to attendees. The dispute concerned whether or not FanFirm has a reputation in relation to the promotion and sale of merchandise under the FanFirm Word Mark other than as an adjunct to its sporting and event tour service business ([85]).

19    The primary judge considered:

(1)    the length of operation of FanFirm’s tours business ([88]);

(2)    the evidence of annual gross income for each year from 1997 ([89]);

(3)    the size of the database (around 160,000 contact details) of customers ([90]);

(4)    the visibility of large numbers of Fanatics supporters who attended prominent events, such as the Davis Cup in 2003 where between 1,000 and 1,300 Fanatics supporters attended ([93]);

and determined that FanFirm had established that as at December 2010 it had a reputation in the FanFirm Marks, including the word “Fanatics”, with respect to sports merchandise including at least clothing, headgear and footwear, which was separate to and not merely an adjunct of its tour business ([99]).

20    The primary judge then turned to consider the business of Fanatics, noting that it had begun trading as “Football Fanatics” in 1995 as a traditional store selling sporting merchandise related to the Jacksonville Jaguars NFL team in Jacksonville, Florida, before moving to become an online retail store in 1997 ([106]–[107]). After addressing the history of the names used by Fanatics (to which we refer further below) the primary judge found that Fanatics changed its corporate name and brand to “Fanatics” simpliciter on 7 December 2010 ([115]).

21    The primary judge noted that in addition to its online sale of officially licensed sports merchandise and apparel, another aspect of Fanatics’ business is the design, implementation, maintenance and management of third party partner e-commerce stores (Partner Stores) for sporting teams, leagues and media brands in the United States and other countries such as England ([117]). Fanatics has also offered a rewards or loyalty program called “FANATICS MVP” since 2004 ([122]) and has offered “FANATICS LIVE” events connecting fans with athletes since 2018 (which has since been renamed to “FANATICS PRESENTS”) ([120]).

22    The primary judge found that Fanatics has sold products to customers in Australia since 2000, initially under the “FOOTBALL FANATICS” brand, with confidential sales figures showing that the volume of sales into Australia slowly increased each year from 2014 to 2020 but has since dropped off. The volumes have been “meaningful but not overwhelming” ([124]). Mr Zohar Ravid, an executive with Fanatics, gave evidence that prior to 2020, Fanatics’ activity in Australia was limited to selling and shipping merchandise to persons present in Australia, but since that date, Fanatics has pursued Australian-based sporting leagues and teams to offer its partner services, including the development of Partner Stores ([125]).

23    In section 4.3, entitled “Coexistence prior to 2020”, the primary judge found that other than legal skirmishes in the Australian Trade Marks Office in 2010, 2013 and 2019 – when one or the other of the parties opposed the other’s trade mark applications – the parties largely coexisted until 2020, finding at [137]:

…The respondent has since 2010, operated an online retail store selling licensed third-party team apparel for a wide variety of sports, initially focussing on US sporting leagues, such as the NFL and the NBA, and then expanding to every major sporting code around the world. The applicant operated a tour and events company which sold merchandise both directly related to those events and third-party licensed merchandise relating to Australian national sporting teams such as the Wallabies, Socceroos and Matildas.

24    Her Honour found that the parties were operating in “the same broad field”, with both targeting sports fans and their enthusiasm for sport and selling merchandise to them over the internet. Prior to 2020, FanFirm had a narrower focus on Australian customers and licensed sports apparel for Australian national teams, and Fanatics did not specifically target Australian customers, instead selling sporting merchandise primarily relating to US sporting teams and codes and European football leagues and teams ([138]). The coexistence was possible because, her Honour found, they operated in slightly different “lanes” that did not overlap. However, the status quo changed in 2020 when both moved out of their lanes: Fanatics by making deals with the Australian retailer Rebel Sport and the Australian Football League (AFL), and FanFirm by launching a “retail store” ([140]).

1.4    The Orders made

25    On 17 July 2024 the primary judge:

(1)    made a declaration to the effect that Fanatics has infringed the FanFirm Word Mark by using the FANATICS Word Marks and the FANATICS Flag Mark (together, the Infringing Marks), in relation to clothing, headgear, sportswear, sports bags, scarves, water bottles, towels and blankets.

(2)    granted an injunction that Fanatics be permanently restrained:

…from using the FanFirm Word Mark or any signs that are substantially identical with or deceptively similar to the FanFirm Word Mark, including the Infringing Marks, in relation to the goods and services in respect of which the FanFirm Word Mark is registered, without the permission, authority or licence of [FanFirm].

(3)    ordered that the Register be rectified by removing the Infringing Marks in respect of the services in class 35 in which they are registered and that Fanatics’ 976 TM (“SPORT FANATICS”) be removed from the Register.

(4)    ordered that the Register be rectified by removing the FanFirm Word Mark and FanFirm Device Mark in respect of goods in classes 9, 16 and 32 and services in class 38.

(5)    ordered that FanFirm’s claim be “otherwise dismissed” (Order 6).

(6)    ordered that Fanatics’ cross claim be dismissed.

(7)    ordered that Fanatics pay FanFirm’s costs of the proceedings, including the cross claim.

26    Issues arise in this appeal concerning the orders referred to in (1) (2), (3), (5), (6) and (7). The orders for the rectification of the Register in (3) and (4) have been stayed pending the determination of this appeal (FanFirm Pty Limited v Fanatics, LLC (No 2) [2024] FCA 826).

1.5    Summary of conclusions in the appeal

27    For the reasons set out below, we have found that:

(1)    the primary judge erred in her evaluation that the packaging labels or care labels used on certain Fanatics goods, in the absence of other Fanatics branding, constitute use of the word “Fanatics” as a trade mark (section 2.3);

(2)    with the exception of the Corporate Goods (as defined below) and the “Fanatics Branded” goods sold by Fanatics on its website (as described below), which were correctly found to infringe, the primary judge erred in finding that the use of the FANATICS Marks on Fanatics’ websites constituted use in relation to class 24 and 25 goods and thus infringed the FanFirm Word Mark (section 2.4);

(3)    the primary judge erred in finding that towels and blankets fall within FanFirm’s class 24 registration for the FanFirm Marks (section 2.5);

(4)    Fanatics has not demonstrated error in the finding that it could not rely on the defence of ‘good faith use of its own name’ under s 122(1)(a)(i) in respect of its infringement of the FanFirm Word Mark in relation to the Infringing Goods (as defined below) (section 3.4);

(5)    Fanatics has not demonstrated error in the finding that it could not rely on the defence of ‘honest concurrent use’ under ss 122(1)(f) or (fa) and s 44(3) in respect of its infringement of the FanFirm Word Mark in relation to the Infringing Goods. However, her Honour erred in finding that s 58 would prevent Fanatics from relying on the defence in respect of the FANATICS Flag Mark (sections 3.5 and 3.6);

(6)    Fanatics has not demonstrated error in the finding that the FANATICS Marks should be cancelled pursuant to s 88(2)(a), on grounds under ss 44, 58 (in respect of the FANATICS Word Marks only) and 88(2)(c). However, her Honour erred in finding that s 60 provided an additional ground for cancellation of the FANATICS Marks pursuant to s 88(2)(a) (section 4);

(7)    as we have upheld the primary judge’s finding that the FANATICS Marks should be cancelled, it was not necessary to consider Fanatics’ appeal regarding its infringement case against FanFirm (section 5.1);

(8)    Fanatics has not established error in the finding rejecting its claims under the ACL and passing off (section 5.2); and

(9)    the primary judge erred in finding that the defence under s 122(1)(e) was available to Fanatics in respect of its infringement of the FanFirm Word Mark in relation to the Infringing Goods, and erred in making Order 6 otherwise dismissing FanFirm’s claim (section 6).

2.    APPEAL FROM FINDINGS OF TRADE MARK USE BY FANATICS

2.1    Introduction

28    On the question of infringement, Fanatics contends that the primary judge erred in finding:

(1)    that its use of the word “Fanatics” in relation to certain swing tags, care label information and packaging amounted to use as a trade mark (information label issue);

(2)    that its use of “Fanatics” on the websites fanatics.com and fanatics-intl.com amounted to trade mark infringement (the website issue); and

(3)    that certain goods sold by Fanatics were “goods of the same description” as the goods in respect of which the FanFirm Word Mark was registered (the goods of the same description issue).

29    In its written submissions, Fanatics parenthetically refers to grounds 1–4 and 7–13 as relevant to these three subjects. We deal with Fanatics’ appeal from the primary judge’s findings on its defences to infringement in section 3 below.

2.2    The primary judge’s findings

30    There was no dispute before the primary judge that the FanFirm Word Mark, which has a priority date of 2 April 2008, is substantially identical to the FANATICS Word Marks ([223]). The primary judge also found that the FANATICS Flag Mark was deceptively similar to the FanFirm Word Mark ([237]), and this was not challenged on appeal. As noted above, we refer to the FANATICS Word Marks and the FANATICS Flag Mark together as the FANATICS Marks.

31    FanFirm’s infringement case before the primary judge involved allegations first, that Fanatics had used its FANATICS Marks in Australia in relation to clothing, headgear, sportswear, umbrellas, sports bags, scarves, water bottles, towels, flags, footwear and blankets (Impugned Goods) to indicate a connection between the goods and Fanatics ([169]), and that second, Fanatics had offered and promoted loyalty and reward services and services whereby it connected fans to athletes (Impugned Services) in Australia under and by reference to the FANATICS Marks in order to indicate a connection between those services and Fanatics ([170]). The primary judge rejected the allegations of infringement by reference to the Impugned Services ([264], [271]–[272]).

32    At [160]–[163] the primary judge set out relevant parts of ss 120, 17 and 6 of the Trade Marks Act, and at [166] quoted the decision of the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; (2023) 277 CLR 186 as follows:

23     Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

24     Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not “as a trade mark” was in Irving’s Yeast-Vite Ltd v Horsenail, where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

25     The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.

(Footnotes omitted)

33    Her Honour noted that there were three categories of dispute going to the question of trade mark infringement by the Impugned Goods.

34    The first category concerned Fanatics’ use of the FANATICS Marks on branded corporate merchandise ([172(a)], section 6.2.2.1).

35    The primary judge considered a number of examples of trap purchases tendered as evidence of corporate goods acquired from the Fanatics website at www.fanatics.com in April 2022 and July 2023 ([181]), and screenshots of the purchasing process ([184]–[185]). Her Honour described the homepage showing the FANATICS Flag Mark displayed at the top left corner of the page and a navigation bar above the product listing on the webpage which included references to “FANATICS CORPORATE GEAR” and the like. Using the menu, the trap purchaser navigated to a navy t-shirt located under “Fanatics Corporate T-Shirts” and a scarf under “Fanatics Corporate Accessories” ([185]). The scarf bears the word “Fanatics” on it in large letters.

36    Three website pages from www.fanatics.com are reproduced in the primary judgment at [185], displaying various items of clothing with labels referring to them as “Fanatics Corporate” clothing, as follows:

37    The primary judge found at [186] that “the above items”, referring, as we understand it, to all of the items identified in [185], are examples of Fanatics using its FANATICS Word Marks as a trade mark in relation to clothing, including sports apparel.

38    Although in ground 10 of its Notice of Appeal Fanatics contends that the primary judge erred in her conclusions in this section, it addressed no submissions to the primary judge’s findings in this category and we address that ground no further.

39    The second category of use by Fanatics concerned “third party licenced merchandise” where the argument addressed was as follows:

187    The applicant contends that the respondent has advertised and sold clothing, including third party licensed merchandise, by reference to the FANATICS Word and Flag Marks because:

(a)    some of the goods bear one of the FANATICS Marks on the goods themselves, such as on the label, barcode, swing tag or packaging labels; and

(b)    the goods are displayed on, and are accessible via, the respondent’s websites at www.fanatics.com and www.fanatics-intl.com and those websites prominently bear the FANATICS Marks.

40    Her Honour noted that trap purchases were made by a solicitor, Mr Alastair Cockerton, of a “Hawthorn Fanatics Shirt” from the AFL store at www.aflstore.com.au (the Hawthorn Football Club Shirt) and a red Men’s Kansas City Chiefs Hoodie from the “Fangear” section of the Rebel Sport website at www.rebelsport.com.au. Her Honour set out observations made by Mr Cockerton about the product page for the Hoodie and statements on the “Frequently Asked Questions” page on the Rebel Sport website at [189] and [190]. Her Honour also noted at [191] that the Hoodie as tendered had a care label sewn into the garment that referred to, amongst others, FANATICS International and FANATICS (Germany).

41    At [192] her Honour produced images of the Hawthorn Football Club Shirt and noted Mr Cockerton’s observation that it arrived in packaging labelled “Fanatics Button-up Shirt” and with a swing tab as depicted:

42    The primary judge also referred to a further purchase from the www.fanatics.com website made by Mr Cockerton in September 2023 of a turquoise football jersey described as “Australia Women’s National Team Nike Women’s 2023 Away Stadium Replica Jersey – Turquoise” (at [193]).

43    The primary judge found at [194]:

I consider that the role of the FANATICS Marks on the clothing (stitched or printed on the back) and care labels is to denote the manufacturer of those goods. Mr Swallow said in relation to the FANATICS branded goods: “you can think of ‘Fanatics-branded’ in the same way that we look at, say, an Adidas or a Nike. It’s just that’s the name that we call our own branded merchandise, Fanatics”…

(Emphasis added)

44    The primary judge rejected a contention advanced by Fanatics that the use of the FANATICS Marks on labels or swing tags does not amount to trade mark use because they are not acting as badges of origin in any relevant sense ([195]). The primary judge relevantly held:

198 It would be apparent to any reasonable Australian consumer that the Hawthorn Football Club (or any sporting club) does not manufacture clothing, and that the Hawthorn indicia are part of the design of the shirt material. The use of the FANATICS Marks in these instances are being used as “a badge of origin” to distinguish the respondent’s relevant good from goods manufactured by other sports clothing manufacturers such as Nike or Adidas: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41]–[42] (per French CJ, Gummow, Crennan and Bell JJ).

199    The fact that, in some circumstances, the FANATICS Marks are not physically on the clothing itself, but on a tag or label attached to the garment, is not decisive. The phrase “used as a trade mark … in relation to goods” in s 120(1) of the Act does not require the goods be physically branded with the mark but “can include use of the mark on product packaging or marketing such as on a website”: Self Care at [23].

200    In this case, the FANATICS Marks on the FANATICS branded goods are being used as a badge of origin and thus the use constitutes trade mark use. The fact that other marks are present on the clothing, such as the logo of the relevant sporting team or league, does not matter. Dual branding is “nothing unusual” and does not have the effect that one of the marks is not being used as a trade mark: see Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (2021) 162 IPR 52 at [66] (per Jagot, Lee and Thawley JJ) and the cases there cited (these comments were not disturbed on appeal in Self Care). See also Anheuser at [189] and [191] (per Allsop J).

45    On appeal, Fanatics does not dispute that where the FANATICS Word Mark or Flag Mark appears stitched into the inside collar of a shirt the finding of trade mark use is properly made. However, it contends that the primary judge erred in finding that use of the word “Fanatics” on various care labels, packaging barcodes, swing tags or postage packaging (which Fanatics describes as information label use) could, on the evidence in this case, be described as “trade mark use” within the authorities.

46    The third category concerns third party licensed merchandise sold on the Fanatics websites that are not visibly branded with the FANATICS Marks, such as jerseys for a football team manufactured by Nike or Adidas ([201]).

47    The primary judge found that the vast majority of goods sold by Fanatics are not themselves branded with FANATICS Marks ([203]) and noted that the point of departure between the parties was that whereas Fanatics accepted that the domain name www.fanatics.com constitutes use of the FANATICS Word Marks as a trade mark in relation to its online retailing services, it disputed that the domain name constitutes use of the FANATICS Marks in relation to the clothing and apparel offered for sale at that site ([207]).

48    The primary judge cited a number of first instance decisions concerning the question of whether online use of a sign may amount to trade mark use in relation to goods that it promotes as well as services, noting at [213] that Fanatics’ use of FANATICS on its website was not limited to its use as part of the domain name, and included displays of the FANATICS Flag Mark on the top left of each page and employing the word FANATICS in relation to the goods displayed for sale on the website.

49    The primary judge found:

201    The next issue is whether third party licensed merchandise sold on the FANATICS websites that are not FANATICS branded goods, such as jerseys for a football team manufactured by Nike or Adidas, are being sold by reference to the FANATICS Marks. Namely, whether use of a domain name can constitute trade mark use in relation to goods sold on that website.

202    For the reasons set out below, I consider the respondent’s sale of third party licensed merchandise to be a sale of goods by reference to the FANATICS Marks and to constitute use of FANATICS as a trade mark.

…

214    I consider that the use of FANATICS in the respondent’s domain name and on its website on the webpages displaying goods for sale constitutes use of the FANATICS Word Marks as a trade mark. However, the question remains as to whether these uses are simply use in respect of online retail services, as the respondent contends, and whether that is a different use to use in respect of the goods depicted on the website.

….

220    The respondent invites consumers to visit its website at www.fanatics.com. At that website, goods are available for purchase under the name FANATICS as part of the domain name, displayed in page headings and in references to products. I consider that this constitutes use of the FANATICS Marks as trade marks in relation to the goods for which the applicant’s FanFirm Marks are registered, including clothing, sportswear and headgear.

(Emphasis added)

50    Fanatics contends on appeal that the primary judge erred in reaching this conclusion, which we address below as the “website issue”.

51    The primary judge next relevantly considered whether the uses by Fanatics of the impugned signs amounted to use in relation to goods or services of the same description as or closely related to those in respect of which the FanFirm Word Mark is registered. In relation to services, the primary judge found that the services that Fanatics offers under the FANATICS MVP sign are not services of the “same description” as the services that FanFirm’s Marks are registered for, and are also not “closely related” to any of the goods FanFirm’s marks are registered for ([257], [264]). While her Honour found that the services provided under Fanatics’ FANATICS LIVE mark fell within FanFirm’s registration for class 38, she noted her earlier finding that neither FANATICS MVP nor FANATICS LIVE is deceptively similar to the FanFirm Word Mark, and hence it followed that there was no infringement by those marks ([271]–[272]). These findings are not the subject of appeal.

52    However, Fanatics takes issue with the findings of the primary judge in relation to goods of the same description at [242]–[256]. There was no dispute before the primary judge that clothing, headgear, sportswear, scarves, flags and footwear as promoted and sold by Fanatics fell within the goods in respect of which the FanFirm Marks were registered ([243]). However, the parties disagreed as to whether or not umbrellas, sports bags, water bottles, towels and blankets fell within the scope of the registration.

53    The primary judge cited the decisions in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; (2020) 158 IPR 9 at [277]–[286] (Burley J) and McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 (Kenny J) at [18] and concluded that blankets, throws and towels are goods of the same description as “woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth” (being part of the class 24 registration) ([245]) and that sports bags and water bottles are goods of the same description as “sportswear” (being part of the class 25 registration) ([251]–[253]). Fanatics challenges these findings on appeal, which we address below as the “goods of the same description issue”.

2.3    The information label issue

2.3.1    The relevant law concerning use as a trade mark

54    Section 17 of the Trade Marks Act provides that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

55    Subsection 7(4) provides that “use of a trade mark in relation to goods” means “use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)”.

56    The word “sign” is defined in s 6 of the Trade Marks Act as follows:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

57    The authorities establish that context is all-important. Not every use of a sign that is identical with or deceptively similar to a registered trade mark will infringe within s 120 of the Trade Marks Act. In The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, Kitto J (Dixon CJ, Taylor and Owen JJ agreeing) noted at 425 that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the viewer as:

… possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant.

58    That statement has been followed on many occasions. The test has also been framed as a question of whether or not the use in question has been use as a “badge of origin”: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144 at [43]; Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107 at [19]; Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876; (2000) 100 FCR 90 at 103 [15]–[16] per Burchett J (Hill and Branson JJ agreeing); RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10; (2024) 302 FCR 285 at [53]. As we have noted above, the primary judge set out considerations relevant to the question as most recently formulated by the High Court in Self Care.

2.3.2    The submissions

59    Fanatics contends that the primary judge erred in finding that reference to the name “Fanatics”, on care labels, packaging barcode labels, stickers on swing tags and postage packaging relating to third party licensed merchandise, whether alone or with other words such as a corporate name, was use in a trade mark sense. It submits that such information labels could not function as a trade mark because they could not be seen in the course of trade, all of them being visible only after an online order had been placed and delivery made. It submits that the primary judge failed to make an objective and contextual assessment of the use made and exemplifies the error by reference to the care labels sewn into the inner seam of garments, the barcode stickers and stickers applied to packaging materials. Taking the Hawthorn Football Club Shirt as an example (at [192]), Fanatics submits that a reasonable consumer would regard Hawthorn (Hawks) or the AFL as the brands indicating the trade source of the product and that the reference to Fanatics would not be perceived to be used as a badge of origin.

60    FanFirm defends the approach of the primary judge. It submits that the nature and purpose of the word “Fanatics” on the information labels is to identify or connote the source of the goods and that not only what precedes the customer’s receipt of the clothing, but also the receipt of the labels themselves, is important. It submits that when proper regard is had to the context it is plain that the examples relied upon by Fanatics were being used to indicate a connection between the goods and the user of the mark.

2.3.3    Consideration

61    The contention advanced on appeal is that the primary judge erred in finding that the use of the word “Fanatics” on swing tags, barcodes and packaging labels amounted to trade mark use. As a preliminary point we note that although there may be some ambiguity in her Honour’s reasons in this regard at [220], FanFirm does not dispute that the primary judge’s findings, and the declaratory and injunctive relief ordered, encompass each such uses where the word “Fanatics” appears independently of other uses in relation to the goods in question (that is, each use of “Fanatics” on the swing tags, barcodes, care and packaging labels is an independent instance of trade mark use).

62    The distinction between use of a sign in relation to goods and use of a sign as a trade mark is not always easy to apply. Whether a sign has been used in a relevant trade mark sense is to be assessed objectively by reference to the context in which it is used in the relevant trade. Paraphrasing the passage from Shell Co at 425, the question becomes whether, in the setting in which the particular words referred to were presented, they would have appeared to the consumer as possessing the character of devices, or brands, which Fanatics was using in relation to the goods in respect of which the FanFirm Marks were registered, or so as to indicate a connection in the course of trade between those goods and Fanatics.

63    Fanatics first submits that the primary judge erred by taking into account the appearance of the goods after they had been purchased online and had been delivered. By that time, it submits, the course of trade had been completed and an acquisition had been made. FanFirm submits that in the online context a collection of goods are offered for sale on the website and the consumer can select them and make a purchase, and the first time that the consumer sees the particular goods is when they are delivered. Only then does the purchaser receive the packaging and is able to handle the goods, thereby revealing (for the first time), the swing tag, the bar codes and the care labels. It submits that in online retailing, returns are provided, and were offered on the website under consideration, and until a return period expires the goods remain in the course of trade.

64    In Gallo the question of where the course of trade may be said to start and when it stops was considered. The High Court at [46] approved the following reasoning of Windeyer J in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1967] HCA 51; (1967) 116 CLR 254 at 266–267:

[W]hen it is said that a trade mark is used to distinguish the goods of one man from those of another, that abbreviated statement obviously does not refer to the goods of the owner of the mark in the sense of goods which he owns or possesses. After the goods have been sold by him his mark may still, using the definition of trade mark in the Act, be used in relation to those goods for the purpose of indicating a connexion in the course of trade between them and him, the registered proprietor of the mark. The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.

65    The High Court in Gallo went on to dismiss the notion that either Windeyer J or the Full Court of the High Court upholding the decision on appeal meant that the trade mark owner in such a circumstance must knowingly project its trade mark into other markets (at [48]–[49], [51]). It is apparent from the final sentences of this passage that, regardless of intermediate transfers from wholesale to warehouse to retail, once goods are bought for consumption, they cease to be in the course of trade. Put another way, from that point they cease to perform the task of distinguishing the goods of the registered owner from the goods of others. That is because upon the completion of a retail sale, the goods are no longer on the market.

66    FanFirm submits that goods remain in the course of trade where, in the online context, the consumer has an opportunity to return them after they are received. It cites Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 163; (1994) 49 FCR 89 as supporting the proposition that where goods are sold but subsequently re-enter the market as second hand goods, they are still in the course of trade. However, in our view this authority provides no analogous assistance to FanFirm. The Full Court (per Sheppard J, Wilcox J agreeing) found that when Wingate, who reconditioned LEVIS branded jeans and re-labelled them REVISE, put the REVISE branded jeans on the market, they did so to “put them back into the course or flow of trade” (at 104). The continuum of the course of trade having ceased at some point upon sale and consumption or use by the consumer and being revived later. That is not the present position. Nor do we consider that the circumstances of online sales are materially different to in-store physical sales such as to alter the analysis. The stimulus that leads a consumer to purchase an item online is the material presented to them on the relevant website promoting the sale. It is at that point that there will be trade mark use. The fact that after a sale the consumer may prefer to return the good once it is received and unwrapped cannot distract attention from the fact that the purchasing decision is made on the basis of the stimulus made available online.

67    The primary judge did not in her reasons explicitly consider the question of whether it was appropriate to have regard to post-sale materials. This was perhaps because, amongst the welter of issues raised by the parties, this issue did not receive top billing. However, contrary to the submission advanced by FanFirm, we do consider that the point was sufficiently made in oral submissions that the information label uses would not have reached a consumer until after the transaction was completed and that accordingly they did not amount to a trade mark use.

68    This finding is sufficient to allow the appeal in relation to the information labels.

69    However, Fanatics makes the further submission that, even if one were to take into account the goods that were delivered after an online purchase was complete, each of the uses of the word “Fanatics” on the care labels, packaging and swing tags alone would be insufficient to amount to trade mark use. We agree.

70    In our respectful view, the primary judge erred in her evaluation that the packaging labels or care labels would be regarded objectively by a reasonable consumer as involving use of the word “Fanatics” as a trade mark.

71    We take first as an example the Hoodie. Fanatics provided during the course of argument photographs of exhibit A2 which include the uses of “Fanatics” on the care label, and on the packaging (as the return sender) in which the parcel arrived. The care label is partially depicted below. It is located on an inside seam and consists of three separate tags or pages, stitched together into the seam. The tags bear dense writing in multiple languages providing care instructions. A number of different names are mentioned on the fifth and sixth pages as depicted in the right hand image below. The Hoodie otherwise has on its collar an NFL emblem and a swing tag with the same emblem and a reference to “NFL.com”. The front of the Hoodie bears the name of the Kansas City Chiefs.

72    In our view the obscurely placed care label that bears reference to the words: “DE: Fanatics (Germany) GMBH”, “JP: Fanatics Japan G.K.” and “GB: Fanatics International” would not, in the context of a garment not otherwise bearing the word “Fanatics”, be regarded by a consumer as being a use of that word as a trade mark. In this regard the position is analogous to that in Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403; (2017) 133 IPR 1 (Burley J) at [327].

73    An example of the packaging, also depicted in photographs of exhibit A2 and provided during argument on appeal is as follows:

74    In our view, the reference to “Fanatics” as providing the return to sender address on the packaging would not be regarded by a consumer as use of the word as a trade mark in relation to the contents of the packaging. It is not a use as a trade mark having regard to when the consumer would see it (after sale and shipping) or how they would see it (on the exterior of a grey plastic package).

75    Finally, the swing tag appearing on the Hawthorn Football Club Shirt is depicted in section 2.2 above. The collar of the shirt bears the logo of the AFL as does the swing tag, which also contains the word “ashtabula” and a corporate name. Beneath these, a sticker has been added to the swing tag bearing the words “Fanatics Button-Up Shirt”. We recognise, as her Honour did at [196], that the use of a word may have more than one purpose and that a product may have more than one trade mark on it: Anheuser-Busch v Budejovicky Budvar [2002] FCA 390; (2002) 56 IPR 182 at [189]. However, having regard to its size, position and the fact that it is placed on a sticker just on the swing tag, in our view a consumer would be more likely than not to consider that this is a Hawthorn Hawks shirt made with the approval of the AFL by Ashtabula of a style known as a “Fanatics Button-Up Shirt” (that is, using the word “Fanatics” descriptively to refer to the style of shirt as being for dedicated followers). We do not consider that the small sticker appearing on the swing tag would be perceived by the consumer as a trade mark used on or in relation to the shirt.

2.4    The website issue

2.4.1    The submissions

76    Fanatics submits that the primary judge erred in finding that the use of the FANATICS Marks as branding for its websites constituted use in relation to the merchandise retailed on those sites. It submits that the primary judge failed to consider the context of the use of the word on the website which, from a consumer’s perspective, indicates that the branding was of use not in relation to goods but as an online retail service, citing Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130; (2011) 197 FCR 67. It submits that objectively considered, an online retailer does not present to the consumer as the manufacturer of the products but as the retailer from which the products can be purchased, even though the use on the website displays not only the retailer’s trade mark but also trade marks of the products offered for sale. It submits that where a consumer views the site, unless the goods themselves bear the retailer’s trade mark, the use will not be in relation to goods but to online retail services.

77    FanFirm defends the reasoning of the primary judge and distinguishes Optical 88. It submits that in the present case there is a range of goods promoted for sale on the Fanatics websites which is all under the Fanatics brand, including “Fanatics Branded” goods, and the FANATICS Marks are applied to all of these goods by way of the branding on the website. Accordingly, there is no clear line between use in relation to online retail services and use in relation to goods and it was open to the primary judge to find that an online retail service selling goods is nothing more than the sale of goods via a website (at [158], [431]).

2.4.2    Consideration

78    The case advanced before the primary judge was that by reason of its use of the word “Fanatics” in its web address and also in various forms on the website operated by Fanatics from time to time, Fanatics had engaged in conduct in breach of s 120(1) of the Trade Marks Act, which requires that the infringing trade mark be used “in relation to goods or services in respect of which the [allegedly infringed] trade mark is registered” ([174], [201]). The FanFirm Marks were not registered in respect of online retail services. Accordingly, the question considered by the primary judge was whether Fanatics’ use of the word “Fanatics” as part of its website address and in various forms on the website was use in relation to goods advertised and sold, or whether it was use only in respect of retail services. The question of whether the particular goods sold on the website fell within the classes of goods in respect of which the FanFirm Word Mark was registered was considered separately (at [242]–[256]).

79    There is no dispute that the use of a domain name or uniform resource locator, either alone or together with language used on a website, may amount to trade mark use either for goods or services, depending on the content of the website in question and the likely perception of consumers. In that sense, the analysis is technology neutral, and the same considerations identified in Shell Co (which were articulated in the context of the then novel use (in 1961) of moving images in advertising) to which we have referred in section 2.3.1 above will apply; see Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at [146]; Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544 at [50]; Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239 at [58]–[62].

80    It was not in dispute before the primary judge that the use by Fanatics of the word “Fanatics” on its website in various forms amounted to trade mark use, at least in relation to online retail services, by reason of a combination of its use in the web addresses and also the use of the word on the website itself. Although the primary judge characterised the question before her as being whether use of a domain name per se can constitute trade mark use in relation to goods sold on that website (at [201]), after answering that theoretical question in the affirmative, the primary judge went on to consider whether or not the Fanatics website should be characterised as involving use of the word “Fanatics” on or in relation to goods depicted on the website, as FanFirm contended, or whether it was limited to use in respect only of online retail services, as Fanatics contended (at [214]).

81    The primary judge made a general finding that FanFirm had established its case that Fanatics had used the word “Fanatics” in relation to goods as well as online retail services at [220].

82    On appeal, Fanatics challenges the generality of that finding. It accepts that there are parts of the website that involve use of the word “FANATICS” as a trade mark in respect of its own corporate branding (within the first category of trade mark use found by the primary judge at [180]–[186]) and that a finding that this constitutes use of the FANATICS Marks in respect of clothing is apposite. However, it challenges the balance of the finding at [220], namely that “goods are available for purchase under the name FANATICS as part of the domain name, displayed in page headings and in reference to products” where the goods promoted are not branded with the word “Fanatics”, but which bear other marks such as Adidas or Nike.

83    The dispute may be understood by reference to several of the many web page screenshots in evidence. Three are included within the judgment at [185] and are reproduced in section 2.2 above. These are located on the www.fanatics.com website.

84    As the primary judge explains at [185], a navigation bar above the product listing on the webpage includes references to “FANATICS CORPORATE GEAR”, “FANATICS CORPORATE” and “FANATICS CORPORATE ACCESSORIES”. Using the menu, Mr Cockerton had selected “Fanatics Corporate Gear”, then “Fanatics Corporate”. The navy t-shirt pictured in [185] of the primary judgment was located under “Fanatics Corporate T-shirts” and the scarf under “Fanatics Corporate Accessories”. The primary judge found that these uses on and in relation to the Fanatics “Corporate Goods” amounted to trade mark use in relation to clothing, including sports apparel, within the scope of the goods in respect of which the FanFirm Marks are registered ([186]). As we have noted, although included within its grounds of appeal, in oral submissions Fanatics made clear that no challenge is made to that finding.

85    However, numerous other items of clothing are promoted for sale on the Fanatics website beyond the Corporate Goods, and the central submission advanced by Fanatics in this aspect of the appeal is that the primary judge erred in failing to explain how a use in relation to an online retail service for the sale of goods is use in relation to goods. We were taken to a number of web pages during the course of argument, but the point advanced by Fanatics may be made having regard to the following.

86    An example of a Fanatics landing page in May 2014 is below:

87    It will be seen that multiple products are promoted, with drop down menus displaying more options.

88    In April 2020 one page of the website was as follows (the top part of the page is depicted on the left):

89    It may be seen that the FANATICS Flag Mark appears on the top left of the page. The goods displayed bear no visible Fanatics trade marks but do display other trade marks, including a prominent Adidas logo and the names of sporting teams and sponsors. At the conclusion of the page are the words “MLS Shop: MLS Apparel and Gear from Fanatics” with the words:

Keep up with the exciting chase to for the MLS Cup this season by browsing the MLS Shop at Fanatics.com. Regardless of which MLS team you call your own, you’ll find the MLS Apparel and Gear you need to support your club 2019 MLS Jerseys in adidas styles for every club and player, like a MLS home jersey or away kit. Find all the top sellers of MLS Gear for clubs like the New York Red Bulls, Portland Timbers and Philadelphia Union. Fans can also find jerseys for their favorite players, including top stars like Zlatan Ibrahimovic and Carlos Vela or any other MLS player. Fanatics is your best match for top-rate customer service and free shipping options on officially licensed MLS Gear for your favorite club, so snatch up the best sellers and head to the pitch in team spirit.

90    Beneath these words are three columns, the third including the heading “Information” and a click-through menu for a list of items, including “FanCash Rewards” and “Fanatics Presents”. Next to this column is a trade mark for ticketmaster and the FANATICS Flag Mark.

91    This page, considered as a whole, would appear to the consumer to be promoting the sale, via the website, of goods that are not Fanatics products, but rather are shirts and other third party branded apparel offered for retail sale at a Fanatics website. That impression is confirmed by the heading “MLS Shop” and reinforced by the language in the paragraph that follows, which advises that “adidas styles” are available – drawing attention to goods not manufactured by or with the involvement of Fanatics.

92    We note that there are, or at some point were, products offered on the Fanatics websites which were described as “Fanatics Branded”, which are not the Corporate Goods. In September 2023, one page of the www.fanatics.com website was as follows (which has been cropped to show the relevant goods):

93    It may be seen that the FANATICS Flag Mark appears on the top left of the page, and three category headings are shown above the displayed goods, being “Evander Holyfield”, “Golden Boy Promotions”, and “Mike Tyson”. Five goods are displayed, including two shirts. What appears to be the product name is displayed beneath each shirt, being “Golden Boy Promotions Fanatics Branded T-Shirt – Navy” and “Golden Boy Promotions Fanatics Branded Women’s V-Neck T-Shirt – Navy” respectively. The front of each shirt contains a ‘Golden Boy’ logo, and they do not have any visible Fanatics branding.

94    On the left-hand side of the page, there is a column listing categories by which the products may be sorted. This includes a category named ‘Featured Brands’, below which are ‘Fanatics Authentic’ and ‘Fanatics Branded’.

95    Also in September 2023, one page of the www.fanatics.com website, appearing to be the search results for the term ‘cycling’ on the website, was as follows (again, cropped to show the relevant goods):

96    The first five goods appearing in the search are shirts and a hoodie, each bearing the words ‘CYCLING’ or ‘PARA-CYCLING’ and ‘TEAM USA’, accompanied by an image of a cyclist or para-cyclist (with the exception of the hoodie, which bears no image). Once again, the product name is displayed beneath each good and includes the phrase ‘Fanatics Branded’. For example, the first shirt is named “US Paralympic Cycling Fanatics Branded Radiating Victory T-Shirt – Heather Gray”.

97    Other than these first five products, the remaining goods displayed on the search page bear third-party brands both on the product and in the product name, and their product names do not include the words “Fanatics Branded”. For example, the sixth good appearing is a hoodie named ‘Piedmont Lions ProSphere Cycling Pullover Hoodie – Green”, which bears the Piedmont University logo on its front.

98    FanFirm submits that, in relation to goods such as those extracted above at [92] and [95], even though the Fanatics brand does not appear on the goods they are described as “Fanatics Branded”. FanFirm argues that there is an intermingling of these “Fanatics Branded” goods with other clearly third-party branded goods (such as those extracted above at [88]) offered on the Fanatics website.

99    We note that these “Fanatics Branded” goods do not fall in the same category as the Fanatics branded Corporate Goods, as unlike the Corporate Goods the “Fanatics Branded” goods do not visibly bear the word “Fanatics”. Rather, the words “Fanatics Branded” are used solely in the name of the product and in some instances their categorisation on the website.

100    Fanatics appeared (during argument) to accept that where it has told the consumer a good is “Fanatics Branded” on the website by way of the product name and category, that good is indeed a product of Fanatics. Fanatics argues that this establishes that the remaining goods, such as the shirts set out above at [88], are not being offered by reference to the Fanatics brand.

101    We have set out in section 2.2 above [201], [202], [214] and [220] of the primary judge’s reasons. For convenience, we repeat [220]:

The respondent invites consumers to visit its website at www.fanatics.com. At that website, goods are available for purchase under the name FANATICS as part of the domain name, displayed in page headings and in references to products. I consider that this constitutes use of the FANATICS Marks as trade marks in relation to the goods for which the applicant’s FanFirm Marks are registered, including clothing, sportswear and headgear.

(Emphasis added)

102    The difficulty with this passage is that it does not differentiate the types of use in contemplation. As we have explained, the primary judge found that the goods promoted online characterised as the Corporate Goods which included the FANATICS Marks on them infringed. In the third category (see [46] above) her Honour was considering third party licensed merchandise, being goods that were not visibly branded with the word “FANATICS”.

103    The evidence that we have surveyed above indicates that within this category are two sub-categories. The first, and vastly larger sub-category, is goods branded by third parties’ trade marks that are merely sold via the appellant’s online store. The second, much smaller sub-category, is of goods branded by third parties’ trade marks which are referred to on the website as “Fanatics Branded” goods. There is no dispute on appeal that use in the latter sub-category is infringing use. However, the appellant challenges any finding of the primary judge that may be suggested in the reasoning at [220] or the form of injunction granted that the first sub-category amounts to a trade mark use within the scope of the respondent’s trade mark registrations. That suggestion finds traction in [430] of the primary judgment. In the different context of s 122(1)(e), the primary judge considered whether FanFirm can defend an allegation of infringement of the FANATICS Word Marks in class 35 by its use of that mark in relation to “clothing” in class 25. Her Honour said at [430]–[431]:

… I see no difference between selling goods by displaying them for sale, and taking orders and payment on a website, and online retail services involving the online sale of sports merchandise.

Accordingly, I consider that the applicant’s registration of the FanFirm Word Mark in class 25 in respect of goods, including sports merchandise, includes the sale of goods online by reference to that mark.

104    For the reasons set out below, to the extent that the primary judge found that the use of the FANATICS Marks in the domain name, on the heading of the webpages and otherwise on the website to promote the retail sale of items on the website was infringing use, we consider that her Honour erred. In our view, such use did not amount to trade mark use in respect of the goods for which the FanFirm Marks were registered.

105    Sections 7(4) and (5) of the Trade Marks Act provide:

(4)    In this Act:

use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

(5)    In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

106    Section 9 of the Trade Marks Act provides:

(1)    For the purposes of this Act:

(a)    a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and

(b)    a trade mark is taken to be applied in relation to goods or services:

(i)    if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or

(ii)    if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

(c)    a trade mark is taken also to be applied in relation to goods or services if it is used:

(i)    on a signboard or in an advertisement (including a televised advertisement); or

(ii)    in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

(2)     In subparagraph (1)(b)(i):

covering includes packaging, frame, wrapper, container, stopper, lid or cap.

label includes a band or ticket.

107    The question of whether or not an impugned use of a sign amounts to use in relation to the goods or services in respect of which a trade mark is registered is a question of mixed fact and law, having regard to the particular circumstances of the case; Optical 88 at [21]. The fact that there has been use of a trade mark in relation to retail services for goods does not automatically mean that there will be use of the same mark in relation to goods; Optical 88 at [10], [21]. Although FanFirm sought in its submissions to distinguish Optical 88 on its facts, the legal proposition to which we have referred was not, as we understand it, challenged. It is, in our respectful view, plainly correct.

108    In each case it will be a question of consideration of the statutory test in the context of the goods and services in respect of which the asserted trade mark is considered. In this respect, this court is in a position on appeal to evaluate whether or not the use of FANATICS Marks on the Fanatics website, including in the domain name and in page headings, constituted use in relation to the goods which displayed no visible Fanatics branding (such as the examples described above at [86]–[97]).

109    The evidence indicates that the Fanatics websites aggregate and sell an extensive range of third party branded products. It is true that, as her Honour found at [220], Fanatics invites consumers to visit its website and acquire goods for purchase. But that invitation is to acquire a large range of apparel much of which has no Fanatics branding on it.

110    Many of the products, like the shirts set out above at [88], are plainly branded with other prominent brands including Adidas and Nike. We do not consider that a consumer is likely to perceive that the use of Fanatics branding on the website extends beyond branding relevant to the online retail sale of clothing in relation to these products.

111    Some of the products, like those set out above at [92] and [95], have no Fanatics branding on them but are named and categorised as “Fanatics Branded” on the websites. Fanatics appears to have accepted in oral submissions, and we agree, that the naming of the goods using the words “Fanatics Branded” (even if the goods themselves bear no Fanatics branding) constitutes trade mark use in relation to those products.

112    However, unless the consumer’s attention is specifically drawn to the particular products that are either the “Fanatics Branded” goods or the Corporate Goods, we do not consider that a consumer is likely to perceive that the general use of Fanatics branding on the website extends beyond branding relevant to the online retail sale of clothing. With the exception of those goods – which Fanatics accepts amounts to a use of the mark in respect of clothing – we find that Fanatics succeeds on this ground.

2.5    The goods of the same description issue

2.5.1    The submissions

113    Fanatics submits that the primary judge failed to apply the relevant matters identified in Goodman and McCormick in concluding that blankets, throws, towels, sports bags and water bottles are goods of the same description as those covered by the FanFirm Marks. It contends that the primary judge’s reasoning, specifically in relation to the finding that sports bags and water bottles are sold in the same “trade channels” as sportswear, was without a factual basis and is incorrect. FanFirm defends the reasoning of the primary judge. Ground 9 of Fanatics’ Notice of Appeal is said to be relevant to this aspect of the appeal.

2.5.2    Consideration

114    Section 120(2)(a) of the Trade Marks Act provides that a substantially identical or deceptively similar sign will infringe a registered trade mark if the sign is used as a trade mark in relation to “goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered”.

115    For the purposes of the argument before the primary judge, as considered in her Honour’s reasons in section 6.6, the question was whether blankets, towels, sports bags and water bottles were goods of the same description as goods within the following classes ([242]):

Class 24: Banners; flags (not of paper), including textile flags; woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth.

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

116    The primary judge reasoned that blankets, throws and towels are goods of the same description as some of the goods in the class 24 registration because they are “woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth” (at [245]). The reference to throws in [245] (and [243]) is an error as the Impugned Goods did not include throws. We will proceed to consider the remaining reasons by reference to blankets and towels which did form part of the Impugned Goods. We note that, notwithstanding the reasons, the declaration granted by the primary judge did not include reference to throws. We also note that the declaration by the primary judge did not include reference to flags, which were agreed to form part of the Impugned Goods and found to have infringed ([273]).

117    The primary judge concluded that sports bags are goods of the same description as sportswear, reasoning at [251]:

The nature and purpose of a sports bag is to carry sporting goods or sportswear and accompanying sports accessories, and sports bags are likely sold in the same shops (or “trade channels”) as sportswear. Thus, I am satisfied that sports bags are goods of the same description as the goods for which the applicant’s marks are registered in class 25.

118    Similarly, because water bottles are frequently used by people playing sport or sports fans watching sport and because water bottles are often sold alongside sports apparel and sporting equipment at sports retailers, the primary judge concluded that water bottles are goods of the same description as “sportswear” (at [252]–[253]).

119    In Goodman, Burley J said of the process involved in ascertaining whether goods are of the same description:

279    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592 at 606 the High Court (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) observed that there may be many matters to be considered in determining whether one product is a good of the same description as another. One is the inherent nature of the respective goods. Others include: their respective uses; the trade channels through which they are each sold; their origin; their purpose; whether they are produced by one and the same manufacturer or distributed by the same wholesale houses; whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers; and whether they are regarded by those engaged in their manufacture and distribution as belonging to the same trade. No single consideration is conclusive in itself. The classifications contained in the schedules to the Trade Marks Act are not a decisive criterion.

280    Broadly, it may be said that the authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. In McCormick & Company Inc v McCormick [2000] FCA 1335; 51 IPR 102 Kenny J said of the last of these (at [18]):

... it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94 …

120    After eschewing an approach that involved looking at the outcome of other cases, his Honour then said:

284    In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265; 42 FCR 227, where sheets and towels were found to be goods of the same description at 241, Burchett J said of s 23(2) of the Trade Marks Act 1955 (Cth) (which allowed the Court to refuse an application to remove a trade mark registration for non-use in relation to any goods) at 240:

[The object of s 23(2)] seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.

285    This passage was quoted with approval by the Full Court in Gallo (FC) at [71]; see also MID Sydney Pty Ltd v Australian Tourism Company Ltd [1998] FCA 1616; 90 FCR 236 (Burchett, Sackville and Lehane JJ) at 243-244; Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39; 149 IPR 1 (Stewart J) at [29]; Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530 (Stewart J) at [187].

286    Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.

121    The primary judge, in finding that blankets and towels are goods of the same description as the goods identified in the class 24 registration, considered that such things are made of the same materials. No consideration was otherwise given to the nature of the goods, the uses and the trade channels through which they are sold. In our view it is necessary first to consider the scope of the registration in question and then to make the evaluation suggested by the authorities.

122    The first finding of the primary judge concerned the class 24 goods, specifically “woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth”. This is not a class directed to all finished items made from these materials, but rather to the raw materials themselves. By contrast, towels and blankets are finished items. We would consider that the fact that a product, such as a towel, is made of one or more of the materials listed in the class 24 registration is not, of itself, sufficient to form a conclusion that the product falls within that class. If that were to be the case then, as Fanatics submits, wooden spoons would be goods of the same description as cricket bats. In this regard, we consider that the nature of the goods is quite different. So too are the uses to which they are put. Towels and blankets may be made from the class 24 goods, but they have an entirely different use. Turning to the third consideration, there was apparently no evidence going to the trade channels through which the goods are bought and sold. FanFirm advanced no contention to support the primary judge’s reasoning in this regard on any other basis than that found by her Honour. In the context of infringement, the onus lies on the trade mark owner to establish goods of the same description. We therefore consider that the primary judge erred in concluding that FanFirm had discharged that onus.

123    The second and third findings of the primary judge were that sports bags and water bottles are goods of the same description as “sportswear”, noting that for the former, the purpose of a sports bag is to carry sporting goods including sportswear and accessories and that sports bags and sportswear are likely to be sold in the same shops. For water bottles, the primary judge found that they are likewise used by people playing or watching sport and that they are sold alongside sports apparel and sporting equipment. The primary judge was entitled to take judicial notice of the manner in which ordinary items are bought and sold. Her Honour took account of the uses of goods and the outlets where they may be sold. We consider implicit in her Honour’s concisely expressed reasons that she considered the likelihood that consumers, faced with such goods bearing the same mark, would be likely to be confused. In this regard, Fanatics has not established that the primary judge erred.

3.    APPEAL FROM REJECTION OF FANATICS’ AFFIRMATIVE DEFENCES

3.1    Introduction

124    Fanatics appeals from a number of findings of the primary judge rejecting affirmative defences raised in answer to the trade mark infringement claims. Although traversing grounds 1– 4, 7, 8 and 11–13 of the Notice of Appeal, the appeal points may be summarised as contentions that the primary judge erred in finding that:

(1)    Fanatics was not entitled to the defence of good faith use of its corporate name pursuant to s 122(1)(a)(i) (good faith use of own name issue) (ground 11);

(2)    Fanatics was not entitled to a defence raised by reference to ss 122(1)(f) and (fa) to the effect that, by reason of the honest concurrent use provision in s 44, Fanatics would obtain registration of the FANATICS Marks in respect of goods found to infringe (honest concurrent use issue) (grounds 1, 2, 3, 4, 12 and 13); and

(3)    had Fanatics succeeded in the honest concurrent use issue, the notional trade mark would not have obtained registration because it would have been successfully opposed pursuant to s 58 or s 60 (the s 58 and s 60 issues) (ground 12).

125    The availability of these defences turned on whether the primary judge correctly concluded that Fanatics had not demonstrated good faith use of the FANATICS Marks.

126    Section 122(1)(a)(i) provides:

(1)    In spite of section 120, a person does not infringe a registered trade mark when:

(a)    the person uses in good faith:

(i)    the person’s name or the name of the person’s place of business;

127    Sections 122(1)(f) and (fa) provide:

(1)    In spite of section 120, a person does not infringe a registered trade mark when:

…

(f)     the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it; or

(fa)     both:

(i)    the person uses a trade mark that is substantially identical with, or deceptively similar to, the first‑mentioned trade mark; and

(ii)    the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it;

128    Sections 44(1) and (3) provide:

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)    the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)    a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

…

(3)    If the Registrar in either case is satisfied:

(a)    that there has been honest concurrent use of the 2 trade marks; or

(b)    that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(Notes omitted)

129    Section 58 provides:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

(Notes omitted)

130    Section 60 provides:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)    another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

(Notes omitted)

131    The primary judge addressed these points in sections 7.1 and 7.3 of her reasons.

3.2    The primary judge’s findings

132    In section 7.1 of her reasons, the primary judge set out the legal principles relevant to the application of the good faith use of own name defence under s 122(1)(a)(i) and made the following relevant findings:

(1)    Until late 2010 or early 2011, Fanatics was using its longstanding corporate name FOOTBALL FANATICS. It changed its name to FANATICS around December 2010 ([286]).

(2)    In August 2010, Fanatics opposed FanFirm’s trade mark applications for the FanFirm Word Mark and FanFirm Device Mark in class 25 ([287]).

(3)    Accordingly, at the time that Fanatics adopted its new name, it knew of FanFirm, its business and its use of the FANATICS Word Marks ([287]).

(4)    Fanatics did not put on evidence from any person in its organisation as to the holding of an honest belief that no confusion would arise from its adoption and use of the FANATICS Marks in Australia, instead relying on a Branding Update presentation dated 4 October 2010 to explain the adoption of the marks ([288]).

(5)    FanFirm and Fanatics are trade rivals in Australia, with both businesses involving the sale and supply of sports merchandise to sports fans. Fanatics was sufficiently aware of FanFirm and its use of its marks in Australia to lodge oppositions to its grants ([293]).

(6)    Fanatics led evidence from two senior employees, Mr Brian Swallow and Mr Ravid, neither of whom gave evidence as to the holding of an honest belief that there would not be any confusion with the FanFirm Marks following Fanatics’ adoption of its new name ([294]). Nor did any other person from Fanatics come forward to give evidence of holding such a belief. This was telling ([296]). The onus was on Fanatics to show that there was an honest belief that there would be no confusion ([297]).

(7)    It was necessary for such evidence to be given, having regard to the authorities and the circumstances of this case, which included that the respective marks are the same, the similarity of the goods, the overlap of the businesses and Fanatics’ awareness of the FanFirm Marks ([296]).

133    The primary judge concluded that Fanatics’ knowledge of FanFirm and the FanFirm Marks at the time that it changed its corporate name and adopted its current name, and its failure to lead any evidence of an honest belief that no confusion would result, led her to conclude that the defence failed in respect of the FANATICS Word Marks ([300]). Her Honour noted that this defence would not in any event be available for the use of the FANATICS Flag Mark ([301]).

134    Fanatics appeals from this reasoning and challenges many of the factual findings included in points (1)–(7) above.

135    Her Honour turned to the defences under ss 122(1)(f) and (fa) in section 7.3 of her judgment. Those defences were advanced by Fanatics on the basis that ss 44(1) and (3) would apply such that by reason of its honest concurrent use of the FANATICS Marks, those marks would hypothetically have obtained registration ([317]–[318]). FanFirm responded by advancing a hypothetical opposition to these hypothetical trade mark applications on the basis of ss 58 and 60 of the Trade Marks Act.

136    The primary judge rejected the defence raised under s 44(3) on several bases. She noted that she would reach the same conclusion regardless of whether the defence was applied at the date of the alleged infringing conduct or at the date it was raised, and therefore Fanatics’ submissions on the correctness of the decision in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6; (2018) 259 FCR 514 were not relevant ([324]).

137    First, she considered, for the same reasons put forward in relation to the “own name” defence, that Fanatics had not used its name in good faith such that there had not been honest concurrent use of the FANATICS Marks by Fanatics ([329], [331]). In this regard the primary judge held at [331]:

The adoption of the respondent’s new corporate name and mark occurred with knowledge of the applicant and its mark, and the goods for which registration of that mark was sought. Whilst I do not consider that the respondent adopted the FANATICS Marks in order to divert business or goodwill from the applicant, it cannot be described as “independent adoption”. Further, as I have said above, despite leading evidence from two senior employees of the respondent, the respondent led no evidence as to the existence of any honest belief that there would be no confusion as a result of the respondent adopting the same mark as the applicant’s existing marks. Thus, the two hallmarks of honesty are absent from the respondent’s adoption of the FANATICS Marks.

138    Accordingly, it was said that the terms of s 44(3) could not apply. Fanatics appeals from that decision on the same basis as it appeals from the reasons given earlier in relation to the good faith use of own name issue.

139    Secondly, even if s 44(3) had applied, the primary judge considered that FanFirm could have successfully opposed Fanatics’ application for registration on the basis of s 58, namely that Fanatics was not the owner of the FANATICS Marks because of FanFirm’s first use of its FanFirm Word Mark, which is substantially identical to the FANATICS Word Marks in respect of substantially overlapping goods ([335], [336]).

140    At [337] the primary judge also found:

The same conclusion applies to the FANATICS Flag Mark in relation to goods which I found to be deceptively similar to the FanFirm Word Mark.

141    However, FanFirm does not seek to defend this finding on the question of ownership in relation to the FANATICS Flag Mark.

142    Thirdly, the primary judge found that FanFirm could successfully have opposed Fanatics’ hypothetical application for registration on the basis of s 60, namely that as at December 2010 FanFirm had a reputation in Australia in the FanFirm Word Mark with respect to sports merchandise, including clothing such as t-shirts, footwear, shorts, trousers, headgear, and sporting tour and event services such that by reason of that reputation, the use by Fanatics of the FANATICS Marks would be likely to deceive or cause confusion ([339]–[ 346]).

143    On appeal, Fanatics challenges the factual findings of the primary judge under ss 58 and 60, and also contends that the primary judge was wrong in law to find that by reason of their operation, the defence under s 44(3) was not available if oppositions under ss 58 and 60 would in any event succeed.

3.3    The submissions

144    Fanatics challenges the primary judge’s findings of fact to the effect that Fanatics had not made ‘honest’ use of its own name on the basis that her Honour failed to take into account that for years prior to 2010 Fanatics had used many marks which contained “Fanatics” with other descriptors, and failed to take into account her own findings (at [331], [409] and [292]) that Fanatics did not intend to divert business or goodwill from FanFirm or consider FanFirm to be a rival, and that the parties had co-existed in Australia until 2020 without any evidence of confusion. Fanatics submits that the primary judge also erred in failing to have regard to detailed evidence of the process which led it to transition to the use of the name “Fanatics” and failed to recognise that there was no evidence that Mr Swallow, the senior Fanatics employee called to give evidence, was aware of FanFirm at any time in 2010. It submits that contrary to findings at [123] and [124] of the primary judgment, there was evidence of Fanatics’ substantial sales in Australia and also unchallenged evidence demonstrating the substantial inconvenience that a re-brand would cause. Furthermore, Fanatics submits that the primary judge erred in concluding that it and FanFirm operated in the same broad field and were trade rivals (at [138], [293], [411] and [459]). In this context, Fanatics contends that the primary judge wrongly relied on the decision in Anheuser at [283], [292], and [293], which it contends may be distinguished on its facts.

145    Importantly, Fanatics contends that the primary judge erred in concluding at [145] and [146] that Fanatics had commenced using the FANATICS Marks in December 2010 when her earlier findings demonstrated that Fanatics had commenced using the marks by at least June 2010. Fanatics contends that this led to a further error, namely the primary judge’s finding that Fanatics had knowledge of FanFirm prior to using the mark in Australia when Fanatics had lodged an opposition to the registration of the FanFirm Mark in August 2010.

146    In relation to the ss 58 and 60 issues, Fanatics contends that the primary judge erred, in the context of s 58, in finding that FanFirm first used “Fanatics” in relation to online retail services and erred, in the context of s 60, in concluding that FanFirm had a reputation in relation to sports merchandise which was separate to and not an adjunct of its sports and events tour business. Further, Fanatics submits that the primary judge erred in finding that the outcome of oppositions under ss 58 or 60 could have a bearing on the findings in relation to the honest concurrent use defence under s 44(3), citing Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 at [645]–[649] and contending that McCormick was wrongly decided in this respect.

147    FanFirm defends the decision of the primary judge.

3.4    Consideration – s 122(1)(a)(i) Good faith use of own name

148    Section 122(1)(a)(i) relevantly provides that in spite of s 120, a person does not infringe a registered trade mark when the person uses in good faith the person’s name or the name of the person’s place of business. The primary judge correctly observed that the words “in spite of” make plain that an otherwise infringing use may be excused if the conditions of s 122(1) are satisfied, citing Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; (2018) 354 ALR 353 (Burley J) at [296].

149    The otherwise infringing use under consideration was the use by Fanatics of its corporate name, which is Fanatics, LLC. However, corporate indicia (the “LLC”) may be set aside for the purpose of this defence; Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380; (2010) 275 ALR 526 (Yates J) at [160] (Optical 88 SJ). In this context, it may be noted that the defence under s 122(1)(a)(i) is not available for any use beyond the use of Fanatics’ own name. As such, the defence can not apply to any use by Fanatics of the FANATICS Flag Mark, as the primary judge noted at [301].

150    The basal requirement of s 122(1)(a)(i) is that the person use the name in good faith. Use in good faith is taken to mean “honest” use: Optical 88 SJ at [161], citing Baume & Co Ltd v AH Moore Ltd [1958] Ch 907, 921 where the Court of Appeal (Jenkins, Romer and Ormerod LJJ) considered the meaning of “honesty” in the context of “bona fide” use within s 8 of the Trade Marks Act 1938 (UK):

The next point which was discussed before us was as to the meaning of ‘bona fide use’ in section 8. Danckwerts J. said that he understood that ‘bona fide’ normally “means the honest use by the person of his own name, without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader”; and in that sense he acquitted the defendants of any want of bona fides in the present case. We agree with the judge’s definition of the term ‘bona fide’ and we see no reason to attribute a different or special meaning to the phrase in its context in section 8. The mere fact in itself that a trader is using his own name which too closely resembles a registered trade name of which he is aware does not prevent the user from being ‘bona fide’, provided that the trader honestly thought that no confusion would arise and if he had no intention of wrongfully diverting business to himself by using the name. The truth is that a man is either honest or dishonest in his motives; there is no such thing, so far as we are aware, as constructive dishonesty. In our judgment, if a trader is honestly using his own name, then no action will lie for infringement of trade mark, and any rival trader who thinks himself aggrieved must sue, if at all, for passing off.

(Emphasis added)

151    The primary judge extracted the emphasised passage above in her reasons at [281], correctly noting that it has been cited with approval on many occasions, one of which was Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Py Ltd [1991] FCA 402; (1991) 30 FCR 326 (Lockhart, Burchett and Gummow JJ). In that case, Gummow J considered s 64(1)(b) of the Trade Marks Act 1955 (Cth), which concerned the use in good faith by a person of a description of the character or quality of goods or services. His Honour distinguished the good faith required from that used for expungement for non-use, which concerned whether there is a real or genuine use in a commercial sense, rather than colourable activity and “token” use designed to lead trade rivals to think that the owner was using its mark in a way that gave it the protection of the legislation, from the requirement in s 64(1)(b) (at [48]). In s 64(1)(b) the motivation of the user was to be considered to determine if it was honest (at [50]–[52]). In that case, the question was whether the use by the infringer was intended to impair the reputation which the registered owner was seeking to obtain under its mark by rendering generic the word comprising the mark. The primary judge had found that the decision to use the word “Caplets” was prompted by an international strategy to make the word into a generic word to the detriment of the trade mark owner, if it turned out to be the case that otherwise there would be an infringing use (quoted by Gummow J at [56]). That was an ulterior use that did not conform with good faith. Gummow J (Lockhart J agreeing at [77]) found that the finding of ulterior motive was sufficient, fraudulent intention in the common law sense not being required (at [57]).

152    The primary judge also noted that in Anheuser at [216]–[218] it was held that while there was no fraud or conscious dishonesty present, the fact that the respondent knew about its competitor’s registered trade marks and reputation in Australia meant that the respondent could not hold the view that no confusion would arise. No witness in Anheuser deposed to their honest belief that no confusion would arise, in circumstances where the likely existence of a reputation of its rival in the territory was known ([216]). The primary judge said of Anheuser at [283]:

In circumstances where the likely existence of a reputation of its rival in the territory was known, his Honour observed at [216] that “if it had been positively believed that there would be no confusion, I think someone would have said so”. Allsop J continued at [216]:

It is hard to see how he and his company could be sure, or could hold the view, that no confusion would arise. They have not persuaded me that anyone did hold that view. In these circumstances, I think it can be said that, though the first respondent and Mr Bocek were not consciously dishonest, the first respondent did not use, and does not intend to use, its own name in good faith for the purposes of s 122 of the TM Act.

153    On appeal, Fanatics challenges the primary judge’s application of this reasoning.

154    The essential factual findings of the primary judge are in section 4.2 of the judgment. There, her Honour refers to the evidence and finds that Fanatics is and was an online retailer for officially licensed sports merchandise and apparel via e-commerce stores ([100]) and that Fanatics owns “many thousands of domains”, including www.fanatics.com, www.footballfanatics.com, www.fanatics-intl.com and www.fanatics.co.uk ([103]). Her Honour refers to the corporate history of Fanatics, noting that it was formed as “Football Fanatics Inc” in 1995, changed its name to “Fanatics, Inc” on 7 December 2010, and that on 20 December 2021 it settled on its current corporate name “Fanatics LLC” ([105]).

155    It was the change of the name from “Football Fanatics” to “Fanatics” that was the focus of the s 122(1)(a)(i) dispute. In relation to this, in section 4.2.2 the primary judge referred to the evidence of Mr Swallow, who explained that in about 2001 or 2002 Fanatics began to see the word “football” in its online presence as a constraint on growth into other sports. In about 2004 or 2005 Fanatics registered several sports-related domain names which added other names to the word “fanatics” including “www.fastballfanatics.com” (2006) and “www.faceofffanatics.com” (2007) and the like ([111]).

156    The primary judge said at [112]–[116]:

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

113    However, from late November 2011 onwards, the www.fanatics.com 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 www.footballfanatics.com domain name so that when the www.fanatics.com domain name became independently active, it would have sufficient commercial momentum.

114    In 2017, the respondent acquired www.fanatics-intl.com which also operates as a free-standing online retail store.

115    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.

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

157    Fanatics is critical of the finding that the name of the brand was changed on 7 December 2010 and contends that the primary judge ought to have found that the change took place earlier on 10 June 2010 on the basis that from mid-2010 the logo that appeared in Fanatics’ footballfanatics.com website banner included alternatives that prominently featured the word “Fanatics”, as depicted in [112] of the judgment, including “Fanatics” by itself.

158    However, that submission is not consistent with the manner in which the case was run before the primary judge, where Fanatics presented its argument on the basis that the website so depicted as including the banner of “Fanatics” alone in June 2010 was an early part of a “process of experimentation with the different brands” and that Fanatics was starting to “play around with the alternatives it might pursue” with other variants being tried.

159    Consistent with the approach taken at trial, the evidence of Mr Swallow was that between November 2009 and November 2011, Fanatics re-directed its fanatics.com domain to its Football Fanatics e-commerce store located at the footballfanatics.com domain. Mr Swan’s affidavit also states that “[o]n various dates between mid-2010 and mid-2011” (emphasis added), Fanatics operated the Football Fanatics e-commerce store under and by reference to the marks reproduced in her Honour’s reasoning at [112] (above). Mr Swan gave further evidence that in around 2010 he began to consider a “branding update” for the Fanatics e-commerce stores and wider business along with other key executives of the company. One of the options was to use “Fanatics” as the name, but as Mr Swan noted in his affidavit, another of the executives expressed concern that the word could be associated with other types of fanaticism such as zealots, which was not what was trying to be conveyed. They accordingly wanted to test this and other brands in the market and hired external consultants for this purpose, considering FANATICS CENTRAL, FANATICS WORLD and FANATICS BRANDS as alternatives. A document entitled “FOOTBALL Fanatics branding update” (that is, the Branding Update) dated 4 October 2010 was provided to Mr Swan by another executive.

160    This evidence supports the finding of the primary judge at [115] that it was not until the end of 2010, on 7 December, that the name of Fanatics was changed by dropping “Football” and using only “Fanatics”, and her Honour’s finding at [112] that the logos that appeared in the website banner from mid-2010 to mid-2011 varied. Fanatics has not demonstrated error in this regard.

161    One consequence of these findings is that when Fanatics in August 2010 lodged oppositions to FanFirm’s applications to register the FanFirm Marks, it was several months before Fanatics changed its corporate name from “Football Fanatics” to “Fanatics” ([134]). The evidence does not reveal the grounds of the opposition or the evidence, if any, relied upon by Fanatics and the oppositions were withdrawn in June 2013. However, the fact of lodgement of the oppositions led the primary judge to conclude (at [287]) that at the time when Fanatics was considering its change of name, it knew of FanFirm, its business and its use of the FanFirm Marks.

162    Fanatics challenges the primary judge’s finding that it knew of FanFirm’s business and use, submitting that the fact of opposing a trade mark does not per se provide evidence of knowledge of a business. However, that submission on appeal is also not consistent with the manner in which the trial was conducted, where senior counsel for Fanatics accepted that as a matter of corporate knowledge, the parties were aware of each other at the time the mark was opposed. That concession was in our view sensibly made. Fanatics was operating as an online business. It would beggar belief that, in the process of opposing a trade mark for the word FANATICS (at a time when it was considering using that word as the name for its business and its brand) representatives of Fanatics did not have an awareness of what the FanFirm business was doing. Accordingly, we reject the submission advanced on appeal that the primary judge erred in inferring knowledge on the part of Fanatics of FanFirm’s business. Even without the concession, the inference was plainly open to the primary judge.

163    In an aligned submission, Fanatics contends that the primary judge erred in finding that Fanatics and FanFirm were at the time operating in the “same broad field”. The primary judge found at [293] that the parties were trade rivals in Australia and “at their heart” both businesses entailed the sale and supply of sports merchandise to sports fans. Her Honour found that Fanatics was “sufficiently aware of [FanFirm] and its use of its mark in Australia to lodge an opposition to the grant” of the FanFirm Marks. Although aspects of the parties’ businesses differed, her Honour’s factual findings, including that since 2002 goods were promoted for sale on the FanFirm websites (at [45], [47] and [487]), support that conclusion and were not, in our respectful view, made in error. This submission is also considered below at section 4.5.

164    Fanatics next contends that the primary judge erred in failing to find honest use within s 122(1)(a)(i) because prior knowledge of a competing mark does not necessarily preclude a finding of honesty. This was the case advanced below and to which the primary judge attended in section 7.1 of her reasons.

165    We accept that a defence of good faith use of a corporate name will not necessarily be precluded by the defendant having prior knowledge of a deceptively similar or substantially identical name used by another. Indeed, in the passage in Baume extracted above, this circumstance is contemplated, with the proviso that the Court be satisfied that the trader honestly thought that no confusion would arise and they had no intention of wrongfully diverting business to themselves by the use of the name (noting however that a lack of intention to divert business or a lack of awareness of confusion are necessary for but not determinative of use in good faith, as such a finding must also have regard to the surrounding circumstances; Killer Queen, LLC v Taylor [2024] FCAFC 149; (2024) 306 FCR 199 at [167]–[168]). The facts of McCormick, cited by her Honour at [328] (in the context of honest concurrent use), provide an example of such a defence succeeding.

166    However, in evaluating the evidence, the primary judge was not affirmatively satisfied by Fanatics that the defence was available. This was because Fanatics knew of FanFirm and its use of its marks at the time it adopted its name, and did not lead direct evidence from any person in authority to say that they honestly believed that no confusion would arise and that Fanatics had no intention of wrongfully diverting business to itself by using that name, citing Baume and Anheuser (at [292]–[300] of the primary judgment). Her Honour noted that “retrospective speculation” as to this belief was no substitute for such evidence ([299]).

167    On appeal, Fanatics sought to persuade us that the primary judge erred in this assessment. It referred variously to evidence of the long history of Fanatics using the word “Fanatics” in conjunction with other words, including in domain names such as ”www.fastballfanatics.com”, “www.faceofffanatics.com”, “www.fightingfanatics.com”, and “www.surffanatics.com”, and of the use of “Fanatics” as sometimes a more prominent part of a two or three word combination, with or without a logo. It also referred to the Branding Update where alternative names were considered for selection, noting that a “competitive analysis” reported in that document did not include within the online competitors FanFirm or its business. Fanatics submits on appeal that there was a “natural progression” of names from those marks that incorporated the use of FANATICS with other words to the use of FANATICS alone. It submits that the primary judge ought to have inferred, without the need for further evidence on the subject, that the conduct of Fanatics in choosing its name was an utterly ordinary commercial and logical decision which “bespeaks honesty”, citing several decisions where, on their facts, such a finding was made, despite prior knowledge of a conflicting mark, without affirmative evidence of the type that the primary judge found to be missing, including Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company [2018] FCA 1014; (2018) 262 FCR 76 at [266] and Re Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147 at 159–160.

168    However, in our view, it cannot be said that the primary judge fell into error in finding that the requirements of good faith use were not established on the evidence. In evaluating the evidence, the question posited by Baume and applied in many cases since is whether the party relying on the defence has established that they honestly thought that no confusion would arise. This is to be judged from all of the relevant surrounding circumstances (Killer Queen at [165]–[167]; Firstmac Limited v Zip Co Limited [2025] FCAFC 30 (Katzmann and Bromwich JJ) at [65]). The evidence before the primary judge was that there was corporate knowledge within Fanatics of FanFirm and its use of “Fanatics” in its business. Faced with the use of identical marks in respect of each business, and possessed of the knowledge of both businesses, the natural question is: on what basis may it be said that a relevant decision maker within Fanatics honestly believed that there would be no confusion? Fanatics submits, in effect, that it ought to be inferred that this could have been for one of several benign and honest reasons, including because the businesses operated in different spheres, because the decision makers were not focussed on the Australian operations of FanFirm, or because it was simply a natural and logical corporate decision to move from “Football Fanatics” to “Fanatics”.

169    However, in the circumstances of the present case, the primary judge was not content to make any such inference. Contrary to the submissions advanced by Fanatics, we do not consider that the primary judge considered that the sine qua non of the defence under s 122(1)(a)(i) is the provision of affirmative evidence of honesty. Indeed, in referring to Dunlop, where no such evidence was called, it is apparent that her Honour was aware that it is not. However, in the circumstances of Fanatics’ awareness of the FanFirm business in Australia and its decision nonetheless to adopt the same name, her Honour considered that it behoved Fanatics to give affirmative evidence to the effect that it thought that no confusion would arise (and expose such evidence to cross examination).

170    We do not consider that Fanatics has established error in this respect. The onus lies on the party raising these defences to establish that good faith or honest concurrent use of the mark has taken place: Killer Queen at [198]; Firstmac (Perram J) at [3]. The nature of that legal onus of proof carries with it the prospect that a party may fail to show that their use of the relevant mark was an honest use without any corresponding finding by the Court that the use was in fact dishonest. The Court, in other words, must be affirmatively satisfied that the use was an honest one and its failure to be so satisfied does not necessarily entail that it is affirmatively satisfied that the use was dishonest; Firstmac at [3] (Perram J).

171    Accordingly, we do not consider that this ground of appeal is made out.

172    Two further points arise. In its submissions, Fanatics contends that in [292] the primary judge made an affirmative finding that Fanatics did not consider FanFirm to be a trade rival, which supports a conclusion of honesty of use. The relevant passage is:

292    It was apparent from the respondent’s submissions, and the absence of any mention of FanFirm in the Branding update, that the respondent did not consider FanFirm to be a trade rival or competitor at the time it adopted the new corporate name. The respondent sought to distinguish the decision in Anheuser on the basis that evidence of an honest belief was only required in the case of trade rivals.

293    However, I consider that the applicant and the respondent are trade rivals in Australia, at least in parts of their businesses. At their heart, both the applicant and the respondent’s businesses entail the sale and supply of sports merchandise to sports fans. Furthermore, it was the respondent’s knowledge of the applicant’s get up and reputation that was essential in Anheuser. The respondent in this case was sufficiently aware of the applicant and its use of its mark in Australia to lodge an opposition to the grant of the applicant’s trade mark.

173    Although one reading of [292] might suggest a finding that Fanatics did not at the relevant time consider itself to be a trade rival, we consider that a better interpretation in the context of the paragraph that follows is that it was Fanatics’ submission that it did not consider itself to be a trade rival. The primary judge’s response to at [293] was to reject that submission and find that the two parties are trade rivals and that the respondent was aware of Fanatics sufficiently to lodge its opposition to the marks. That is consistent with the primary judge’s earlier finding (at [287]) that Fanatics knew of the FanFirm business and her Honour’s repetition at [296] that the name was selected with the knowledge of the FanFirm Marks and business. That being so, it is not necessary for us to consider this aspect of ground 2 of the Notice of Contention.

174    Fanatics also submits that the primary judge made findings later in her reasons that are inconsistent with her conclusion that the s 122(1)(a)(i) defence must fail. In this regard, they point to [331] where the primary judge said:

Whilst I do not consider that the respondent adopted the FANATICS Marks in order to divert business or goodwill from the applicant, it cannot be described as “independent adoption”.

175    They also point to [409] where she said:

Whilst in the present case the respondent knew of the applicant and its FanFirm Word Mark (having opposed its registration), I have not found that the respondent was motivated in its choice of a new corporate name by a desire to leverage off the existing reputation of the applicant in relation to sporting merchandise.

176    Fanatics submits that these findings are antithetical to the proposition that there was not honesty. However, the submission tends to conflate two concepts, the use of the mark and the choice of the mark. The finding of the primary judge, read in context, is that Fanatics did not choose the mark for the purpose of diverting business from FanFirm. That is apparent from its flirtation with the word FANATICS from the early 2000s and its occasional application of it in its banner headlines. However, the primary judge’s concern under s 122(1)(a)(i) was not only with the honesty of the choice, but the decision to use the name in Australia, notwithstanding awareness of the FanFirm business. We see no inconsistency in these findings. Whilst in some authorities, of which Re Parkington & Co (1946) 63 RPC 171 is one, emphasis may be placed on the circumstances in which the impugned trade mark was first adopted, which led Romer J to say “[i]f the user in its inception was tainted it would be difficult in most cases to purify it subsequently” (at 182), the circumstances of adoption do not exhaust the possibilities. An innocent choice of a name in the United States may be then tainted when it comes to using a mark after that choice, if the decision to use the mark in Australia is taken with knowledge of prior use in Australia of the same name (and considering the surrounding circumstances). This aligns with the principle as stated in Anheuser at [217] that a finding of good faith is not satisfied by a conclusion of a lack of fraud or lack of conscious dishonesty; the primary judge’s findings that Fanatics did not consciously adopt the mark to divert business or goodwill are not inconsistent with her finding that there was not honesty. We also note that, as discussed above at [165], a lack of intention to divert business is not itself determinative of use in good faith: Killer Queen at [167]–[168]. It was open to the primary judge to find that Fanatics did not intend to divert FanFirm’s business to it, but despite this with regard to the surrounding circumstances find that it was still not using the mark in good faith.

3.5    Consideration – ss 122(1)(f) and (fa) and s 44(3) Honest concurrent use

177    The defences under ss 122(1)(f) and (fa) concern the hypothetical question of whether the respondent person who has infringed a trade mark would, had they applied to register that mark, or a mark that is substantially identical with or deceptively similar to that mark, have obtained registration of it. Fanatics argued that it would have successfully obtained registration of the FANATICS Marks for the infringing uses of those marks in relation to the Infringing Goods ([317]), being clothing, headgear, sportswear, sports bags, scarves, water bottles, towels, flags, footwear and blankets in classes 24 and 25. Although for the reasons given above in section 2.5.2 we have determined that the decision of the primary judge in respect of towels and blankets should be overturned, we proceed to consider these defences in relation to all of the Infringing Goods. In making this argument, Fanatics submitted that it could overcome the barrier to registration under s 44(1) through the honest concurrent user provision in s 44(3).

178    Section 44(1) essentially provides that subject to ss 44(3) and (4), an application for the registration of a trade mark in respect of goods must be rejected if the applicant’s trade mark is substantially identical with or deceptively similar to a trade mark registered by another with an earlier priority date in respect of similar goods or closely related services. There was no dispute before the primary judge that the FanFirm Word Mark, which has a priority date of 2 April 2008, is substantially identical to the FANATICS Word Marks ([223]). The primary judge also found that the FANATICS Flag Mark was deceptively similar to the FanFirm Word Mark ([237]), and this was not challenged on appeal. Accordingly, the FanFirm Word Mark serves to block any registration under s 44(1), subject to the application of s 44(3) (s 44(4) not being relied upon in the present case).

179    Section 44(3) relevantly provides that if the court is satisfied that there had been “honest concurrent use” of the two marks, it may accept the hypothetical application for registration, subject to any conditions or limitations that it thinks fit to impose.

180    The substantial question before the primary judge was whether there had been honest concurrent use of the marks. In this respect, the circumstances of Fanatics’ adoption and use of the FANATICS Marks came under scrutiny in the same way as under the defence under s 122(1)(a)(i) (but notably, only in respect of their use in relation to class 24 and 25 goods, being the category in which the hypothetical ss 122(1)(f) and (fa) registration was sought, as was recognised by her Honour at [333]).

181    The primary judge determined that for the same reasons that she had concluded that Fanatics had not used its name in good faith for the purposes of the defence under s 122(1)(a)(i), there had not been honest concurrent use of the FANATICS Marks (at [329]) and accordingly the defence failed.

182    In its submissions on appeal, Fanatics tended to obscure the distinction between its challenge to her Honour’s finding under s 122(1)(a)(i) (good faith use of own name issue) and the defence raised under ss 122(1)(f) and (fa) by reference to s 44(3). As we have noted, the former concerns the good faith use of Fanatics’ own name which would otherwise amount to infringing use. The latter concerns good faith use of a trade mark in relation to goods or services (which need not also be the name of the alleged infringer), specifically in this instance use in relation to the Infringing Goods in classes 24 and 25.

183    As we understand the submission, Fanatics contends that the primary judge erred in finding that Fanatics had first commenced using “Fanatics” as a mark in December 2010, and contends that the primary judge should have concluded that the first use by it of the word “Fanatics” in relation to goods or services as a trade mark was June 2010. In this regard, it points to the use of the various alternative banners on the website used from mid-2010 onwards, acknowledged by the primary judge at [112]. However, the evidence does not rise to the point where it may be said that the occasional use of the word “Fanatics” in a banner on a website amounted to use of that word in relation to goods of the type that have been found to infringe in classes 24 and 25 (consistent with our findings on use in section 2.4.2 above). We do not think that in this regard Fanatics has demonstrated error.

184    Fanatics submits that the appropriate time to consider the defence of honest concurrent use is at the time the honest concurrent use defence is raised, which is when the defence is filed. That submission was determined adversely by the Full Court in Firstmac which upheld the finding in Anchorage that honest concurrent use is assessed at the time of the first infringing conduct, being the first use: Firstmac at [3] (Perram J) and [74]–[75] (Katzmann and Bromwich JJ). The consequence of this is that Fanatics’ ss 122(1)(f) and (fa) defence (and the supporting s 44(3) honest concurrent use argument) is assessed as if the hypothetical application for registration of the FANATICS Marks in relation to the Infringing Goods was made at the time of the first infringing conduct, being December 2010 at the earliest.

185    For the reasons set out above, Fanatics has not dislodged the primary judge’s finding that the first use of the FANATICS Marks in relation to the Infringing Goods took place after Fanatics chose FANATICS to be its corporate name in December 2010 ([144]–[145]). Accordingly, her Honour’s finding as to the honesty of that use is determinative of the availability of the defence and this aspect of the appeal must fail.

3.6    Application of s 58 and s 60 in the context of ss 122(1)(f) and (fa)

186    Having reached the conclusion that Fanatics’ appeal fails insofar as concerns the application of s 44(3), it is unnecessary to address its appeal from the decision of the primary judge to the effect that the primary judge erred in finding that the ss 58 and 60 grounds of opposition would succeed against a notional mark allowed under s 44(3). However, for completeness we address some of these matters below.

187    To give this context in the broader infringement proceeding, it will be recalled that ss 58 and 60 were raised by FanFirm as a fifth and sixth move on the chess board. First, FanFirm alleged infringement of its FanFirm Marks. Secondly, Fanatics denied that it had engaged in use as a trade mark so as to infringe under s 120. Thirdly, Fanatics raised defences to infringement under ss 122(1)(a)(i) and 122(1)(e). Fourthly, Fanatics raised another defence to infringement under ss 122(1)(f) and (fa) by reference to s 44(3), on the basis that its infringing use would have benefitted from registration within those provisions. Fifthly, FanFirm responded by contending that any notional registration that Fanatics successfully obtained under s 44(3) would have failed upon opposition by reason of s 58 (and consequently its defence under ss 122(1)(f) and (fa) would be unsuccessful). Sixthly, FanFirm contended that such notional registration would also fail upon opposition by reason of s 60 (and again, consequently Fanatics’ defence under ss 122(1)(f) and (fa) would be unsuccessful). Seventhly, Fanatics contends that these notional oppositions under ss 58 and 60 cannot apply to a trade mark benefitting from the operation of s 44(3). On appeal, the s 58 point arises from the fifth step, and the s 60 point arises from the sixth.

3.6.1    Section 58

188    Fanatics contends that the primary judge erred in finding an application by Fanatics to register its FANATICS Marks in respect of its infringing uses in relation to goods in classes 24 and 25 would fail because the marks could be successfully opposed pursuant to s 58 on the basis that FanFirm, not Fanatics, was the owner of the marks. This was addressed by the primary judge in section 7.3.2 of her reasons.

189    In Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 68; (1994) 31 IPR 375 at 391–2, Gummow J noted that in cases of disputed ownership of a trade mark, establishing ownership requires that the first use of the mark must be substantially identical and in relation to the same kind of goods or services such that “a claim to proprietorship of the one extends to the other”.

190    Fanatics submits that the primary judge erred in finding that FanFirm rather than Fanatics was the first user of FANATICS in relation to “online retail services” because it was the FanFirm Device Mark, not the FanFirm Word Mark, that was demonstrated to have been used prior to its first use of the FANATICS Marks. This submission cannot be accepted, because the relevant enquiry under ss 122(1)(f) and (fa) is whether the impugned use would benefit from registration at the time of the infringing conduct (see above at [180] and [184]). The impugned use here was in respect of the Infringing Goods within FanFirm’s class 24 and 25 registrations, not online retail services. This is made clear by the primary judge’s setting out of Fanatics’ defence under ss 122(1)(f) and (fa) at the start of section 7.3, at [317]:

The trade marks in respect of which the respondent says it would obtain registration if it were to apply, are the FANATICS Word Marks and the FANATICS Flag Mark in respect of the Infringing Goods.

(Emphasis added)

191    At [335] in section 7.3.2, the primary judge found that the FANATICS Word Marks were substantially identical to the FanFirm Word Mark and the relevant goods overlapped with the FanFirm Word Mark’s class 24 and 25 registrations (as required in the test extracted above from Carnival Cruise). Having made this finding, the question considered by her Honour was whether Fanatics, having succeeded under s 44(3) in its notional application for registration by establishing honest concurrent use, would nonetheless fail to obtain this notional registration because it could be opposed by FanFirm under s 58.

192    For the reasons set out below, we do not consider that the primary judge erred in her s 58 analysis (except with regards to the FANATICS Flag Mark).

193    Fanatics also submits that, in any event, s 58 cannot logically bar the operation of the honest concurrent use defence because the defence is premised on the alleged infringer not being the first user of the mark. In this regard, Fanatics refers to Yates J’s remarks in obiter that giving s 58 an operation that is independent of s 44(3) “robs the latter provision of practical effect”: Cantarella at [645]–[649]. We address this argument separately at section 3.6.3 below.

194    In section 5 of her judgment, the primary judge made the following relevant findings in relation to the first use of FANATICS in Australia:

(1)    Fanatics did not use FANATICS as a standalone brand or mark in Australia prior to December 2010, as was “essentially conceded” in closing submissions by senior counsel for Fanatics ([144]).

(2)    FanFirm provided invoices from July 2006 for orders of Wallabies merchandise, that supported a finding that FANATICS was used in respect of clothing orders and sales at that time ([147]). This finding is not challenged on appeal.

(3)    The website operated by Mr Livingstone prior to incorporation of FanFirm allowed customers to “browse the store for merchandise” from as early as March 2004 ([147]). This finding was not challenged on appeal.

(4)    From about 2002, on Mr Livingstone’s website (and, we infer, from its incorporation in September 2004, FanFirm on the same website) FanFirm branded merchandise was promoted for sale via a “Merchandise” page on the www.thefanatics.com website ([150], [45]). This was accepted by Fanatics as noted by the primary judge at [45]. An example is a screenshot of the website extracted at [44], promoting third party co-branded merchandise for the Ashes 2006/2007 tour, which her Honour found promoted clothing co-branded with Cricket Australia logos and the FanFirm Device Mark, and a booklet which also featured the lines:

Fanatics clobber Available at all good & many dodgy retailers near you.

and

Buy all your Fanatics gear online at www.thefanatics.com

Another screenshot included in the judgment dated 2005 shows promotion of a “Fanatics Logo Bucket Hat” ([47]).

(5)    These matters were sufficient to establish first use by FanFirm in relation to the following class 35 services in respect of which the FANATICS Marks are registered ([151]):

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

(b)    order fulfillment services; and

(c)    product merchandising.

(6)    The primary judge rejected the submission advanced by Fanatics that FanFirm had not used its marks in relation to clothing or online retail services because the services were no more than an adjunct to FanFirm’s “core business” of tour and event services (at [152]).

(7)    The primary judge was satisfied that FanFirm had first used the FanFirm Marks in relation to clothing in class 25 and online retail services in class 35 by September 2004 at the latest ([156]).

195    On appeal, Fanatics submits that the word “Fanatics” simpliciter did not appear on FanFirm’s website merchandise sub-pages in any trade mark sense, but rather it was the FanFirm Device Mark that operated as the brand, citing Seven Network (Operations) Ltd v 7-Eleven Inc [2024] FCAFC 65; (2024) 181 IPR 210 (Burley, Jackson and Downes JJ) at [100]–[104]. Fanatics also submits that the use of the word was only as an adjunct to FanFirm’s tour business and not in respect of retail services and product merchandising.

196    However, we see no error in her Honour’s evaluation in respect of this conclusion, having regard to the demonstrated uses of the FanFirm Word Mark in relation to clothing in class 25 to which the primary judge referred and which we have summarised at item (4) above. Although it is the case that the FanFirm Device Mark frequently appeared on the promotional page, whether alone or together with the word “Fanatics” separately rendered, the evidence depicts the word “Fanatics” alone in relation to the goods acting as a trade mark.

197    Furthermore, we note in (1) above the primary judge’s finding that Fanatics essentially conceded that it had not used FANATICS alone as a trade mark until December 2010 ([144]). That finding is supported by the transcript of argument. It is apparent that the case advanced by Fanatics was that the change of corporate name and branding coincided. For that reason, it was unnecessary for her Honour to revisit in detail the question of first use of the word FANATICS by Fanatics in Australia. However, as her Honour noted, even if Fanatics were to have succeeded in establishing use prior to December 2010, having regard to the primary judge’s findings to which we have referred above, the argument going to first use would have failed because of the evidence establishing FanFirm’s first use of the FanFirm Word Mark simpliciter in relation to goods and online retail services prior to this date.

198    Accordingly, we reject the challenge to the primary judge’s findings that a hypothetical trade mark sought by Fanatics for the FANATICS Word Marks from the date of its first infringing use would have failed on the basis of a hypothetical opposition to that mark under s 58.

199    The hypothetical application for the FANATICS Flag Mark could not be challenged on the same basis because it is not a mark that is substantially identical to the word FANATICS simpliciter: Carnival Cruise at 391–2. Insofar as the primary judge at [337] suggests otherwise, FanFirm does not seek to defend her Honour’s finding. In this regard, Fanatics is successful in showing that the s 58 opposition would fail in relation to the hypothetical application for the FANATICS Flag Mark under s 44(3).

3.6.2    Section 60

200    Fanatics contends that the primary judge erred in finding that as at December 2010, FanFirm had a reputation in the FanFirm Marks with respect to sports merchandise which was separate to its sporting and events tour business. Fanatics submits that the evidence was that FanFirm’s primary focus was on tours and events, and that FanFirm led no evidence as to the volume or value of sales of merchandise or of marketing of FanFirm branded merchandise that was separate to FanFirm’s tour and events services.

201    The primary judge found in section 7.3.3 at [339]–[340] of her reasons, citing Self Care at [13], that an opposition under s 60 must be based on another trade mark having a reputation in Australia, not on the person’s reputation in the same goods alone. If established, the likelihood of deception or confusion must also be demonstrated. The primary judge found that FanFirm had established that as December 2010 (which was the date of the first alleged infringing use by Fanatics) it had a reputation in Australia with respect to sports merchandise, including at least clothing such as t-shirts, footwear, shorts, trousers and headgear, and sporting tour and event services (at [341]). Her Honour then turned to consider whether, because of that reputation, Fanatics’ use of the FANATICS Marks would be likely to deceive or cause confusion ([342]), citing the well-known test set out in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1953) 91 CLR 592 and more recently repeated in Self Care at [32] that there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source”.

202    Her Honour concluded that if, as at December 2010, Fanatics was to use the same word mark – FANATICS – or the deceptively similar FANATICS Flag Mark on the same goods for which FanFirm had established its reputation, there would be such a likelihood (at [345]).

203    This challenge goes to the evaluation of the evidence conducted by the primary judge. The relevant findings of the primary judge are primarily in section 4.1.4 of her reasons to which we have referred in section 1.3 above.

204    In that section her Honour notes that Fanatics did not dispute that FanFirm by December 2010 had a reputation in Australia in the word “Fanatics” in connection with promoting and providing sporting and event tour services or that it had promoted those services by reference to the word “Fanatics” via its websites, newsletters and on social media ([84]). However, Fanatics sought before her Honour, and on appeal, to argue that FanFirm’s sale of clothing and merchandise was a minor incident to the promotion and sale of its tour and event services, and thus its reputation did not extend to these goods in its own right ([85]). That approached failed. Her Honour surveyed the evidence, which included:

(1)    the lengthy pre-December 2010 operations of the business, the evidence of the thousands of people who have attended FanFirm’s tours and worn its merchandise, widespread press of the activities of groups of Fanatics (being the name given to people who attend tours organised by FanFirm) wearing FanFirm merchandise, and the separate sales of FanFirm branded merchandise ([88]);

(2)    FanFirm’s gross annual income for each year since 1997 ([89]);

(3)    the size of FanFirm’s customer database ([90]); and

(4)    the evidence of people attending events and deposing to the visibility of the FanFirm Marks at them, and their prominent seating at events where, her Honour found, they “sat together in highly visible groups wearing their FanFirm branded merchandise” ([91]–[95]).

205    The primary judge acknowledged the criticism advanced by Fanatics that there was a lack of evidence of actual sales volumes or values of FanFirm-branded merchandise (at [96]) but found, following McCormick at [86] and Vivo International Corp Pty Ltd v Tivo Inc [2012] FCAFC 159; (2012) 99 IPR 1 at [57], that the Court may infer reputation from multiple factors, not confined to sales volume or advertising spend (at [97]). Her Honour found that by reference to the evidence identified above and also newspaper articles, Wayback Machine extracts from FanFirm’s websites and the evidence of witnesses, she was satisfied of FanFirm’s reputation in the FanFirm Marks by December 2010. Her Honour found that this reputation existed with respect to sports merchandise including at least clothing, headgear and footwear, which was separate to and not simply an adjunct of FanFirm’s sporting and events tour business ([99]).

206    The primary judge manifestly gave close consideration to the manner in which the FanFirm Marks had been used by FanFirm over the years prior to December 2010. We are not persuaded that the primary judge erred in her assessment of reputation as outlined above.

207    Fanatics next submits that the primary judge conducted no sufficient analysis between the notional and reasonable use of its (hypothetical) FANATICS Marks within the scope of its proposed registration (i.e. the Infringing Goods under class 24 and 25) and FanFirm’s mark to which the reputation as found is attached. However, the primary judge found at [345]:

I consider that if as at December 2010, the respondent was to use the same word mark — “Fanatics” — or the deceptively similar FANATICS Flag Mark on the same goods for which the applicant has established its reputation, there would be a real likelihood that “some people will wonder or be left in doubt” as to whether the two sets of products came from the same source.

208    As we note, the primary judge had earlier identified the goods and services in respect of which the FanFirm reputation resided. We therefore consider that this criticism is misplaced.

3.6.3    The intersection of ss 44(3), 58 and 60

209    Fanatics finally submits that a successful defence springing from a hypothetical application under s 44(3) ought to prevail over grounds of objection to the registration of a mark based on ss 58 and 60. This, it submits, is because the policy and purpose of the introduction of the honest concurrent user provisions make more sense if applied in respect of all grounds of opposition; that is, that ss 58 and 60 should not be applied independently of s 44(3). In this regard, Fanatics cites Yates J’s remarks in obiter that giving s 58 an operation that is independent of s 44(3) “robs the latter provision of practical effect”: Cantarella at [645]–[649]. That submission is contrary to authority of longstanding. In McCormick Kenny J found at [93] that the s 60 opposition ground is not expressed to be subject to s 44(3) or any analogous limitation, and hence there is no honest concurrent user exception to s 60. That decision has been followed on many occasions: Dunlop at [291]; Flexopack at [185]. Whilst there are Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28; 194 CLR 355 arguments that can be advanced, such as those raised by Yates J in obiter dicta in Cantarella, the legislature has had many opportunities to address this line of authority if it felt that it was wrong. We have in any event found that the primary judge did not err in finding that the defence based on s 44(3) fails, making it unnecessary to consider the ss 58 and 60 arguments (above at [185], [186]). It is not in our view appropriate to consider a change to the law which would in any event be obiter dicta, given our finding in section 3.5 above that Fanatics failed to establish honest concurrent use under s 44(3) (and consequently failed in its ss 122(1)(f) and (fa) defence to infringement).

4.    CANCELLATION OF FANATICS’ CLASS 35 REGISTRATIONS

4.1    Introduction

210    Section 88(1)(a) relevantly provides that, subject to ss 88(2) and 89, the Court may, on application by an aggrieved person, order that the Register be rectified by cancelling the registration of a trade mark. Section 88(2)(a) relevantly provides that an application may be made under s 88(1) on any of the grounds on which the registration of the trade mark could have been opposed under the Trade Marks Act. On the basis of the application of s 88(2)(a), FanFirm applied as a person aggrieved for the rectification of the Register to remove various of trade marks owned by Fanatics, in whole or in part, from the Register pursuant to grounds arising under ss 44, 58, 59 and 60. It also applied under s 88(2)(c) for rectification of the Register on the basis that circumstances applied at the time when the application for rectification was filed such that the use of the trade mark was likely to deceive or cause confusion. The primary judge noted that FanFirm appeared to no longer press its claim to cancel the 632 TM for “FOOTBALL FANATICS” by closing submissions ([350]).

211    The primary judge found that:

(1)    FanFirm could have successfully opposed each of the FANATICS Word Marks in respect of their registration under class 35 on the basis of s 58 (not the owner of the marks) ([359]);

(2)    the registration of the FANATICS Marks (being the FANATICS Word Marks and the FANATICS Flag Mark) could have been successfully challenged under s 44(1) and that defences based on s 44(3) (honest concurrent use) and s 44(4) (prior continuous use) were not made out by Fanatics in respect of services in class 35 ([364], [365]);

(3)    Fanatics’ “SPORTS FANATICS” mark (the 976 TM) should be cancelled under s 88(2)(a) because, pursuant to s 59, Fanatics did not intend to use the mark when it was registered ([375]);

(4)    as at the earliest of the priority dates of the FANATICS Marks (being 10 September 2008), FanFirm could have successfully challenged the FANATICS Marks on the basis of s 60 (confusion by reason of earlier reputation) in respect of their registration in class 35 ([369]);

(5)    as at the date of the application for rectification, being 8 March 2023, the use of the FANATICS Marks was likely to cause confusion in relation to the online sale of sports merchandise by reference to those marks and accordingly, those marks are liable to be cancelled pursuant to s 88(2)(c) ([376], [377]);

(6)    the case was not made out for the Court to exercise its discretion pursuant to s 89(1) to decline to grant the application for rectification, having regard to the circumstances of the case, including the factors identified in reg 8.2 of the Trade Marks Regulations 1995 (Cth) ([378]–[383]).

212    In ground 14 of the Notice of Appeal, Fanatics contends that the primary judge erred in finding that:

(1)    the class 35 specification of the FANATICS Marks should be cancelled pursuant to s 88(2)(a) on the basis that they could have been successfully opposed under s 58 (in relation to the FANATICS Word Marks) and ss 44 and 60 (in relation to the FANATICS Marks); and

(2)    the FANATICS Marks would, as at 8 March 2023, be likely to deceive or cause confusion within the meaning of s 88(2)(c) if used in respect of the online sale of sports merchandise and were thereby liable to be removed or cancelled.

213    It may be noted that ground 14 concertinas four substantial legal and factual challenges to the primary judges’ conclusions. The submissions are similarly condensed.

4.2    The s 58 challenge

214    FanFirm contended before the primary judge that the FANATICS Word Marks (being the 633 TM and 681 TM) and the FANATICS Flag Mark (being the 688 TM) should be removed under s 58, on the basis that Fanatics was not the owner of the mark as at the filing date of each mark in respect of the relevant goods and services for which they were registered ([353]).

215    The primary judge found that at the time when Fanatics applied for these marks, FanFirm was the first to use the word “Fanatics” as a trade mark in respect of sports merchandise, including at least clothing and sporting tour and event services ([356]). She also found that FanFirm was the first to use the word “Fanatics” as a trade mark in Australia in relation to selling sports merchandise, including clothing, online – that is, in relation to online retail services ([357]). Accordingly, her Honour found that Fanatics could have been successfully opposed at the priority dates of the 633 TM and 681 TM (the FANATICS Word Marks) on the basis that Fanatics was not the true owner of those marks pursuant to s 58 and that those marks should be cancelled in respect of the registrations for services in class 35 ([359]). The primary judge rejected the s 58 challenge to the FANATICS Flag Mark on the basis that it was not substantially identical to the FanFirm Word Mark, and hence FanFirm could not establish that it was the first user and owner of this mark ([361]).

216    On appeal, Fanatics challenges the primary judge’s finding on the basis that the primary judge erred in finding, as a matter of fact, that FanFirm was the first user of “Fanatics” in respect of online retail services in class 35 on the same basis that it advanced in its defence based on ss 122(1)(f) and (fa) insofar as it concerned s 58.

217    In section 3.6.1 above, we have addressed s 58 in the context of the defence under ss 122(f) and (fa). That section at [194] refers to the findings of the primary judge in relation to services as well as goods (although, as we noted, the analysis there required consideration of first use in relation to class 24 and 25 goods). To these findings we further note other evidence before the primary judge, including a web page including the words “Fanatics Shop - guaranteed to make you more attractive to lovers around the globe!”. The words “Fanatics shop” appear on the home page of the FanFirm website at multiple points in time, accompanied by images of clothing available for purchase. Having regard to the materials to which we have been taken, we are not persuaded that the primary judge erred in concluding that the word “Fanatics” alone was first used by FanFirm as a trade mark in respect of online retail services, order fulfilment services and product merchandising ([151]).

218    Accordingly, we reject this ground of appeal.

4.3    The s 44 challenge

219    There is challenge on appeal to the conclusion that FanFirm successfully argued that the FANATICS Marks should be cancelled pursuant to s 88(2)(a) on the basis that they could have been successfully opposed under s 44 (ground 14(a) of the Notice of Appeal). The dispute was whether the requirements of ss 44(3) and 44(4) were made out in defending the challenge brought under s 44 via s 88(2)(a).

220    The primary judge noted in section 8.2 at [363] of her reasons that the FANATICS Word Marks, which have priority dates of 10 September 2008 (633 TM) and 9 January 2018 (681 TM), were admitted to be substantially identical to the FanFirm Word Mark. Her Honour also found that the FANATICS Flag Mark, which has a priority date of 15 November 2017, is deceptively similar to the FanFirm Word Mark.

221    The primary judge made the following findings regarding the s 44 cancellation ground in section 8.2 of her reasons:

364    For the reasons set out earlier in section 7.3.1 the exception in s 44(3) for honest concurrent use is of no assistance to the respondent in respect of the respondent’s use of the FANATICS Marks in relation to sports merchandise including at least clothing such as t-shirts, shorts, trousers, headgear, and sporting tour and event services.

365    Nor is s 44(4) of assistance, as the respondent is not able to establish prior continuous use of the FANATICS Marks. As such, the registration of the FANATICS Marks in class 35 could have been successfully opposed under s 44.

366    The applicant is not able to establish prior use of the FanFirm Word Mark in relation to the services covered by the respondent’s class 42 registrations. Nor are these services sufficiently closely related or similar to the goods and services in respect of which the applicant has previously used the FanFirm Word Mark.

222    Fanatics’ appeal concerns the primary judge’s findings in relation to its registration of the FANATICS Marks in class 35 services. Implicit in her Honour’s findings at [364] and [365] is the finding that the class 35 services which the FANATICS Marks were registered for are similar services or closely related to the class 24 and 25 goods that the FanFirm Word Mark is registered for, pursuant to s 44(2)(a)(i). No ground of appeal was advanced or submission made to the effect that this was incorrect.

223    On appeal, Fanatics contends that, for the same reasons advanced in relation to honest concurrent use in the context of the application of ss 122(f) and (fa) and s 44, the primary judge ought to have found that s 44(3) applied to enable the FANATICS Marks to remain on the Register as a defence to cancellation under s 44 pursuant to s 88(2)(a). This analytically imprecise cross reference is of little assistance. It does not address the different characteristics of the application of s 44(3) in this defence, where the contest is between the prior blocking mark and the marks under challenge (as opposed to the hypothetical or notional mark applied for in relation to the infringing use considered when s 44 is applied under ss 122(f) and (fa)). Here the question is whether, as at the priority date of each of the FANATICS Marks, Fanatics discharged the onus on it to establish honest use in respect of its class 35 services.

224    To the extent that this analysis is met by reference to the findings of the primary judge in relation to the application of ss 122(1)(f) and (fa) and s 44, we have rejected the challenge on appeal in section 3.5 above. Indeed, the primary judge’s finding that there had been no use of the FANATICS Marks prior to December 2010 ([144]–[145]), which we have upheld, answers the contention. We can otherwise discern no clearly articulated argument put on appeal that identifies error on the basis of the difference in analysis. Nor is it apparent that any different approach was taken at trial.

4.4    The section 60 challenge

225    In reaching the conclusion that a s 60 challenge to the FANATICS Marks would have succeeded, the primary judge first noted (at [367]) that earlier in her reasons she had found that as at September 2004 FanFirm had acquired a reputation in the word “Fanatics” in relation to sports merchandise and the online sale of that merchandise. This was an error. At the cross-referenced paragraph ([156]), her Honour’s finding was that by that date FanFirm had first used the FanFirm Marks in relation to clothing in class 25 and online retail services in class 35. Her Honour did find that FanFirm had a reputation in the FanFirm Marks with respect to sports merchandise as at December 2010 at [99] and [341], which may have been the source of confusion. The primary judge went on (at [368]) to note that the earliest priority date for any of the FANATICS Marks is 10 September 2008, for the 633 TM, and that, by reason of the FanFirm reputation as at 10 September 2008, consumers in Australia might be caused to wonder whether the use by the respondent of the FANATICS Word Marks in relation to an item of sports merchandise and the sale of that merchandise on an online store might cause them to wonder if the item originated from FanFirm or the website was operated by FanFirm ([369]).

226    Her Honour’s mistaken cross reference to first use accordingly led to an error. In fact, her Honour’s earliest finding that FanFirm had a relevant reputation in the trade mark “Fanatics” in respect of clothing and online retail sales was as at 10 December 2010, being the date when FanFirm asserted that Fanatics had first used the mark “Fanatics” simpliciter in Australia (see [99], [341]).

227    In the welter of submissions made on appeal, no attention was drawn to this discrepancy. It may be the case, having regard to the circumstances before the primary judge, that a finding of reputation as at September 2008 followed as a matter of course, but we were not addressed on the subject and, absent submissions, do not propose to make this finding now. It suffices to say that this aspect of ground 14 of the appeal is made out. However, as the s 60 challenge to the FANATICS Marks registrations is one of four, and each of the ss 44, 58 and 88(2)(c) challenges succeeded before the primary judge and on appeal, little turns on this.

4.5    The s 88(2)(c) challenge

228    The primary judge noted that under s 88(2)(c), a registered trade mark is liable to be cancelled if as at the date of the application for rectification, being 8 March 2023, it is likely to deceive or cause confusion. Her Honour found at [377] that, for the reasons given earlier in her reasons, the use of the FANATICS Marks in relation to the online sale of sports merchandise is likely to cause confusion.

229    Fanatics challenges this conclusion on appeal because, it contends, by 8 March 2023 it had developed a very substantial reputation as an online retailer of sports merchandise and that at that time FanFirm had no such reputation. Accordingly, there was no relevant prospect of confusion arising from its use.

230    In section 4.1.2 of her reasons the primary judge traced the history of use by FanFirm of the Fanatics mark by reference to websites dating from 2002 to 2022. After considering in section 4.1.4 the reputation of FanFirm in relation to its marks up until December 2010 and then the reputation of Fanatics in section 4.2, her Honour considered in section 4.3 the co-existence of the parties. Her Honour found that prior to 2020 they had largely co-existed, with Fanatics operating an online retail store selling licensed third-party team apparel while FanFirm operated a tour and events company which also sold merchandise both directly related to those events and also third-party licensed merchandise relating to Australian national sporting teams such as the Wallabies, Socceroos and Matildas ([137]). However, her Honour observed that they were operating in the same broad field ([138]). Thereafter, their fields of operation had somewhat converged.

231    Her Honour said:

138    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.

139    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.

140    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.

232    The primary judge’s finding that the businesses converged is inconsistent with the contention advanced on appeal that by 8 March 2023 the reputation of Fanatics was such that there was no likelihood of confusion. We are not persuaded that the primary judge erred in reaching the conclusion set out in [138]–[140]. Indeed, very little was put to us to provide a basis for considering that there may have been error.

4.6    The exercise of discretion

233    After finding that the FANATICS Word Marks were liable to be removed from the Register in respect of class 35 services pursuant to ss 44(1), 58, 60 and 88(2)(c) and the FANATICS Flag Mark was liable to be removed in respect of class 35 services pursuant to ss 44(1), 60 and 88(2)(c), the primary judge turned to consider the exercise of discretion not to cancel under s 89. Fanatics contends that the exercise of discretion miscarried.

234    Before we turn to consider this aspect of the appeal, we first refer to the relevant statutory provisions.

235    Section 88(1) provides:

Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

(a)    cancelling the registration of a trade mark; or

(b)    removing or amending an entry wrongly made or remaining on the Register; or

(c)    entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

236    Section 88(2) provides:

An application may be made on any of the following grounds, and on no other grounds:

(a)    any of the grounds on which the registration of the trade mark could have been opposed under this Act;

(b)    an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;

(c)    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;

(e) if the application is in respect of an entry in the Register—the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation.

(Notes omitted)

237    Section 89(1) provides:

The court may decide not to grant an application for rectification made:

(a)    under section 87; or

(b)    on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph 88(2)(a)); or

(c)    on the ground referred to in paragraph 88(2)(c);

if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.

(Notes omitted)

238    Section 89(2)(a) requires the court in exercising this discretion to take into account any matter that is prescribed. In that regard, reg 8.2 of the Regulations provides as follows:

Amendment or cancellation—matters for the court

For the purposes of paragraph 89(2)(a) of the Act (which deals with amendment or cancellation by a prescribed court), a prescribed court, in making a decision under subsection 89(1) of the Act on an application for rectification of the Register, must take into account the following matters, so far as they are relevant:

(a)    the extent to which the public interest will be affected if registration of the trade mark is not cancelled;

(b)    whether any circumstances that gave rise to the application have ceased to exist;

(c)    the extent to which the trade mark distinguished the relevant goods and/or services before the circumstances giving rise to the application arose;

(d)    whether there is any order or other remedy, other than an order for rectification, that would be adequate in the circumstances.

239    In Anchorage at [140] and [146], the Full Court observed that s 88(1), by the use of the word “may”, confers a discretion upon the Court to decline to order the rectification of the Register upon a ground of invalidity being made out. That discretion is at large, constrained only by the general scope and objects of the Trade Marks Act (Anchorage at [146]). It has been held that upon a finding of a ground of revocation being made out, the prima facie position is that the Register should be kept accurate (or ‘pure’) by an order for cancellation, unless good cause is shown by the registered owner as to why it should not be: Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (No 3) [2015] FCA 1436; (2015) 116 IPR 159, per Perram J (at [8]); Bohemia Crystal at [245].

240    A separate discretion arises under s 89(1), which serves to regulate whether or not to order rectification under s 87 and also in situations in which the registration of a trade mark could have been opposed on the ground that it is liable to deceive or confusion, including under s 60 and s 88(2)(c). As the Full Court held in Anchorage at [142]:

… s 89 regulates the exercise of the discretion to order rectification under s 87 (ie. where s 24 or s 25 applies) and also in situations in which the registration of a trade mark could have been opposed on the ground that the mark is liable to deceive or confuse (ie. where ss 43, 60 or 61 applies). Section 89 covers its own particular field and is aimed at dealing with some well-known difficulties that were encountered in the construction of relevant provisions of the 1955 Act.

241    Fanatics contends that the primary judge erred in failing to exercise the discretion under s 89(1) not to rectify the Register by removing the class 35 registrations in relation to each of the FANATICS Marks (being the FANATICS Word Marks and the FANATICS Flag Mark). It submits that the problem with the reasoning of the primary judge lies in [383] where her Honour found that a factor in the exercise of discretion was the “change of lanes” by it.

242    FanFirm submits that regardless of whether the discretion is exercised under s 89 or s 88(1), the same factors would be relevant to that discretion. The essence of her Honour’s findings, it submits, is that Fanatics was aware of FanFirm and its trade mark rights when it adopted the FANATICS name and brand and took a risk in doing so. FanFirm submits that Fanatics did not explain the circumstances that led to that, and it carried the onus to justify the exercise of discretion. According to FanFirm, when the parties continued to conduct activities in more recent years, it continued to act within its rights as first user and the risk that Fanatics took “has now come home to roost” ([383]). FanFirm also submits that the finding as to moving out of the “lane” must be understood to mean that since 2020, Fanatics has intensified its activities including by entering into a 10-year relationship with Rebel, citing the reasons of the primary judge at [124]–[131].

243    In order to succeed in this ground of appeal, Fanatics must establish error to the standard required in House v The King [1936] HCA 40; (1936) 55 CLR 499 at 505:

If the judge acts upon a wrong principle, if he allows extraneous or irrelevant matters to guide or affect him, if he mistakes the facts, if he does not take into account some material consideration, then his determination should be reviewed and the appellate court may exercise its own discretion in substitution for his if it has the materials for doing so. It may not appear how the primary judge has reached the result embodied in his order, but, if upon the facts it is unreasonable or plainly unjust, the appellate court may infer that in some way there has been a failure properly to exercise the discretion which the law reposes in the court of first instance. In such a case, although the nature of the error may not be discoverable, the exercise of the discretion is reviewed on the ground that a substantial wrong has in fact occurred. Unlike courts of criminal appeal, this court has not been given a special or particular power to review sentences imposed upon convicted persons. Its authority to do so belongs to it only in virtue of its general appellate power. But even with respect to the particular jurisdiction conferred on courts of criminal appeal, limitations upon the manner in which it will be exercised have been formulated.

244    The primary judge found at [378] that under s 89(1), the Court has a discretion not to grant an application for rectification of the Register under ss 88(2)(a) or (c) if the registered owner of the trade mark satisfies the court that the ground relied upon by the cancellation applicant has not arisen through any act or fault of the registered owner. In our respectful view, that was not correct. The discretion under s 89(1) is stated in s 89(1)(b) to apply on the ground that the trade mark is liable to deceive or confuse, which is but one of the grounds, not all the grounds, on which its registration could have been opposed within s 88(2)(a). The reference to “a ground” in the s 89(1)(b) has been taken to be a reference only to the s 60 (deception or confusion) ground of opposition under s 88(2)(a), and the cross reference to s 89(1)(c) is a direct reference to the similar ground of revocation under s 88(2)(c), as the Full Court explained in Anchorage at [142]. It follows that the precondition in s 89(1), of no act or fault of the registered owner, is not a requirement of the discretion that falls to be exercised under all of the grounds of rectification that might arise under s 88(2)(a).

245    The primary judge next referred to and set out the considerations in the Regulations ([379]) before noting that Fanatics relied on three matters in support of its case; first, its asserted honest concurrent use of the FANATICS Marks in Australia for over a decade, secondly, its substantial reputation in those marks in Australia and the consequent prejudice it would suffer if it was required to re-brand, and third, an absence of any evidence of actual confusion to support the proposition that the presence of the FANATICS Marks on the Register does not, and is not likely to, give rise to any confusion ([380], [381]).

246    In declining to exercise the discretion in respect of each of the grounds that the primary judge found succeeded under ss 44, 58, 60 and 88(2)(c) the primary judge said:

382    For the reasons set out above, I do not consider that there has been honest and concurrent use by the respondent of the FANATICS Marks. Thus, it is not a factor to take into account in considering whether to exercise the discretion under s 89. At the time it selected its corporate name and the FANATICS Marks, the respondent was aware of the applicant and its marks.

383    As I have noted above, for ten years or so after the respondent adopted the FANATICS Marks, the parties managed to coexist. However, with both parties’ expansion outside their original “lanes”, I consider there is now a possibility that consumers may be caused to wonder whether the goods of one are the goods of the other. The applicant is the first user of the mark. The respondent knew that when it adopted the mark. The risk it took in adopting the mark has now come home to roost. I will not exercise my discretion under s 89 and will not grant the respondent’s application for rectification of the Register in respect of the FANATICS Marks.

247    We note that no ground of appeal is advanced on the basis that the primary judge ought to have considered the exercise of discretion under s 88(1), even though, as is apparent above, this is the basis upon which Fanatics argues for an exercise of discretion insofar as FanFirm was successful under the ss 44 and 58 grounds of rectification. In failing to separate the exercise of discretion between that relevant to ss 44 and 58 (i.e. s 88(1)) from that relevant to s 60 and s 88(2)(c) (i.e. s 89(1)), in our respectful view, the primary judge erred in law. Accordingly, it is appropriate for us to re-exercise the discretion afresh.

248    In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128; (2021) 285 FCR 598 at [153], the Full Court (Jagot, Nicholas and Burley JJ) summarised the principles applicable to the discretion under ss 101(3) and (4) of the Trade Marks Act and in the course of doing so set out the following matters relevant also to the exercise of the discretion under s 88(1):

The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. This balance was articulated by the High Court in Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45 at [42] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) and JT International at [30] (French CJ) and [68] (Gummow J) …

249    As we have noted above, upon a finding of a ground of revocation being made out, the prima facie position is that the Register should be kept accurate (or ‘pure’) by an order for cancellation, unless good cause is shown by the registered owner as to why it should not be: Anchorage Capital at [8]; Bohemia Crystal at [245].

250    In relation to the ground under s 44, we note that Fanatics has failed to establish that it was an honest concurrent user of the FANATICS Marks in class 35 under s 44(3). In relation to the ground under s 58, the primary judge was satisfied that it was not – and has never been – the owner of the FANATICS Word Marks in class 35.

251    When deciding whether to exercise the discretion under s 88(1), the correct approach is to ask whether sufficient reason appears not to order the cancellation of a registered mark once the statutory discretion to make such an order has been enlivened. If the evidence does not disclose sufficient reason not to cancel the mark then it should be cancelled. In the ordinary course of events, it will be for the party that resists the cancellation of the registered mark to persuade the court that there is a sufficient reason not to order its cancellation: Anchorage at [158]. The Full Court in Anchorage further noted that there is a public interest in ensuring that marks the use of which are likely to give rise to deception or confusion are not registered as trade marks (at [163]). There is also a public interest in ensuring that trade mark registrations only be made in favour of applicants who are entitled to obtain them: Anchorage at [163], citing Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 at [27]. Whether or not an applicant could properly be regarded as the owner of a mark does not depend on the nature or scope of its reputation in the mark, but whether it first used the mark in Australia or (if the mark had not already been so used) whether the applicant was the first to apply for the registration of the mark: Anchorage at [164].

252    The findings of the primary judge in relation to ss 44 and 58, which we have upheld above at sections 4.2 and 4.3, signify that there are twin public policy reasons for the rectification of the register. The first arises from the statutory requirement under s 44 that no mark be registered in respect of similar goods or closely related services for marks that are substantially identical with or deceptively similar to each other. That policy may be ameliorated by the circumstances set out in s 44(3), but, as we have noted above, honest concurrent use has not been established. The second arises from the requirement under s 58 that only the owner of the mark remain on the register. The primary judge addressed the submission advanced by Fanatics going to an absence of evidence of confusion and a period of concurrent use by reference to her finding that both parties have expanded their operations such that they are likely to compete more directly ([383]). This her Honour expressed by reference to the parties’ expansion outside their “lanes”, a matter that her Honour considered enhanced the likelihood that consumers may be caused to wonder whether the goods of one (which we take to mean the goods and services of one) be those of the other. As this was in the context of the exercise of discretion, her Honour was entitled to consider this expansion despite it being well after the filing date of the cancelled FANATICS Marks (being the context in which the grounds for cancellation under s 88(2)(a) are considered). In circumstances where Fanatics’ use of the FANATICS Marks ought not to have been the exercise of a right granted under the Trade Marks Act because, at the time of the grant of the right, ss 44 and 58 applied, the primary judge was in our respectful view, correct to conclude that this was a consideration that told against the exercise of discretion. The expansion would enhance the likelihood of confusion caused by a use that was not sanctioned under the Trade Marks Act.

253    Having reached this conclusion, it is not strictly necessary for us to consider the exercise of discretion under s 89(1), which concerns the s 60 ground (which we have not upheld) and the ground under s 88(2)(c) (which we have upheld, but does not alter the outcome of the findings in relation to cancellation under the ss 44 and 58 grounds). However, for completeness we do so, but with no different outcome.

254    In this regard we note that the submissions advanced before the primary judge relied on three factors being, first the contended honest concurrent use, secondly, a substantial reputation in the FANATICS Marks and thirdly an absence of confusion. We have already upheld her Honour’s rejection of the first of these arguments, and similarly have upheld her conclusion that the convergence of the parties’ activities from 2020 means that Fanatics’ previous reputation in Australia did not eliminate a likelihood of confusion. As to the matters in reg 8.2 to which we have referred above, while Fanatics placed no separate reliance on them, in re-exercising the discretion we will take each of those matters in turn. In relation to reg 8.2(a), it is not apparent that the public interest will be adversely affected if the registration is cancelled. On the other hand, if it is not cancelled, then for the reasons set out above, the state of the Register will serve to enhance a likelihood of confusion. In relation to reg 8.2(b), it would appear that the circumstances that led to the conclusion under s 88(2)(c) (likelihood of confusion) have not ceased to exist. In relation to regs 8.2(c) and (d), no separate submission was advanced by Fanatics to the effect either applied.

255    Accordingly, having separately exercised the discretion under each of ss 88(1) and 89(1), we are not satisfied that the FANATICS Marks ought to remain on the Register in respect of class 35 services.

5.    FANATICS’ CLAIM AGAINST FANFIRM

5.1    Trade mark infringement

256    Fanatics advanced a trade mark infringement case against FanFirm in relation to its online retail store located at www.fanatics.com.au which FanFirm had conducted since at least 2021. As noted above, the primary judge found that the FANATICS Marks in respect of online retail store services for sports merchandise in class 35 should be cancelled ([421]) with the consequence that the infringement case brought against FanFirm must fail ([423]).

257    The primary judge, however, in a picture of thoroughness, considered whether, if she is found to be wrong in her conclusion as to cancellation, any of the defences against infringement raised by FanFirm would apply. In ground 15 of the appeal, Fanatics contends that the primary judge erred in dismissing the infringement case. That ground adds nothing to ground 14 which contends that the primary judge erred in finding that the FANATICS Marks should be revoked. We have addressed that subject in section 4 above.

258    In ground 16, Fanatics contends that the primary judge erred in finding that FanFirm would have been entitled to defences to infringement under ss 122(1)(e), 122(1)(f)(a) or 124. We have upheld the primary judge’s finding that the FANATICS Marks should be cancelled. Accordingly, we do not consider it necessary to consider the alternative case.

5.2    Claim under the ACL and passing off

259    In section 14 of the judgment the primary judge addressed Fanatics’ claims under the ACL and in passing off. Fanatics contended that the relevant date at which to assess whether there has been a contravention of either ss 18 or 29 of the ACL is around 2020, when FanFirm changed its business and opened its retail store. This, it contended, was a “new species” of conduct when compared with FanFirm’s pre-existing sporting tour and events services business and should be considered separately to that business ([61], [482]).

260    The primary judge had earlier recited the relevant legal principles in considering an allegation of breach of s 18 of the ACL at [393], quoting Self Care at [80] (per Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ):

Determining whether a person has breached s 18 of the ACL involves four steps: first, identifying with precision the “conduct” said to contravene s 18; second, considering whether the identified conduct was conduct “in trade or commerce”; third, considering what meaning that conduct conveyed; and fourth, determining whether that conduct in light of that meaning was “misleading or deceptive or … likely to mislead or deceive”.

261    Her Honour noted at [486] that the relevant date for assessing whether conduct contravened the ACL is the date of commencement of the impugned conduct, citing Optical 88 SJ (Yates J) at [334].

262    In rejecting the argument advanced by Fanatics, her Honour found at [487] that the relevant conduct of FanFirm had commenced at least by September 2004 and continued over the years prior to Fanatics’ change of corporate name and beyond to the present day. That finding flowed from her Honour’s earlier consideration of the history of the use by FanFirm of the FanFirm Marks and her finding that FanFirm had in the early 2000s sold merchandise under and by reference to the FanFirm Word Mark in addition to its offering of tours and events ([44]–[47], [67], [74]). This led her Honour to find that FanFirm had not engaged in substantially new or different conduct by launching its online retail store in 2021 such as to warrant the conclusion that the 2021 conduct was of a new or different character to that which had been undertaken for many years.

263    In our view, Fanatics has established no error of fact in the findings of the primary judge or the conclusions of law that she reached in rejecting Fanatics’ claims under the ACL. Accordingly, ground 18 must be dismissed.

6.    NOTICE OF CONTENTION AND APPLICATION FOR LEAVE TO FILE A CROSS APPEAL

6.1    Introduction

264    We have addressed some, but not all of the grounds raised in the Notice of Contention during the course of our reasons above. We now address each in turn.

265    Grounds 1 and 2 of the Notice of Contention advance an alternative argument to support the primary judge’s conclusions regarding the refusal of the defences raised under s 122(1)(a)(i) (good faith use of own name) and ss 122(1)(f) and (fa) via s 44(3) (honest concurrent use). As we have concluded in section 3.4 and 3.5 that her Honour’s conclusions should be upheld, no occasion arises for us to consider the alternative arguments raised.

266    Ground 3 of the Notice of Contention concerns the primary judge’s findings in relation to s 122(1)(e) and the form of Order 6 ultimately made, which was to dismiss FanFirm’s claim.

267    Section 122(1)(e) provides a defence against infringement where a person exercises a right to use a trade mark given to that person under the Trade Marks Act. Fanatics raised this defence by reference to three of its registered trade marks, being the FANATICS Marks (that is, the FANATICS Word Marks and the FANATICS Flag Mark) ([302]). The primary judge found that the Register should be rectified in respect of each such mark by the removal of the class 35 registrations ([359], [365], [369], [377]). However, the parties disagree as to the effect of the primary judge’s reasoning and orders.

268    Fanatics contends that in section 7.2 of her reasons, as reflected in Order 6, the primary judge found that the cancellation took effect only from the date of the order for cancellation, with the consequence that Fanatics had a successful defence to infringement under s 122(1)(e) and thus it was appropriate to dismiss the proceedings. This is because the injunction in place from the date of cancellation means that there is no need for any further steps to be taken in the proceeding, such as any enquiry into the availability of pecuniary relief. FanFirm contends that the primary judge found that the s 122(1)(e) defence failed in its entirety, citing [15(a)] and [347] of the primary judgment. In the alternative, it relies on ground 3 of the Notice of Contention to argue that the primary judge ought to have found that the ground under s 122(1)(e) failed for two reasons. First, FanFirm argues that the section was never available in respect of the goods found to infringe because the FANATICS Marks were only registered in respect of services under class 35 and not goods under class 25. Secondly, FanFirm argues that in any event, a defence under s 122(1)(e) cannot survive the cancellation of the marks. We address this in section 6.2 below.

269    Turning to ground 4 of the Notice of Contention, FanFirm submits that the primary judge found, in favour of its argument that it was the first to use the FanFirm Word Mark in a retail setting online, that it had offered for sale third party licensed merchandise co-branded with a FanFirm Mark on its website in about 2006/2007 at [44], [487], [52]–[57] and [367], and that [150] of her Honour’s reasons should be understood consistently with those findings. In ground 4 of the Notice of Contention, FanFirm contends that to the extent that it is found at [150] that there was not such use, the primary judge erred. We have found above in section 3.6.1 at [193(4)] that her Honour found that FanFirm had sold third party merchandise of Australian national sporting teams co-branded with FanFirm Marks, such as the 2006/7 Ashes merchandise extracted at [44] of the primary judgment. Our interpretation of her Honour’s statements at [150] is that prior to 2012, FanFirm sold third party merchandise of Australian national sporting teams co-branded with FanFirm Marks, but did not sell “straight resale” licensed (or “authorised”) merchandise until after 2012 (see [49]). The primary judge noted at [60], however, that nothing turned on this distinction of when FanFirm first sold “third party, straight resale, licensed merchandise” (as opposed to just third party branded merchandise), because (as she noted at [157]) the relevant services under class 35 are online retailing services for sports related and sports-team related merchandise (regardless of whether this is licensed or “straight resale” merchandise). Indeed, her Honour found that FanFirm was providing class 35 services as early as 2004 by selling FanFirm-branded products online, even if these products were not co-branded with a third party sports team ([158]). Accordingly, we find that her Honour’s statement at [150] is not inconsistent with her finding that FanFirm had offered third party merchandise co-branded with a FanFirm Mark on its website in about 2006/2007, and had been offering class 35 services under the FanFirm Marks as early as 2004.

270    Ground 5 of the Notice of Contention concerns defences to infringement advanced in the alternative by FanFirm in the event that it is otherwise found to infringe the asserted Fanatics trade marks. In short, it contends that to the extent that the primary judge did not find at [432] to [440] and [445] that its defence under ss 122(1)(f) and (fa) was successful, her Honour ought to have made that finding. As we have upheld the primary judge’s finding that the asserted FANATICS Marks are not valid and are liable to be removed, it is unnecessary for us to consider this ground of contention as the application of those defences do not arise.

6.2    The defence under s 122(1)(e)

6.2.1    Introduction

271    We have summarised in section 1.4 above the Orders made by the primary judge. They include orders permitting injunctive relief against infringing conduct on the part of Fanatics (order 2) and Order 6 dismissing FanFirm’s claims.

272    The dismissal of FanFirm’s claims has the consequence, as Fanatics pointed out in its oral submissions in chief on the appeal, that there is no option available for FanFirm to seek pecuniary relief consequent on findings of infringement. Fanatics submits that this conclusion was correct and follows from the primary judge’s findings in section 7.2 of the judgment in relation to the defence raised by Fanatics to infringement based on s 122(1)(e). Fanatics submits that the primary judge found that this defence is successful because the cancellation of the FANATICS Marks had no retrospective effect, and consequently there was no infringement prior to the rectification of the Register and hence no option available in the orders for FanFirm to seek pecuniary relief.

273    Section 122(1)(e) provides:

(1)    In spite of section 120, a person does not infringe a registered trade mark when:

…

(e)    the person exercises a right to use a trade mark given to the person under this Act.

274    Fanatics relied on its trade mark registrations for the FANATICS Word Marks (being the 633 TM and 681 TM) and the FANATICS Flag Mark (being the 688 TM) (being the FANATICS Marks) as forming the basis of its defence under s 122(1)(e) ([305]). The primary judge found in section 8 of her reasons that each of those marks should be cancelled in class 35 pursuant to s 88(2)(a) (for grounds based on ss 44, 58 and 60) and s 88(2)(c). We have in section 4 above upheld those findings (with the exception of the finding in relation to s 60, noting though that this does not alter the conclusion that the FANATICS Marks should be cancelled).

275    The primary judge proceeded to consider the application of s 122(1)(e) on the basis of her findings as to revocation. As the primary judge noted at [306], there was a live issue as to whether or not the defence under s 122(1)(e) could survive the cancellation of those marks. This was a shorthand reference to the contention advanced by FanFirm that the defence cannot apply once a trade mark upon which it is based has been cancelled. Fanatics disputed this and the parties referred to the reasoning in E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005; (2008) 78 IPR 334 at [1]–[11] (per Flick J), Gallo at [71]–[72] (per French CJ, Gummow, Crennan and Bell JJ), Dunlop at [214]–[215] (per Nicholas J) and Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 90 IPR 117 at [285]–[288] (per Middleton J). We refer to this below as the Timing Issue.

276    The primary judge noted at [306] that FanFirm contended that even if the Timing Issue was resolved in Fanatics’ favour, the defence under s 122(1)(e) could not in any event apply because Fanatics does not have a registration in respect of class 25 clothing goods (the Infringing Goods Issue).

277    The primary judge referred to the Timing Issue in this part of the reasons:

307    For the reasons set out above, I consider that the respondent’s sale of the Infringing Goods online by reference to the FANATICS Word Marks and Flag Mark is conduct which infringes the FanFirm Word Mark. I also consider, for the reasons below, that the respondent’s FANATICS Marks registered in class 35 should be cancelled pursuant to ss 44, 58, 60 and 88 because the applicant was the first to use the “Fanatics” mark in Australia with respect to online retail services, and had a prior reputation in Australia in the FanFirm Marks in relation to sporting clothing and the online sale of sporting clothing.

308    The question is then whether an order for cancellation is retrospective (as the applicant contends) — in which case the respondent could not now rely on the defence in s 122(1)(e) as it never had a right under the Act to use those trade marks — or prospective, meaning that cancellation would be no bar to the operation of the defence in s 122(1)(e) in relation to the infringing conduct up until cancellation, but that it would not protect infringing conduct after the cancellation.

278    After referring to the authorities above, the primary judge observed that it is a strange result that the owner of a trade mark registration that was not validly made could obtain the benefit of a defence for trade mark infringement against an applicant who has established that the owner was never entitled to the registration ([313]). However, on the basis of the analysis of Nicholas J in Dunlop at [208] and the plain wording of s 122(1)(e), her Honour concluded that the cancellation did not have a retrospective effect such as to remove Fanatics’ defence to infringing conduct during the time that three marks relied upon were registered. Prior to the order for cancellation, her Honour found that the marks remained a valid basis for the defence to infringement under s 122(1)(e).

279    On appeal, FanFirm contends that, despite the language used by the primary judge in section 7.2 of her reasons, her Honour did not in fact conclude that the defence under s 122(1)(e) was available because it is apparent, reading the judgment as a whole, that the defence was rejected in its entirety, relying on [15(a)], [347] and her Honour’s declaration of infringement. If that argument is not accepted, FanFirm relies on ground 3 of the Notice of Contention which raises two points, namely the Infringing Goods Issue and the Timing Issue. In relation to the Infringing Goods Issue, FanFirm submits that the primary judge failed to address its argument that, regardless of the cancellation of the marks, the defence under s 122(1)(e) could not apply to any finding of infringement in relation to clothing because the relevant registrations in issue (which were cancelled) extended only to services in classes 35 and 42, not goods in class 25. In relation to the Timing Issue, FanFirm contends that the primary judge erred in concluding that the authorities supported a finding that the s 122(1)(e) defence operated up until a trade mark relied upon for that purpose is cancelled.

280    Finally, FanFirm seeks leave to rely on a Notice of Cross-Appeal against the order dismissing its infringement claim (the leave to cross appeal issue). Fanatics opposes that leave.

6.2.2    Consideration

281    We consider that it is tolerably clear from the reasoning set out in section 7.2 of the judgment that her Honour found that there was no infringement of the FanFirm Marks prior to the date of the cancellation of the FANATICS Marks. Her Honour’s summaries of findings at [15(a)] and [347] are not inconsistent with that conclusion insofar as they state that none of Fanatics’ defences to infringement have been successful. As a broad conclusion, that is consistent with her Honour’s finding in section 7.2 that the registered trade marks relied upon by Fanatics were to be cancelled because, on her Honour’s findings, from the date of cancellation the defence under s 122(1)(e) failed and accordingly injunctive relief would be granted. We do not think that the fact that the declaration made is couched in the past tense is sufficient to dislodge that conclusion.

282    Accordingly, it is necessary to consider the two arguments raised by FanFirm by reference to ground 3 of the Notice of Contention.

6.2.2.1    The Infringing Goods Issue

283    FanFirm submits that the primary judge ought to have, but did not, consider the Infringing Goods Issue. That submission is well founded. Although her Honour identified the argument in her reasons at [306], she did not return to give it consideration. We now address it on appeal.

284    The primary judge found that Fanatics’ sale of the Infringing Goods (being clothing, headgear, sportswear, sports bags, scarves, water bottles, towels, flags, footwear and blankets) online by reference to the FANATICS Marks was conduct that infringed the FanFirm Word Mark in respect of classes 24 and 25 ([307]). She did not find infringement in respect of any of the services for which FanFirm’s Word Mark was registered ([257]–[272], [273]). In section 2 above we have upheld the finding of infringement made by the primary judge, subject to two qualifications:

(1)    the Infringing Goods are to be limited to clothing, headgear, sportswear, sports bags, scarves, water bottles, flags and footwear (that is, not including towels and blankets);

(2)    the infringement finding only extends to the Infringing Goods sold online by Fanatics which were either the Corporate Goods or the “Fanatics Branded” goods as set out above in section 2.4.2.

285    The 633 TM and the 681 TM (the FANATICS Word Marks) were filed on 10 September 2008 and 9 January 2018 respectively and the FANATICS Flag Mark was filed on 17 November 2017. The registrations were in respect of services in class 35, including online retail store services featuring sports related and sports team branded clothing and merchandise, product merchandising, retail store services featuring sports related and sports team branded clothing and merchandise, and class 42.

286    We have in section 2.4 above observed the difference between the application of a trade mark on or in relation to goods and the application of a trade mark in relation to retail services for the sale of goods. Indeed, as we note, it was a central submission advanced by Fanatics in its appeal from the infringement findings of the primary judge that use in relation to a online retail service for the sale of goods is not use in relation to those goods. In section 2.4 we have upheld that aspect of the appeal where we find that (with the exception of Fanatics’ Corporate Goods and the “Fanatics Branded” goods) the use of FANATICS in relation to the retail service of online sale of goods is not a use in relation to the goods in class 25 in respect of which the FanFirm Marks remained registered. This finding also applies in the context of s 120(1)(e) (contrary to her Honour’s finding at [430]–[431] of the primary judgment).

287    Section 122(1)(e) ensures that a registered owner of a trade mark cannot be held liable for infringement of another registered trade mark if it does no more than exercise a right conferred on him or her as the registered owner. This includes the exclusive right to use the registered mark in relation to goods or services in respect of which it is registered, under s 20(1)(a) of the Trade Marks Act.

288    The registrations of the FANATICS Marks in respect of services in class 35 and class 42 (which are set out in [13] above) will not provide a defence to infringement under s 122(1)(e) because the Infringing Goods do not fall within the scope of a right to use the marks conferred by those registrations.

289    This finding is sufficient to support the conclusion that ground 3 of FanFirm’s Notice of Contention should be upheld.

6.2.2.2    The Timing Issue

290    The Timing Issue raises the question of whether a defence under s 122(1)(e) remains available if it is established at trial that the registered marks relied upon ought not to have been registered as at their priority dates. That was the case here, where the primary judge found that the Fanatics Marks could have been opposed on the basis of ss 44, 58 and 60.

291    In Gallo Winery, Flick J considered that s 101(2) made no allowance for the court to order a retrospective removal of a mark for non-use for two reasons. First, because of a significant public interest in maintaining the integrity of the Register established under s 207 (at [7]). Secondly, because there is an absence of any indication in s 101(2) that the power to remove the trade mark may be exercised in that manner, particularly in light of ss 79 and 98 which, unlike s 101(2), make provision for removal of a mark to take place at a particular time (at [8]).

292    In Dunlop, Nicholas J considered the separate question of the effect of cancellation of a mark under s 88 on any acts of infringement that occurred before orders are made for such cancellation. His Honour observed at [208] that it followed from s 20 that an applicant in a proceeding seeking relief for trade mark infringement must establish that it is the registered owner of the trade mark in question and that it has been infringed. A person who was once, but is no longer, the registered owner of the mark because the trade mark has been cancelled at or prior to the time of judgment in the proceeding has no entitlement to relief for trade mark infringement. In addressing an argument arising from Gallo Winery and the interlocutory decision of Tracey J in Deckers Outdoor Corporation Inc v Farley (No 2) [2009] FCA 256; (2009) 176 FCR 33 at [47]–[56], his Honour observed that this was not because the order for cancellation operates retrospectively, but because an order cancelling a trade mark registration deprives the registered owner of the standing that is an essential element of the statutory cause of action (at [208]).

293    His Honour went on to say at [209], in the context of an application for the cancellation of a trade mark under s 88:

Secondly, it is important to recognise that s 88(1) is the source of the power to cancel a registered trade mark on various grounds including those that relate to the registered owner’s entitlement to register the mark in the first place. These grounds (some of which I have already discussed) arise under s 88(2)(a) and include the various grounds specified in ss 58-62A of the Act. It would be a very strange result if a trade mark owner could obtain relief against a respondent who, for the purpose of making out a cross-claim seeking an order under s 88(1), established that the registered owner was never entitled to obtain registration of the mark in the first place.

294    The question presently arising under s 122(1)(e) is different again and raises the question of whether, analogously to Dunlop, a party relying on s 122(1)(e) has the standing to do so in respect of otherwise infringing conduct that takes place before an order for cancellation is made in circumstances where the grounds for cancellation establish that the trade mark ought never to have been registered. Competing policy considerations arise for consideration. In addition to the points made in Gallo Winery, the learned authors of Australian Trade Mark Law (Burrell R and Handler M, 3rd ed, LexisNexis Australia, 2024) observe at p 606, [12.11] that the defence may be understood as helping to underpin the information function of the Register, and providing registered owners with an additional degree of certainty while providing a spur to owners of potentially conflicting marks to ensure that they police their rights at opposition stage.

295    These matters were not fully canvassed before us. Nor is it necessary for us to resolve them in light of our conclusion that the defence under s 122(1)(e) is not available to Fanatics following our resolution of the Infringing Goods Issue. Accordingly, we decline to decide the point.

6.2.2.3    Leave to Cross Appeal

296    Finally, it is necessary to address the submissions advanced in relation to the form of the Orders.

297    Fanatics contends that Order 6, where the primary judge dismissed the application, was necessary and appropriate having regard to the fact that the primary judge found that the defence under s 122(1)(e) applied until the date when the registration was cancelled. The consequence was that there is no need for the proceedings to remain on foot as there could be no occasion for any enquiry as to quantum, all past acts of infringement being excused by operation of the defence under s 122(1)(e).

298    FanFirm disputes this characterisation. It submits that it was always the intention that the trial proceed to determination on quantum in the event that an infringement was found. That intention is apparent, it submits, from the further case management steps undertaken by the primary judge following delivery of judgment and the making of orders. It submits that it addressed the potential for error (if its construction of the primary judge’s reasoning in section 7.2 was incorrect) in ground 3 of its Notice of Contention; however, it was not until senior counsel for Fanatics opened orally on the appeal that it realised that Order 6 was in error and that a Notice of Cross-Appeal was required.

299    During the hearing, FanFirm sought leave to rely on a Notice of Cross-Appeal alleging error in the making of Order 6 on the basis, relevantly, set out in ground 3 of the Notice of Contention. In support of the application for leave, FanFirm relies on an affidavit sworn by Ms Shannon Platt, solicitor acting for FanFirm.

300    Fanatics opposes the grant of leave, contending that the application is too late, is insufficiently supported by the evidence of Ms Platt and that the argument raised in relation to whether s 122(1)(e) applied to the Infringing Goods was not run before the primary judge although it does accept that the Timing Question was advanced before the primary judge.

301    Ms Platt gives evidence on information and belief that neither she, counsel nor the principal of FanFirm, Mr Livingstone, realised that it would be necessary to appeal against Order 6 prior to hearing the oral opening of Fanatics. She also gives evidence, attaching the transcript, of a case management hearing conducted following delivery of judgment and the making of the Orders, where the primary judge was requested to, and did, grant leave to appeal from the judgment on the basis that liability had been heard separately and before questions of quantum of relief and on that basis leave was necessary. In our view this suggests that FanFirm, and possibly the primary judge, considered that in light of the judgment the hearing would proceed to consideration of quantum. It supports the direct evidence of Ms Platt. We are satisfied that FanFirm did not realise at that point that Order 6 precluded any consideration of the entitlement to pecuniary relief. We also accept the explanation for the lateness of the present application.

302    We have reviewed the written submissions advanced before the primary judge and find that, contrary to Fanatics’ submission, the Infringing Goods issue was squarely raised before the primary judge, as [306] of the judgment demonstrates. As both of the relevant points applicable to the proposed Notice of Cross-Appeal were advanced before the primary judge, we see no basis upon which it may be concluded that Fanatics suffered any forensic disadvantage as a result of the late application for leave to cross appeal. The grounds relied upon in challenging Order 6 are the two set out in the Notice of Contention. We have found in favour of FanFirm in relation to the Infringing Goods Issue ground. Accordingly, we consider that a substantial injustice would occur if leave were not granted.

303    We grant leave for FanFirm to rely on the Notice of Cross-Appeal. For the reasons given, we allow the cross appeal.

7.    CONCLUSION

304    We have summarised our conclusions in section 1.5 above. In short, Fanatics has had some limited success on appeal insofar as it concerns its challenge to findings of infringement based on trade mark use in the context of the goods and services of the FanFirm Marks. It has had some very limited success in the context of its defences under s 122(1) of the Trade Marks Act, none of which are consequential. Put another way, it has succeeded in part on its first move on the chess board, but not on the others.

305    The byzantine complexity of these proceedings is reflected in the lengthy primary judgment and in these reasons. It is also a reflection of the skill of the legal practitioners involved whose understanding of the Trade Marks Act is deep. However, an aspect of that skill must also be the ability of practitioners to winnow the wheat from the chaff. It is not consistent with the operation of s 37M of the Federal Court of Australia Act 1976 (Cth) (the FCA Act) for numerous and repetitive grounds to be advanced to the same end. This applies particularly to trade mark cases. We have referred in section 3.6 above to the several alternative arguments raised in the infringement case advanced by FanFirm against Fanatics. Similar complexity applied to the cross claim advanced by Fanatics against FanFirm. Both parties contributed to these complexities. Such an approach does not advance the administration of justice or the quick and inexpensive resolution of proceedings to which Part VB of the FCA Act refers. In our view, legal practitioners bear a responsibility to confine the case of their clients to a reasonable compass. It is regrettable that this is not evident in the conduct of many contemporary cases involving the infringement of trade marks, of which this case is an example.

306    We will direct that the parties prepare draft orders giving effect to these reasons and providing for them to exchange short submissions (of no more than five pages) on the question of costs.

Associate:

Dated:    9 July 2025