FEDERAL COURT OF AUSTRALIA

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

ORDERS

THE COURT DECLARES THAT:

1.    The respondent/cross-claimant has infringed the applicant/cross-respondent’s registered word mark (Australian Registered Trade Mark Number 1232983) (FanFirm Word Mark) in contravention of s 120(1) and (2) of the Trade Marks Act 1995 (Cth) by using the FANATICS word marks (Australian Registered Trade Mark Numbers 1288633 and 1905681) and FANATICS Flag Mark (Australian Registered Trade Mark Number 1894688) (together, Infringing Marks) in relation to the following goods (Infringing Goods):

(a)    clothing;

(b)    headgear;

(c)    sportswear;

(d)    sports bags;

(e)    scarves;

(f)    water bottles;

(g)    towels; and

(h)    blankets.

THE COURT ORDERS THAT:

Injunction

2.    The respondent whether by itself, its directors, employees, servants, agents, related bodies corporate, or others, be permanently restrained from using the FanFirm Word Mark or any signs that are substantially identical with or deceptively similar to the FanFirm Word Mark, including the Infringing Marks, in relation to the goods and services in respect of which the FanFirm Word Mark is registered, without the permission, authority or licence of the applicant.

Rectification

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

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

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

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

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

Other

6.    The applicant’s claim is otherwise dismissed.

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

Costs

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

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

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

REASONS FOR JUDGMENT

ROFE J:

1.    INTRODUCTION

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

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

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

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

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

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

(a)    1232983 for the word “FANATICS” in classes 9, 16, 24, 25, 32, 38 and 39 and having a priority date of 2 April 2008 (FanFirm Word Mark); and

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

(together, the FanFirm Marks).

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

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

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

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

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

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

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

.

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

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

11    Both parties have alleged that the other party has:

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

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

(c)    engaged in the tort of passing off.

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

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

14    This hearing was on the issue of liability only.

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

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

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

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

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

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

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

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

2.    WITNESSES

16    The applicant read affidavits from the following lay witnesses:

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

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

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

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

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

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

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

17    Only Mr Livingstone was cross-examined.

18    The respondent read affidavits from the following lay witnesses:

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

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

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

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

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

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

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

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

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

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

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

20    Neither party called any expert witnesses.

3.    TRADE MARKS – CLASSES

3.1    Applicant’s trade marks

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

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

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

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

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

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

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

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

3.2    Respondent’s trade marks

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

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

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

4.    BACKGROUND

4.1    The applicant’s business

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

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

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

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

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

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

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

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

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

32    The applicant operates websites from three domain names:

(1)    www.thefanatics.com – registered in 2000.

(2)    www.fanatics.com.au – registered in 2003.

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

33    It also operated a fourth domain name, www.sportingedge.com.au, until about 2000.

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

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

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

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

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

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

4.1.1    Sale of merchandise

4.1.1.1    Prior to 2020

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

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

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

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

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

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

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

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

(together, FanFirm branded merchandise)

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

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

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

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

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

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

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

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

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

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

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

4.1.1.1.2    Evidence of category (c) merchandise

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

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

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

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

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

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

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

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

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

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

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

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

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

4.1.1.2    2020 onwards

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

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

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

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

4.1.2    Alleged change in applicant’s website

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

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

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

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

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

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

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

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

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

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

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

73    The “About Us” page on www.thefanatics.com in September 2023 contained a broadly similar description:

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

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

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

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

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

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

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

75    In contrast, since at least 2021, the applicant has described itself on the Retail Store at www.fanatics.com.au as follows:

OFFICIAL LICENSED MERCHANDISE

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

Fanatics Est. 1997

(Emphasis added.)

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

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

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

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

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

4.1.3    Applicant’s social media

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

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

4.1.4    Applicant’s reputation

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

(Citations omitted.)

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

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

4.2    The respondent’s business

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

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

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

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

(a)    www.fanatics.com;

(b)    www.footballfanatics.com;

(c)    www.fanatics-intl.com (recently subsumed into www.fanatics.co.uk); and

(d)    www.fanatics.co.uk.

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

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

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

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

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

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

4.2.1    Early history

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

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

108    Prior to 2010, the respondent’s corporate predecessors acquired a large number of different domain names to establish new e-commerce stores including the name FANATICS in combination with different sports and sporting terms or target audiences. Examples included www.fastballfanatics.com (2006), www.fastbreakfanatics.com (2007), www.faceofffanatics.com (2007), www.fightingfanatics.com (2008), www.surffanatics.com (2008), www.fanaticsoutlet.com (2008), www.kidfanatics.com (2009) and www.ladyfanatics.com (2009). The respondent also had separate branding for the e-commerce stores located at these domains. Mr Swallow gave evidence about the operation of a blog entitled “We are Fanatics” from around 2008, located at www.wearefanatics.com.

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

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

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

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

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:

.

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

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

(a)    major North American sporting leagues (such as the NFL’s www.nfl.shop.com);

(b)    major North American sports media brands (including NBC Sports, CBS Sports and Fox Sports); and

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

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

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

4.2.4    FANATICS LIVE

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

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

4.2.5    FANATICS MVP (formerly FANATICS REWARDS)

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

4.2.6    The respondent’s sales figures 2010 – 2014

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

4.2.7    The respondent’s presence in Australia intensifies in 2020

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

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

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

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

.

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

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

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

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

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

.

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

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

4.3    Coexistence prior to 2020

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

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

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

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

137    I consider that, other than a few skirmishes in the Australian Trade Marks Office, the parties have largely coexisted until 2020. The respondent has since 2010, operated an online retail store selling licensed third-party team apparel for a wide variety of sports, initially focussing on US sporting leagues, such as the NFL and the NBA, and then expanding to every major sporting code around the world. The applicant operated a tour and events company which sold merchandise both directly related to those events and third-party licensed merchandise relating to Australian national sporting teams such as the Wallabies, Socceroos and Matildas.

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.

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

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

5.    FIRST USE OF FANATICS IN AUSTRALIA

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

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

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

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

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

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

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

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

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

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

(b)    order fulfillment services; and

(c)    product merchandising.

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

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

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

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

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

156    Accordingly, I am satisfied that the applicant first used the FanFirm Marks in relation to clothing (class 25) and online retail services (class 35) by September 2004 at the latest and therefore prior to the respondent’s first use of its FANATICS Marks in December 2010.

157    Much was made during the hearing of whether, and if so when, the applicant sold third party licensed merchandise. I do not consider that question is relevant to the question of first use in relation to class 35 services. The respondent’s marks in class 35 are limited to services for online retailing services in general and sports related and sports-team branded merchandise in particular. That describes what the applicant was selling on its website.

158    I consider that an online retail service selling goods is nothing more than the sale of goods via a website. The applicant’s website provided an online retail service from at least 2004 because customers could visit the website, select a product and then purchase that product. It therefore also provided order fulfillment services and product merchandising within the meaning of the respondent’s class 35 registration. The goods sold from the website from 2002 were sports related or Australian sports-team branded, such as the Davis Cup t-shirts and Australian Ashes merchandise extracted at [42] and [43] above.

159    However, I consider that the service of designing, setting up, managing and operating an online store for a third party, such as the respondent’s Partner Stores, is a different type of service (e-commerce creation services). This kind of service is covered by the respondent’s registrations in class 42. I consider that the respondent was the first to use FANATICS in relation to e-commerce creation services in Australia from around mid-2021, when it entered the Partner Store deals with the AFL and Essendon.

6.    APPLICANT’S TRADE MARK CLAIMS

160    The applicant alleges that the respondent has contravened s 120(1) and (2) of the Act by advertising, promoting, offering for sale and selling in Australia a range of sports apparel and offering, advertising, promoting and providing both a loyalty and rewards services and a service where the respondent connects fans to athletes.

161    Section 120(1) and (2) of the Act provide:

120 When is a registered trade mark infringed?

(1)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

…

(2)     A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a)     goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

(b)     services that are closely related to registered goods; or

(c)     services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

(d)     goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

162    Section 17 contains a definition of a trade mark in the following terms:

17 What is a trade mark?

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.

163    Sign is defined in s 6 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.

6.1    Principles

164    According to the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 408 ALR 195 at [22] (per Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ), there are two separate elements to establish trade mark infringement under s 120(1) of the Act:

(1)    that the person has used as a trade mark a sign in relation to goods or services; and

(2)    that the trade mark was substantially identical or deceptively similar to a trade mark registered in relation to those goods or services.

165    The principles in relation to (2) were not in dispute. I recently summarised those principles in Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587 at [354]–[373].

166    The High Court discussed what constitutes use of a trade mark in Self Care at [23]–[25]:

[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 FA Horsenail (t/as The Herbal Dispensary), 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.

167    The alleged infringer must be using or proposing to use the signs for the “purpose of indicating, or so as to indicate, a connection in the course of trade” between the respondent’s goods and the respondent: Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 425 (per Kitto J, Dixon CJ, Taylor and Owen JJ agreeing).

6.2    Use as a trade mark

168    Section 7(4) of the Act 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)”.

169    The applicant alleges that the respondent has used the FANATICS Marks in Australia as trade marks because it has imported, distributed, advertised, promoted, offered for sale and sold (via its websites) in Australia clothing, headgear, sportswear, umbrellas, sports bags, scarves, water bottles, towels, flags, footwear and blankets (Impugned Goods) under or by reference to the FANATICS Marks, in order to distinguish those goods from the goods of other traders, and to indicate a connection between the goods and the respondent.

170    The applicant also alleges that the respondent has offered, advertised, promoted and provided loyalty and rewards services and a service whereby the respondent connects fans to athletes (Impugned Services) in Australia under and by reference to the FANATICS Marks in order to distinguish those services from the services of other traders, and to indicate a connection between the services and the respondent. The Impugned Services are not services covered by the respondent’s class 35 registration for online retailing and related services but are loyalty services.

171    The applicant alleges that the respondent’s use of the FANATICS Word Marks and FANATICS Flag Mark in relation to the Impugned Goods and Services constitutes infringement of the FanFirm Marks pursuant to s 120(1) and (2) of the Act. The applicant alleges that the Impugned Services are within the scope of, or are the same description as, the applicant’s registered class 38 (providing telecommunication services including content and entertainment) and class 39 services (organisation of transport and travel facilities for tours; functions; sporting and entertainment events for people and products).

172    The respondent submits that the Impugned Goods can be grouped into two categories, the second of which it breaks into two subcategories:

(a)    branded corporate merchandise (which it terms FANATICS Corporate Goods);

(b)    third party licensed merchandise that the respondent sells on its websites, or supplies to third parties such as Rebel Sport (which it terms third party licensed merchandise), which comprises of:

(i)    products that bear one of the FANATICS Marks (including on swing tags or care labels) as well as the trade mark of a sporting team or league (category (b)(i)); and

(ii)    products that do not bear a FANATICS Mark (category (b)(ii)).

173    The respondent submits that the evidence establishes that the majority of the third party licensed merchandise offered and sold by the respondent in Australia does not bear any FANATICS Mark (category (b)(ii) above).

174    The applicant contends that the sale of the category (b)(ii) third party licensed merchandise that itself does not bear any FANATICS Mark, still constitutes trade mark infringement as it is made available on a website using the word FANATICS as part of its domain name, and which bears at least one of the FANATICS Marks at the top of the webpage where the products are displayed.

6.2.1    Respondent’s admissions

175    In relation to the FANATICS Corporate Goods, the respondent admits that:

(a)    it has made available for order and purchase (including to residents of Australia) a range of FANATICS Corporate Goods that bear the FANATICS Flag Mark. These goods include the clothing, headwear, scarves, sports bags, umbrellas and throws;

(b)    it has used the FANATICS Flag Mark as a trade mark on and in relation to those goods;

(c)    the word FANATICS is substantially identical to FanFirm’s Word Mark, but it is denied that the respondent has used the word FANATICS solus in relation to the FANATICS Corporate Goods;

(d)    certain FANATICS Corporate Goods, namely items of clothing, sportswear and headgear, are the same as the class 25 goods for which FanFirm’s Marks are registered.

176    The following are examples of the FANATICS Corporate Goods:

177    In relation to third party licensed merchandise, the respondent admits that:

(a)    the items identified in Annexure C to the applicant’s Second Further Amended Statement of Claim (SFASOC) have been made available for order and purchase via the www.fanatics.com website, and that specific items identified in Annexure D to the SFASOC have been made available for order and purchase via the Rebel Sport website and/or the AFL Website;

(b)    certain third party licensed merchandise, namely items of clothing, sportswear, headgear and flags, are the same as the class 24 and class 25 goods for which the FanFirm Marks are registered.

178    The respondent also admits that it has used the FANATICS Flag Mark in relation to online loyalty and rewards programs but denies that it has used the FANATICS Word Marks in relation to these services. The evidence showed that the respondent promoted its loyalty programs, FANATICS MVP and FANATICS LIVE, by reference to the following marks only:

.

179    These marks are all variations on the theme of the FANATICS Flag Mark. There was no evidence that the FANATICS LIVE and FANATICS MVP programs were promoted by reference to the FANATICS Word Marks alone.

6.2.2    Respondent’s use of the FANATICS Marks

6.2.2.1    Corporate goods

180    The respondent contends that, aside from the white cap pictured above at [176] (item (d) at [181] below) it has not used the FANATICS Word Marks alone in relation to the FANATICS Corporate Goods. That is, the word “Fanatics” has also been used as part of the FANATICS Flag Mark. This contention is not supported by the evidence.

181    Mr Cockerton gave evidence that he purchased the following FANATICS Corporate Goods from the respondent’s website at www.fanatics.com on two occasions: 13 April 2022 and 10 July 2023 (all of which are pictured above at [176]):

(a)    a FANATICS Corporate Long Sleeve T-Shirt – Navy;

(b)    a FANATICS Corporate Pullover Hoodie – Gray;

(c)    a FANATICS Corp Rinkside Cuffed Knit Hat with Pom – Red/Navy (beanie);

(d)    a FANATICS Corporate ’47 Downburst Script Hitch Adjustable Hat– White; and

(e)    a FANATICS Iconic Bold Scarf – Red.

182    All the items were tendered at the trial.

183    In addition to the word FANATICS on the beanie itself, a swing tag was attached with the FANATICS Flag Mark on one side of the tag and the word FANATICS with a flag device above it on the other side. Inside the beanie was a woven label with the flag device and the word FANATICS underneath. The same woven label was attached to the scarf which also had a swing tag attached as described above. The navy t-shirt also had printed on the front and at the inside of the neck the word FANATICS with a flag device above it. The plastic packaging in which the navy t-shirt was packed had a label with the word FANATICS.

184    Mr Cockerton took a number of screenshots to illustrate the process he followed in purchasing the goods from the respondent’s website. Printouts of the screenshots were annexed to his affidavit and are displayed below at [185].

185    The www.fanatics.com homepage shows the FANATICS Flag Mark displayed at the top left corner of the page. 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 selected “Fanatics Corporate Gear”, then “Fanatics Corporate”. The navy t-shirt was located under “Fanatics Corporate T-shirts” and the scarf under “Fanatics Corporate Accessories”.

186    I consider that the above items are examples of the respondent using the FANATICS Word Marks as a trade mark in relation to clothing, including sports apparel.

6.2.2.2    Third party licensed merchandise (category (b)(i))

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.

188    Mr Cockerton gave evidence of his purchase of a “Hawthorn Fanatics Shirt” (pictured below at [192]) from the AFL store at www.aflstore.com.au, and a red “Mens Kansas City Chiefs The Collectable Super Bowl LVII Champions Roster Graphic Hoodie” from the “FANGEAR” section of the Rebel Sport website at www.rebelsport.com.au (Kansas CC Hoodie).

189    Mr Cockerton observed the following on the product page for the Kansas CC Hoodie on the Rebel Sport website:

(a)    The logo on the inside of the Kansas CC Hoodie at the back was branded “FANATICS”;

(b)    That under “PRODUCT INFO”, the Kansas CC Hoodie was described as being “Fanatics Branded”; and

(c)    The Kansas CC Hoodie was listed as being available for purchase online only.

190    Mr Cockerton observed the following statements on the ‘Frequently Asked Questions’ page on the Rebel Sport Website about the partnership between the respondent and Rebel Sport:

15.1     “When you make a purchase, you are purchasing from rebel. The order is simply being sent from a Fanatics warehouse.”

15.2     “Products shipped by Fanatics will only be available online and will be shipped direct from a Fanatics distribution centre to customers. Rebel does not hold these products in Australia.”

15.3     “Click and Collect is not available for products shipped by Fanatics as they are not stocked in our stores. They will be available for delivery only”

191    The Kansas CC Hoodie as tendered had a care label sewn into the garment that referred to, among others, FANATICS International and FANATICS (Germany).

192    Mr Cockerton’s affidavit annexed screenshots from the AFL store website that show “Fanatics Shirts” for 11 different AFL teams. The Hawthorn Football Club shirt arrived in packaging labelled “Fanatics Button-Up Shirt” and with a swing tag as depicted below.

193    Mr Cockerton made a third purchase from the www.fanatics.com website on 8 September 2023, this time a turquoise football jersey described as “Australia Women’s National Team Nike Women’s 2023 Away Stadium Replica Jersey – Turquoise”.

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”. Below is a further example annexed to the respondent’s closing submissions where the FANATICS Flag Mark is printed on the inside neck of the t-shirt (like the navy t-shirt).

195    The respondent says that the use of the FANATICS Marks on labels or swing tags does not, when “assessed objectively”, amount to trade mark use because they are not acting as a badge of origin in any relevant sense. That is because a consumer would either not notice the relevant FANATICS Mark on a swing tag or care label, or would not consider that the use of such a mark was operating as a badge of origin in relation to those goods. The respondent says that the focus of the consumer is on the relevant sporting team and the badge of origin is the logo of that team. The respondent referred to, among others, the example of the Hawthorn Football Club button-up shirt above, where the word “Fanatics” only appears on the swing tag. The respondent contends that, to the extent that this constitutes use as a trade mark, it is use as a trade mark in relation to the retail of those goods; not the goods themselves.

196    The display of a sign or mark in relation to goods may, of course, have more than one role. As Allsop J (as his Honour then was) explained in Anheuser-Busch v Budejovicky Budvar (2002) 56 IPR 182 at [189]:

The usage of a word may fulfil more than one purpose on a label. For example a word may have a descriptive element, but also an element of trade mark or branding or distinguishing role. Equally, a word may have a role in identifying a geographical location, but also a trade mark or branding or distinguishing role. It depends on context.

(Citations omitted.)

197    That a mark has more than one use does not mean it is not being used as a trade mark. In Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97, the Full Court (per Heerey, Allsop, Young JJ) said at [77]:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin

(Citations omitted.)

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).

6.2.2.3    Third party licensed merchandise (category (b)(ii))

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.

203    The respondent contends that their use of FANATICS in relation to the goods sold on its website, including third party licensed merchandise, is use of the FANATICS Marks in respect of online retail services, not use in relation to goods, and thus not a use covered by the applicant’s registrations. I found above that the respondent has used the FANATICS Marks in relation to FANATICS Corporate Goods and third party licensed merchandise which bear one of the FANATICS Marks (category (b)(i)). However, the vast majority of the goods sold by the respondent are not themselves branded with the FANATICS Marks (category (b)(ii)). The heart of the respondent’s non-infringing use case is that these goods are not sold by reference to the FANATICS Marks.

204    The applicant contends that there is no relevant difference between the use of a mark in relation to goods for sale on a website from which consumers can, amongst others, purchase goods including sports apparel (where the website offers an online shop as well as other things such as news and information) and a standalone e-commerce store from which consumers can purchase merchandise and apparel.

205    In Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, an appeal from an opposition involving a dispute relating to the online retailing of tennis-related products, Kenny J accepted at [146] that a domain name may constitute use of a trade mark.

206    The respondent in Sports Warehouse sold tennis products, including clothing, from a bricks and mortar store and a website at www.tenniswarehouse.com.au. The applicant was the trade mark applicant for the mark “TENNIS WAREHOUSE” in class 35 in respect of “online retail services featuring tennis clothing, tennis footwear, tennis gear…”. Kenny J stated at [153]:

It is not suggested that mere registration of a domain name can amount to use of the mark. More must be shown. Plainly enough, not all domain names will be used as a sign to distinguish the goods or services of one trader in the course of trade from the goods or services of another trader. Sports Warehouse is correct in its submission that that whether or not a domain name is used as a trade mark will depend on the context in which the domain name is used. In this case, the domain name is more than an address for a website, the domain name is also a sign for the applicant’s online retaining service available at the website. In the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user.

207    The respondent accepts 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. However, it denies that the domain name constitutes use of the FANATICS Marks in relation to the clothing and apparel offered for sale and sold at that site.

208    Kenny J’s decision in Sports Warehouse was considered by Perram J in Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 92 IPR 165, where his Honour at [50] synthesised five general principles from her Honour’s decision:

(1)    mere registration of a domain name does not establish the infringement of a trade mark;

(2)    where a cybersquatter does not seek to attract consumers to the occupied domain name but merely seeks to treat with the owner of the mark, it is unlikely that trade mark infringement will be shown for there will be no goods or services being proffered to consumers to which the impugned sign, contained within the domain name, may be reasonably be seen as relating;

(3)    where a person uses a domain name to attract consumers to a website which promises connexions with goods or services relating to the registered mark, infringement may be established even if the owner of the domain name does not sell the goods or services and instead merely benefits from a flow of traffic over the website;

(4)    where a domain name is used to conduct a website from which goods or services are sold the same kinds of questions which arise in ordinary trade mark litigation will arise, for in such cases the analogy between the sign on the front of a shop and the goods sold within will be established; and

(5)    explicit advertising of the website in that context is obviously relevant for it will show more clearly the connexion between the sign and the service.

209    In Solahart, the first applicant’s (Solahart) trade marks were registered in class 11 in respect of solar operated hot water systems, domestic water heaters, swimming pool heaters, solar cells and cooking apparatus. The marks were not registered in respect of any services. The second respondent (Solar Hut) used the word SOLARHUT as part of the domain name www.solarhut.com.au with respect to the sale of photovoltaic systems, which were found to be goods of the same description as the applicant’s solar hot water systems for the purposes of s 120(2)(a) of the Act.

210    Perram J noted at [51] that goods were available for purchase at the www.solarhut.com.au website under the name SOLARHUT. Applying the principles, Perram J said that it was “not to be doubted” that the use of the domain name in these circumstances constituted trade mark use. His Honour observed at [51] that the “domain name, in that circumstance, is properly to be viewed as largely analogous to a shop front”.

211    Those principles have been considered and applied in subsequent cases such as Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239 at [60]–[67] (per Beach J) and Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd (2012) 98 IPR 1 at [24] (per Reeves J).

212    In Bob Jane Corp Pty Ltd v ACN 149 801 141 Pty Ltd (2013) 97 ACSR 127 at [112], Besanko J found the use of the domain names www.bobjaneglobal.com and www.janetyres.com, which could be used to access the applicant’s online retail store, to be “uses of the marks as trade marks in relation to the goods and services for which the applicant’s marks were registered”, particularly because “the infringing marks appeared on the website itself”. The goods offered for sale on the applicant and respondent’s websites included tyres manufactured by a variety of companies, none being the applicant or the respondent.

213    The respondent’s use of FANATICS on its website is not limited to its use as part of the domain name. As Mr Cockerton’s evidence showed, the respondent’s website displays the FANATICS Flag Mark at the top left of each page and employs the word FANATICS in relation to the goods displayed for sale on the website.

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.

215    The respondent compares its website to a bricks and mortar store, such as Rebel Sport, which sells a wide range of goods from a variety of manufacturers and suppliers. The respondent contends that in that scenario, Rebel Sport is not using the “rebel” trade mark as a badge of origin for the goods. According to the respondent, the uses of the company’s relevant trade marks displayed on the physical shopfront, prominently on the website, or used as the domain name of the website itself, are only operating as a badge of origin for the retail services provided by that store, rather than as a badge of origin for the goods themselves. The respondent gives the example of a consumer who purchases a pair of Nike shoes — they will consider that the trade source of the shoes is Nike, not Rebel Sport. As such, the respondent contends that use of FANATICS as part of the domain name and on the website is a badge of origin for the retail services offered by the respondent on the website store.

216    The respondent argues that the two cases relied upon by the applicant, Solahut and Flexopack, are not analogous because the websites in those cases sold a single type of good (solar systems and thermoplastic films for food, respectively) which was manufactured and supplied by the company that operated that website. The respondent submits that is a very different situation to www.fanatics.com which sells a broad range of goods, much of which originate from third parties, and therefore the trade mark use is limited to that of an online retail service.

217    I disagree with the respondent’s characterisation of the relevant goods in Solahut as being manufactured and supplied by the second respondent in that case, Solarhut. Solarhut was described by Perram J at [2] as being a “budget orientated and web-based vendor of photovoltaic systems”. Whilst Solarhut supplied roof-mounted photovoltaic cells, there was no suggestion that it manufactured them. Perram J’s finding that making goods (photovoltaic cells) available for purchase on the website under the name SOLARHUT was use of the mark in respect of goods, which thereby constituted trade mark infringement, was not limited to only supply of the goods manufactured by the website owner. Similarly, Besanko J’s finding of trade mark infringement in Bob Jane was made in relation to the sale of tyres, which were not manufactured by the website owner, on the relevant website.

218    Reeves J’s comments in Edgetec at [24] are also instructive:

[the] use of a domain name to redirect potential customers to a website displaying one’s goods and services is analogous to using those words as a sign on the front of a shop to indicate the goods or services that are sold within: see Solarhart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544 ; [2011] FCA 700 at [50] per Perram J; Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 ; [2010] FCA 664 at [153] per Kenny J and Mantra Group at [53]. Furthermore, once this trade mark use has been made of those words, it is immaterial, in my view, whether there are statements on the website (or inside the shop in the analogy above) stating that the goods and services offered are not those of the holder of the registered trade mark. If anything, this confirms the original trade mark use of those words in the domain name.

(Emphasis added.)

219    Implicit in the emphasised words quoted above from Edgetec is that trade mark use by reference to a domain name in relation to goods can be established even if the goods sold on that website are not made by the holder of the registered mark.

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.

221    Accordingly, I find that the respondent has used the FANATICS Marks as trade marks in relation to the FANATICS Corporate Goods and both categories of the third party licensed merchandise.

6.2.2.4    FANATICS services

222    There is no dispute that the respondent has used the marks FANTATICS LIVE and FANATICS MVP in relation to the Impugned Services.

6.3    Substantially identical – FANATICS Word Marks

223    The respondent admits that the FANATICS Word Marks are substantially identical to the FanFirm Word Mark.

6.4    Deceptive similarity – FANATICS Flag Mark

224    The applicant contends that the FANATICS Flag Mark is substantially identical and deceptively similar to both the FanFirm Word Mark and Device Mark, which the respondent denies. For the reasons given below, I consider that the FANATICS Flag Mark is deceptively similar to the FanFirm Word Mark and therefore I do not need to consider substantial identity, or whether the FANATICS Flag Mark is deceptively similar to the FanFirm Device Mark.

225    The principles in relation to assessing deceptive similarity are well-established: Self Care at [27]–[29] (per Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

226    Section 10 of the Act provides:

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

227    A trade mark is likely to cause confusion if the notional buyer would be “caused to wonder” or would “entertain a reasonable doubt” as to whether, due to the resemblance between the two marks, the two goods or services come from the same source: Self Care at [32] and [70]–[71] (per Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ). See also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658 (per Dixon and McTiernan JJ); Shell at 415–16 (per Windeyer J); Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited (1954) 91 CLR 592 at 595 (per Kitto J) and 608 (per Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).

228    The High Court in Self Care stated at [33]:

In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer’s actual use of the mark, as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark. Consideration of the context of those surrounding circumstances does not “open the door” for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.

229    This comparison is between the impression (allowing for imperfect recollection) that the notional buyer would have of the word “Fanatics” (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the FANATICS Flag Mark as replicated below: Self Care at [29] (per Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

230    The whole of the FanFirm Word Mark is contained within the FANATICS Flag Mark. The word “Fanatics” is present in both marks, with the only difference being the flag device in the respondent’s mark. The marks are aurally identical.

231    The word “Fanatics” is more prominent and visually dominant than the flag device in the FANATICS Flag Mark. In De Cordova v Vick Chemical Company (1951) 1B IPR 496, in finding that the trade marks “VapoRub” and “Karsote Vapour Rub” were deceptively similar, Lord Radcliffe observed at 499:

in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

232    The significant detail of the applicant’s mark is the single word “Fanatics”. In assessing whether the marks are deceptively similar, it is also necessary to take into account the “circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark”: Self Care at [33] (per Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

233    The word “Fanatics” in both marks is being used to refer to sports fans (“fan” being a shortened form of “fanatic”: see Macquarie Dictionary Online (at 20 May 2024)), which is the primary “character[istic] of the likely customers” of both the applicant and respondent. The “market covered by the monopoly attached” to the FanFirm Mark and the goods and services offered by the respondent under the FANATICS Flag Mark intersect and are, broadly speaking, sports-related tours and sports-related merchandise, particularly those relating to prominent sports teams and leagues. The actual use of the respondent’s mark is to promote and sell sports-related merchandise.

234    These surrounding circumstances strongly support the conclusion that consumers in the market for sports-related merchandise when confronted by the FANATICS Flag Mark would be likely to be confused as to whether the goods and services provided by the respondent come from the applicant.

235    The respondent contends that the marks are not likely to deceive or confuse consumers because, among other reasons, both marks have been used for decades in Australia and there is no evidence of actual confusion arising from the use of the respondent’s marks.

236    Adducing evidence of actual confusion is not necessary to establish deceptive similarity: Self Care at [30] and [32] (per Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ); Australian Woollen Mills at 658 (per Dixon and McTiernan JJ). Whilst such evidence may be of “great weight” (Self Care at [30]), I do not consider that the absence of such evidence is of equal weight. For reasons I explained in Bed Bath at [263]–[271] and [339], evidence of actual confusion is hard to find and of limited utility taken on its own. I do not consider that the absence of confusion evidence in this case is a sufficient basis to conclude, contrary to the reasons above, that there is not “a real, tangible danger of deception or confusion occurring” (Self Care at [32]) as a result of the respondent’s use of the FANATICS Flag Mark in relation to sports merchandise.

237    Accordingly, I am satisfied that the respondent’s FANATICS Flag Mark is deceptively similar to the FanFirm Word Mark and therefore the respondent has infringed that mark in respect of the Infringing Goods (defined below) within the meaning of s 120(1) of the Act.

6.5    Deceptive similarity – FANATICS MVP and FANATICS LIVE Marks

238    The applicant contends that each of the following marks which the respondent has used as trade marks to promote its live event and loyalty services are deceptively similar to the FanFirm Word Mark:

.

239    Each of these marks is a composite mark, not just a word mark. Each has a colour element. In two of the marks, the word “Fanatics” is in white against a navy background with a red flag device and, either the additional letters “MVP” in red, or the word “LIVE” printed in white inside a red banner. In one mark, the word “Fanatics” is in black against a white background with a red flag device and the word “LIVE” printed in white inside a red banner.

240    The additional word “LIVE” or “MVP” and, in the case of the FANATICS LIVE mark, an additional banner, further differentiates these marks from the FanFirm Word Mark, both visually and aurally. The highlighting of those additions in red also differentiates these marks visually from the FanFirm Word Mark.

241    I do not consider that these marks of the respondent are deceptively similar to the FanFirm Word Mark.

6.6    Section 120(2) – goods and services of the same description

242    The applicant’s claims for trade mark infringement extend to the Impugned Services and all of the Impugned Goods, not just clothing, headgear, scarves, sportswear and footwear. A comparison is set out below of the goods and services for which the FanFirm Word Mark is registered and the Impugned Services and Impugned Goods, with the goods which the respondent contends are not “goods of the same description” (and thus do not infringe under s 120(1)) highlighted in bold.

243    As set out in the table, the respondent contends that, of the Impugned Goods, “umbrellas, throws, blankets, sports bags, water bottles and towels” are not goods of the “same description” as the goods for which the FanFirm Marks are registered within the meaning of s 120(2) of the Act, and thus do not infringe.

244    Although it does not expressly admit so, the respondent seems to concede in its closing submissions that, of the Infringing Goods, “clothing, headgear, sportswear, scarves, flags and footwear” are covered by the applicant’s registrations in class 25 (clothing) and class 24 (banners, textiles). That concession (if made) was rightly made as there cannot be any dispute that they are goods of the same description.

245    I consider that blankets, throws and towels are goods of the same description as the goods in class 24 for which the applicant’s Marks are registered 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”.

246    The applicant asserts that umbrellas, sports bags and water bottles are all “sportswear” and therefore fall within class 25 but offered no reasoning in support of its bare assertion.

247    Burley J in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd (2020) 158 IPR 9 at [277]–[286] considered the authorities regarding whether certain goods are “goods of the same description as those appearing in the Register” for the purposes of s 44 and s 101 of the Act. Burley J set out at [280] the three principal factors used to assess whether goods are of the same description, none of which are decisive:

(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.

248    As to the third factor, Kenny J in McCormick observed at [18] that:

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.

(Citations omitted.)

249    Burley J observed at [281] in Goodman that “numerous decisions have grappled with the question of what will amount to goods of the same description”. His Honour ultimately concluding that consideration of previous examples of goods found to be, or not to be, of the same description was unlikely to be of great assistance to him.

250    I consider each of those factors in determining below whether sports bags, water bottles and umbrellas are goods of the “same description” as the applicant’s registered goods pursuant to s 120(2). It must also be recalled that “nomination of a class for particular goods is not decisive as to the scope of a given registration”: Energy Beverages LLC v Cantarella Bros Pty Ltd (2023) 170 IPR 281 at [132] (per Yates, Stewart and Rofe JJ).

6.6.1    Sports bags

251    “Sportswear” in class 25 denotes clothing or other accessories worn for sport. Class 25 encompasses sports bags such as “bags for cricket shoes; bags for sneakers; bags for sports shoes; bags for trainers; bags for training shoes”. The applicant’s registration does not expressly include such items. 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.

6.6.2    Water bottles

252    Water bottles are frequently used by people playing sport or sports fans watching sport. They are often sold alongside sports apparel and sporting equipment at sports retailers.

253    Accordingly, I consider that water bottles are goods of the same description as the goods for which the applicant’s marks are registered in class 25.

6.6.3    Umbrellas

254    I do not think it is similarly obvious that umbrellas are goods of the same description as the applicant’s registered goods in class 25. Nor is it obvious that umbrellas are closely related to the applicant’s registration in class 39 for the organisation of travel and transport facilities for tours or sporting events.

255    Whilst umbrellas may be carried by people going to play sport, or taken by sports fans to watch sport, they are not usually sold alongside sports apparel and sporting equipment or from sports retailers.

256    The applicant did not make any submissions or rely upon any evidence by reference to the factors I have set out above. The applicant has the onus under s 120(2) to establish that the goods promoted by the respondent by reference to the infringing marks are of the same description to the goods for which its mark is registered. I am not convinced that it has discharged that onus with respect to establishing that umbrellas are closely related to the goods in class 25.

6.6.4    FANATICS MVP and FANATICS LIVE

257    The respondent also denies that the services it offers under the marks FANATICS LIVE and FANATICS MVP are services of the “same description” as the services for which the applicant’s marks are registered or “closely related” to any of the applicant’s registered goods. I agree in relation to FANATICS MVP for the reasons set out below.

258    Further to the three factors I set out above from Goodman, the Full Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 124 IPR 264 at [339] (per Greenwood, Besanko and Katzmann JJ) said the following factors were relevant in relation to considering whether certain services might be services of the “same description” as services for which a trade mark is registered:

(1)    The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?

(2)    To whom are the services offered?

(3)    How are they provided?

(4)    How are they used?

(5)    What is their purpose?

(6)    Are they bundled together with other services?

(7)    Are they differentiated by the functional level at which they are provided: wholesale or retail?

(8)    Where do they originate?

(9)    What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

(10)    How closely contestable are the services in substance: are they in the same market or trade?

(11)    How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386; [2009] FCAFC 27, per Moore, Edmonds and Gilmour JJ at [71]–[73].

259    Once again, the applicant did not address any of these factors or justify its bare assertion that FANATICS LIVE is a service that is the same description as its registered services in class 9 (films), class 38 (telecommunication services including content and entertainment over the internet) and class 39 (organising sports tours and travel) or closely related to its registered goods in class 16, class 24 or class 25.

260    The respondent did, in contrast, make submissions on whether the Impugned Services are covered by the applicant’s registrations. It did so by reference to the applicant’s alleged failure to adduce any evidence addressing the applicable factors and its contention that the class 39 services are ambiguous and should be construed in a particular way. However, the respondent did not address any of the factors from Accor (or any other authority) or explain why, according to those factors, the Impugned Services were not so related.

261    Two principles emerge from Wilcox J’s discussion in Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 at [42]–[43] with respect to the proper approach to interpreting descriptions of categories of registration:

(a)    it is not permissible for the Court to have regard to the previous conduct of the trade mark holder to construe the scope of their specification, and the owner is bound by the statement he or she has made in the application; and

(b)    the class in which the services are specified is not determinative. Rather, the meaning and scope of the specification are to be determined by the words actually used.

262    Applying these principles, I cannot consider the applicant’s previous conduct in providing what it describes as loyalty rewards schemes to FanFirm members such as those at [31] in order to construe what is covered by the applicant’s registration.

263    Mr Ravid explained in his first affidavit that the services provided by reference to the respondent’s loyalty and rewards programs FANATICS MVP and FANATICS REWARDS encompass:

offering and promoting a free loyalty and rewards program, through which the Fanatics business rewards members with exclusive member-only deals, special discounts, early access to sales and new collections, and other benefits such as merchandise credit on future purchases.

264    I am not persuaded that, on a plain reading of the applicant’s registrations in any of its classes, the respondent’s loyalty and rewards services are similar to the applicant’s registered services or closely related to its registered goods. A rewards program where a member gets special discounts is not similar to films (class 9), telecommunication services (class 38) or organising tours or events (class 39). Therefore, the respondent has not infringed the applicant’s marks pursuant to s 120(2) in relation to its general loyalty and rewards program.

265    FANATICS LIVE is a different matter. Mr Ravid gave evidence that FANATICS LIVE is a service by which the respondent promotes live events, which were live in-person events before the Covid-19 pandemic, but were filmed or livestreamed after 2020. Mr Ravid did not know whether FANATICS LIVE events were livestreamed and recorded (to watch after the live event) or just livestreamed. Fans could also meet athletes at these events (which, post 2020, was online) and “there [are] products that are associated with those events, so that would be like a signed ball or a signed picture, and that could be purchased online”. As mentioned above, this service is now called FANATICS PRESENTS and what was formerly called FANATICS LIVE is now an online marketplace for online memorabilia.

266    The respondent notes that “sporting and entertainment events” do not fall within class 39 (suggesting they more likely fall within class 41) and the applicant’s specification should be construed on this basis. That is, the applicant has no registration for sporting and entertainment events but only a registration for the “organisation of transport and travel facilities for … sporting and entertainment events”. The respondent’s construction of the applicant’s class 39 specification is that the words “organisation of transport and travel facilities” are the driving words and everything that follows those words are just examples of what the transport and travel services might be for (eg, transport for a tour, sporting event or function).

267    The basis for the respondent’s construction is misguided in light of the principle in Nikken (at [43]) that the class in which the services are specified “does not matter”. Wilcox J in Nikken described the meaning of the word “service” at [48]:

The Act does not define the word ‘service’. However, s6 contains a definition of ‘services of a person’ – ‘services dealt with or provided in the course of trade by the person’ – that brings out a fundamental point about the use of the word ‘service’ in the Act: it must be an activity directed towards, or provided to, some other person.

268    Without a verb, the phrase “sporting and entertainment events for people and products” does not describe an activity and therefore does not describe a service. The verb “organisation” at the start of the specification is critical. The plain reading of the specification is not that the word “organisation”, on its own, is the gateway to the rest of the specification such that it reads “organisation … for tours / functions / sporting events”. That construction would give the words “transport and travel facilities for”, particularly the word “for”, no work to do. The more natural meaning is that offered by the respondent: the services in which the applicant’s marks are registered are “organisation of transport and travel facilities for”:

(i)    “tours”;

(ii)    “functions”; and/or

(iii)    “sporting and entertainment events”.

269    I do not consider that, on that construction, any of the services provided by the respondent now, or previously by reference to FANATICS LIVE is a service of the same description as the applicant’s services in class 39. The respondent organises events but there is no evidence that it organises transport or travel facilities to those events. The organisation of an event itself, and the organisation of transport for that event, are not what I consider to be of the same services even if they might be related.

270    I also do not consider that the service provided by reference to FANATICS LIVE is closely related to any of the applicant’s registered goods. According to Mr Ravid, FANATICS LIVE is used to promote goods such as signed memorabilia — but there was no evidence that clothing or sportswear, or any other goods in the applicant’s class 25 registration, are promoted through those events. Therefore, I am not satisfied that the applicant has established that FANATICS LIVE is a service that is closely related to its registered goods.

271    However, I consider that the FANATICS LIVE services, in particular the provision of online streaming internet content including athlete interviews and meetings, fall within the applicant’s registration for class 38: “providing telecommunication services including content and entertainment … Internet communication”.

272    However, as I discussed above, I do not consider that the FANATICS LIVE Mark is deceptively similar to the FanFirm Marks.

6.7    Conclusion – applicant’s allegations of infringement

273    For the reasons set out above, I consider that the respondent has infringed the FanFirm Marks because it has used as a trade mark within the meaning of s 120(1) and (2) of the Act:

(a)    the FANATICS Word Marks in relation to clothing, headgear, sportswear, sports bags, scarves, water bottles, towels, flags, footwear and blankets (Infringing Goods); and

(b)    the FANATICS Flag Mark in relation to the Infringing Goods.

274    For the avoidance of doubt, the Infringing Goods include all of the Impugned Goods other than umbrellas.

7.    RESPONDENT’S DEFENCES

275    The respondent relies upon the following defences to trade mark infringement. That it:

(a)    has used in good faith its corporate name pursuant to s 122(1)(a)(i);

(b)    is an honest concurrent user under s 122(1)(f) or (fa); and

(c)    is entitled to rely on its registrations to provide a complete defence pursuant to s 122(1)(e).

276    Burley J in Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 129 IPR 482 at [296] said, in the context of s 122(1)(b), the “prefatory words in s 122(1) ‘in spite of s 120’ make plain that an otherwise infringing use may be excused if the conditions of s 122(1) are satisfied” (Emphasis in original.).

7.1    Own name defence – s 122(1)(a)(i)

277    Central to the s 122(1)(a) defence is the notion of use in “good faith”. The onus is on the respondent to establish that it was using its name in good faith: Australian Postal Corporation v Digital Post Australia (2013) 105 IPR 1 at [89] (per North, Middleton and Barker JJ).

278    I recently set out the principles associated with “good faith” in Bed Bath at [454]–[462] in the context of s 122(1)(b). I consider that the same principles apply to s 122(1)(a)(i).

279    The defence requires good faith use of the respondent’s name. At best, the defence applies to the respondent’s natural abbreviation of its name to “Fanatics”, but it would not extend to anything other than the respondent’s full corporate name, less any corporate indicia (such as LLC, Pty or Ltd), such as the FANATICS device mark, FOOTBALL FANATICS, SPORTS FANATICS, FANATICS MVP or FANATICS LIVE: Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 129 IPR 255 at [207] (per Nicholas, Yates and Beach JJ).

280    The “own name defence” authorities emphasise the importance of the honest belief on the part of the person using the name as a mark that no confusion would arise through the use of the name, and the necessity of evidence of the holding of that belief. Particularly where the person relying on the defence knew of the existence of the earlier mark at the time they adopted their own.

281    As Romer LJ said in Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226 at 235:

The mere fact that a trader is using their 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 they had no intention of wrongfully diverting business to himself by using the name.

282    This passage was cited with approval in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 at 32 (per Gummow J) and Australian Postal Corporation at [73] (per North, Middleton and Barker JJ). See also Dunlop Aircraft Tyres Ltd v Goodyear Tire and Rubber Company (2018) 134 IPR 220 at [266]) (per Nicholas J).

283    In Anheuser at [216]–[218], Allsop J (as his Honour then 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, and therefore use of the relevant marks was not in good faith. 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, 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.

284    Beach J observed at [108] in Flexopack, citing Australian Postal Corporation at [73]–[74], that “good faith” requires an honest belief at the time of adopting the mark that no confusion would arise due to the earlier mark’s reputation and there was no intention to divert trade. Beach J held that the honest belief is a necessary, but not sufficient condition: at [108]. His Honour also observed at that the test to be applied is, in one sense, objective. To avail themselves of the defence, a respondent must show that their conduct was in good faith, for example by showing that legal advice was sought: at [111]–[112].

285    In the context of “honest use”, Romer J in Re Parkington & Co (1946) 63 RPC 171 at 182, emphasised the importance of the “circumstances which attend the adoption of a trade mark in the first instance” to the consideration of “whether the use of that mark has or has not been an honest user”. Romer J further observed at 182 that “if the user in its inception was tainted it would be difficult in most cases to purify it subsequently”. I consider that statement is equally applicable to whether a trade mark is being used in good faith for the purposes of s 122(1)(a).

286    The facts of this case differ from those in, for example, McCormick or Killer Queen, in which the respondents were individuals using their own surname (or stage name) as a trade mark. Here, the respondent was not using its corporate name of longstanding. Until around late 2010, early 2011, the respondent’s name was FOOTBALL FANATICS. The respondent changed its name to FANATICS in around December 2010, after conducting a branding review.

287    In August 2010, around the time the change of name was being considered, the respondent opposed the applicant’s trade mark application for the FanFirm Word Mark and FanFirm Device Mark in class 25. Therefore, at the time it adopted its new name, the respondent knew of the applicant, the applicant’s business and its use of the FANATICS Word Marks.