Fanatics, LLC v FanFirm Pty Ltd [2025] FCAFC 87
The Full Federal Court of Australia has passed judgment on a clash between local sports merchandiser, FanFirm Pty Limited, and a global opponent, Fanatics, LLC in a case about when the line between trade mark co-existence and infringement should be drawn.
The Players
Home Team: FanFirm Pty Ltd (FanFirm) – an Australian company operating since 1997 that specialises in arranges sports tours and selling related merchandise.
Away Team: Fanatics, LLC (Fanatics) – a major U.S based online retailer of officially licensed sports merchandise and apparel, selling through multiple via e-commerce platforms. Fanatics’ long list of officially licensed partnerships includes the NBA, F1, NFL and NASCAR.
The Trade Marks
This case concerns two of FanFirm’s registered trade marks. One is the word mark FANATICS and the other is the below device mark (the FanFirm Marks).
The FanFirm Marks were originally registered in April 2008 under various trad mark classes, which included class 25 for clothing and other apparel. In 2018, FanFirm extended the registration of these marks to include class 35, which broadly relates to the use of marks in the provision of retail services.
Fanatics, in the meantime, registered several marks in Australia between 2008 and 2017, such as the device mark below and the word mark FANATICS, also in classes 25 and 35.
The Dispute
Despite both holding marks containing the word FANATICS, FanFirm and Fanatics have largely coexisted without much conflict, save for some trade mark oppositions over the years which were ultimately withdrawn.
During this time, Fanatics had focused primarily on selling merchandise related to US and European-based sporting leagues and teams. FanFirm, in contrast, maintained a narrow focus on Australian leagues and teams.
However, in 2020, Fanatics began developing a stronger profile in the Australian market and expanded its partnerships to include local Australian brands and leagues, such as Rebel Sport and the AFL, which led FanFirm to commence proceedings for the infringement of the FanFirm Marks.
In response to FanFirm’s claims, Fanatics argued that the FanFirm marks should be removed from the register on the basis that they were likely to deceive or cause confusion. In particular, that consumers would be caused to wonder that FanFirm’s products are made by or somehow affiliated with Fanatics.
Half Time: The Primary Judgment
In July 2024 the primary judge of the Federal Court found that the two companies were indeed trade rivals and both, at their heart, focused on the sale and supply of sports merchandise to sports fans.
The Court held that FanFirm had priority with respect to FANATICS, due to its earlier use of the word mark in Australia in both the apparel (class 25) and retail services (class 35) and as such, Fanatics had infringed the FanFirm Marks.
The primary judge also rejected Fanatics’ arguments and dismissed its cross claim that the FanFirm marks should be removed from the Australian register.
In addition, it was held that Fanatics’ use of FANATICS did not support its class 35 registration for retail services. Merely placing FANATICS on its products was insufficient to demonstrate use of the mark with respect to retail services and so the court ordered that class 25 be removed from Fanatics’ trade mark registrations.
Fanatics appealed this decision to the Full Court of the Federal Court of Australia.
Full Time: The Appeal
In July 2025, the Full Court of the Federal Court dismissed Fanatics’ appeal. The Federal Court agreed with the primary judgment that merely applying a mark to products does not constitute use under class 35. Rather, the mark must operate as an identifying factor as to the provider or source of the retail service.
The Full Federal Court also agreed with the prior decision that FanFirm was the earlier user of FANATICS in Australia and therefore, FanFirm could not be infringing Fanatics’ trade mark. Notably, Fanatics was unable to demonstrate honest concurrent use of the mark, nor a good faith defence on the basis that the company was using its own name. This is because Fanatics did not, in fact, act in good faith – it was aware of FanFirm’s longstanding use in Australia at the time of registering its marks and was unable to provide sufficient evidence of honest use.
Extra Time?
A further appeal is unlikely, as from a decision of the Full Federal Court requires special leave from the High Court to do appeal.
Final Scoreboard: Key Takeaways
This decision is a stark reminder that even global brands are not given a sure bet with respect to a particular mark or component of their branding in Australia. Where there is use of a mark predating the arrival of an international company in Australia, that earlier use is the ticket to ownership and will be granted priority where there are competing registrations.
Fanatics’ loss of its class 35 registration demonstrates the importance of the actual use of a mark in Australia – where the use in question does not sufficiently encapsulate the category under which the mark is registered, this could be an avenue through which registration can be lost or opposed. This also demonstrates the importance of accurate and detailed record-keeping with respect to the use of your marks, so as to be able to prove that your use predates that of any potential opponents if the question was to arise.
