Fanatics appeal considers e-commerce trade mark use

Recently, the Full Federal Court heard an appeal in the matter of Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87¹

In summary, the primary decision considered competing claims regarding the longstanding use of the name “Fanatics” by Fanatics LLC (Appellant) and FanFirm Pty Ltd (Respondent) in connection with sporting goods and services.

For over two decades, the Appellant (an Australian sporting fan club) and the Respondent (a US sports merchandise company) coexisted.

Matters came to a head in 2020 when the Appellant’s presence in Australia intensified. The Appellant entered a partnership with Essendon Football Club to sell licensed merchandise and a deal with Rebel Sport to sell the Appellant’s branded apparel.²

The Respondent brought proceedings claiming the Appellant infringed its registered trade marks and sought cancellation of the Appellant’s registered trademarks.³ The Appellant cross-claimed.⁴  

Ultimately, the Court declared that the Appellant had infringed on the Respondent’s trade mark rights, resulting in:

• an injunction to permanently restrain the Appellant from using the word mark “Fanatics”; and
• the removal of the Appellant’s “Fanatics” registered trade marks (either entirely or with respect to the infringing classes of goods and services).⁵ 

Lavan previously considered the first instance decision (link to previous article here).

Grounds of appeal

In its Notice of Appeal, the Appellant identified 4 categories in which the primary judge erred in:⁶ 

1. making findings of infringement against the Appellant;
2. finding that three of Appellant’s trade mark registrations should be cancelled in relation to class 35;
3. dismissing its cross claim for trade mark infringement against the Respondent; and
4. dismissing the Appellant’s cross claims brought under the Australian Consumer Law and for passing off against the Respondent.

Full Court’s decision

The Full Court made a number of findings, including with respect to the use of a trade mark in connection with online retail services (referred to as the “website issue”). This article considers the “website issue” only.

Website Issue

This issue related to the sale of goods online. A distinction was made between the goods themselves and the online retail services.

Previously, the primary judge found that the use of “Fanatics” on the Appellant’s websites to promote and sell licensed sports merchandise, amounted to trade mark infringement.

On appeal, the Appellant argued that it used its mark “Fanatics” in relation to the online retail services only, as opposed to the goods sold online.

The Full Court agreed, finding that use of the “Fanatics” brand on the website did not constitute use in relation to, by way of example, the sporting apparel sold which was manufactured by other traders (e.g. Nike and Addidas).⁷ As such, the Full Court did not consider a consumer was likely to perceive that the use of “Fanatics” branding on the Appellant’s website extended beyond the branding relevant to the online retail sales of clothing of those products.⁸  

Consequently, the Appellant succeeded on this ground of appeal, reversing the previous decision that, by its use of the mark “Fanatics” to promote the sale of goods at its website, that it had infringed the Respondent’s trade marks.

Lavan comment

This appeal highlights the importance of understanding precisely what goods and services are provided in connection with a trade mark. Retail services, including those provided online, are materially different to the provision of the goods sold at retail.

This distinction is important, particularly when launching a new brand. It is imperative that clearance checks are conducted with respect to all possible goods and services (e.g. retail), as well as including an extensive list of applicable goods and services in any trade mark applications.

If you require advice in relation to your trade mark rights, do not hesitate to contact Iain Freeman or Andrew Sutton.

Thank you to Jayme Stubberfield, Solicitor, for their valuable research and assistance with this article.

Disclaimer

The information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.

Footnotes