18 Aug 2025
The recent Full Federal Court decision in Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87 shows how easily trade mark disputes can get messy. Two businesses — U.S.-based Fanatics and Australian FanFirm — had both been using “Fanatics” in connection with sports merchandise and services in Australia for years. When Fanatics ramped up its Australian presence in 2020, FanFirm sued for trade mark infringement and won. On appeal, the Court upheld most of the infringement findings, cancelled several marks, and rejected all of Fanatics’ statutory defences.
The key message is simple: to rely on defences like “own name” or “honest concurrent use,” your adoption and use of the brand must have been honest from the start. Knowing another business uses a similar name isn’t automatically fatal, but you must genuinely believe no confusion will arise and have no intent to divert customers. Fanatics failed here because it adopted the name after knowing about FanFirm and couldn’t show evidence of honest belief. It also learned the hard way that having a registration in the wrong trade mark class doesn’t protect you for goods you actually sell.
For business owners, the takeaways are clear: choose your brand carefully, keep records to show honest adoption, register in the right classes, and act early to secure and protect your trade mark rights.
