Fanatics v Fanfirm: Why Trade Mark Use Must Match Registration Class
By Samantha Ludemann | Associate
The case Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87, recently decided by the Full Federal Court, reinforces a key principle under the Trade Marks Act 1995 (Cth) (‘the Act’), as noted by Samantha Ludemann, Associate at XVII Degrees:
“Trade mark rights are only enforceable when supported by genuine use that aligns with the class under which the mark is registered.”
The case illustrates that placing a trade mark on a hoodie or care label may constitute use for clothing (Class 25), but may not constitute use for retail services (Class 35), particularly where it does not function to identify the provider of the retail service. This distinction was made clear in the Full Federal Court’s ruling.
Overview
For years, both Fanatics, LLC and FanFirm Pty Limited operated under the name “FANATICS” in parallel, each targeting different markets.
- FanFirm Pty Ltd (‘FanFirm’) offers sports tours and licensed merchandise in Australia through its online store and has used the FANATICS name locally since the early 2000s, registering the word trade mark ‘Fanatics’ in 2008, with a priority date of 2 April 2008.
- By contrast, Fanatics, LLC (‘Fanatics’), a major U.S. retailer of licensed sports apparel, applied to register the word trade mark ‘FANATICS’ in Australia in 2009, with a priority date of 10 September 2008 , but did not actively trade in the Australian market until 2020.
The Dispute
In 2020, Fanatics entered the Australian market more aggressively through partnerships with Rebel Sport and the AFL. In response, FanFirm sued for trade mark infringement, alleging that Fanatics was using a confusingly similar mark in the same market. This marked the end of the peaceful coexistence between the two parties.
Primary Judgment
In the Federal Court decision, Justice Rofe found that FanFirm was the first to use the “FANATICS” trade mark in Australia in relation to both clothing and retail services, giving it priority over Fanatics, LLC.
Her Honour found that Fanatics’ use of the mark did not support its Class 35 registration, as it failed to clearly identify Fanatics as the retailer.
Her Honour also emphasised that trade mark use must match the class for which it is registered. Retail services require a clear link to the retail activity, not just branding on the goods.
Reliance on the honest concurrent use defence was rejected, with the Court emphasising that the U.S. company had adopted the mark despite being aware of FanFirm’s longstanding use in Australia.
Full Court Decision
In 2025, Fanatics LLC appealed to the Full Federal Court, arguing that its use of the Fanatics mark could demonstrate use in connection with retail services and sought to overturn the cancellation of its Class 35 trade mark registrations.
The Full Court (Burley, Jackson, and Downes JJ) dismissed this aspect of the appeal, agreeing with Justice Rofe that merely applying a mark to goods, even if those goods are sold online, does not constitute use in connection with retail services.
To establish use under Class 35, it is not enough to simply offer goods for sale; the trade mark must function to identify the provider of the retail service, not merely the source of the goods themselves. As a result, the appeal upheld the cancellation of Fanatics’ Class 35 trade mark registrations in Australia.
The Full Court disagreed with Justice Rofe’s finding that towels and blankets were “goods of the same description” as the raw textile materials listed in FanFirm’s Class 24 trade mark registration. It held that Class 24 covers textile materials, not the products made from them. Therefore, Fanatics’ use of its marks on towels and blankets was found not to infringe FanFirm’s Class 24 trade mark rights.
The Court recognised that FanFirm had been using the Fanatics mark in Australia since at least 2004 for both merchandise and online retail services, before Fanatics began operating locally. As a result, under section 58 of the Act, FanFirm was deemed the rightful owner of the Fanatics mark for these services.
The Full Federal Court upheld the primary judge’s findings that Fanatics failed to establish a defence of honest concurrent use under section 44(3)(a) of the Act. The Court found that Fanatics adopted the Fanatics mark despite knowing of FanFirm’s longstanding use in Australia, undermining any claim of good faith. Fanatics provided no evidence demonstrating an honest belief that its use would not cause confusion.
While Fanatics couldn’t rely on the defence of honest concurrent use, the Full Court found that the primary judge erred in concluding that section 58 of the Act would have prevented Fanatics from relying on this defence in respect of its stylised mark. The defence nonetheless failed on the facts. The Court also upheld the primary judge’s rejection of Fanatics’ attempt to rely on section 122(1)(a)(i) of the Act, which protects good faith use of a company’s own name, finding that the conduct lacked the necessary good faith. Ultimately, the Court concluded that Fanatics had taken a calculated risk in adopting and continuing to use the FANATICS marks and was not entitled to rely on the statutory defences.
Under section 88(1) of the Act, the Court has the discretion to allow a trade mark to remain on the register even if grounds for cancellation are established. However, in this case, the Court declined to exercise that discretion, choosing instead to cancel Fanatics’ Class 35 registrations. Prior use, lack of relevant use, and knowledge of existing rights all weighed against Fanatics.
Fanatics filed a cross-claim against FanFirm, alleging that FanFirm was infringing its trade marks and misleading consumers. However, the Court found no basis for these claims and dismissed them entirely following the cancellation of Fanatics’ trade marks.
The parties were directed to prepare draft orders reflecting the Court’s reasons and to file submissions on the question of costs.
The Court concluded with a reminder, while the legal practitioners’ skill was acknowledged, their Honours expressed concern about the lack of issue refinement and the repetition of arguments, describing it as a regrettable feature of modern trade mark litigation. As stated in paragraph [305]:
“In our view, legal practitioners bear a responsibility to confine the case of their clients to a reasonable compass. It is regrettable that this is not evident in the conduct of many contemporary cases involving the infringement of trade marks, of which this case is an example.”
Importance of the Decision
This case is significant because it clarified that:
- Using a trade mark on goods or websites does not automatically constitute use in connection with retail services under Class 35.
- It reinforces the importance of prior local use (first use) and reputation in trade mark disputes.
- The decision narrows the scope of what counts as “goods of the same description” and how infringement is assessed.
If you’d like to learn more or need assistance with trade mark registration, connect with us at XVII Degrees.
References
Full Federal Court. (2025). Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87. Federal Court of Australia. Retrieved from https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/full/2025/2025fcafc0087
