The Full Federal Court’s recent decision in FanFirm Pty Ltd v Fanatics, LLC [2025] FCAFC 87 highlights a crucial point of Australian trade mark law: use of a trade mark on goods is not the same as using it in relation to retail services. For businesses operating in e-commerce or expanding across jurisdictions, the decision is a timely reminder that precision matters in both trade mark strategy and how your brand is actually used.
The background
FanFirm is a well-established Australian business that’s operated under the name FANATICS since at least the early 2000s. It provides sports travel packages, organises fan experiences, and sells branded merchandise online. In 2008, FanFirm registered the word ‘FANATICS’ in Australia for clothing (Class 25) and for retail services, including online retail (Class 35).
Fanatics, LLC, a major US based online retailer of licensed sports merchandise, also secured Australian registrations for ‘FANATICS’ around the same time, including in Class 35. The two businesses coexisted for several years, but tensions escalated in 2020 when Fanatics, LLC began actively trading in Australia through a dedicated website and partnerships with local entities like Rebel Sport and the AFL (Australian Football League).
FanFirm commenced proceedings in the Federal Court seeking to cancel Fanatics, LLC’s Australian registrations and restrain its use of the FANATICS mark. In a detailed decision, Justice Rofe found that FanFirm was the first user of the FANATICS mark in Australia in relation to both clothing and retail services, and that Fanatics, LLC was not the rightful owner of the Class 35 registration. Her Honour also rejected Fanatics, LLC’s reliance on the honest concurrent use defence, finding that the company had adopted the mark despite knowing about FanFirm’s longstanding use.
Fanatics, LLC appealed. The Full Court has now confirmed that decision in full.
What the Court decided
The Full Court (Burley, Jackson, Downes JJ) upheld the primary judgment and dismissed the appeal, reaffirming several important principles under the Trade Marks Act 1995 (Cth) (the Act)
1. Trade mark use on goods is not use in retail services
This was the critical distinction. The Court confirmed that applying a mark to goods (even when sold online) does not amount to use in connection with retail services. Retail services involve more than just offering goods for sale; the trade mark must operate to identify the provider of the service (i.e. the retailer), not simply the source of the goods.
In other words, a logo on a hoodie doesn’t make it a retail brand – unless the mark is used to denote who is actually offering the retail service.
2. FanFirm was the true owner of the mark
The Court accepted that FanFirm had used the FANATICS mark in Australia since at least 2004 in connection with both merchandise and online retail services. That use predated Fanatics, LLC’s first use in Australia. Under section 58 of the Act, FanFirm was therefore the true owner of the mark for those classes, and Fanatics, LLC’s registration in Class 35 was liable to be cancelled.
3. Honest concurrent use defence failed
Fanatics, LLC attempted to rely on section 44(3)(a) of the Act, which allows registration in cases of honest concurrent use. But this argument was rejected (both at first instance and on appeal) because Fanatics, LLC was aware of FanFirm’s prior use at the time of filing its own application.
4. No discretion to retain the registration
The Court also declined to exercise its discretion under section 88(1) of the Act to allow the Class 35 registration to remain live. The prior use by FanFirm, the absence of use by Fanatics, LLC in relation to retail services, and the knowledge of FanFirm’s earlier rights all weighed against it.
Why it matters
This decision is a pointed reminder that trade mark use must align with what is claimed on the Register. For businesses (especially international ones entering the Australian market) it underscores four critical lessons:
- Retail services require more than selling branded goods: Use of a trade mark on merchandise does not equate to use for the service of retailing. If you claim protection in Class 35, you must be using the mark in a way that identifies you as the retailer, not just the brand.
- First use wins: Even a major global brand can lose a registration if a local business can show prior and continuous use of the mark in Australia.
- Use must match the registration: A trade mark registration is only as good as the use that supports it. Filing in multiple classes without clear evidence of use in each can leave a mark vulnerable to cancellation.
- Australian trade mark law is territorial: Reputation overseas is not enough. What matters is who used the mark first in Australia, and for what purpose.
FanFirm v Fanatics is a strong example of the careful analysis courts apply when assessing trade mark use, ownership, and entitlement. It’s also a reminder that ‘brand presence’ is not a shortcut to legal rights, especially in a jurisdiction where use, not just registration, underpins enforceability.
