The Full Court’s judgment in Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87 is a compact lesson in three things every trade mark practitioner and brand owner should keep front of mind, i.e. context matters for “use as a trade mark”; online presentation can cut two ways; and procedural history plus honesty in adoption of a mark can either make a good defense or jeopardize it.
Background
FanFirm, an Australian business built around tours and fan-oriented merchandise, had long operated under the “Fanatics” name in Australia. Fanatics, LLC is the large international e-commerce/partner-store operator that later adopted “Fanatics” more broadly. After years of apparent peaceful coexistence, both moved into overlapping commercial lanes around 2020 and litigation followed. The dispute concerned competing word and device marks, overlapping classes (notably clothing and related merchandise), and a group of important questions, i.e. whether particular uses (labels, swing tags, packaging, and website branding) amounted to trade mark use in relation to the relevant goods; whether certain goods fell within the registered specifications; and whether Fanatics’ statutory defenses (including “own name” and honest concurrent use) were available. The Full Court heard the appeal on these interlinked issues and gave judgment on 9 July 2025.
Issues
- Is placing the word FANATICS on care labels, barcode stickers, swing tags and outer packaging (often only seen after online delivery) “use as a trade mark” in relation to the goods?
- Does prominent use of FANATICS on a retailer’s website (domain name, page headers, logo) amount to use in relation to the goods depicted on that site, or only to the online retail service?
- Do items like towels, blankets, sports bags and water bottles fall within the “same description” of the registered class specifications?
- Were Fanatics’ statutory defences (s122(1)(a)(i), (e), (f)/(fa) and the honest concurrent-use arguments) available, or were they defeated by knowledge, timing and lack of evidence of honest belief?
How the Full Court approached “use as a trade mark” on labels?
The Full Court emphasized context and timing. Relying on the High Court’s touchstone authorities about badges of origin, the judges held that information labels and packaging used in the ordinary course of post-sale delivery will not necessarily read to consumers as a badge of origin if the consumer’s purchasing decision was already made on the basis of website material. In the online retail context the “stimulus” that leads to purchase is what the website presents to the consumer. The Court accepted Fanatics’ point that many of the care-label and barcode uses were visible only after the sale and that, judged objectively, an obscure care label (or a return address on a plastic parcel) is unlikely to be seen as a trade mark indicating origin of the garment. For those reasons the Full Court reversed the primary judge to the extent she found such isolated information-label uses were trade-mark use. That is a useful and pragmatic line, i.e. not every mention of a name on a label will be trademark-use, where prominence, timing and likely consumer perception remain decisive.
Website branding, i.e. when a domain becomes trademark use in relation to goods
The website issue is trickier. The primary judge had held that use of FANATICS in domain names and on website pages could amount to use in relation to goods displayed on the site; the Full Court accepted that position in principle but limited its application. It confirmed that where goods on a site are marketed under the site owner’s own brand (the “Fanatics-branded” or “Corporate” goods), the domain and site branding may properly be regarded as use in relation to the goods themselves. But where the retailer merely lists third-party branded jerseys or items that bear other, prominent manufacturer marks (Adidas, Nike, club insignia), the mere presence of the retailer’s domain or banner is more naturally characterized as branding for the online retail service rather than a badge of origin of the individual item. The practical takeaway: an online retailer must recognize a legal distinction between goods it brands as its own (which attract trade mark risk) and third-party stock it merely retails.
Goods of the “same description”
The Full Court reiterated a familiar theme, i.e. Nice classes are administrative; they do not irreversibly decide the question of similarity. Nevertheless, the Court found on appeal that the primary judge had overstated the reach of FanFirm’s class 24 specification in respect of towels and blankets (the Full Court took a more restrictive approach in parts). The lesson is conventional but important as one must show how consumers and trade perceive the goods in practice, not just point to class headings. Drafting of the specification and evidence at the initial stage matters, but so does contemporaneous trade reality, i.e. the commercial intent.
Defenses, cancellation and credibility
Fanatics sought to run a battery of statutory defenses. The primary judge rejected most of them and the Full Court was unsympathetic to Fanatics’ position. Key to that result was the finding that Fanatics adopted its name with knowledge of FanFirm’s prior Australian use and failed to show evidence of an honest belief that no confusion would follow. The absence of credible evidence of good faith adoption, plus the weight of FanFirm’s prior reputation in certain merchandise lines, made defenses under sec 122(1)(a)(i) and the honest concurrent-use avenues difficult to sustain. The Full Court also dealt with cancellation and rectification issues, ultimately upholding cancellation of certain Fanatics registrations under sec 88(2)(a) and related grounds, i.e. a significant practical exposure for an international operator that had assumed registration would be effective.
Practical lessons for practitioners and brands
Firstly, audit label practices. A care label tucked into an inner seam or a return-address on outer packaging is not necessarily a “badge of origin”, but it may be evidence of trade mark use if an overall presentation (including website and other branding) makes that label part of the origin story. Secondly, be rigorous about online store architecture, i.e. if you sell third-party branded goods, be careful that your site does not present those items as marketed under your own brand that blurs the line between retail service and product branding. Thirdly, where a domestic business has an established reputation, a later entrant who adopts a similar name will face uphill evidentiary tasks in showing honest concurrent use or good-faith adoption. Evidence of internal decision-making, timing, branding strategy and communications matters. Fourthly, don’t assume Nice classes will paper over commercial overlap, i.e. argue and prove the commercial reality.
Conclusion
Fanatics v FanFirm is a reminder that trade mark law lives in the details, i.e. the place of a word on a tag, the design of a product landing page, the chronology of adoption and the documentary trail of a naming decision. The Full Court has helpfully reined in an overbroad application of the badge-of-origin concept to post-sale labels while confirming the sensible rule that site branding can, in the right circumstances, be “use” in relation to goods. For brand owners and applicants, the case underlines two simple practices, i.e. i) think about how a consumer actually encounters your mark (not only where it sits on a registration), and ii) keep a contemporaneous record if you are adopting a mark in a crowded field, i.e. proof of honest intention and a clear marketing strategy can make the difference between a successful defense and cancellation
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