Regular readers of our articles will know that we have often discussed intellectual property ("IP") judgments coming out of Australia and New Zealand and that we like court cases that cover a range of IP issues. Such cases can, of course, serve as a very useful introduction to IP for people who find it confusing. We have also written on several cases that cover sport. In this article, we will be discussing an interesting IP case that was heard in Australia recently.
Here is a brief summary of the case:
The Aussies
An Australian company called FanFirm Pty Ltd ("FanFirm") offers goods and services that will be of interest to sports lovers, of whom there are of course quite a few in Oz (despite the fact that they're not very good at rugby). The goods sold are things like sports clothing, whereas the services rendered include things like travel arrangements. FanFirm has Australian trade mark registrations for the name Fanatics dating back to 2008. These registrations cover goods and services in classes 9, 16, 24, 25, 32, 38 and 39.
The Americans
An American company called Fanatics LLC provides online sports retail services. Until 2010 it used the trade mark Football Fanatics, but this was changed to just Fanatics and Flag Device (see below). Fanatics LLC has registrations in Australia for the trade marks Football Fanatics and Fanatics & Flag Device in classes 35 and 42. These registrations cover, inter alia, retail services and services relating to retail websites.
What could possibly go wrong?
Quite a lot it turns out! Although the two companies coexisted peacefully for many years, this changed in 2020. So why the change? In 2020, Fanatics LLC upped the ante significantly – it signed an agreement with a major Australian sports retail company that allowed it to sell merchandise featuring the trade marks of Australian sports teams.
Going the legal route
FanFirm threw the book at Fanatics LLC, suing for:
- Trade mark infringement
- Cancellation of Fanatics LLC's trade mark registrations
- A breach of the Australian Consumer Law - this related to misleading and deceptive conduct
- Passing-off
Fanatics LLC raised various defences:
- It claimed that it was using its corporate name in good faith
- It claimed that its use was honest concurrent use
- It claimed the right to use trade marks covered by its trade mark registrations for Football Fanatics and Fanatics & Flag Device
The judgment
The judgment was handed down by Judge Rofe. I discuss a few of the judge's findings:
- As regards the corporate name defence raised by Fanatics LLC, this is limited to the full name of the company, although it does not require 'corporate indicia' like (Pty Ltd) to be part of the trade mark. This defence is, however, limited to a word trade mark, so it does not cover a trade mark like Fanatics and Flag Device.
- As regards the honest concurrent use defence, this did not apply in this matter because Fanatics LLC had been aware of FanFirm's trade marks (it had in fact even opposed one of them) at the time when it chose to adopt the Fanatics and Flag Device trade mark.
- As regards the exercising the right to use a trade mark as a registered defence (by virtue of the registrations for Football Fanatics and the Fanatics and Flag Device trade mark), Justice Rofe agreed that Fanatics LLC's registrations did in theory provide a statutory defence to what would otherwise be infringing conduct.
However, the judge went on to say that the defence would no longer be available to Fanatics LLC because the registrations were going to be cancelled following the cancellation action brought by FanFirm against Fanatics LLC's registrations.
Justice Rofe also said that cancellation of a trade mark registration does not have a retrospective effect, which means that a trade mark registration will provide a defence to infringement whilst it remains on the Register, however, as soon as cancellation is ordered by the Court, the registration ceases to act as a defence against any future or subsequent infringing acts.
Finally
South African IP law shares many similarities with IP laws in Australia and New Zealand. Judgments in these countries will therefore continue to be of interest to us.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.