Australian company FanFirm secures ‘historic win’ over their large United States competitor Fanatics

Trademark disputes began in 2010 between two sport branded apparel companies - FanFirm Pty Ltd, a small Australian company and its large United States competitor Fanatics LLC.

FanFirm claims their recent win in the Federal Court of Australia is a ‘historic win’ over their large US competitor and one that has been coming since trademark disputes began in 2010.

FanFirm have sold Fanatics branded apparel since 1997. Fanatics LLC is the US$31 billion mega brand which is owned by billionaire Michael Rubin, Jay Z and many of the top leagues in the United States.

Up until last year Fanatics LLC sold licensed sports apparel bearing FANATICS branding for the NFL, NBA, MLB, NHL & other teams and Leagues into Australia via their website.

However, the Australian company FanFirm owns trademarks that include the word 'Fanatics' across various trademark classes (including for clothing and sportswear) and has 'first use' rights in Australia, having existed in the market in various forms since 1997. The Australian company began legal proceedings in 2022 against Fanatics LLC in the Federal Court of Australia for trademark infringement.

In July 2024, the Federal Court of Australia delivered a judgment that found, among other things, that Fanatics LLC had infringed FanFirm's trademark rights and that Fanatics LLC's own trademark for FANATICS for on-line retail store services featuring sports related and sports team branded clothing and merchandise should be partially cancelled.

Flowing on from that decision, the Australian Federal Court made an order restraining the US company from offering for sale and selling FANATICS branded sports apparel in Australia, including via the US company's website.

In November last year, Fanatics LLC appealed the July 2024 decision.

So both parties returned to court, this time to the Full Federal Court of Australia and before three Australian Federal Court judges. Fanatics LLC argued they had good faith and honest and concurrent use of Fanatics.

However, the three judges unanimously dismissed those claims in a further win for the Australian company.

The combined effect of the first instance and appeal judgments is that no Fanatics branded jerseys or associated Fanatics branded apparel can be offered for sale or sold in Australia.

The NFL, NBA, MLB, NHL & other leagues, players' associations, team owners and various players' unions have invested in Fanatics LLC who make various apparel for the leagues and some players. Many thousands of FANATICS branded items that are currently viewable on the Fanatics LLC website will not be available for sale in Australia under the judgment.

Owner and founder of FanFirm, the owner of 'Fanatics' trademarks in Australia, Warren Livingstone shared "we love North American sports leagues in Australia and Fanatics LLC have said that Australia is their third biggest market for apparel sales. So, while it's a big loss for them, it's a monumental win for us.

“We never doubted we would win. The evidence was clear from both parties. We had sold merchandise with Fanatics branding for over a decade before they began to use that brand. It really was David v Goliath. We are relieved, but ecstatic."

Image top. Australia's Fanatics win landmark trademark case; image below: Fanatics in Qatar Credit: Salty Dingo 2022