Zipped: Firstmac v Zip Co

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Firstmac has won its appeal and the Zip Co companies have been found to infringe Firstmac’s ZIP registered trade mark.

For obvious reasons, this is just going to be a fairly bald summary.

Infringement

First, the Full Court held that Zip Co’s formative ZIP marks such as ZIP PAY, ZIP MONEY and:

were deceptively similar to Firstmac’s ZIP trade mark.

The honest concurrent user defence

Secondly, the Full Court held that Zip Co companies were not honest concurrent users for the purposes of section 44(3)and so the defence based on sections 122(1)(f) and (fa) failed. On this point, the Full Court emphasised that the onus was on Zip Co to establish it was an honest concurrent user; not on Firstmac to prove it was not.

The reasons for the failure of the honest concurrent user defence also meant that Zip Co could not rely on the defence under section 122(1)(a) for use in good faith of its own name.

Cancellation because Firstmac’s mark had become deceptive

Thirdly, the Full Court accepted that as a result of Zip Co’s reputation, the use of ZIP by Firstmac would be deceptive or confusing for the purposes of section 88(2)(c). The Full Court, however, exercised the discretion under section 89 and refused to order cancellation.

This case is the reverse of the Katy Perry case.[1] Both Full Courts did reject reliance on the old law “blameworhy” conduct cases in applying section 88 and considered that “blameworthy” conduct was one, but not the only, consideration to be taken into account in the exercise of the discretion under section 89.

In the Katy Perry case, the (differently constituted) Full Court found that Ms Taylor knew of Ms Hudson’s reputation as Katy Perry and that artists such as Ms Hudson exploited their celebrity through the sale of branded merchandise such as t-shirts and the like. Consequently, in applying for her trade mark with that knowledge, Ms Taylor was precluded from relying on section 89. For example, the Full Court said at [317]:

We consider that Ms Taylor’s act of filing the trade mark application with knowledge of Ms Hudson, her reputation, and her mark in circumstances where she also knew that popular music stars, such as Ms Hudson, lend their names (and trade marks) to be used in connection with clothes and sell merchandise at their concerts, and accepted such conduct as a common practice, is sufficient not to enliven the discretion under s 89.

See also at [342] – [343].

In contrast, Firstmac was not infected with such knowledge when it registered its trade mark; the Zip buy now pay later business not even being in existence at that time. At [175], the Full Court explained:

… where, as here, the primary judge found that Firstmac was without fault, and we have found that the respondents did not prove that their use of the Firstmac Mark was honest, to exercise the discretion to remove the Firstmac Mark would reward “the assiduous efforts of a misappropriating user”. To pick up on what Brennan J said in Murray Goulburn at 389, it would place a premium on those efforts.

The Full Court also examined the other mandatory considerations prescribed under section 89(2).

Removal for non-use

Fourthly, the Full Court held that Firstmac had proved use of its trade mark through advertising and promotion of its re-launched product such as:

Accordingly, Firstmac had satisfied its burden under section 100(1)(c) to defeat Zip Co’s action for non-use.

Firstmac Limited v Zip Co Limited [2025] FCAFC 30 (Perram, Katzmann and Bromwich JJ)

  1. Killer Queen, LLC v Taylor [2024] FCAFC 149; 306 FCR 199 (Yates, Burley and Rofe JJ). ?

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