The High Court has granted Zip Co Limited and Zipmoney Payments Pty Ltd leave to appeal the Full Federal Court’s decision in Firstmac Limited v Zip Co Limited [2025] FCAFC 30 (Perram, Kaatzmann and Bromwich JJ).
Here are the grounds in the Notice of Appeal:
Ground 1: The Full Court erred in finding that the Appellants had not established the honest concurrent use defence to trade mark infringement under ss 122(1)(f) or (fa) of Trade Marks Act 1995 (Cth).
Ground 2: The Full Court erred in finding that the date for assessing the honest concurrent use defence is the date of first infringement, rather than a later date such as the date the defence is raised.
Ground 3: The Full Court erred in dismissing the Appellants’ claim for cancellation of the Respondent’s trade mark 1021128 for ZIP (Firstmac Mark) under s 88(2)(c) of the Act.
I also understand that Fanatics LLC has applied for special leave to appeal from the Full Federal Court’s decision in Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87 (Burley, Jackson and Downes JJ)
In that decision, Fanatics LLC had some limited success in overturning the trial judge’s ruling that that sale from Fanatics LLC’s website of non-Fanatics branded merchandise (such as NFL jerseys) infringed FanFirm’s registration of “Fanatics” for clothing. The finding that Fanatics LLC infringed by offering for sale from its website “Fanatics” branded garments, however, was upheld. Fanatics LLC also lost its appeal on the defences under ss 122(1)(a) and s 122(1)(f) / (fa) invoking s 44(3) as well as its attempt to have FanFirm’s trade mark cancelled.