Australian sports travel firm The Fanatics in legal fight with US giant Fanatics
Mediation is set for Tuesday in a bitter Federal Court fight between a well-known Australian sports tours and clothing firm and a heavyweight US company worth more than $US30bn.
A small but well known Australian sports travel and clothing company is locked in a court stoush with a $31bn ($47bn) US giant over a trademark dispute that could threaten deals such as a $100m contract signed with the AFL this year.
Australian firm The Fanatics, started by Sydney entrepreneur Warren Livingstone in 1997 and which has achieved a high level of notoriety for its boisterous tour groups of fans at cricket’s Ashes and tennis tournaments, has sued US sports good company Fanatics in the Federal Court alleging trademark breaches.
Mr Livingstone’s company FanFirm Pty Ltd alleges Fanatics, headed by US billionaire Michael Rubin and counting investors such as rapper Jay-Z, has breached its trademarks by selling clothing and accessories with the “Fanatics” brand to Australian companies.
FanFirm has claimed the American giant, which is reportedly considering a huge initial public offering within two years and has a database of about 90m customers worldwide, has engaged in misleading and deceptive conduct in Australia and infringed on its trademarks.
Mr Livingstone’s company has asked the Federal Court to permanently restrain Fanatics from “using the registered trademarks or any signs … substantially identical or deceptively similar” to FanFirm’s registered trademarks, according to court documents.
If that were to happen, it could put at risk the agreement Fanatics signed with the AFL earlier this year to become an official licence partner with the league for the next 10 years – a deal that could be worth $100m or more to the AFL.
FanFirm filed legal action against Fanatics in the Federal Court last November and the respective parties have since traded legal letters, claims and counterclaims.
Mediation is scheduled in Sydney on Tuesday.
Australian company FanFirm has detailed dozens of instances of Australian consumers purchasing clothing and other goods from the US website of Fanatics, only for the customers to contact The Fanatics to complain about delivery delays, attempts to return purchases and the quality of the goods that had been delivered to them.
FanFirm alleges it “has suffered, and will continue to suffer, loss and damage” as a result of the alleged infringements” and “lost profits as a result of reduced sales” of its own The Fanatics-branded products on its website.
Fanatics, which is also set to buy the American business of ASX-listed PointsBet for $US150m as part of a push into sports betting in its home market, has since filed a cross-claim in the Federal Court against FanFirm.
The cross-claim alleges that FanFirm has actually breached its trademarks on a number of grounds, including “good faith use of its corporate name” in the Australian market, and that Fanatics’ own trademarks in Australia have been breached by The Fanatics selling sports-branded merchandise online.
Fanatics claims trade marks The Fanatics holds over goods such as clothing, footwear and headgear should be removed.
Mr Livingstone has in turn fought the claims and Justice David Yates has ordered the two companies to attend mediation.
Much of the dispute centres around when the respective companies started and when they first used each of their Fanatics brands.
Mr Livingstone established The Fanatics in 1997, while Fanatics started as a shop called Football Fanatics in a Jacksonville, Florida, shopping mall in 1995.
Both parties claim to have taken out trade marks in Australia at various times in 2008, though Mr Livingstone has claimed Fanatics had concentrated more on its original Football Fanatics name and that his brand The Fanatics has been well known in Australia for 26 years.
Fanatics claims that the parties have coexisted in the Australian market since about 2000 – a timeline Mr Livingstone has disputed – and if it is prevented from continuing to use its name and trade mark in Australia it will cause damage “including loss of reputation and goodwill and the cost and inconvenience associated with developing a new brand”.
“Conversely, if the respondent is permitted to continue to use its name and trade mark … it will cause no inconvenience to the applicant, but rather will continue the state of affairs that has prevailed for more than two decades,” Fanatics said in documents lodged with the Federal Court.
Fanatics did not respond to a request to comment by The Australian. Mr Livingstone would not comment.
In March this year, Fanatics head of global corporate development Zohar Ravid, said about its new AFL deal: “Australian fans are famously passionate about sport and we believe that historically they have been underserved in the range and quality of merchandise made available to them. We’re excited to change this, firstly with the AFL and then with other sports, clubs and retailers across Australia as we continue to grow our presence in this sport mad country.”
Fanatics claims more than 5.5m visits by Australians to its websites and that it has more than 12,000 Australia followers on its various social media sites.
More Coverage
No prohibition against owning a part of this SA gin company
You could soon own a stake in Adelaide’s Prohibition Liquor Co., with the company raising money for a big move to an historic distillery at Seppeltsfield.
Construction disruption: Australia’s largest glass maker collapses
Australia’s only maker of architectural glass, Oceania Glass, has been placed in administration with 260 jobs on the line less than a year after warning China was dumping cheap products here.