ZIP Locked: Zip Co Fights on as Trade Mark Tug-of-War Heads to the High Court

Firstmac’s long-running dispute with Zip Co over the word “ZIP” has taken another sharp turn—this time with Zip Co applying for special leave to appeal to the High Court.

At stake? Whether “honest concurrent use” under s 44(3) of the Trade Marks Act 1995 (Cth)—as invoked via s 122(1)(f) to establish a defence to infringement—is to be assessed through the eyes of the actual user, or must pass muster under an “honest and reasonable person” standard.

In other words: is honesty in the eye of the beholder, or the court?

A Quick Zip Through the Facts

Firstmac, a large non-bank lender, has owned the registered trade mark for “ZIP” in connection with loans since 2004. Zip Co, meanwhile, entered the scene in 2013 with its now-ubiquitous “buy now, pay later” service—branded under names like Zip Pay and Zip Money.

Zip Co’s defence to Firstmac’s infringement claim leaned heavily on “honest concurrent use”—essentially arguing that even if the marks are deceptively similar, the use was honest, longstanding, and concurrent, and would have justified registration in its own right.

At first instance, Justice Markovic bought that argument. But the Full Federal Court didn’t.

The Appeal: A Matter of Perspective

In Firstmac Limited v Zip Co Limited [2025] FCAFC 30, the Full Federal Court (Perram, Katzmann and Bromwich JJ) reversed the primary decision and allowed Firstmac’s appeal. Critically, the Court held that the defences under section 122(1)(f) and (fa) had not been made out.

Why? Because Zip Co could not demonstrate that their use of the ZIP-formative marks (like “ZipMoney”) was honest—particularly after having received adverse examination reports in 2013 that expressly flagged Firstmac’s existing ZIP mark. Despite this, Zip Co forged ahead without legal advice, launching their branded services anyway.

The Full Court accepted that “honest concurrent use” involves a subjective inquiry—but with an objective overlay. As Perram J put it, “[T]he concept of honest use is in terms of a subjective inquiry, [but] this Court has accepted that it has an objective element.” Users must act as an “honest and reasonable person” would in assessing whether they can use a mark. The failure to do so may be fatal to the defence—even if there’s no affirmative finding of dishonesty.

The High Court Question: Honesty, Who Decides?

Zip Co’s special leave application to the High Court squarely challenges the Full Federal Court’s insistence on an objective overlay. They argue that “honest” in “honest concurrent use” should be determined subjectively—based on the user’s actual state of mind at the time of use—not by importing a “reasonable person” test.

To support this, Zip Co draws a comparison with a different high-profile case: the Katy Perry trade mark dispute with Australian fashion designer Katie Taylor. In that case, the issue of honest belief in non-infringement was similarly coloured by the subjective intention of the user—though not necessarily determinative.

Whether the High Court will grant leave and ultimately refine the contours of the “honest concurrent use” defence remains to be seen. But the outcome could reshape the risk calculus for trade mark users who proceed in the shadow of prior marks—particularly in an era of increasing brand overlap and digital ubiquity.

Why It Matters

The appeal goes to the heart of trade mark enforcement in Australia: Should a trader’s actual state of mind be enough to excuse an infringing use — or must they also act with the caution and diligence of a reasonable person?

For now, the “honest concurrent use” defence remains a high bar. But if Zip Co gets its leave — and succeeds — the standard might shift from “reasonable conduct” to “honest intentions.” That would make “honesty” not just a defence, but a question of perspective.

Stay tuned.

Energy Drinks, Trade Mark Battles and a Bunch of Bull

If there’s one thing Red Bull hates more than caffeine-free soft drinks, it’s brand drift. And the latest target of its energy-charged enforcement? A would-be beverage mark from China: SeaBull.

In a decision handed down on 5 June 2025, a delegate of the Registrar refused Shandong Fokun Investment Co’s SeaBull trade mark application — finding it deceptively similar to Red Bull’s registered trade marks under s 44 and reg 4.15A of the Trade Marks Act 1995.

The result? SeaBull joins the long list of Red Bull casualties. When it comes to any other “bull” in the beverage ring, Red Bull’s horns are always up.

The trade mark at issue was the simple word mark SeaBull applied for by Shandong Fokun Investment Co., Ltd on 10 November 2022 in class 32 for non-alcoholic drinks including energy drinks.

The applicant claimed “marine extract” inspiration for the name and tried to distance itself from any reference to Red Bull.

Nice try.

Red Bull’s opposition strategy was as charged as their drinks:

• Reputation: Global market leader, sold in 174 countries, with a dominant presence in Australia since 1999.

• Evidence: Brand Finance rankings, Aussie revenue and market share stats, and an empire of media assets — from Red Bull Racing to Red Bull Records.

• Registrations: Relied primarily on IR 1566986 — a stylised BULL mark registered for Class 32 beverages.

The delegate found that, although the competing marks were not substantially identical:

“The suffix ‘Bull’ is identical in substance… aurally, it comprises one of only two syllables… visually, the word ‘Bull’ is emphasised.”

While the addition of the word Sea tried to add a salty twist, it didn’t do enough to dilute the central BULL impression. The delegate found:

• Consumers are likely to read it as Sea + Bull (not a singular new word).

• “Bull” remains the essential, memorable element.

• Conceptually, SeaBull still evokes the idea of a bull — not something distinct enough to overcome the similarities.

The outcome: Real and tangible risk of confusion → Ground under s 44 established.

The applicant didn’t bother to show up to the hearing and didn’t provide evidence of honest concurrent use, prior use, or other extenuating circumstances. That made the path to refusal even smoother.

It’s difficult to win a case when you don’t adduce any evidence and don’t show up – just saying …

Red Bull won the case and, of course, received an order for its costs too.

🧠 IP Mojo Takeaways

• Adding a prefix won’t save you if the remaining mark is dominant and matches a well-known trade mark.

• Red Bull’s enforcement strategy isn’t just for copycats — even marginal similarities to the word BULL in Class 32 can trigger a full opposition.

• For global brands, consistent evidence of market presence, brand diversification, and registered rights are still the gold standard in trade mark opposition proceedings.

In the end, the only thing SeaBull gave Red Bull was another notch on its IP enforcement belt. For smaller beverage players looking to carve out their own brand, the message is clear:

Don’t poke the bull.

🟫 Cantarella Bros v Lavazza: The Espresso Shot Heard Around the IP World

There’s a certain irony in watching a decades-long trade mark fight over a word that literally means “gold” end up in ashes.

After a turbulent three-year legal grind, Cantarella Bros v Lavazza has finally run its course — with the Full Federal Court siding squarely with Lavazza and the High Court rejecting Cantarella’s special leave application in June 2025.

At stake? Ownership of the word ORO — Italian for “gold” — as a trade mark for coffee.

🧾 ORO, Take Two: The Sequel to Modena

You might recall Modena, the 2014 High Court showdown where Cantarella successfully defended ORO as being inherently adapted to distinguish Cantarella’s goods from those of others. That win secured their mark’s survival from a descriptiveness challenge under s 41 of the Trade Marks Act 1995.

But Modena never tested ownership. And that’s where things have now unravelled.

Enter Molinari — an Italian roaster whose Caffè Molinari Oro blends were apparently in Australia before Cantarella’s first use. Lavazza, whose own Qualità Oro has long glittered on shelves, used this to challenge Cantarella’s ownership under section 58 of the Act.

⚖️ The Trial Decision (2023): Ownership Is Everything

In October 2023, Justice Yates in the Federal Court found that Molinari used the mark ORO in a trade mark sense in Australia as early as 1995 — a full year before Cantarella. That meant Cantarella wasn’t the first user, and thus not the true owner of the ORO mark.

Even though Molinari hadn’t used it themselves for years, the court found no clear evidence of abandonment.

The result? The ORO registrations were invalidated. No valid mark, no infringement.

🧭 The Appeal (2025): Nice Try, But Still No Gold

Cantarella ran multiple grounds on appeal. They challenged the trial judge’s acceptance of evidence, the interpretation of what constituted trade mark use, and even suggested they had become an “honest concurrent user” (which might have had flow-on effects allowing them to keep it registered).

But the Full Federal Court wasn’t buying it. It affirmed the trial findings — particularly that:

• Molinari’s use of ORO was use as a trade mark,

• Molinari’s rights had not been abandoned,

• and Cantarella’s own arguments about honest concurrent use were too little, too late (that did not raise that argument at trial so could not raise it as a new ground on appeal … the result in that regard might have been different if they had raised it at trial).

They also dismissed Lavazza’s own cross-appeal on costs and distinctiveness. No party walked away with an espresso shot of victory on that front.

🏛️ High Court: Application Denied

On 12 June 2025, the High Court rejected Cantarella’s special leave bid — making the Full Court’s decision final.

It’s the second time Cantarella’s ORO mark has come before the High Court. But this time, the door was firmly closed.

🥊 Why It Matters

This is the latest in a string of cases reminding IP owners that first use means first rights — even if you think you’ve been using a mark for decades.

Some takeaways:

• Section 58 (ownership) is a potent weapon in cancellation proceedings.

• Evidence of early use — even murky invoices and decades-old packaging — can carry surprising weight.

• A prior foreign user who supplied products into Australia through distributors can claim ownership if the mark was used as a badge of origin here.

• The High Court’s Modena decision still stands, but it doesn’t immunise a mark from being struck out on ownership grounds.

☕ Final Sip

Cantarella’s gold-standard run with ORO has come to an end. With the marks cancelled and infringement claims torpedoed, it’s back to the blend board.

Meanwhile, Lavazza walks away vindicated — perhaps with a slightly smug crema.

Series Killers: When IP Australia Oversteps the (Descriptive) Mark

So you’ve filed a series trade mark in Australia. The marks are visually identical except for a single word that tweaks the service type — say, “BURST PLUMBING”, “BURST CLEANING”, “BURST GARDENING”.

All good, right?

Not if you ask IP Australia. According to the Office Manual, if your differentiating word describes only some of the services listed — even if it’s a totally non-distinctive, snore-worthy adjective — your series could be headed for rejection.

The rationale? That descriptive differences must apply to all of the goods/services claimed. Not some. Not most. All.

But is that legally correct?

Let’s unpack this.

The Law (Actually – and Not the Manual)

Section 51(1) of the Trade Marks Act 1995 (Cth) says you can register a series if:

“…the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:
(a) statements or representations as to the goods or services  in relation to which the trade marks are used or are intended to be used;
(b) statements or representations as to number, price, quality or names of places; or
(c) the colour of any part of the trade mark.”

So there is a legal restriction — but it’s not about whether the descriptive term applies to all of the goods or services. It’s about whether the difference falls into one of the above three categories.

If your only point of difference is a generic descriptor like “PLUMBING” or “CLEANING” — that’s likely a “statement as to the services” under paragraph (a). ✅ Tick.

Whether that statement applies to all of the services? That’s not part of the statutory text. That’s IP Australia adding friction by policy — not by law.

The Practice (Not the Law)

IP Australia’s position is that if “CLEANING” only refers to a handful of the listed services — say, home cleaning and commercial premises — while your broader list also covers plumbing, garden maintenance, and pest control, then the marks in the series are no longer sufficiently aligned for a single registration.

Their concern: you’re using the series construct as a backdoor to bulk file a grab bag of marks that lack genuine commonality.

But here’s the catch: section 51(1) does not impose a requirement that the differing matter — like “CLEANING” — must describe all of the goods or services. The section simply requires that:

1. The marks resemble each other in material particulars, and

2. The differences fall only within one or more of the categories listed:

   • statements about the goods/services,

   • statements about number, price, quality or place, or

   • colour of part of the mark.

So, if “CLEANING” is a statement about services (and it is), and the marks still resemble each other in their key features (say, the word “BURST” in a bold red typeface with a splash logo), then the Act is satisfied.

The idea that every descriptive word must apply to all services is IP Australia policy, not law. It’s not in the Act. It’s not in the Explanatory Memorandum. It’s simply a convenient threshold applied to keep the register tidy — which may be operationally defensible, but not legally required.

What’s a Brand Owner To Do?

If you’re filing a series mark where the only difference is a descriptive word that applies to some — but not all — of the listed services, you’ve got two choices:

1. Play nice: Redraft your specification to group services so that each descriptor applies across the board. That means breaking up the series and filing multiple applications.

2. Push back: If the examiner raises an objection, go back to the legislation. Section 51(1) only requires that:

   • The marks resemble each other in material particulars, and

   • The differences fall only within the three specified categories.

You may not win every time, but you’ll be on solid legal ground — and might just push the boundaries of a policy that’s grown a little too rigid for its boots.

There’s no additional legal requirement that the differing statement about services must relate to all of them. That’s a policy position, not a statutory one.

So if “BURST PLUMBING” and “BURST CLEANING” share all core branding elements and differ only by a word that is a statement about services — you’ve met the test under the Act.

Bottom Line

IP Australia’s insistence on descriptive uniformity across the entire class spec is not supported by s 51(1) of the Act. The only legal requirement is that the marks:

• Resemble each other in material particulars, and

• Differ only in respect of statements as to goods/services, price, quality, place, or colour.

Everything else? That’s Office convenience, not legislative command.

So don’t be afraid to push back.

And if that fails… well, split the applications, swallow the extra fee, and tell your accountant it was a “protest expense” … the cost of resisting bureaucratic overreach.