Zip Co Limited v Firstmac Limited

Firstmac Limited, a non-bank lender, had been the registered owner since 20 September 2004 of a trade mark for the word ZIP in respect of 'financial affairs (loans)' in Class 36 services. From early 2005, Firstmac marketed home loan products under the ZIP mark. At the beginning of 2014, Firstmac ceased offering its ZIP home loan products to new customers, although it continued to manage and service existing loans. In September 2018, Firstmac launched a new home loan under the name ZIP through an online lender called Loans.com.au. In 2012, Mr Diamond, an entrepreneur, began considering a business involving online short-term consumer lending with rapid processing. He considered the name ZIP to be a short and catchy way to evoke fast movement. In November 2012, Mr Diamond registered the domain name www.zipmoney.com.au. Mr Gray, who joined the enterprise, conducted internet searches for ZIP in early 2013 which returned no results for Firstmac's ZIP home loan products. By June 2013, Messrs Diamond and Gray had settled upon using the names ZIP and ZIP MONEY for their business. Neither was aware of Firstmac's use of ZIP for its home loan products or that Firstmac had registered the Firstmac Mark. Zip Co Limited and related companies subsequently used marks incorporating the word ZIP in connection with financial services. Firstmac brought infringement proceedings under s 120(1) of the Trade Marks Act 1995 (Cth). The Zip Companies relied on the defences of honest concurrent use under ss 122(1)(f) and 122(1)(fa) read with s 44(3). The trial judge found the defence established, starting the honesty assessment in June 2013 when Messrs Diamond and Gray were unaware of the Firstmac Mark. The Full Federal Court reversed, holding the defence was not made out. The High Court dismissed the appeal, affirming the Full Federal Court's decision in Firstmac Limited v Zip Co Limited [[2025] FCAFC 30].

• What is the date at which the defences of honest concurrent use under ss 122(1)(f) and 122(1)(fa) of the Trade Marks Act 1995 (Cth), read with s 44(3), are to be assessed?
• What is the meaning of 'honest' in s 44(3)(a) of the Trade Marks Act 1995 (Cth)?
• On whom does the onus of proof of honesty lie, and how is it framed?
• Do the defences of honest concurrent use operate once and for all at the date of first potential infringement, or separately for each occasion of potential infringement?
• Was it an error for the trial judge to start the assessment of honesty at a time earlier than the date of first potential infringement?

• ratioThe defences of honest concurrent use under ss 122(1)(f) and 122(1)(fa) of the Trade Marks Act 1995 (Cth), read with s 44(3), are to be assessed at the time of each alleged potential infringement (i.e., the date of the relevant use of the trade mark as a trade mark), not at the date of filing a defence or the date of the hearing. — established [47, 48, 51, 55, 56]
• ratioThe defences of honest concurrent use do not operate once and for all potential infringements based on the first potential infringement. Since every occasion of the use of a mark in trade in Australia within s 120 can be a separate potential infringement, the defences apply separately to each such occasion. — established [56, 64]
• ratioThe meaning of 'honest' in s 44(3)(a) of the Trade Marks Act 1995 (Cth) requires that the alleged infringer had a state of mind that is honest by the standards of ordinary, decent people. The inquiry is into the person's actual state of mind (including knowledge, belief, or intent), which is then assessed against the objective standard of ordinary, decent people. It is not assessed by reference to the subjective standard of honesty held by the person alleged to have been dishonest. — established [57, 58, 59, 60]
• ratioThe inquiry into honesty under s 44(3)(a) is not correctly described as 'objective' in the sense of being abstracted from the particular person by reference to the intention or purpose of a reasonable person in their position. It is an error to substitute carelessness for dishonesty by requiring that an allegedly infringing party take steps that an honest and reasonable person would take to ascertain its ability to use the trade mark. — established [71, 72, 73]
• ratioKnowledge of a competing registered trade mark is an important factor in assessing honesty under s 44(3)(a), and a finding of knowledge will ordinarily weigh strongly against a finding of honesty. However, mere knowledge of the competing mark will not, by itself, preclude a finding of honesty. — established [60, 62, 70]
• ratioThe onus of proof in establishing the defence of honest concurrent use under s 44(3)(a) lies on the party asserting the defence. The issue is not whether the alleged infringer was dishonest, but whether the alleged infringer has discharged the onus of positively proving their honesty at the time of each potential infringement. — established [67, 69, 70]
• ratioIt is an error for a trial judge assessing honest concurrent use under s 44(3)(a) to start the assessment of honesty at a time earlier than the date of first potential infringement and then to ask whether conduct that was proved to be honest at that earlier point had become dishonest at a later point. That approach distorts the onus of proof. — established [66, 67]
• ratioFor the purposes of the honest concurrent use defence under s 44(3)(a), where a party was aware of the likelihood of a material impediment to the legitimate use of their marks (such as knowledge of adverse examination reports from IP Australia indicating that their marks closely resembled an earlier registered mark) and chose not to engage with those reports, the party has not proved their honesty, unless they lead evidence sufficient for a finding that they nevertheless considered that consumers would experience no confusion, or that although they had not turned their mind to these matters, they had not been reckless in failing to do so. — established [70]
• ratioThe statutory defences of honest concurrent use in ss 122(1)(f) and 122(1)(fa) did not introduce a radical break in the history of the doctrine. Rather, those paragraphs, together with s 44(3), introduced the doctrine as a defence to infringement to achieve coherence with a scheme that permits registration of marks that are the same, substantially identical, or deceptively similar to each other and precludes action for infringement by one registered owner against another under s 23. — established [47, 48]
• ratioThe defences in ss 122(1)(f) and 122(1)(fa) maintained coherence with the registration scheme by providing that if a potentially infringing mark could have been registered at the time of potential infringement, then no infringement will occur. It would be incoherent for a defence to infringement to arise based upon the potentially infringing mark being capable of registration many years later when actual registration years later would not be sufficient. — established [48]
• ratioThe opening words of s 122(1) — '[i]n spite of section 120, a person does not infringe a registered trade mark when' — direct attention to the date of potential infringement. Every paragraph of s 122(1) that precedes and follows ss 122(1)(f) and 122(1)(fa) is concerned with a defence that operates at the time of potential infringement. — established [51]
• obiterHonesty is a threshold requirement for the defences of honest concurrent use under s 44(3)(a). Other matters such as the extent of use, degree of likely or actual confusion, and general blameworthiness or disentitling conduct, are matters which feature in the broad discretion of the Registrar as to whether the hypothetical registration would occur. — applied [42]
• obiterA person may establish honesty under s 44(3)(a) if they had no knowledge of the competing mark at the date of the alleged infringing use. However, the person may have to convince a court that they did not deliberately abstain from searching the Register for fear of what it might reveal. A careless failure to search the Register will not, by itself, establish a lack of honesty. — applied [63]
• obiterSection 122(1)(fa) was introduced to extend the defence of honest concurrent use to apply to a trade mark that is substantially identical with, or deceptively similar to, the registered trade mark, and it is likely that s 122(1)(f) is now entirely subsumed by s 122(1)(fa). — applied [40]

• cited_applied Peters v R [[1998] HCA 7] — Applied at [86] for the general approach to the meaning of dishonesty — a subjective state of mind assessed against the objective standard of ordinary, decent people — which the Court transposed to the trade marks context.
• cited_applied Peters v The Queen [[2013] VSCA 222] — Applied for the general approach to dishonesty, consistent with the test drawn from [[1998] HCA 7].
• cited_applied Australian Woollen Mills Ltd v F S Walton & Co Ltd [[1937] HCA 51] — Applied for the proposition that knowledge of a competing mark does not, by itself, preclude a finding of honesty in the context of honest concurrent use.
• referred Taylor v Killer Queen LLC [[2026] HCA 5] — Referred to at [85], [87], [94], [133] in the course of the Court's reasoning.
• referred [[2025] FCAFC 30] — The Full Federal Court decision below, affirmed in full. Referred to at [56], [61], [67], [75] in the Court's reasoning on the date of assessment, honesty, and onus of proof.
• referred Firstmac Limited v Zip Co Limited [[2023] FCA 540] — The trial judge's decision, referred to at [56], [72], [271] in identifying the errors in the assessment of honesty and the starting date for the analysis.
• referred New South Wales Dairy Corp v Murray Goulburn Co-Op Co Ltd ("Moo case") [[1990] HCA 60] — Referred to at [8], [175], [201] in the Court's discussion of the historical development of the honest concurrent use doctrine and the meaning of honesty.
• referred McCormick & Company Inc v McCormick (includescorrigenda dated 18 September 2000) [[2000] FCA 1335] — Referred to at [31], [32], [90] in the Court's discussion of honest concurrent use principles.
• referred Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [[2023] HCA 8] — Referred to at [7], [39] in the Court's reasoning.
• referred Residual Assco Group v Spalvins [[2000] HCA 33] — Referred to at [27] in the Court's reasoning.
• referred Macleod v R [[2003] HCA 24] — Referred to at [37] in the Court's reasoning on statutory interpretation.
• referred Automotive Invest Pty Limited v Commissioner of Taxation [[2024] HCA 36] — Referred to at [115] in the Court's reasoning.
• referred E & J Gallo Winery v Lion Nathan Australia Pty Ltd [[2010] HCA 15] — Referred to at [51] in the Court's reasoning.
• referred Pereira v Director of Public Prosecutions [[1988] HCA 57] — Referred to at [67] in the Court's reasoning.
• referred Kural v R [[1987] HCA 16] — Referred to at [67] in the Court's reasoning.
• referred Campomar Sociedad Limited v Nike International Limited [[2000] HCA 12] — Referred to at [53] in the Court's reasoning.

• Trade Marks Act 1995 (Cth) s 122(1)(f) — Defence to infringement where court is of opinion person would obtain registration of the trade mark. The defence is assessed at the date of each potential infringement. Likely now entirely subsumed by s 122(1)(fa). [1, 40, 47, 48, 50, 51, 52, 53, 54, 56]
• Trade Marks Act 1995 (Cth) s 122(1)(fa) — Defence to infringement where person uses substantially identical or deceptively similar mark and would obtain registration. Introduced by the Trade Marks and Other Legislation Amendment Act 2001 (Cth) to extend the defence to deceptively similar marks. Assessed at the date of each potential infringement. [1, 40, 47, 48, 50, 51, 52, 53, 54, 56]
• Trade Marks Act 1995 (Cth) s 44(3) — Honest concurrent use exception to refusal of registration of substantially identical or deceptively similar marks. Read together with ss 122(1)(f) and 122(1)(fa) to provide the defence of honest concurrent use to infringement. [3, 41, 42, 47, 56]
• Trade Marks Act 1995 (Cth) s 44(3)(a) — Requirement of honest concurrent use. 'Honest' requires the alleged infringer to have had a state of mind that is honest by the standards of ordinary, decent people. The inquiry is into the person's actual state of mind, assessed against that objective standard. The onus lies on the party asserting the defence to positively prove honesty at the time of each potential infringement. [3, 42, 57, 58, 59, 60, 62, 63, 66, 67, 69, 70, 71, 72, 73]
• Trade Marks Act 1995 (Cth) s 120(1) — Provision establishing trade mark infringement by use of substantially identical or deceptively similar sign. Each occasion of use of a mark in trade in Australia can be a separate potential infringement. [1, 26]
• Trade Marks Act 1995 (Cth) s 23 — Precludes action for infringement by one registered owner against another registered owner of substantially identical or deceptively similar marks. The honest concurrent use defence achieves coherence with this provision. [47, 53]
• Trade Marks Act 1995 (Cth) s 88(2)(c) — Rectification of Register by cancellation where use of mark likely to deceive or cause confusion. [30, 34, 35, 36]
• Trade Marks Act 1995 (Cth) s 89(1)(c) — Discretion not to grant application for rectification of Register. [34, 37]

This is the first High Court decision to authoritatively settle the date for assessing the honest concurrent use defence under ss 122(1)(f) and 122(1)(fa) of the Trade Marks Act 1995 (Cth), resolving conflicting approaches. It establishes that the defence must be proved at the date of each alleged potential infringement, not at filing or trial, and that it applies separately to each occasion of potential infringement rather than once and for all. The Court's definitive statement on the meaning of 'honest' in s 44(3)(a) — a subjective state of mind assessed against the objective standard of ordinary, decent people — draws on the general law of dishonesty from [[1998] HCA 7] and [[2013] VSCA 222] and transposes it to trade marks law. The decision clarifies that the onus is framed positively: the alleged infringer must prove honesty, not merely rebut dishonesty. Critically, the Court identifies a specific methodological error — starting the honesty assessment before the date of first potential infringement — that distorts the onus of proof. The decision leaves open several significant questions, including whether 'concurrent use' requires actual use of the registered mark or merely registration, the relationship between honesty and good faith under s 122(1)(a), and whether the expression 'honest concurrent use' is a composite concept excluding all blameworthy conduct.

• The defence of honest concurrent use must be proved at the date of each alleged potential infringement, not at the date of filing or trial. Practitioners must frame evidence and submissions by reference to the state of mind of the alleged infringer at each relevant date of use as a trade mark.
• The onus is on the alleged infringer to positively prove honesty — not merely to rebut dishonesty. This framing has practical significance for the sufficiency of evidence required.
• Knowledge of a competing registered mark will ordinarily weigh strongly against honesty but is not automatically fatal. However, awareness of a material impediment to legitimate use (such as adverse IP Australia examination reports) combined with a failure to engage with that impediment will be fatal unless the party leads evidence that they nevertheless considered consumers would experience no confusion, or that they were not reckless in failing to consider the matter.
• Do not start the honesty assessment at a date earlier than the first potential infringement. Starting at an earlier date when the party was innocently unaware of the competing mark, and then asking whether that innocence became dishonest, reverses the onus of proof.
• The honesty inquiry is not purely 'objective' — it is not abstracted from the particular person by reference to what a reasonable person would do. Carelessness is not a substitute for dishonesty. However, the subjective state of mind is measured against the objective standard of ordinary, decent people.
• A careless failure to search the Register will not, by itself, establish dishonesty. But a party may need to convince the court that they did not deliberately abstain from searching the Register for fear of what it might reveal.
• The Court left open whether 'concurrent use' requires actual use of the registered mark or merely its registration, and whether the composite expression 'honest concurrent use' historically excluded all blameworthy conduct beyond mere dishonesty. These remain live issues for future litigation.
• Section 122(1)(fa) likely subsumes s 122(1)(f) entirely. Practitioners should plead both provisions but should be aware that s 122(1)(fa) is the operative defence in most cases.

• [[2025] FCAFC 30]
• [[1998] HCA 7]
• [[1937] HCA 51]
• [[1990] HCA 60]
• [[2023] FCA 540]
• [[2026] HCA 5]