Zip trade mark a bruiser

John Kavanagh Mortgages

A trademark dispute between Firstmac and Zip Money, which has been going on since 2016, is about to get another airing.

Specialist mortgage lender Firstmac has commenced proceedings in the Federal Court against the consumer finance company Zip Co Ltd, alleging infringement of a Firstmac trademark – ZIP.

First has a loan called the ZIP home loan – a line of credit provided through a Visa debit card. It has been in the market since 2005 but has not been offered to new customers since 2013.

The dispute started in 2016, when Zip applied to the Registrar of Trade Marks for the removal from the register of Firstmac’s ZIP trademark, which was registered in 2004.

Early in 2017, Firstmac filed a notice opposing the removal, arguing that it has used the trademark in Australia on relevant goods during the “relevant period” – three years leading up to the time of Zip’s application.

The Registrar of Trade Marks heard the matter in September last year.

Firstmac argued that although the ZIP home loan was no longer on sale, it continued to manage and service loans under the trademark. In 2016, there were about 1500 ZIP loans outstanding.

It argued that the “rights arising from registration of the Trade Mark” should not be confined to new lending but also the ongoing management of existing loans.

Zip argued that this did not constitute “sufficient use”, as required to maintain a trademark registration.

The Registrar ruled in Firstmac’s favour, saying it met “the minimum requirements of establishing bone fide use of the Trade March in the relevant period” and that there was “genuine commercial use” of the ZIP trademark.

In the latest action Firstmac is returning serve, seeking a court ruling that would stop Zip Co using the trademark

Zip issued a statement saying it has used “Zip” marks extensively since its business started in 2013, without Firstmac raising any issue.

Zip says it will defend the proceedings. It says it is concerned about recent market activity by loan.com.au, a subsidiary of Firstmac, using ZIP references in relation to home loan and debit card products.