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It is fast becoming a case of 'he said, she said' as the trademark infringement allegations levelled at Zip Co develop.
When the proceedings were lodged yesterday by Firstmac Zip Co came out swinging, saying that Firstmac is only now choosing to launch proceedings against it, despite Zip Co using the phrase in question, 'ZIP', since 2013.
However, Firstmac in a statement says that Zip Co first attempted to challenge Firstmac's trade mark registration in 2016 by filing an application to have that registration removed on the basis of non-use.
The Delegate of the Registrar of Trade Marks (in its decision published in December 2018) found the application by Zipmoney to be unsuccessful. No appeal was lodged by Zip Co or Zipmoney in relation to that decision.
Firstmac trademarked the term 'ZIP' to brand one of its mortgage plans - a contract that when entered into can last for a significant period of time for the customers. As a result, there are still Firstmac customers that are currently paying off one of these ZIP loans from Firstmac. It was likely on this basis that Zip Co's attempts to have the registration removed were blocked.
"It is following that decision, and the refusal of Zipmoney and Zip Co to comply with Firstmac's demands, that the proceedings before the Federal Court of Australia were commenced," says Firstmac.
"Firstmac, and its affiliates and licensees, have used and have every intention to continue to use (and/or license the use) of the ZIP mark in relation to their respective loan products. Firstmac has provided no representation to the contrary to Zipmoney or Zip Co."
When asked why Zip Co did not make shareholders aware that attempts to have Firstmac's trademark removed were unsuccessful a spokesperson from Zip Co said such action was not required.
"The removal application was not initiated and did not arise out of any question concerning Zip's ability to use the zip marks. On that basis, there was nothing to advise shareholders. We remain very confident we are entitled to continue to use the zip marks," says a Zip Co spokesperson.
Firstmac alleges that Zip Co has infringed its trademark 'ZIP' which is registered in respect of 'financial affairs', specifically home loans.
In response Zip Co has also called the activity of Firstmac's subsidiary Loans.com.au into question.
It says Loans.com.au is promoting home loan and debit card products by reference to the trademark ZIP.
Zip Co says it is "considering what action it will take in relation to this conduct".
Zip Co has engaged Corrs Chambers Westgarth to defend the proceedings which are becoming murkier by the day.
Shares in Zip Co are down 1 per cent to $2.98 per share at 12.15pm AEST.
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