Trade Marks Sub-area NPA logo with link NPA logo with link

Trade Marks Sub-area

About this Sub-area

The Trade Marks Sub-area consists of:

  • any trade mark dispute, with respect to validity of a trade mark and/or distinguishing goods and services (including in respect of a letter, number, word, phrase, sound, smell, shape, logo, picture and packaging).
  • "geographical indication" disputes involving a geographical indication or order term signifying a related attribute of goods.
  • an appeal from a decision of the Registrar of Trade Marks.

Practice Notes

All practice notes are to be read with the Central Practice Note.  It is the essential guide to practice in the Federal Court in all proceedings.

The NPA practice note sets out the arrangements for the management of intellectual property proceedings:

NPA Practice Note:

Other practice notes which may be relevant to this NPA include:

General Practice Notes:

Forms, Rules & Fees

Filing fees for commencing a proceeding in this Sub-area may apply. Information about Court fees, including the fees payable and circumstances where an exemption or deferral can be given is available in Forms, Fees & Costs or from the Registry.

Parties should consider whether it is necessary to file a Genuine steps statement (Form 16) in certain proceedings in this NPA - see r 8.02 of the Federal Court Rules 2011 (Cth) and the Civil Dispute Resolution Act 2011 (Cth) (including sections 6, 7 and 16).

1.  Commencing trade marks proceedings

An intellectual property owner can apply to the Court to seek a declaration and a final injunction restraining an infringement under the Trade Marks Act 1995 (Cth). The Court can order damages or at its election an account of profits.

An application can also be brought by a party who seeks to dispute the validity of the registration of a trade mark.

Forms:
Rules:

2. Appeals from the Registrar of Trade Marks

A party who wants to appeal from a decision of the Registrar of Trade Marks must within 21 days of the date of the decision, file a Notice of appeal, which must include:

  • the date of the decision
  • whether the appeal is from the whole or a part of the decision and if only from a part of the decision, details of the part of the decision
  • order(s) sought
  • grounds relied on in support of each order sought.
Forms:
  • Form 92 - Notice of appeal (intellectual property)
Rules:

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

Latest Judgments

  • 4 Nov 2020: Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd [2020] FCAFC 186
    TRADE MARKS - appeal from judgment dismissing trade mark infringement claim - where primary judge made orders cancelling the registration of the mark in suit - whether the mark in suit is inherently adapted to distinguish the appellant's goods - whether the mark in suit is deceptively similar to an earlier registered mark - whether the respondent…
    Judge: Middleton, Yates and Lee JJ
  • 29 Oct 2020: Manolo Blahnik Worldwide Limited v Estro Concept Pty Limited [2020] FCA 1561
    PRACTICE AND PROCEDURE - application for preliminary discovery pursuant to r 7.22 and r 7.23 of the Federal Court Rules 2011 (Cth) - whether prospective applicant has sufficient information to decide whether to commence a proceeding against prospective respondent - application allowed
    Judge: Markovic J
  • 29 Oct 2020: Taxiprop Pty Ltd v Neutron Holdings Inc [2020] FCA 1565
    TRADE MARKS - whether trade mark registered in class 39, including in respect of transport, travel arrangements and taxi, hire car, bus, coach and limousine services, should be removed from Register for non-use pursuant to s 101 of the Trade Marks Act 1995 (Cth) - whether use of mark in good faith within the meaning of s 92(4)(b)(ii) of the Trade…
    Judge: O'Callaghan J
  • 22 Oct 2020: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530
    TRADE MARKS - infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) - whether respondents infringed applicants' BOTOX marks by using PROTOX as a trade mark - whether use of applicants' trade mark in composite phrases such as "Instant BOTOX® Alternative" is use as a trade mark - whether PROTOX or composite phrases substantially…
    Judge: Stewart J
  • 1 Oct 2020: Monster Energy Company v Mixi Inc [2020] FCA 1398
    TRADE MARKS - extension of protection in Australia to International Registration Designating Australia for the trade mark MONSTER STRIKE in Classes 9 and 41 - opposition relying on ss 42(b) and 60 of the Trade Marks Act 1995 (Cth) (TM Act) - appeal under s 56 against decision of the Registrar of Trade Marks allowing extension of protection - with…
    Judge: Stewart J
  • 25 Sep 2020: Pinnacle Runway Pty Ltd v Triangl Limited (No 3) [2020] FCA 1379
    COSTS - indemnity costs - where respondent successful in defence of claim of trade mark infringement and applicant successful in cross-claim - discretion as to costs - whether rejection of settlement offers unreasonable or imprudent - applicable principles in relation to indemnity costs - where settlement offers placed the offeree in a…
    Judge: Murphy J
  • 28 Aug 2020: NPP Australia Limited v Ripple Labs, Inc (No 2) [2020] FCA 1253
    PRACTICE AND PROCEDURE - application for urgent interlocutory injunction - alleged infringement of trade mark and contraventions of the Australian Consumer Law - whether orders or an undertaking is appropriate - whether conduct to be restrained is the provision of services "in Australia" or services "directed to Australia" - interlocutory…
    Judge: Thawley J
  • 27 Aug 2020: Enagic Co., Ltd v Horizons (Asia) Pty Ltd (No 2) [2020] FCA 1240
    PRACTICE AND PROCEDURE - application to set aside notice to produce - application dismissed COSTS - application to discharge an order staying the payment of security for costs and for further security for costs - application for costs on an indemnity basis - applications dismissed
    Judge: Markovic J
  • 21 Aug 2020: Enagic Co., Ltd v Horizons (Asia) Pty Ltd [2020] FCA 1233
    PRACTICE AND PROCEDURE - application to set aside notice to produce - application dismissed COSTS - application for costs on an indemnity basis payable forthwith - application dismissed
    Judge: Markovic J
  • 21 Aug 2020: NPP Australia Limited v Ripple Labs, Inc [2020] FCA 1237
    PRACTICE AND PROCEDURE - alleged contraventions of s 120 of the Trade Marks Act 1995 (Cth) and s 18 of the Australian Consumer Law - ex parte applications for service outside Australia pursuant to rr 10.42 and 10.43(2) of the Federal Court Rules 2011 (Cth) (FCR), substituted service pursuant to FCR 10.24 and short service pursuant to FCR 1.39…
    Judge: Burley J

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Important note: This information is procedural advice only. You should seek your own legal advice about legal cases and procedure in the Federal Court and in this area of law.