Trade Marks Sub-area
About this Sub-area
- 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.
Central Practice Note (CPN-1)
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.
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.
- 22 Sep 2021:
Taylor v Killer Queen, LLC (No 4)  FCA 1144
PRACTICE AND PROCDURE - application to file further amended defence and further amended statement of cross-claim - where respondents seek to withdraw admission as to use of trade mark in amended defence - where admission was based on an incorrect understanding of the law - where enabling case to proceed on a basis consistent with the current law…
Judge: Markovic J
- 7 Sep 2021:
Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd  FCAFC 163
TRADE MARKS - infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) - whether primary judge erred in concluding that the respondents did not infringe the appellant's BOTOX mark by using PROTOX as a trade mark - whether primary judge erred in concluding that PROTOX was not deceptively similar to BOTOX - held that PROTOX is…
Judge: Jagot, Lee and Thawley JJ
- 3 Sep 2021:
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd  FCA 1094
TRADE MARKS - application for interim injunction restraining alleged trade mark infringement - whether applicants have established a prima facie case - use as a trade mark - deceptive similarity - cross-claim alleging non-use - balance of convenience - whether interlocutory relief decisive in resolution of dispute - justification for preservation…
Judge: Halley J
- 27 Aug 2021:
Caterpillar Inc v Puma SE  FCA 1014
TRADE MARKS - application for registration of PROCAT word mark in classes 18 and 25 in respect of apparel, footwear, bags and accessories - opposition based on prior registration and reputation of CAT word and device marks - appeal from decision of Registrar of Trade Marks allowing registration - whether PROCAT deceptively similar to CAT within s…
Judge: O'Bryan J
- 19 Aug 2021:
PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (No 2)  FCAFC 147
COSTS - appropriate order as to costs - where appellants substantially failed on appeal - where respondent raised a number of contingent defences - appellants to pay 90% of respondent's costs to be assessed on a lump sum basis
Judge: Jagot, Nicholas and Burley JJ
- 5 Aug 2021:
Taylor v Killer Queen, LLC (No 3)  FCA 912
COSTS - costs of interlocutory application - Applicant seeks a reduction of costs by 25% - whether costs should follow the event - Held: no departure from usual order - Applicant ordered to pay Respondents' costs
Judge: Cheeseman J
- 4 Aug 2021:
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 2)  FCA 894
PRACTICE AND PROCEDURE - application to impose additional conditions on a grant of leave to adduce and rely on further affidavit evidence served out of time
Judge: Yates J
- 29 Jul 2021:
Skelin v Self Care Corporation Pty Ltd  FCA 888
PRACTICE AND PROCEDURE - applications to stay hearing of Federal Circuit Court proceedings - where applicant seeks leave to appeal from decision of Federal Circuit Court judge granting leave to amend a pleading - where applicant seeks leave to appeal from decision of Federal Circuit Court judge rejecting application to recuse herself on the basis…
Judge: Burley J
- 29 Jul 2021:
PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd  FCAFC 128
TRADE MARKS - infringement - whether Trade Marks Act 1995 (Cth) imposes liability for authorising infringement of a registered trade mark - no liability for authorising infringement TRADE MARKS - deceptive similarity - whether primary judge erred in evaluating deceptive similarity between trade marks - where primary judge considered circumstances… 160 IPR 174 ; 391 ALR 608
Judge: Jagot, Nicholas and Burley JJ
- 16 Jul 2021:
Dollinger Filtration Ltd v Laminar Air Flow Pty Ltd  FCA 817
PRACTICE AND PROCEDURE - pleadings - application for leave to amend defence - whether amendment sought to resile from previous admission - where no explanation of how or why admission came to be pleaded - where no evidence that the amendment sought would correct an error - where investigation of matter put in issue by sought amendment might be…
Judge: Stewart 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.