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

  • 30 Jul 2020: PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078
    TRADE MARKS - infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) (Act) - claims for rectification of the Register pursuant to s 88(2)(a), relying on the grounds under ss 44, 58, 59 and 60, and s 88(2)(c) of the Act - claims for removal from the Register for non-use pursuant to s 92(4) and s 101 of the Act COMPETITION -…
    Judge: Markovic J
  • 28 Jul 2020: Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124
    TRADE MARKS - where trade marks deceptively similar - whether primary judge erred in concluding there had been honest concurrent use within the meaning of s 44(3)(a) of the Trade Marks Act 1995 (Cth) - where honest concurrent use was in relation to goods which were expressly excluded from trade mark application - whether primary judge erred in…
    Judge: Nicholas, Burley and Thawley JJ
  • 23 Jun 2020: Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883
    TRADE MARKS - appeal pursuant to s 104 of the Trade Marks Act 1995 (Cth) - where the parties have reached a settlement and the Registrar of Trade Marks does not oppose the orders sought - where there is no moving party on the appeal and no hearing on the merits of the appeal has been conducted - appeal allowed by consent
    Judge: Burley J
  • 5 Jun 2020: In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (No 2) [2020] FCA 772
    PRACTICE AND PROCEDURE -- appropriate form of injunctions following findings of trade mark infringement, contraventions of Australian Consumer Law, and passing off -- application for stay of injunctions, orders for delivery-up and destruction of infringing materials and costs -- whether grounds of appeal reasonably arguable -- whether appeal would …
    Judge: Katzmann J
  • 4 Jun 2020: Zoo Sport (Europe) Ltd v Zoo International Pte Ltd (No 2) [2020] FCA 755
    COSTS - whether costs should be awarded on an indemnity basis - whether costs should be awarded in a lump sum - whether money paid into Court should be ordered to be paid out in partial satisfaction of costs
    Judge: Rangiah J
  • 29 May 2020: Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd (No 2) [2020] FCA 730
    COSTS - discretion as to costs - successful party unsuccessful on some issues at trial - effect on costs COSTS - application for a lump-sum costs order - where parties are in agreement that a lump-sum costs order is appropriate - relevant principles in awarding a lump-sum costs order - requirements of Costs Practice Note in relation to material in …
    Judge: Stewart J
  • 25 May 2020: Campbell v Sutherland [2020] FCA 765
    INTELLECTUAL PROPERTY - consideration of an application for an interlocutory injunction
    Judge: Greenwood J
  • 27 Apr 2020: Calico Global Pty Ltd (in liquidation) v Calico LLC (No2) [2020] FCA 648
    COSTS - Whether court should order costs against non-party company directors where controlling director provided security for costs of appeal - where security insufficient - whether interests of justice require such an order - where directors caused impecunious company to pursue appeal in order to enable controlling director to use result for own…
    Judge: Rares J
  • 7 Apr 2020: Taylor v Killer Queen LLC [2020] FCA 444
    PRACTICE AND PROCEDURE - application for an order pursuant to r 30.01 of the Federal Court Rules 2011 (Cth) that all issues of liability be heard separately from and prior to all other issues in the proceeding - whether just and convenient to make the order - whether the order will contribute to a saving in time and costs - whether there will be…
    Judge: Markovic J
  • 26 Mar 2020: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2020] FCA 396
    EVIDENCE - Evidentiary objections - admissibility - relevance - hearsay
    Judge: O'Bryan 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.