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

  • 27 Apr 2021: Bendigo and Adelaide Bank Limited v Community First Credit Union Limited (No 2) [2021] FCAFC 62
    COSTS - application for indemnity costs - where appellant made a unilateral decision to remove certain pagination from the appeal book without notifying the first respondent - where costs incurred by first respondent updating submissions with references to new pagination - where decision was made in good faith - indemnity costs not awarded
    Judge: Middleton, Burley and Thawley JJ
  • 31 Mar 2021: Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2021] FCA 307
    TRADE MARKS - infringement - goods of the same description - where scope of alleged infringing goods not sufficiently made clear by the parties at trial - further infringement findings PRACTICE AND PROCEDURE - form of final orders - scope of declaratory and injunctive relief PRACTICE AND PROCEDURE - whether respondents should be granted…
    Judge: Burley J
  • 30 Mar 2021: Martin & Pleasance Pty Ltd v A Nelson & Co Limited [2021] FCA 368
    PRACTICE AND PROCEDURE - application for stay of interlocutory judgment - whether appeal would be rendered nugatory without a stay - whether the balance of harm to the applicant outweighed the harm to the respondent in favour of a stay - whether leave application to be heard concurrently with or immediately before appeal - whether hearing of leave …
    Judge: Wigney J
  • 29 Mar 2021: Laminar Air Flow Pty Ltd v Vokes Ltd [2021] FCA 296
    PRACTICE & PROCEDURE - application for leave to amend pleadings to join a further respondent - four months to trial - detailed programme leading up to trial - whether trial dates might be imperilled and pre-trial programme disrupted - whether proposed new respondent and an existing respondent are commonly owned - whether they are likely to be…
    Judge: Stewart J
  • 26 Mar 2021: Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited [2021] FCA 323
    PRACTICE AND PROCEDURE - whether service of the notice of appeal of a delegate's decision on an address for service in Australia which has been provided by a party pursuant to s 215 of the Trade Marks Act 1995 (Cth) constitutes effective service - answer: no - further, appellant unable to rely on r 10.08 of the Federal Court Rules 2011 (Cth) as…
    Judge: Thawley J
  • 24 Mar 2021: Taxiprop Pty Ltd v Neutron Holdings Inc (No 3) [2021] FCA 274
    COSTS - whether costs should be split between claim and cross-claims - costs of claim and cross-claims to be determined together - discount for applicant's partial success and for costs thrown away by respondents - respondents awarded 90% of costs of claim and cross-claims
    Judge: O'Callaghan J
  • 18 Mar 2021: A Nelson & Co Limited v Martin & Pleasance Pty Ltd (No 2) [2021] FCA 242
    PRACTICE AND PROCEDURE - application for stay of interlocutory judgment - principles to be applied - whether appeal would be rendered nugatory - whether real risk that applicant seeking stay could not be returned substantially to its former position
    Judge: Flick J
  • 17 Mar 2021: A Nelson & Co Limited v Martin & Pleasance Pty Ltd [2021] FCA 228
    PRACTICE AND PROCEDURE - application for interlocutory relief - whether a serious question to be tried - whether the balance of convenience favours the granting of relief INTELLECTUAL PROPERTY - whether serious question to be tried as to trade mark infringement - whether Respondents' products substantially identical or deceptively similar -…
    Judge: Flick J
  • 11 Mar 2021: Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31
    TRADE MARKS - appeal from decision to rectify the Register of Trade Marks pursuant to s 88(1) of the Trade Marks Act 1995 (Cth) - whether registration of trade marks could have been opposed under ss 41 or 59 of the Act - whether pursuant to s 92(4) of the Act the marks should be removed from the Register for non-use - appeal dismissed TRADE MARKS…
    Judge: Middleton, Burley and Thawley JJ
  • 5 Mar 2021: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCA 185
    COSTS - where costs were previously determined - whether costs order can be revisited pursuant to the slip rule in r 39.05(h) of the Federal Court Rules 2011 (Cth) - whether there was "an error arising in a judgment or order from an accidental slip or omission" - where costs had not previously been sought on an indemnity basis - where multiple…
    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.