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.
- 13 Sep 2023:
Firstmac Limited v Zip Co Limited (No 2)  FCA 1074
COSTS - application for indemnity costs - principles in respect of Calderbank offers - where applicant did not accept offers by respondents to settle proceedings - whether offers were commensurate with a possible outcome in the proceeding
Judge: Markovic J
- 24 Aug 2023:
Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd  FCA 999
TRADE MARKS - appeal from decision of the delegate of the Registrar of Trade Marks to refuse appellant's opposition to application by respondent for registration of KANGAROO MOTHER trade mark - hearing de novo - s 59 of the Trade Marks Act 1995 (Cth) - where as at priority date respondent did not intend to use or authorise the use of the trade…
Judge: O'Callaghan J
- 7 Aug 2023:
Victoria's Secret Stores Brand Management LLC v ePharmacy Group Pty Ltd  FCA 921
PRACTICE AND PROCEDURE - application for suppression order - where information said to be confidential and commercially sensitive, whether order preventing publication or other disclosure necessary to prevent prejudice to the proper administration of justice
Judge: Katzmann J
- 7 Jul 2023:
Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods (No 2)  FCA 764
COSTS - application for indemnity costs by appellant - whether offers of settlement such that Court should award indemnity costs - refusal of offers by respondent not unreasonable - application for indemnity costs refused
Judge: Kennett J
- 22 Jun 2023:
Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 3)  FCA 683
COSTS - competing applications for costs associated with an application for a stay of first instance proceedings pending outcomes of applications for special leave to appeal, and any appeals, to the High Court
Judge: Stewart J
- 15 Jun 2023:
The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd (No 2)  FCA 652
COSTS - application for lump sum costs order calculated on an indemnity basis - whether the failure of the applicants to accept an offer of compromise was unreasonable - whether there was a legitimate forensic purpose in joining the first respondent's directors personally - whether the lump sum costs properly quantified
Judge: Jackman J
- 8 Jun 2023:
Seven Network (Operations) Limited v 7-Eleven Inc  FCA 608
TRADE MARKS - appeal from decision of delegate of Registrar of Trade Marks - whether trade mark should be removed from Trade Marks Register for non-use - whether onus of proof discharged in relation to non-use period -whether Court should exercise discretion under s 101 of the Trade Marks Act 1995 (Cth) not to remove trade mark - public interest…
Judge: Thawley J
- 29 May 2023:
Firstmac Limited v Zip Co Limited  FCA 540
TRADE MARKS - infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) - whether the infringing marks are substantially identical with, or deceptively similar to, the applicant's mark - defence under s 122(1)(f) and (fa) of the Act - whether respondents would obtain registration of the infringing marks if they were to apply for it on …
Judge: Markovic J
- 18 May 2023:
Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods  FCA 487
TRADE MARKS - appeal from decision of a delegate of the Registrar of Trade Marks refusing registration application - whether use of mark sought to be registered would be likely to mislead or deceive - whether registered mark registered in respect of closely related goods - whether use of mark sought to be registered would contravene the Australian …
Judge: Kennett J
- 17 May 2023:
The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd  FCA 482
TRADE MARKS - alleged infringement under s 120(1) of the Trade Marks Act 1995 (Cth) - registered composite and logo marks - whether words used in website URLs and social media handles used as trade marks - whether regard may be had to the context in which the allegedly infringing mark is used - whether descriptiveness of registered mark relevant…
Judge: Jackman 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.