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

  • 6 Dec 2021: Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Ltd (No 3) [2021] FCA 1530
    INTELLECTUAL PROPERTY - consideration of redactions to be made from a judgment
    Judge: Greenwood J
  • 6 Dec 2021: Lian Fa International Dining Business Corporation v Mu [2021] FCA 1527
    PRACTICE AND PROCEDURE - application for urgent interlocutory relief - where applicant sought interlocutory orders restraining use of registered trade marks - where applicant claims that contract between applicant and first respondent was validly terminated - where respondents disputed termination was valid - where trade marks used in about 90…
    Judge: Thawley J
  • 3 Dec 2021: The a2 Milk Company Limited v LD&D Australia Pty Ltd [2021] FCA 1515
    TRADE MARKS - appeals under s 56 of the Trade Marks Act 1995 (Cth) from decisions of delegates of Registrar of Trade Marks to refuse applications to register in respect of words "a2 Milk" and "TRUE A2" which were each opposed by the respondent - where respondent has withdrawn opposition to registration - where parties sought by consent orders…
    Judge: Bromwich J
  • 2 Dec 2021: Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512
    INTELLECTUAL PROPERTY - appeal from decision of a delegate of the Registrar of Trade Marks accepting for registration a word mark in relation to services in class 35 - where appellant is the registered owner of identical or deceptively similar mark having an earlier priority date in relation to goods - whether the relevant goods and services are…
    Judge: Charlesworth J
  • 12 Nov 2021: Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited (No 2) [2021] FCA 1404
    TRADE MARKS - appeal from a decision of a delegate of the Registrar of Trade Marks - whether non-use of trade mark within relevant period under s 92(4)(b) of the Trade Marks Act 1995 (Cth) established - whether Court should exercise discretion under s 101(3) of the Trade Marks Act 1995 (Cth) - appeal allowed 164 IPR 5
    Judge: Thawley J
  • 12 Nov 2021: Halal Certification Authority Pty Ltd v Flujo Sanguineo Holdings Pty Ltd [2021] FCA 1399
    TRADE MARKS - trade mark registered by Halal Certification Authority Australia Pty Ltd (HCA) in respect of classes 42 and 45 of services - where trade mark used as a packaging logo on artificial sweetener products by respondents - where products certified halal by HCA at various times and certificates issued - where products manufactured by… 163 IPR 433
    Judge: Bromwich J
  • 5 Nov 2021: Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369
    TRADE MARKS - applicant commenced trading in 1989 - applicant's registered trade marks include HENLEY, HENLEY PROPERTIES, HENLEY WORLD OF HOMES, HENLEY ESSENCE, HENLEY RESERVE and HENLEY COLLECTION - applicant's HENLEY and HENLEY PROPERTIES trade marks registered in 2006 - first respondent commenced trading in or around 2006 under and by reference … 163 IPR 1
    Judge: Anderson J
  • 25 Oct 2021: Nagpal v Global Cars Aus Pty Ltd (No 2) [2021] FCA 1300
    COSTS - proceedings dismissed in circumstances where claims were made which were hypothetical - where certain of the claims were colourable in the sense of being made to fabricate jurisdiction - whether indemnity costs should be awarded - whether costs should be awarded in a lump sum.
    Judge: Downes J
  • 13 Oct 2021: Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Ltd (No 2) [2021] FCA 1246
    INTELLECTUAL PROPERTY - consideration of an application for leave to further amend the defence of the first respondent TRADE MARKS - consideration of an application for leave to further amend the defence of the first respondent
    Judge: Greenwood J
  • 13 Oct 2021: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCAFC 180
    PRACTICE AND PROCEDURE - parties ordered to confer with a view to agreeing orders giving effect to the Full Court's reasons for judgment or provide competing orders and submissions - parties were not able to agree and provided competing orders and submissions - application to make further submissions in relation to appropriate orders made…
    Judge: Jagot, Lee and Thawley JJ

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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.