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.

The NPA practice note sets out the arrangements for the management of intellectual property proceedings:

Other practice notes which may be relevant to this NPA include:

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.

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

• Trade Marks Act 1995 (Cth)
• Evidence Act 1995 (Cth)

• 1 May 2025: Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited [2025] FCA 428
  TRADE MARKS – where the respondent brought non-use actions before the Registrar of Trade Marks (the Registrar) pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) against various class registrations of a trade mark (the Trade Mark) by the appellant – where the delegate of the Registrar determined that the Trade Mark had not been used in…
  Judge: O’CALLAGHAN J
• 30 Apr 2025: Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd (No 2) [2025] FCA 418
  COSTS – appeal from Registrar of Trade Marks successful – costs of appeal proceeding – where submitting notice filed – where success partially based on evidence not advanced before delegate of Registrar – where concessions made which were not made before delegate COSTS – whether party successful in Court should have its costs of proceeding before…
  Judge: BENNETT J
• 16 Apr 2025: Paco Nominees Pty Ltd v Ella Secret Australia Pty Ltd (Default Judgment) [2025] FCA 366
  TRADE MARKS – default judgment – respondents’ failure to comply with orders and appear – claim of trade mark infringement – default judgment granted PRACTICE AND PROCEDURE – application for default judgment pursuant to r 5.23 of the Federal Court Rules 2011 (Cth) – whether appropriate to grant injunction – whether satisfied that an order for…
  Judge: RAPER J
• 3 Apr 2025: Quach v Registrar of Trade Marks [2025] FCA 311
  TRADE MARKS – Intellectual property – Application for Registration – Registration of Trade Mark – Opposition to Registration – Assignment CONSTITUTIONAL LAW – Power to register a trade mark – Whether a judicial power – Whether validly conferred on Registrar of Trade Marks ADMINISTRATIVE LAW – Whether judicial review enlivened – Whether a decision…
  Judge: MEAGHER J
• 21 Mar 2025: Fanatics, LLC v FanFirm Pty Limited (No 2) [2025] FCA 241
  PRACTICE AND PROCEDURE – costs – whether appellant partially successful in stay applications – where respondent proffered terms of a limited stay – HELD: appellant to pay the respondent’s costs of and incidental to the interlocutory applications giving rise to FanFirm Pty Limited v Fanatics, LLC (No 2) [2024] FCA 826, Fanatics, LLC v FanFirm Pty…
  Judge: BROMWICH J
• 21 Mar 2025: Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd [2025] FCA 218
  INTELLECTUAL PROPERTY – trade marks – registration – application for removal for non-use – appeal de novo – extent of use in relevant class within Australia – discretion of Court to allow mark to remain on Register of Trade Marks – appeal allowed – Trade Mark retained on Register
  Judge: BENNETT J
• 21 Mar 2025: Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd (Costs) [2025] FCAFC 29
  COSTS – where appeal dismissed and cross-appeal allowed, what orders should be made for costs of trial and appeal – whether costs of trial should be apportioned to take account of aspects of cross-claim on which respondent failed – where respondent made offers to compromise both trial and appeal, whether indemnity costs order should be made
  Judge: KATZMANN, WHEELAHAN AND HESPE JJ
• 19 Mar 2025: Firstmac Limited v Zip Co Limited [2025] FCAFC 30
  TRADE MARKS – appeal against decision that composite marks not deceptively similar to registered trade mark pursuant to s 120 of the Trade Marks Act 1995 (Cth) (TM Act) – whether stylised marks containing the registered trade mark and other words deceptively similar – appeal against decision to uphold defences against trade mark infringement of…
  Judge: PERRAM, KATZMANN AND BROMWICH JJ
• 13 Mar 2025: Hugo Boss AG v Hardge (No 2) [2025] FCA 184
  PRACTICE AND PROCEDURE – costs – application for lump sum costs order – where order made for costs to be taxed – whether lump sum costs order could be made – whether to exercise discretion to make lump sum costs order – order for lump sum costs granted
  Judge: NESKOVCIN J
• 27 Feb 2025: Crescent Capital Partners Management Pty Limited v Crescent Wealth Investments Australasia Pty Ltd [2025] FCA 133
  COSTS - where applicant has discontinued its claim and seeks an order that the respondents pay its costs of that claim on the bases of: (1) capitulation or surrender; (2) unreasonable conduct - assessment of capitulation or surrender to be undertaken on an objective basis by reference to the relief sought in the proceeding - no capitulation or…
  Judge: GOODMAN J