Trade Marks Sub-area
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.
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: |
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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.
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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.
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For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.
Latest Judgments
- 12 Jun 2024:
Lian Fa International Dining Business Corporation v Mu (No 2) [2024] FCA 630
PRACTICE AND PROCEDURE - interlocutory application by the respondents for an adjournment of the trial dates - where the fifth application by the parties for an adjournment - application allowed
Judge: Raper J - 10 Jun 2024:
Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 4) [2024] FCA 607
PRACTICE AND PROCEDURE - Application to set aside order under r 39.05(f) of the Federal Court Rules 2011 - Where order entered in favour of the applicant - Where the applicant is no longer trading - Where the trademark is no longer registered - Where no benefit derived from the order - Where all parties consent to the orders proposed - Order set…
Judge: Meagher J - 7 Jun 2024:
Vitaco Health IP Pty Ltd v AFI Cosmetic Pty Ltd (No 3) [2024] FCA 598
PRACTICE AND PROCEDURE - application for default judgment pursuant to r 5.23(2)(c) and/or (d) of the Federal Court Rules 2011 (Cth) - where the respondents have failed to comply with court orders and failed to appear - allegations of trade mark infringement, misleading and deceptive conduct and passing off - where marks were used by respondents as …
Judge: Rofe J - 4 Jun 2024:
Cargill, Incorporated v Cargill Financial Services International Pty Ltd [2024] FCA 604
TRADE MARKS - infringement - Trade Marks Act 1995 (Cth) s 120 - use of name as a mark - use of deceptively similar mark - infringement established. TRADE MARKS - application for final relief - application for relief where respondents rogue agents - application to change name on ASIC register - application to change name on bank account -…
Judge: Burley J - 27 May 2024:
Top Intellectual Property Pty Ltd v Grayson's International Pty Ltd [2024] FCA 561
PRACTICE AND PROCEDURE - interlocutory application for leave to dispense with r 4.01(2) of the Federal Court Rules 2011 (Cth) to allow the respondent corporation to proceed in Court other than by a lawyer - consideration of the interests of justice in all of the circumstances - application refused
Judge: Stewart J - 27 May 2024:
Seven Network (Operations) Limited v 7-Eleven Inc [2024] FCAFC 65
TRADE MARKS - non-use - Trade Marks Act 1995 (Cth) s 92(4)(b) - whether primary judge erred in finding that registered trade mark owner had not established use during relevant period - use in relation to particular goods and services alleged to have occurred by display of mark on website - use partially established for one category of goods and…
Judge: Burley, Jackson and Downes JJ - 17 May 2024:
Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited (Costs) [2024] FCA 505
COSTS - variation to relief granted by primary judge for infringement of trade marks - two appeals from separate decisions in proceeding below - where appellant obtained orders setting aside declarations and orders of primary judge in infringement proceedings below - whether appellant's settlement offers entitle it to indemnity costs of…
Judge: Downes J - 6 May 2024:
Fensom v Jake Ryan Media Group Pty Ltd (No 2) [2024] FCA 470
PRACTICE AND PROCEDURE - self-executing order dismissing the proceeding - continued non-compliance with Court timetabling orders by the applicants - where the Court is satisfied in the circumstances that a self-executing order is appropriate
Judge: Rofe J - 4 Apr 2024:
Google LLC v Interactive Engineering Pty Ltd [2024] FCA 338
Judge: Markovic J - 2 Apr 2024:
The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd (No 2) [2024] FCAFC 44
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 - where offer of compromise included payment of costs other than legal costs - where rejection of offer was not unreasonable - whether costs should be apportioned taking account of…
Judge: Yates, Markovic and Kennett JJ
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