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
- 14 Feb 2025:
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12
TRADE MARKS - validity - ownership - where primary judge found appellant (Cantarella) was not the owner of the ORO trade mark and ordered that registrations be cancelled pursuant to ss 88(1)(a) and 58 of the Trade Marks Act 1995 (Cth) ("the Act") - where primary judge found prior use of trade marks by third party (Molinari) - whether primary judge …
Judge: Nicholas, Jackson and Rofe JJ - 7 Feb 2025:
Condari Pty Ltd v Haus Group Australia Pty Ltd [2025] FCA 65
PRACTICE AND PROCEDURE - form of orders COSTS - costs arising from application to review the decision of a Registrar - where trial was vacated two weeks prior to its intended commencement - whether the conduct of the applicant warrants the award of indemnity costs - whether costs should be payable forthwith
Judge: Rofe J - 31 Jan 2025:
Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd (Costs) [2025] FCA 38
COSTS -- where the applicants brought a claim of trade mark infringement against the respondent - where the respondent brought a cross-claim seeking the cancellation of the first applicant's registered trade mark - where both the applicants' claim and the respondent's cross-claim failed - where the cross-claim was only ever defensive - whether the …
Judge: Wheelahan J - 13 Dec 2024:
Maxim Media Inc. v Nuclear Enterprises Pty Ltd [2024] FCA 1443
INTELLECTUAL PROPERTY - application for interlocutory injunction on grounds of contravention of ss 18 and 29 of the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)), passing off and infringement of a registered trade mark under s 120 of the Trade Marks Act 1995 (Cth) - consideration of relevant factors - prima facie…
Judge: Rofe J - 6 Dec 2024:
Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156
TRADE MARKS -- s 62(b) of the Trade Marks Act 1995 (Cth) - where an Examiner considered that a trade mark under examination was not inherently adapted to distinguish in respect of a certain class, and sought evidence or representations as to the trade mark applicant's prior use of the mark - where the representations as to prior use by the trade…
Judge: Katzmann, Wheelahan and Hespe JJ - 22 Nov 2024:
Killer Queen, LLC v Taylor [2024] FCAFC 149
TRADE MARKS - infringement of registered trade mark established - where registered trade mark is a name - joint tortfeasance - principles discussed TRADE MARKS - specification of registered goods - meaning of "clothes" - role of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the…
Judge: Yates, Burley and Rofe JJ - 21 Nov 2024:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International BV [2024] FCAFC 152
PRACTICE AND PROCEDURE - application for leave to appeal - whether decision to be appeal attended with sufficient doubt to warrant its reconsideration on appeal - whether, if decision is wrong, substantial injustice would result if leave were refused - leave to appeal refused PRACTICE AND PROCEDURE - application to strike out certain paragraphs of …
Judge: Markovic, Rofe and Jackman JJ - 19 Nov 2024:
Hugo Boss AG v Hardge [2024] FCA 1325
PRACTICE AND PROCEDURE - application for default judgment pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) - where substituted service orders made - where respondent in default of appearance - allegations of trade mark infringement, misleading and deceptive conduct and passing off - whether the applicant is entitled to relief -…
Judge: Neskovcin J - 12 Nov 2024:
The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd [2024] FCA 1299
TRADE MARKS - infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) (the Act) - whether the respondent used the plain word mark THE PRACTICE as a trade mark - whether the respondent's marks are substantially identical with, or deceptively similar to, the applicant's mark - defence under s 122(1)(b)(i) of the Act - whether the…
Judge: O'Callaghan J - 7 Nov 2024:
Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277
TRADE MARKS -- shape marks - where the first applicant is the registered owner of a trade mark constituted by the shape of a cylindrical container with a stopper in Class 30 over coffee and instant coffee (the KDE shape mark) - where the respondent (Cantarella) released a 400-gram instant coffee product under its brand name "Vittoria" in a…
Judge: Wheelahan 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.
National Coordinating Judges
- Nicholas J
- Burley J
- Rofe J
National Coordinating Registrar
- Susan O’Connor