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)

• 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
• 31 Oct 2024: Global Retail Brands Australia Pty Ltd v Bed Bath 'N' Table Pty Ltd [2024] FCAFC 139
  CONSUMER LAW - misleading or deceptive conduct - where, by its use of trade mark "HOUSE BED & BATH" (appellant's mark) in relation to soft homewares in a market in which respondent's trade mark "BED BATH 'N' TABLE" (respondent's mark) has a significant reputation, appellant found to have contravened ss 18(1) and 29(1)(g) and (h) of Australian…
  Judge: Nicholas, Katzmann and Downes JJ
• 20 Sep 2024: Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100
  TRADE MARKS - where applicant the owner of the trade mark consisting of the word ESTABLISHMENT in Classes 9, 25, 41 and 42, which include restaurant, bar and hotel services - where trade mark has been used since September 2000 in respect of a multi-level restaurant, bar and hotel business in Sydney - where respondent operates a restaurant in…
  Judge: Jackman J
• 3 Sep 2024: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 4) [2024] FCA 1006
  COSTS - application for review of a decision of a Registrar of the Court as to the quantum of costs payable pursuant to a lump sum award - requirement for a de novo hearing on the question of quantum - whether the question of quantum should be referred to an experienced costs lawyer for inquiry and report - relevant considerations
  Judge: O'Bryan J