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

  • 17 Jun 2022: Watson as Trustee for the Watson Family Trust v Cosmetic Warriors Ltd [2022] FCA 700
    TRADE MARKS - consideration of the question of whether the applicant/appellant has discharged the burden arising under s 100(1)(c) of the Trade Marks Act 1995 (Cth) (the "Act") in relation to the question arising under s 92(4)(b) of the Act as to whether in the relevant period contemplated by that section there was use of the trade mark in…
    Judge: Greenwood J
  • 24 May 2022: Karlsson v Griffith University [2022] FCA 591
    PRACTICE AND PROCEDURE -- application by applicant for default judgment -- where respondent failed to file a defence within the time permitted by the rules but later excused from doing so until further order -- whether judgment in favour of applicant should be entered PRACTICE AND PROCEDURE -- application by respondent for summary judgment --…
    Judge: Katzmann J
  • 11 May 2022: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Further Conduct of Proceedings) (No 2) [2022] FCA 543
    PRACTICE AND PROCEDURE - where parties unable to agree on a short minute of order - where timetable for the future conduct of proceedings.
    Judge: Perram J
  • 28 Apr 2022: Horizons (Asia) Pty Ltd v Enagic Co., Ltd [2022] FCA 465
    PRACTICE AND PROCEDURE - interlocutory application seeking dismissal of application for leave to appeal - where applicant failed to comply with court orders - where procedural delays by applicant in progressing its application for leave to appeal - where applicant failed to provide security as ordered - application for leave to appeal dismissed
    Judge: Yates J
  • 20 Apr 2022: Henley Arch Pty Ltd v Henley Constructions Pty Ltd (No 3) [2022] FCA 408
    PRACTICE AND PROCEDURE - application for a stay of orders pending appeal - stay granted
    Judge: Anderson J
  • 14 Apr 2022: Energy Beverages LLC v Cantarella Bros Pty Ltd (No 2) [2022] FCA 394
    PRACTICE AND PROCEDURE - application for stay of dismissal orders pursuant to r 36.08 of the Federal Court Rules 2011 (Cth) (Rules) - whether stay or rectification of the Trade Marks Register more suitable course pending determination of appeal - consideration of Woolworths Ltd v BP plc (2006) 150 FCR 134; [2006] FCAFC 52 and Woolworths Ltd v BP…
    Judge: Halley J
  • 6 Apr 2022: Horizons (Asia) Pty Ltd v Enagic Co Ltd (Security for Costs) [2022] FCA 365
    PRACTICE AND PROCEDURE - application for security for costs of application for leave to appeal and appeal
    Judge: Stewart J
  • 30 Mar 2022: Nasib Baik Pty Ltd v Sydney Ridelender Pty Ltd [2022] FCA 301
    PRACTICE AND PROCEDURE - application for default judgment pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) - where applicant sought declarations, injunctions and damages for alleged infringement of its trade mark pursuant to s 120 of the Trade Marks Act 1995 (Cth) (TM Act); misleading or deceptive conduct under the Australian…
    Judge: Markovic J
  • 18 Mar 2022: Lamont v Malishus Limited (No 2) [2022] FCA 237
    PRACTICE AND PROCEDURE - where appellant was self-represented before the Federal Circuit Court of Australia ("FCCA") - whether FCCA erred by denying appellant right to fair hearing - whether FCCA erred by failing to inform appellant of court practices and procedures - relevant legal principles - relevance of characteristics of litigant and…
    Judge: Burley J
  • 17 Mar 2022: Henley Arch Pty Ltd v Henley Constructions Pty Ltd (No 2) [2022] FCA 231
    COSTS - where the Respondents refused an offer made under r 25.14 of the Federal Court Rules 2011 (Cth) - whether to award indemnity costs - whether rejection of first Calderbank offer was unreasonable - whether the state of affairs provided for by the judgment was more favourable, as a matter of substance, to the offeror, compared with the state…
    Judge: Anderson 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.