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)

• 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
• 4 Feb 2025: The Pops Group Pty Ltd as trustee for The Pool Shops Trust v Pro Pool Services Pty Ltd [2025] FCA 136
  PRACTICE AND PROCEDURE - summary judgment - action for relief in respect of copyright infringement - judgment requires evaluative assessment of elements of respective marks - matter not suitable for summary judgment - application dismissed
  Judge: DERRINGTON J
• 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