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)

• 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
• 14 Aug 2024: Fanatics, LLC v FanFirm Pty Limited [2024] FCA 920
  PRACTICE AND PROCEDURE - application for stay of injunction pending appeal - alleged infringement of trade marks - where grounds of appeal were bona fide and arguable - whether balance of convenience favoured grant of stay - where respondent offered terms of partial stay - HELD: injunction order of primary judge stayed for 28 days, and thereafter…
  Judge: Bromwich J
• 29 Jul 2024: FanFirm Pty Limited v Fanatics, LLC (No 2) [2024] FCA 826
  PRACTICE AND PROCEDURE - application for stay of orders pursuant to r 36.08 of the Federal Court Rules 2011 (Cth) - whether stay or rectification of the Trade Marks Register more suitable course pending determination of appeal - whether stay or injunction more suitable course pending determination of appeal - application partially granted.
  Judge: Rofe J
• 18 Jul 2024: Care A2 Plus Pty Ltd (Receiver Appointed) v The a2 Milk Company Limited [2024] FCA 782
  PRACTICE AND PROCEDURE - form of orders COSTS - application for costs arising from interlocutory applications to be made payable forthwith - where applicant has failed to comply with orders to pay security for costs - consideration of whether extenuating circumstances were present which warranted departure from the general position under r 40.13…
  Judge: Rofe J
• 17 Jul 2024: Sunnya Pty Ltd v FPA Group Ltd [2024] FCA 774
  COSTS - where leave granted by consent to discontinue proceeding before trial on condition applicant pay respondents' costs - where statement of claim made allegations tantamount to fraud which were withdrawn and contradicted in amended statement of claim - where respondents alleged that proceeding had no reasonable prospects of success and/or…
  Judge: Katzmann J