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)

• 22 Mar 2023: Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44
  TRADE MARKS - application for leave to appeal from judgment of a single judge of the Court pursuant to s 195(2) of the Trade Marks Act 1995 (Cth) (the Act) - where primary judge dismissed an appeal from the decision of a delegate of the Registrar of Trade Marks in opposition proceedings - where delegate granted respondent's application under s…
  Judge: Yates, Stewart and Rofe JJ
• 14 Mar 2023: Boost Tel Pty Ltd v Singtel Optus Pty Ltd [2023] FCA 213
  INTELLECTUAL PROPERTY - application for urgent interlocutory injunction - alleged infringement of trade mark - whether prima facie case of trade mark infringement - whether balance of convenience favours grant of interlocutory injunction - held: interlocutory injunction granted
  Judge: Thawley J
• 8 Feb 2023: Chapter 4 Corp. DBA Supreme v Shenzhen Supbro Fashion Sports Co., Ltd [2023] FCA 78
  TRADE MARKS - default judgment under r 5.23(d) of the Federal Court Rules 2011 (Cth) - where respondent failed to file notice of address for service following filing of notice of ceasing to act - where respondent failed to appear at case management hearing and interlocutory hearing - where respondent failed to defend proceeding with due diligence…
  Judge: O'Callaghan J
• 12 Jan 2023: Fensom v Jake Ryan Media Group Pty Ltd [2023] FCA 7
  Judge: Colvin J
• 16 Dec 2022: In-N-Out Burger, Inc v Rich Asians Pty Ltd [2022] FCA 1573
  PRACTICE AND PROCEDURE - undertaking given to the Court by the respondents - application under r 39.21 of the Federal Court Rules 2011 (Cth) where respondents have failed to fulfil undertaking
  Judge: Burley J
• 5 Dec 2022: Xiamen Huadian Switchgear Co Ltd v Powins Pty Ltd (No 2) [2022] FCA 1458
  INTELLECTUAL PROPERTY - where parties have not reached complete agreement on the form of declarations and orders for non-pecuniary relief to give effect to written reasons delivered on 29 September 2022 - whether appropriate or necessary for additional or revised declarations and orders not otherwise agreed to be made - declarations and orders…
  Judge: Halley J
• 17 Nov 2022: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Security for Costs) [2022] FCA 1371
  PRACTICE AND PROCEDURE - application for security for costs - where Cross-Claimants ordinarily resident outside Australia - whether security includes work that is not relevant - whether Cross-Respondent entitled to security for own amendment application - where Cross-Respondent owes Cross-Claimant amount exceeding security sought
  Judge: Perram J
• 11 Nov 2022: Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2022] FCA 1380
  PRACTICE AND PROCEDURE - application for leave to file further evidence out of time - nature and complexity of evidence - reasons for and extent of delay - imminent commencement of hearing - case management principles
  Judge: Rofe J
• 19 Oct 2022: Pinnacle Runway Pty Ltd v Triangl Limited [2022] FCA 1246
  COSTS - lump-sum costs procedure - whether the second respondent ought to provide the applicant with source material verifying the costs and disbursements claimed - where the source material is sought to verify the apportionment of costs between two related proceedings.
  Judge: Murphy J
• 18 Oct 2022: Symphony Holdings Limited v Skins IP Limited [2022] FCA 1238
  INTELLECTUAL PROPERTY - the appellant appeals the decision of a delegate of the Registrar of Trade Marks - where the appellant had opposed the respondent's applications under s 92 of the Trade Marks Act 1995 (Cth) for the removal of trade marks registered under the appellant's name - appeal with respect to part of the unsuccessful opposition -… 168 IPR 464
  Judge: Raper J