Trade Marks Sub-area
About this Sub-area
- 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.
Central Practice Note (CPN-1)
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.
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.
- 22 Nov 2023:
Vitaco Health IP Pty Ltd v AFI Cosmetic Pty Ltd  FCA 1463
PRACTICE AND PROCEDURE - application for interlocutory injunction - ex parte application - strong prima facie case of trade mark and copyright infringement, and breach of s 18 and s 29 of the Australian Consumer Law - First Respondent's two websites use the applicants' logos and other branded content, and falsely indicate the First Respondent has…
Judge: Rofe J
- 16 Nov 2023:
McD Asia Pacific LLC v Hungry Jack's Pty Ltd  FCA 1412
TRADE MARKS - infringement - Trade Marks Act 1995 (Cth) s 120 - deceptive similarity - consideration of intention to mislead or deceive - infringement not established. TRADE MARKS - application for cancellation of trade mark registration - Trade Marks Act 1995 (Cth) ss 44, 60 and 88 - no ground for cancellation established. TRADE MARKS -…
Judge: Burley J
- 8 Nov 2023:
Toyota Jidosha Kabushiki Kaisha v OZI4X4 Pty Ltd  FCA 1361
PRACTICE AND PROCEDURE - where orders in the nature of an injunction sought by consent - where there is no evidence or statement of agreed facts before the Court - orders made COSTS - application for indemnity costs - some delay in providing consent orders to the Court - application refused
Judge: Kenny J
- 3 Nov 2023:
STIHL Pty Ltd v Reggie Bowman Pty Ltd  FCA 1347
PRACTICE AND PROCEDURE - application for default judgment under r 5.23 of the Federal Court Rules 2011 (Cth) - where respondents have failed to file a defence - whether the court is satisfied on the basis of pleaded facts that the applicant is entitled to the relief claimed TRADE MARKS - infringement of registered trade marks - where applicant…
Judge: Button J
- 2 Nov 2023:
Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited  FCAFC 175
TRADE MARKS - where appellant's trade mark registered in respect of services comprising (inter alia) issuing halal certifications to businesses and individuals for goods and services if religious and technical requirements are met ("the registered services") - whether primary judge erred in finding that the respondents' use of a logo on their…
Judge: Nicholas, Burley and Cheeseman JJ
- 26 Sep 2023:
Red Hill Wine Pty Ltd v Red Hill Vineyard Pty Ltd  FCA 1151
COSTS - where party failed to file notice of objection within 21 day time period after estimate issued by Registrar - where party seeks to have the time extended and file notice of objection to estimate of costs - whether reason for delay and merits of the notice of objection sufficient to allow orders sought - application dismissed
Judge: Rofe J
- 13 Sep 2023:
Firstmac Limited v Zip Co Limited (No 2)  FCA 1074
COSTS - application for indemnity costs - principles in respect of Calderbank offers - where applicant did not accept offers by respondents to settle proceedings - whether offers were commensurate with a possible outcome in the proceeding
Judge: Markovic J
- 24 Aug 2023:
Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd  FCA 999
TRADE MARKS - appeal from decision of the delegate of the Registrar of Trade Marks to refuse appellant's opposition to application by respondent for registration of KANGAROO MOTHER trade mark - hearing de novo - s 59 of the Trade Marks Act 1995 (Cth) - where as at priority date respondent did not intend to use or authorise the use of the trade…
Judge: O'Callaghan J
- 7 Aug 2023:
Victoria's Secret Stores Brand Management LLC v ePharmacy Group Pty Ltd  FCA 921
PRACTICE AND PROCEDURE - application for suppression order - where information said to be confidential and commercially sensitive, whether order preventing publication or other disclosure necessary to prevent prejudice to the proper administration of justice
Judge: Katzmann J
- 7 Jul 2023:
Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods (No 2)  FCA 764
COSTS - application for indemnity costs by appellant - whether offers of settlement such that Court should award indemnity costs - refusal of offers by respondent not unreasonable - application for indemnity costs refused
Judge: Kennett 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.