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.
- 16 Oct 2018:
Hoser v Sportsbet Pty Ltd  FCA 1557
TRADE MARKS - whether the pleaded television commercial was a use by the respondent of "snake man" or "snakeman" as a trade mark CONSUMER LAW - whether the pleaded television commercial represented to adult consumers in Australia that the man depicted in the advertisement was "the snakeman" - whether the television commercial represented to adult…
Judge: Robertson J
- 21 Sep 2018:
Red Energy Pty Limited v Registrar of Trade Marks  FCA 1449
TRADE MARKS - appeal from delegate's decision - lack of distinctiveness - s 41 of Trade Marks Act 1995 (Cth) - appeal allowed
Judge: Beach J
- 20 Sep 2018:
Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company (No 2)  FCA 1443
COSTS - where proceedings for trade mark infringement and appeal against decision refusing applications for registration filed by alleged infringer dismissed - where proceedings heard together - costs orders - whether indemnity costs order appropriate - whether global costs order appropriate.
Judge: Nicholas J
- 4 Sep 2018:
Aldi Foods Pty Ltd v Moroccanoil Israel Ltd (No 2)  FCAFC 147
COSTS - application for special costs order - whether application should be entertained - whether Full Court on appeal should determine costs - where Appellants did not foreshadow application for special costs order - where Appellants made Calderbank letter prior to trial before primary judge
Judge: Allsop CJ, Perram and Markovic JJ
- 10 Aug 2018:
Chen v Diversipak Pty Ltd (in liq)  FCA 1314
CORPORATIONS - application for leave under s 471B of the Corporations Act 2001 (Cth) to commence proceedings against company in liquidation TRADE MARKS - application for an interim injunction preventing liquidator of company from selling company goods - where applicant claims that the goods infringe her registered trade mark
Judge: Bromwich J
- 7 Aug 2018:
Honest Reveira v Registrar of Trade Marks  FCA 1122
TRADE MARKS - application for judicial review of a decision of the Registrar - where an application for removal of trade marks had been filed - where the owner of the trade marks did not file a notice of intention to oppose within the prescribed period - where the owner sought an extension of time to file a notice of intention to oppose - where…
Judge: Moshinsky J
- 31 Jul 2018:
Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 2)  FCA 1096
TRADE MARKS - what trade mark was in fact used by the respondent - trade marks similar - whether deceptively similar - where no actual confusion - whether applicant had continuously used its trade mark before the priority date - whether use was authorised use under the control of applicant for the purposes of ss 7 and 8 of the Trade Marks Act 1995 … 133 IPR 417
Judge: Robertson J
- 16 Jul 2018:
Vokes Ltd v Laminar Air Flow Pty Ltd  FCAFC 109
TRADE MARKS – Registrar’s power under s 81 of the Trade Marks Act to correct an error made in entering a particular in the Trade Marks Register – Court’s power under s 85 and s 88 to order the amendment of the Register distinguished – statutory scheme under Part 8, Division 1 and Division 2 considered – error not made “in entering” a particular in … 133 IPR 182
Judge: Nicholas, Davies and Burley JJ
- 16 Jul 2018:
Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (No 2)  FCAFC 112
COSTS - indemnity costs - whether rejection of settlement offers unreasonable or imprudent - applicable principles - where settlement offers did not place the offeree in a substantially better position than it achieved on appeal - discretion as to costs - where respondents substantially successful on appeal and cross-appeal - where appellant…
Judge: Nicholas, Yates and Beach JJ
- 11 Jul 2018:
Sportsbet Pty Ltd v Crownbet Pty Ltd  FCA 1045
PRACTICE AND PROCEDURE - application for interlocutory injunction - where applicant offered betting services to Australian consumers under the name SPORTSBET - where respondents proposed to commence offering betting services under the name SPORTINGBET - where applicant alleged that the respondents' proposed conduct would contravene s 18 of the…
Judge: Moshinsky 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.