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.
- 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
- 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
- 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 …
Judge: Nicholas, Davies and Burley 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
- 6 Jul 2018:
Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company  FCA 1014
TRADE MARKS - whether respondents infringed Dunlop word marks and/or the Flying D device marks ("Dunlop/Flying D marks") registered with respect to (inter alia) aircraft tyres and related parts and aircraft tyre re-treading services - whether defences available under s 120(2), s 122(1)(a), (b), (e) and (f) of the Trade Marks Act 1995 (Cth) ("the…
Judge: Nicholas J
- 2 Jul 2018:
Frucor Beverages Limited v The Coca-Cola Company  FCA 993
TRADE MARKS – appeal from decision of Registrar of Trade Marks in opposition proceedings – colour mark – whether the mark applied for is capable of distinguishing the designated goods TRADE MARKS – colour mark – disconformity between the colour of the representation of the mark and the description of the mark provided pursuant to reg 4.3(7) of the …
Judge: Yates J
- 26 Jun 2018:
Singtel Optus Pty Limited v Optum Inc (No. 2) FCA 963
TRADE MARKS - Non-use of trade mark in respect of services - application for removal of trade mark in respect of those services for non-use - whether the Court should exercise its discretion under s 101(3) of the Trade Marks Act not to remove trade mark TRADE MARKS - whether scope of services should be narrowed - use of trade mark in respect of…
Judge: Davies J
- 22 Jun 2018:
Jujube Australia v Natures Treat Pty Ltd (No 1)  FCA 962
COSTS - costs of interlocutory application for substituted service - where respondent appeared at interlocutory hearing
Judge: Perram J
- 22 Jun 2018:
Aldi Foods Pty Ltd v Moroccanoil Israel Ltd  FCAFC 93
APPEAL - nature of appellate review - appeal by way of rehearing - degree of deference to primary judge's findings - degree of error - whether error of primary judge must be demonstrated as wrong by 'inconvertible facts or uncontested testimony' - where findings on matter of impression - consideration of Branir Pty Ltd v Owston Nominees (No 2) Pty …
Judge: Allsop CJ, Perram and Markovic JJ
- 21 Jun 2018:
Geneva Laboratories Ltd v Pharmacy Depot Hurstville Pty Ltd (No 2)  FCA 1015
Judge: Rares 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.