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.
- 18 Jan 2019:
Lumen Australia Pty Ltd v Frontline Australasia Pty Ltd (No 2)  FCA 18
Judge: Moshinsky J
- 14 Jan 2019:
Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 3)  FCA 7
TRADE MARKS - appropriate form of orders to give effect to reasons for judgment, particularly in relation to goods and services in Class 19, Class 20, Class 35 and Class 37 - appropriate costs order in proceedings before the Registrar where appeals allowed in light of evidence that was not before the Registrar COSTS - appropriate order where…
Judge: Robertson J
- 10 Jan 2019:
Notaras v Barcelona Pty Limited  FCA 4
TRADE MARKS - appeal from decision of delegate of the Registrar of Trade Marks - delegate held that appellant had failed to establish any of her grounds of opposition and that the respondent's trade mark application could proceed to registration - appellant's registered ATOMIC Word Mark in respect of coffee machines - appellant's registered ATOMIC …
Judge: Robertson J
- 21 Dec 2018:
Calico Global Pty Ltd v Calico LLC  FCA 2096
TRADE MARKS - Trade Marks Act 1995 (Cth) - appeal from Registrar's decision to remove registration of trade mark from one class of services under s 101(1) Trade Marks Act 1995- whether non-use or use in good faith during three year period prior to application to remove - where unregistered assignment by registered owner of trade mark - where…
Judge: Rares J
- 18 Dec 2018:
Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (No 3)  FCAFC 231
COSTS - application seeking orders varying previous orders made by the Court dealing with the costs of a trial and of an appeal - where appellants (costs applicants) seek a variation so that the respondents (costs respondents) pay the costs of the costs applicants, fixed in an amount to be determined by the Court - where costs applicants seek an…
Judge: Greenwood, Besanko and Katzmann JJ
- 17 Dec 2018:
Skyn Pty Ltd v Ansell Limited  FCA 1989
PRACTICE AND PROCEDURE - application to have party substituted as first respondent in appeal - order made joining party as third respondent - application dismissed
Judge: Colvin J
- 13 Dec 2018:
PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd (No 2)  FCA 2072
Judge: Nicholas J
- 11 Dec 2018:
Fairfax Media Publications Pty Limited v Network Ten Pty Limited  FCA 2003
TRADE MARKS - application for interim injunctive relief for alleged infringement of trade mark - undertaking proffered by respondent to cease use of the trade mark subsequent to hearing of the application - whether undertaking should be accepted - whether respondent should bear the applicant's costs
Judge: Yates J
- 27 Nov 2018:
Australian Meat Group Pty Ltd v JBS Australia Pty Limited  FCAFC 207
INTELLECTUAL PROPERTY - trade marks - whether appellant's use of its marks was deceptively similar to respondent's marks - whether impermissibly took into account reputation - whether failed to consider the extent to which elements of the parties' respective trade marks are descriptive or common to the trade - whether error in primary judge's…
Judge: Allsop CJ, Besanko and Yates JJ
- 22 Nov 2018:
Lumen Australia Pty Ltd v Frontline Australasia Pty Ltd  FCA 1807
COPYRIGHT - infringement - trailer wiring harnesses for inclusion in towbar kits - where the first respondent (Frontline) supplied towbar kits to automotive companies - where the first applicant (Lumen) supplied wiring harnesses to Frontline - where Frontline engaged the second and third respondents (Vision) to replicate Lumen's wiring harnesses - …
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.