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.
- 1 May 2018:
Singtel Optus Pty Limited v Optum Inc  FCA 575
TRADE MARKS – Appeal from a decision of a delegate of the Registrar of Trade Marks rejecting the Appellant’s grounds of opposition to the Respondent’s application for registration of trade marks pursuant to s 56 of the Trade Marks Act 1995 (Cth). TRADE MARKS – Grounds of opposition to registration: s 58 of the Trade Marks Act, trade mark…
Judge: Davies J
- 9 Mar 2018:
Geneva Laboratories Ltd v Pharmacy Depot Hurstville Pty Ltd  FCA 516
PRACTICE AND PROCEDURE - application to join non-party sole director of corporate respondent - Federal Court of Australia Act 1976 (Cth) s 31A - whether applicants had reasonable prospects of successfully prosecuting claims against non-party sole director as accessory to company's alleged contraventions of Australian Consumer Law s 18, Trade Marks …
Judge: Rares J
- 9 Mar 2018:
Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd  FCAFC 29
INTELLECTUAL PROPERTY - passing off and misleading or deceptive conduct - appellants and respondents both brewers of craft beer with the names "Pacific Ale" and "Pacific"- where the physical appearance of both products was different - whether the primary judge erred in finding that the respondents had not represented that there was an association… 129 IPR 238
Judge: Allsop CJ, Nicholas and Katzmann JJ
- 6 Mar 2018:
Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd  FCA 235
TRADE MARKS – cross-claim for revocation of trade marks pursuant to ss 41 and 88 of the Trade Marks Act 1995 (Cth) – whether marks capable of distinguishing the relevant goods or services – trade marks not inherently adapted to distinguish – insufficient use to distinguish the designated goods from the goods of others – trade marks to be revoked… 129 IPR 482
Judge: Burley J
- 2 Feb 2018:
Anchorage Capital Partners Pty Limited v ACPA Pty Ltd  FCAFC 6
TRADE MARKS - trade marks registered in respect of services in class 36 - whether the second respondent was the owner within the meaning of s 58 of the Trade Marks Act 1995 (Cth) ("the Act") - whether second respondent first to use identical or substantially identical trade marks in Australia in respect of the registered services or services of… 128 IPR 255; 351 ALR 436
Judge: Nicholas, Yates and Beach JJ
- 31 Jan 2018:
Laminar Air Flow Pty Ltd v Registrar of Trade Marks (No 2)  FCA 38
COSTS - whether costs should be awarded in a lump sum - Registrar to determine quantum
Judge: Robertson J
- 29 Jan 2018:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 5)  FCA 19
COSTS – application for costs to be payable forthwith – application for lump sum costs order – consideration of relevant costs principles
Judge: Perram J
- 22 Dec 2017:
Inspire by Sophie Guidolin Pty Ltd v Finch Entertainment Pty Ltd  FCA 1618
PRACTICE AND PROCEDURE - application for interlocutory injunction
Judge: Perram J
- 22 Dec 2017:
JBS Australia Pty Ltd v Australian Meat Group Pty Ltd (No 2)  FCA 1611
INTELLECTUAL PROPERTY – consideration of the orders to be made in disposition of the costs of the principal proceeding
Judge: Greenwood J
- 21 Dec 2017:
Clipsal Australia Pty Ltd v ACN 134 468 205 (formerly Clipso Electrical Pty Ltd) (No 5)  FCA 1584
CONTEMPT OF COURT - sentencing - admitted contempt of court - where contemnor breached orders of the Court requiring delivery up of particular goods and materials - whether proven beyond reasonable doubt that the contemnor's conduct was defiant or contumacious - whether fine, suspended sentence of imprisonment or imprisonment appropriate
Judge: Bromwich 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.