Trade Marks Sub-area
Trade Marks Sub-area
About this Sub-area
The Trade Marks Sub-area consists of:
- 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.
Practice Notes
All practice notes are to be read with the Central Practice Note. It is the essential guide to practice in the Federal Court in all proceedings.
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: |
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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.
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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.
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For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.
Latest Judgments
- 4 Apr 2024:
Google LLC v Interactive Engineering Pty Ltd [2024] FCA 338
Judge: Markovic J - 2 Apr 2024:
The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd (No 2) [2024] FCAFC 44
COSTS - application for lump sum costs order calculated on an indemnity basis - whether the failure of the applicants to accept an offer of compromise was unreasonable - where offer of compromise included payment of costs other than legal costs - where rejection of offer was not unreasonable - whether costs should be apportioned taking account of…
Judge: Yates, Markovic and Kennett JJ - 27 Mar 2024:
McD Asia Pacific LLC v Hungry Jack's Pty Ltd (No 2) [2024] FCA 299
COSTS - discretion as to costs - consideration and determination of percentages - lump sum costs orders made pursuant to r 40.02(b) of the Federal Court Rule 2011 (Cth) - if not agreed, amounts to be determined by a Registrar of the Court
Judge: Burley J - 19 Mar 2024:
Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd (No 2) [2024] FCA 256
TRADE MARKS - form of order for amendment of Register of Trade Marks - cross-respondent the registered owner of a trade mark in certain services in class 43 - cross-claimant alleging the registered owner of the trade mark was not the owner - cross-claim upheld in relation to some of the registered services but not others - Court earlier making an…
Judge: Charlesworth J - 15 Mar 2024:
Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd [2024] FCA 248
CORPORATIONS -- Bordeaux wine -- Tasmanian wine -- passing off -- extent of reputation of French wine in Australia -- relevant date for assessing reputation -- classes of consumers -- evidence of confusion -- characteristics or knowledge of ordinary and reasonable person -- misleading or deceptive conduct -- misrepresentation -- contraventions of…
Judge: Beach J - 13 Mar 2024:
Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd (No 3) [2024] FCA 226
PRACTICE AND PROCEDURE - scope of declarations and injunctions - whether injunctions restraining use of marks that are "substantially identical" or "similar" to the infringing mark are available for misleading and deceptive conduct and passing off. COSTS - whether costs should be awarded on an issue-by-issue basis - causes of action not discrete…
Judge: Rofe J - 12 Mar 2024:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Pleadings Issues) [2024] FCA 223
PRACTICE AND PROCEDURE - cross-claim - application to strike out certain paragraphs of Cross-Respondent's defence - whether relevant parts of defence fail to disclose a reasonable defence or are otherwise an abuse of process in accordance with rr 16.21(1)(e)-(f) of the Federal Court Rules 2011 (Cth) PRACTICE AND PROCEDURE - application to amend…
Judge: Perram J - 26 Feb 2024:
Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138
INTELLECTUAL PROPERTY - trade marks - originating application alleging infringement of trade marks including the plain word mark mercato - whether the respondent has used, as a trade mark, a sign that is deceptively similar to any one of the applicant's trade marks sued upon - cross-claim for cancellation of trade marks or rectification of the…
Judge: Charlesworth J - 23 Feb 2024:
Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited [2024] FCAFC 15
CONTRACTS - construction - scope of releases in settlement agreement - prima facie canon of construction -whether releases apply to proceeding TRADE MARKS - infringement - trap viewing - extra-territorial application of s 120(1) of the Trade Marks Act 1995 (Cth) - whether images were available to consumers in the ordinary course of trade - where…
Judge: Perram, Nicholas, Burley, Rofe and Downes JJ - 19 Feb 2024:
Vitaco Health IP Pty Ltd v AFI Cosmetic Pty Ltd (No 2) [2024] FCA 99
PRACTICE AND PROCEDURE - application for an order for deemed service of documents - failed attempts to effect personal service - documents brought to attention of second respondent - application allowed PRACTICE AND PROCEDURE - application for substituted service - where second respondent is sole director and secretary of the first respondent -…
Judge: Rofe 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.