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.
- 10 Oct 2019:
Pinnacle Runway Pty Ltd v Triangl Limited  FCA 1662
TRADE MARKS - whether the second respondent infringed the applicant's trade mark pursuant to s 120 of the Trade Marks Act 1995 (Cth) - whether the mark was used to distinguish its goods from the goods of other traders. TRADE MARKS - cross-claim for cancellation of a trade mark pursuant to s 88 of the Trade Marks Act 1995 (Cth) - whether…
Judge: Murphy J
- 1 Oct 2019:
Zoo Sport (Europe) Ltd v Zoo International Pte Ltd  FCA 1660
PRACTICE AND PROCEDURE - dismissal for want of prosecution - applicants in default - failure to comply with order for security for costs - failure to file notice of address for service - proceeding dismissed
Judge: Rangiah J
- 25 Sep 2019:
Baiada Pty Ltd v PQM (Vic) Pty Ltd trading as Lilydale Wholesale Meats  FCA 1604
TRADE MARKS - where applicants seek interim injunctive relief for trade mark infringement - final injunctions granted by consent CONSUMER LAW - where applicants seek interim injunctive relief for contraventions of the Australian Consumer Law -final injunctions granted by consent
Judge: Yates J
- 20 Sep 2019:
Community First Credit Union Limited v Bendigo and Adelaide Bank Limited  FCA 1553
TRADE MARKS - application for rectification of the Register of Trade Marks pursuant to s 88(1) of the Trade Marks Act 1995 (Cth) (TM Act) by removing or cancelling the mark COMMUNITY BANK and device mark and orders pursuant to s 97 or s 101 of the TM that the marks be removed from the Register - whether pursuant to s 88(2)(a) of the TM Act…
Judge: Markovic J
- 5 Sep 2019:
State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd  FCA 1464
PRACTICE AND PROCEDURE - trade mark infringement - copyright infringement - "Fearless Girl" two dimensional and three dimensional forms - related US proceeding against the artist - scope of implied Harman undertaking - leave to partially modify undertaking - relevance of documents to US proceeding - special circumstances - purpose not connected to …
Judge: Beach J
- 20 Aug 2019:
Workplace Institute Limited v IBM Australia Limited  FCA 1339
PRACTICE AND PROCEDURE - application for interlocutory injunction - trial of proceeding to commence in three months - unnecessary and undesirable to assess prima facie case - balance of convenience favours respondent - injunction if granted would change status quo - applicants unable to explain delay in bringing claim for interlocutory relief -…
Judge: O'Callaghan J
- 9 Aug 2019:
Hungry Spirit Pty Ltd ATF The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd  FCA 1277
TRADE MARKS - appeal under s 56 of the Trade Marks Act 1995 (Cth) - where opponent filed submitting notice and the Registrar of Trade Marks not taking an active part in the proceedings - no evidence to support grounds of opposition - appeal allowed
Judge: Burley J
- 31 Jul 2019:
Nesor Nominees Pty Ltd v Big Boys BBQ Qld Pty Ltd  FCA 1208
PRACTICE AND PROCEDURE - application for default judgment under r 5.23 of the Federal Court Rules 2011 (Cth) against respondents - where order for substituted service of respondents - where failure of respondents to attend case management hearings - whether applicant is entitled to relief TRADE MARKS - infringement of registered trade marks -…
Judge: Anderson J
- 25 Jul 2019:
Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2)  FCA 1140
TRADE MARKS -- where the applicants seek declarations and injunctions with respect to trade mark infringement -- whether an injunction granted pursuant to s 126 of the Trade Marks Act 1995 (Cth) can and should be expressed in terms of the applicants' statutory monopoly or in terms of the particular conduct found to be infringing conduct -- where… 144 IPR 22
Judge: Besanko J
- 12 Jul 2019:
Merck KGaA v Merck Sharp Dohme Corp  FCA 1084
ESTOPPEL - issue estoppel - proper law of "co-existence" agreement - whether first respondent precluded from denying that agreement governed by German law - whether first respondent bound by issue estoppel arising out of proceedings between applicant and the first respondent in United Kingdom ("UK proceedings") in which it was found that the…
Judge: Nicholas J
To stay up-to-date with news in the Federal Court, including developments in this NPA, subscribe to our email subscription services.
We provide subscriptions to the latest judgments and events (by NPA); Practice News to keep up-to-date with changes to practice and procedure; and Daily Court Listings.
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.