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.
- 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
- 21 Jun 2019:
Rodney Jane Racing Pty Ltd v Monster Energy Company  FCA 923
TRADE MARKS - registration - opposition - appeal from decision of Registrar of Trade Marks refusing registration - whether appellant had valid claim to ownership of marks at priority date - whether appellant intended to use or authorise use of marks at priority date - whether marks likely to deceive or cause confusion - appeal allowed EVIDENCE -…
Judge: O'Bryan J
- 20 Jun 2019:
Trident Seafoods Corporation v Trident Foods Pty Ltd  FCAFC 100
TRADE MARKS - application for leave to appeal - leave to appeal granted - exercise of discretion under s 101(3) - statutory purpose of Pt 9 of the Trade Marks Act 1955 (Cth) - evidentiary basis for there being relevant prospect of confusion in the minds of consumers - whether the use of the mark after the non-use period "did not lack good faith"…
Judge: Reeves, Jagot and Rangiah JJ
- 13 Jun 2019:
Vito Mitolo & Son Pty Ltd v Mitolo Wines Aust Pty Ltd  FCA 903
ADMINISTRATIVE LAW -- application for an extension of time within which to lodge an application for judicial review under the Administrative Decisions (Judicial Review) Act 1977 (Cth) of a decision of a delegate of the Registrar of Trade Marks -- where the application for an extension of time and the substantive application were heard together --…
Judge: Besanko J
- 13 Jun 2019:
Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd  FCA 902
TRADE MARKS -- where the applicants seek relief for trade mark infringement -- whether the first respondent contravened s 120(1) of the Trade Marks Act 1995 (Cth) by using a mark that is deceptively similar to the applicants' registered trade marks -- consideration of the principles relevant to deceptive similarity in relation to a word mark --…
Judge: Besanko J
- 30 May 2019:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Permanent Stay)  FCA 802
PRACTICE AND PROCEDURE - permanent stay for want of prosecution or abuse of process - where third party nation state failed to respond to invitation to provide voluntary discovery - where interim stay of proceedings previously ordered - where cross-claimants took subsequent steps to procure discovery - whether want of prosecution - whether abuse…
Judge: Perram J
- 24 May 2019:
Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd  FCA 719
TRADE MARKS - whether respondent infringed applicant's registered trade marks pursuant to s 120(1) of the Trade Marks Act 1995 (Cth) ("the Act") - where applicant carries on a direct marketing and data processing business - where respondent carries on a direct mail services business - whether respondent's marks deceptively similar to applicant's…
Judge: Davies J
- 17 May 2019:
Swole Gym Wear Group Pty Ltd v Swole O'Clock Ltd  FCA 685
TRADE MARKS - application for an extension of time to file an appeal from a decision of a delegate of the Registrar of Trade Marks - where trade mark removed from the Register pursuant to s 92(4)(a) of the Trade Marks Act 1995 (Cth) - whether applicant had no intention in good faith to use the trade mark in Australia in relation to specified goods …
Judge: Steward J
- 3 May 2019:
Notaras v Barcelona Pty Limited (No 2)  FCA 617
COSTS - where, after judgment, the successful respondent seeks to substitute for the costs order as made a different costs order, not earlier foreshadowed to the Court, whereby the applicant pay the respondent's costs on an indemnity basis from a specified date, being the date of non-acceptance by the applicant of one or other of two offers of…
Judge: Robertson J
- 3 May 2019:
Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd  FCA 720
TRADE MARKS - summary judgment - default judgment - trade mark infringement - meaning of foreign words - meaning and pronunciation of Chinese characters - use as a trade mark - summary judgment granted - application to dispense with r 4.01(2) of Federal Court Rules 2011 (Cth) - dispensation refused
Judge: Beach 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.