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.

The NPA practice note sets out the arrangements for the management of intellectual property proceedings:

Other practice notes which may be relevant to this NPA include:

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.

For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.

• Trade Marks Act 1995 (Cth)
• Evidence Act 1995 (Cth)

• 11 Jul 2025: Toyota Jidosha Kabushiki Kaisha v OZI4x4 Pty Ltd [2025] FCA 768
  Catchwords: PRACTICE AND PROCEDURE – request by party to issue a subpoena against a non-party foreign corporation and for substituted service of that subpoena outside Australia – proposed recipient a Singapore company – request refused
  Judge: HILL J
• 10 Jul 2025: Paige LLC v Sage and Paige Collective Pty Ltd [2025] FCA 750
  TRADE MARKS – whether composite marks containing the registered mark and other words (Opposed Marks) deceptively similar under s 44 of the Trade Marks Act 1995 (Cth) – whether the appellant’s trade mark acquired a reputation in Australia before the Priority Date and because of that reputation would likely deceive or cause confusion under s 60 of…
  Judge: NEEDHAM J
• 9 Jul 2025: Fanatics, LLC v FanFirm Pty Limited [2025] FCAFC 87
  TRADE MARKS – infringement – s 120 of the Trade Marks Act 1995 (Cth) – use as a trade mark – whether use on information labels is use as a trade mark – whether use on a website is use in relation to goods or use in relation to online retail services – whether goods are of the same description. TRADE MARKS – defences to infringement –…
  Judge: BURLEY, JACKSON AND DOWNES JJ
• 30 Jun 2025: National Cancer Foundation v Registrar of Trade Marks [2025] FCA 711
  TRADE MARKS – appeal from decision of Registrar of Trade Marks to revoke registration of a trade mark – whether requirements in s 84A of the Trade Marks Act 1995 (Cth) (Act) are met – whether there is a basis to be satisfied that the mark should not have been registered – whether mark is deceptively similar to prior registered marks pursuant to s…
  Judge: MCEVOY J
• 13 Jun 2025: Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd (No 3) [2025] FCA 624
  COSTS – action alleging trade mark infringement and other causes – cross-claim seeking cancellation of trade marks – respondent and cross-claimant ultimately successful – where parties had varying degrees of success on discrete factual and legal issues – where applicant abandoned some claims mid-trial – whether applicant should pay a portion of…
  Judge: CHARLESWORTH J
• 23 May 2025: Jacksons Drawing Supplies Pty Ltd v Jackson's Art Supplies Ltd [2025] FCA 530
  INTELLECTUAL PROPERTY - application for injunctive relief for breaches of s 18, s 29(1)(g) or s 29(1)(h) of the Competition and Consumer Act 2010 (Cth) Sch 2 (ACL) and passing off - delay by applicant in seeking relief - discretionary refusal of wide injunctive relief CONSUMER LAW - misleading or deceptive conduct - passing off - use of the names…
  Judge: JACKSON J
• 20 May 2025: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 5) [2025] FCA 505
  COSTS – application for review of a decision of a Registrar of the Court determining the quantum of costs payable pursuant to a lump sum award – requirement for a de novo hearing on the question of quantum – question of quantum referred to an experienced costs lawyer for inquiry and report – whether report should be adopted in whole or in part
  Judge: O'BRYAN J
• 1 May 2025: Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited [2025] FCA 428
  TRADE MARKS – where the respondent brought non-use actions before the Registrar of Trade Marks (the Registrar) pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) against various class registrations of a trade mark (the Trade Mark) by the appellant – where the delegate of the Registrar determined that the Trade Mark had not been used in…
  Judge: O’CALLAGHAN J
• 30 Apr 2025: Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd (No 2) [2025] FCA 418
  COSTS – appeal from Registrar of Trade Marks successful – costs of appeal proceeding – where submitting notice filed – where success partially based on evidence not advanced before delegate of Registrar – where concessions made which were not made before delegate COSTS – whether party successful in Court should have its costs of proceeding before…
  Judge: BENNETT J
• 16 Apr 2025: Paco Nominees Pty Ltd v Ella Secret Australia Pty Ltd (Default Judgment) [2025] FCA 366
  TRADE MARKS – default judgment – respondents’ failure to comply with orders and appear – claim of trade mark infringement – default judgment granted PRACTICE AND PROCEDURE – application for default judgment pursuant to r 5.23 of the Federal Court Rules 2011 (Cth) – whether appropriate to grant injunction – whether satisfied that an order for…
  Judge: RAPER J