Trade Marks Sub-area NPA logo with link NPA logo with link

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.

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.

Forms:
Rules:

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.
Forms:
  • Form 92 - Notice of appeal (intellectual property)
Rules:

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

Latest Judgments

  • 16 Dec 2019: Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 3) [2019] FCA 2116
    PRACTICE AND PROCEDURE -- application for a stay of various orders pending the hearing and determination of an appeal to the Full Court of the Federal Court of Australia -- whether grounds of appeal are arguable -- whether the applicants will be deprived of the full benefits of the judgment in their favour -- whether the respondents will be…
    Judge: Besanko J
  • 6 Dec 2019: Stafford v Automotive Distributors Limited [2019] FCA 2068
    PRACTICE AND PROCEDURE - application for leave to appeal from summary dismissal of appeal by Federal Circuit Court of Australia - where primary judge summarily dismissed appeal on the basis that it had no reasonable prospects of success - where in the alternative primary judge dismissed appeal on the basis of failure to comply with orders and on…
    Judge: Banks-smith J
  • 5 Dec 2019: PKT Technologies Pty Ltd (formerly known as Fairlight.Au Pty Ltd) v Peter Vogel Instruments Pty Ltd [2019] FCAFC 216
    DAMAGES - damages for wrongful repudiation of agreement - expectation damages - whether claim for expectation damages expressly abandoned in previous hearing - party is bound by forensic election - likelihood of attainment of a profit - whether evidence of projections of future earnings sufficient to prove a likelihood of attainment - where…
    Judge: Besanko, Banks-smith and Stewart JJ
  • 3 Dec 2019: Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2019] FCA 2053
    EVIDENCE - objection to evidence under s 59 of the Evidence Act 1995 (Cth) - whether hearsay materials admissible as business records under s 69(2) of the Evidence Act 1995 (Cth) - relevance of ss 48 and 135 of the Act to the objection - some materials deemed admissible
    Judge: Burley J
  • 25 Nov 2019: Community First Credit Union Limited v Bendigo and Adelaide Bank Limited (No 2) [2019] FCA 1976
    COSTS - where two proceedings heard together - where applicant/appellant successful on one ground in rectification proceeding and all grounds in appeal proceeding - whether compendious costs order should be adjusted to reflect success on some but not all grounds in rectification proceeding
    Judge: Markovic J
  • 31 Oct 2019: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Form of Orders) [2019] FCA 1772
    PRACTICE AND PROCEDURE - permanent stay for abuse of process previously ordered - where stay ordered on basis of failure by cross-claimants and third party nation state to give voluntary discovery - parties unable to agree on scope of permanent stay - whether whole of cross-claim should be stayed - effect of failure to give discovery on…
    Judge: Perram J
  • 10 Oct 2019: Pinnacle Runway Pty Ltd v Triangl Limited [2019] 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 [2019] 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 [2019] 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 [2019] 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… 146 IPR 185
    Judge: Markovic 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.