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: |
|
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: |
|
Rules: |
|
For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.
Latest Judgments
- 12 Jan 2023:
Fensom v Jake Ryan Media Group Pty Ltd [2023] FCA 7
Judge: Colvin J - 16 Dec 2022:
In-N-Out Burger, Inc v Rich Asians Pty Ltd [2022] FCA 1573
PRACTICE AND PROCEDURE - undertaking given to the Court by the respondents - application under r 39.21 of the Federal Court Rules 2011 (Cth) where respondents have failed to fulfil undertaking
Judge: Burley J - 5 Dec 2022:
Xiamen Huadian Switchgear Co Ltd v Powins Pty Ltd (No 2) [2022] FCA 1458
INTELLECTUAL PROPERTY - where parties have not reached complete agreement on the form of declarations and orders for non-pecuniary relief to give effect to written reasons delivered on 29 September 2022 - whether appropriate or necessary for additional or revised declarations and orders not otherwise agreed to be made - declarations and orders…
Judge: Halley J - 17 Nov 2022:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Security for Costs) [2022] FCA 1371
PRACTICE AND PROCEDURE - application for security for costs - where Cross-Claimants ordinarily resident outside Australia - whether security includes work that is not relevant - whether Cross-Respondent entitled to security for own amendment application - where Cross-Respondent owes Cross-Claimant amount exceeding security sought
Judge: Perram J - 11 Nov 2022:
Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2022] FCA 1380
PRACTICE AND PROCEDURE - application for leave to file further evidence out of time - nature and complexity of evidence - reasons for and extent of delay - imminent commencement of hearing - case management principles
Judge: Rofe J - 19 Oct 2022:
Pinnacle Runway Pty Ltd v Triangl Limited [2022] FCA 1246
COSTS - lump-sum costs procedure - whether the second respondent ought to provide the applicant with source material verifying the costs and disbursements claimed - where the source material is sought to verify the apportionment of costs between two related proceedings.
Judge: Murphy J - 18 Oct 2022:
Symphony Holdings Limited v Skins IP Limited [2022] FCA 1238
INTELLECTUAL PROPERTY - the appellant appeals the decision of a delegate of the Registrar of Trade Marks - where the appellant had opposed the respondent's applications under s 92 of the Trade Marks Act 1995 (Cth) for the removal of trade marks registered under the appellant's name - appeal with respect to part of the unsuccessful opposition -… 168 IPR 464
Judge: Raper J - 29 Sep 2022:
Xiamen Huadian Switchgear Co Ltd v Powins Pty Ltd [2022] FCA 1159
INTELLECTUAL PROPERTY - application for declarations and injunctions in relation to alleged misleading or deceptive conduct and false or misleading representations pursuant to ss 18 and 29 of the Australian Consumer Law (ACL), trade mark infringements pursuant to s 120 of the Trade Marks Act 1995 (Cth) (TM Act) and passing off - where applicant is … 169 IPR 77
Judge: Halley J - 13 Sep 2022:
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157
TRADE MARKS - appeal - infringement - deceptive similarity - whether, in determining deceptive similarity, the primary judge erred in not taking into account the factual distinctiveness of the appellant's marks at their respective filing dates - whether primary judge erred in finding the respondents had not used JAZZ CORNER OF THE WORLD and JAZZ… 168 IPR 74
Judge: Yates, Abraham and Rofe JJ - 9 Sep 2022:
Puma SE v Caterpillar Inc [2022] FCAFC 153
TRADE MARKS - application for leave to appeal from a single judge of the Court pursuant to s 195(2) of the Trade Marks Act 1995 (Cth) - whether primary judge erred in finding grounds of opposition pursuant to ss 44 and 60 of the Trade Marks Act 1995 (Cth) were made out - whether trade mark deceptively similar to prior registered mark - whether… 168 IPR 404
Judge: Nicholas, Rofe and McElwaine JJ
Subscribe
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.