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.
- 29 Jul 2021:
PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd  FCAFC 128
TRADE MARKS - infringement - whether Trade Marks Act 1995 (Cth) imposes liability for authorising infringement of a registered trade mark - no liability for authorising infringement TRADE MARKS - deceptive similarity - whether primary judge erred in evaluating deceptive similarity between trade marks - where primary judge considered circumstances…
Judge: Jagot, Nicholas and Burley JJ
- 16 Jul 2021:
Dollinger Filtration Ltd v Laminar Air Flow Pty Ltd  FCA 817
PRACTICE AND PROCEDURE - pleadings - application for leave to amend defence - whether amendment sought to resile from previous admission - where no explanation of how or why admission came to be pleaded - where no evidence that the amendment sought would correct an error - where investigation of matter put in issue by sought amendment might be…
Judge: Stewart J
- 5 Jul 2021:
A Nelson & Co Ltd v Martin & Pleasance Pty Ltd (Stay Application)  FCA 754
PRIVATE INTERNATIONAL LAW - application for permanent stay of claim for breach of contract and temporary stay of claim for damages for intellectual property infringements - where intellectual property infringements admitted - where exclusive jurisdiction clause in distribution agreement between First Applicant and First Respondent requires…
Judge: Perram J
- 1 Jul 2021:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 2)  FCAFC 120
PRACTICE AND PROCEDURE - appeal - form of remitter to primary judge COSTS - whether in relation to the appeal there is any reason to apportion costs taking account of the parties' success or failure on certain issues - costs of interlocutory application at first instance - orders made
Judge: Katzmann, Beach and Markovic JJ
- 30 Jun 2021:
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3)  FCA 729
TRADE MARKS - rectification of the Register - appropriate form of order COSTS - where mix of potential costs entitlements - whether a consolidated costs order should be made offsetting costs entitlements - separate orders made on a lump sum basis
Judge: O'Bryan J
- 25 Jun 2021:
Taylor v Killer Queen, LLC (No 2)  FCA 680
PRACTICE AND PROCEDURE - application for discovery of documents - objection to production of documents on the basis of legal advice privilege and litigation privilege - Alternatively object to production of documents on the basis of statutory privilege of patent and trade mark attorney advice privilege - whether the Respondents have waived…
Judge: Cheeseman J
- 8 Jun 2021:
AGL Energy Limited v Greenpeace Australia Pacific Limited  FCA 625
COPYRIGHT - infringement - Copyright Act 1968 (Cth) s 36 - artistic work constituted by company logo - where subsistence of copyright not challenged - where agreed that a substantial part has been copied - whether the use of the artistic work in different forms of media amounts to a fair dealing for the purpose of parody or satire within s 41A of… 159 IPR 336
Judge: Burley J
- 8 Jun 2021:
Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd  FCA 617
TRADE MARKS - where applicant gave notice to respondent of termination of Trade Mark Licence Agreement by which the applicant had granted to the respondent the right to use certain of its trade marks - whether applicant proved content of certain "Brand Standards" - whether respondent in breach of Trade Mark Licence Agreement by failing to remove…
Judge: O'Callaghan J
- 28 May 2021:
State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3)  FCA 568
CONSUMER LAW - Fearless Girl statue - replica - future display - consequential orders - need for disclaimer - costs - apportionment of costs - indemnity costs - orders made 159 IPR 281
Judge: Beach J
- 21 May 2021:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V.  FCAFC 77
TRADE MARKS - ownership of trade marks - vodka products - competing claims to ownership of trade marks between Russian Federation entities and Dutch company - permanent stay of cross-claim - failure to give proper discovery - extent of permanent stay - whether issues estoppel arising from Dutch litigation should have been permitted to be further… 389 ALR 612 ; 159 IPR 58
Judge: Katzmann, Beach and Markovic JJ
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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.