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: |
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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.
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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.
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For further procedural and case management information you should refer to the Central Practice Note and the Intellectual Property Practice Note.
Latest Judgments
- 20 Sep 2024:
Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100
TRADE MARKS - where applicant the owner of the trade mark consisting of the word ESTABLISHMENT in Classes 9, 25, 41 and 42, which include restaurant, bar and hotel services - where trade mark has been used since September 2000 in respect of a multi-level restaurant, bar and hotel business in Sydney - where respondent operates a restaurant in…
Judge: Jackman J - 3 Sep 2024:
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 4) [2024] FCA 1006
COSTS - application for review of a decision of a Registrar of the Court as to the quantum of costs payable pursuant to a lump sum award - requirement for a de novo hearing on the question of quantum - whether the question of quantum should be referred to an experienced costs lawyer for inquiry and report - relevant considerations
Judge: O'Bryan J - 14 Aug 2024:
Fanatics, LLC v FanFirm Pty Limited [2024] FCA 920
PRACTICE AND PROCEDURE - application for stay of injunction pending appeal - alleged infringement of trade marks - where grounds of appeal were bona fide and arguable - whether balance of convenience favoured grant of stay - where respondent offered terms of partial stay - HELD: injunction order of primary judge stayed for 28 days, and thereafter…
Judge: Bromwich J - 29 Jul 2024:
FanFirm Pty Limited v Fanatics, LLC (No 2) [2024] FCA 826
PRACTICE AND PROCEDURE - application for stay of orders pursuant to r 36.08 of the Federal Court Rules 2011 (Cth) - whether stay or rectification of the Trade Marks Register more suitable course pending determination of appeal - whether stay or injunction more suitable course pending determination of appeal - application partially granted.
Judge: Rofe J - 18 Jul 2024:
Care A2 Plus Pty Ltd (Receiver Appointed) v The a2 Milk Company Limited [2024] FCA 782
PRACTICE AND PROCEDURE - form of orders COSTS - application for costs arising from interlocutory applications to be made payable forthwith - where applicant has failed to comply with orders to pay security for costs - consideration of whether extenuating circumstances were present which warranted departure from the general position under r 40.13…
Judge: Rofe J - 17 Jul 2024:
Sunnya Pty Ltd v FPA Group Ltd [2024] FCA 774
COSTS - where leave granted by consent to discontinue proceeding before trial on condition applicant pay respondents' costs - where statement of claim made allegations tantamount to fraud which were withdrawn and contradicted in amended statement of claim - where respondents alleged that proceeding had no reasonable prospects of success and/or…
Judge: Katzmann J - 17 Jul 2024:
FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764
INTELLECTUAL PROPERTY - trade marks - alleged infringement of registered marks under s 120 of the Trade Marks Act 1995 (Cth) - deceptive similarity - misleading or deceptive conduct - alleged breaches of s 18 and s 29(1)(g) and (h) of the Australian Consumer Law (ACL) - tort of passing off. TRADE MARKS - infringement - deceptive similarity - s 120 …
Judge: Rofe J - 11 Jul 2024:
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (No 2) [2024] FCAFC 92
COSTS - application for variation to costs orders - appropriate order as to costs - where appellants failed to establish trade mark infringement at trial and on appeal but successful in resisting validity challenge - where respondent's validity arguments raised only in response to infringement case - where appellants successful in demonstrating…
Judge: Nicholas, Burley and Hespe JJ - 11 Jul 2024:
Societe Civile et Agricole du Vieux Chateau Certan v Kreglinger (Australia) Pty Ltd (No 2) [2024] FCA 755
CORPORATIONS - Bordeaux wine - Tasmanian wine - consumer law claims - passing off claims - trade mark revocation proceedings - final orders
Judge: Beach J - 11 Jul 2024:
Comite Interprofessionnel du Vin de Champagne v Network Nutrition Pty Ltd [2024] FCA 780
PRACTICE AND PROCEDURE - costs - appeal from decision of Registrar of Trade Marks - where proceeding resolved on the eve of final hearing - where agreed resolution involved the appellants discontinuing the proceeding - where the parties did not reach agreement on costs - where each party sought its costs of the proceeding - consideration of…
Judge: Moshinsky J
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