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 Sep 2022:
Xiamen Huadian Switchgear Co Ltd v Powins Pty Ltd  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 …
Judge: Halley J
- 13 Sep 2022:
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd  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…
Judge: Yates, Abraham and Rofe JJ
- 9 Sep 2022:
Puma SE v Caterpillar Inc  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…
Judge: Nicholas, Rofe and McElwaine JJ
- 6 Sep 2022:
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd  FCA 1042
TRADE MARKS - whether the respondent infringed the second applicant's registered trade marks under s 120 of the Trade Marks Act 1995 (Cth) - whether the respondent used the depiction of its SOMAT dishwashing capsule as a trade mark - whether the respondent's device was deceptively similar to the second applicant's trade marks - whether the…
Judge: Rofe J
- 5 Sep 2022:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Permanent Stay) (No 2)  FCA 1031
PRACTICE AND PROCEDURE - form of permanent stay - where Cross-Claimants propose summary judgment application - where remaining issues identified - where procedure for future conduct of proceedings determined
Judge: Perram J
- 15 Aug 2022:
Karlsson v Griffith University  FCA 997
Judge: Rares J
- 29 Jul 2022:
Derma Pen LLC v Biosoft (Australia) Pty Ltd (Security for Costs)  FCA 885
PRACTICE AND PROCEDURE - application for security for costs - where Applicants are incorporated in Delaware - where neither Applicant has assets in or conducts business in Australia - where First Applicant has judgment debt against the Third Respondent out of jurisdiction - where Second Applicant has assets in form of US word mark - whether…
Judge: Perram J
- 19 Jul 2022:
Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Ltd (No 5)  FCA 837
TRADE MARKS - consideration of an application by Hells Angels Motorcycle Corporation (Australia) Pty Limited ("HAMC AU") for declarations, injunctions and damages in relation to 11 examples of contended infringement of registered trade marks owned by Hells Angels Motor Cycle Corporation ("HAMC US") - consideration of whether each example gives…
Judge: Greenwood J
- 15 Jul 2022:
Ozcare v Auscare Home & Community Care Limited (Further Orders)  FCA 835
TRADE MARKS - where application for injunction - whether Respondents breached existing orders - where domain names not deregistered - where domain names redirect traffic
Judge: Perram J
- 17 Jun 2022:
Watson as Trustee for the Watson Family Trust v Cosmetic Warriors Ltd  FCA 700
TRADE MARKS - consideration of the question of whether the applicant/appellant has discharged the burden arising under s 100(1)(c) of the Trade Marks Act 1995 (Cth) (the "Act") in relation to the question arising under s 92(4)(b) of the Act as to whether in the relevant period contemplated by that section there was use of the trade mark in… 167 IPR 494
Judge: Greenwood 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.