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

  • 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…
    Judge: Markovic J
  • 5 Sep 2019: State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2019] FCA 1464
    PRACTICE AND PROCEDURE - trade mark infringement - copyright infringement - "Fearless Girl" two dimensional and three dimensional forms - related US proceeding against the artist - scope of implied Harman undertaking - leave to partially modify undertaking - relevance of documents to US proceeding - special circumstances - purpose not connected to …
    Judge: Beach J
  • 20 Aug 2019: Workplace Institute Limited v IBM Australia Limited [2019] FCA 1339
    PRACTICE AND PROCEDURE - application for interlocutory injunction - trial of proceeding to commence in three months - unnecessary and undesirable to assess prima facie case - balance of convenience favours respondent - injunction if granted would change status quo - applicants unable to explain delay in bringing claim for interlocutory relief -…
    Judge: O'Callaghan J
  • 9 Aug 2019: Hungry Spirit Pty Ltd ATF The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277
    TRADE MARKS - appeal under s 56 of the Trade Marks Act 1995 (Cth) - where opponent filed submitting notice and the Registrar of Trade Marks not taking an active part in the proceedings - no evidence to support grounds of opposition - appeal allowed
    Judge: Burley J
  • 31 Jul 2019: Nesor Nominees Pty Ltd v Big Boys BBQ Qld Pty Ltd [2019] FCA 1208
    PRACTICE AND PROCEDURE - application for default judgment under r 5.23 of the Federal Court Rules 2011 (Cth) against respondents - where order for substituted service of respondents - where failure of respondents to attend case management hearings - whether applicant is entitled to relief TRADE MARKS - infringement of registered trade marks -…
    Judge: Anderson J
  • 25 Jul 2019: Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2) [2019] FCA 1140
    TRADE MARKS -- where the applicants seek declarations and injunctions with respect to trade mark infringement -- whether an injunction granted pursuant to s 126 of the Trade Marks Act 1995 (Cth) can and should be expressed in terms of the applicants' statutory monopoly or in terms of the particular conduct found to be infringing conduct -- where… 144 IPR 22
    Judge: Besanko J
  • 12 Jul 2019: Merck KGaA v Merck Sharp Dohme Corp [2019] FCA 1084
    ESTOPPEL - issue estoppel - proper law of "co-existence" agreement - whether first respondent precluded from denying that agreement governed by German law - whether first respondent bound by issue estoppel arising out of proceedings between applicant and the first respondent in United Kingdom ("UK proceedings") in which it was found that the…
    Judge: Nicholas 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.