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

  • 17 May 2019: Swole Gym Wear Group Pty Ltd v Swole O'Clock Ltd [2019] FCA 685
    TRADE MARKS - application for an extension of time to file an appeal from a decision of a delegate of the Registrar of Trade Marks - where trade mark removed from the Register pursuant to s 92(4)(a) of the Trade Marks Act 1995 (Cth) - whether applicant had no intention in good faith to use the trade mark in Australia in relation to specified goods …
    Judge: Steward J
  • 3 May 2019: Notaras v Barcelona Pty Limited (No 2) [2019] FCA 617
    COSTS - where, after judgment, the successful respondent seeks to substitute for the costs order as made a different costs order, not earlier foreshadowed to the Court, whereby the applicant pay the respondent's costs on an indemnity basis from a specified date, being the date of non-acceptance by the applicant of one or other of two offers of…
    Judge: Robertson J
  • 3 May 2019: Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71
    TRADE MARKS - consideration of the nature of an appeal to the Federal Court of Australia under s 56 of the Trade Marks Act 1995 (Cth) (the "Act") from a decision of the delegate of the Registrar of Trade Marks - consideration of the essential statutory features of that which constitutes a trade mark for the purposes of the Act - consideration of…
    Judge: Greenwood, Rangiah and Burley JJ
  • 1 May 2019: Foxtel Management Pty Limited v Registrar of Trade Marks [2019] FCA 605
    TRADE MARKS - application for judicial review of a decision of the Registrar of Trade Marks - where an application for revocation of the registration of a trade mark was made - where an interested person did not file a notice of intention to oppose within the prescribed time - where the Registrar declined to revoke the registration of the trade…
    Judge: Burley J
  • 30 Apr 2019: Flujo Holdings Pty Ltd v Merisant Company [2019] FCA 594
    PRACTICE AND PROCEDURE - security for costs - where no evidence that company has assets to meet adverse costs order - quantum of security - whether court has power to order security for payment of costs awarded in separate proceeding commenced in another jurisdiction
    Judge: O'Bryan J
  • 17 Apr 2019: Red Bull GmbH v Bullsone Co Ltd [2019] FCA 545
    TRADE MARKS - application for cancellation of trade mark - where respondent failed to participate in proceedings - application for default judgment granted with costs of the proceeding and of the removal/cessation application
    Judge: Allsop CJ
  • 5 Apr 2019: Moroccanoil Israel Ltd v Aldi Foods Pty Ltd (No 3) [2019] FCA 470
    PRACTICE AND PROCEDURE - Costs - remittal by Full Court of question of costs of trial and appeal - where applicant only partially successful both at trial and on appeal - whether indemnity costs should be awarded at trial based on a Calderbank offer - whether indemnity costs should be awarded on appeal based on identical pre-trial Calderbank offer …
    Judge: Katzmann J
  • 15 Mar 2019: Selth v Australasian Barrister Chambers Pty Ltd (No 5) [2019] FCA 362
    Judge: Rares J
  • 7 Mar 2019: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 6) [2019] FCA 337
    PRIVILEGE - application for production of unredacted documents - whether cross-claimants waived legal professional privilege over redacted portions of documents produced under notices to produce - where entire documents would otherwise attract legal professional privilege PRACTICE AND PROCEDURE - application for suppression and non-publication…
    Judge: Stewart J
  • 8 Feb 2019: Australian Meat Group Pty Ltd v JBS Australia Pty Limited (No 2) [2019] FCAFC 15
    COSTS - costs of proceedings at first instance
    Judge: Allsop CJ, Besanko and Yates 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.