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.
- 11 May 2022:
Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Further Conduct of Proceedings) (No 2)  FCA 543
PRACTICE AND PROCEDURE - where parties unable to agree on a short minute of order - where timetable for the future conduct of proceedings.
Judge: Perram J
- 28 Apr 2022:
Horizons (Asia) Pty Ltd v Enagic Co., Ltd  FCA 465
PRACTICE AND PROCEDURE - interlocutory application seeking dismissal of application for leave to appeal - where applicant failed to comply with court orders - where procedural delays by applicant in progressing its application for leave to appeal - where applicant failed to provide security as ordered - application for leave to appeal dismissed
Judge: Yates J
- 20 Apr 2022:
Henley Arch Pty Ltd v Henley Constructions Pty Ltd (No 3)  FCA 408
PRACTICE AND PROCEDURE - application for a stay of orders pending appeal - stay granted
Judge: Anderson J
- 14 Apr 2022:
Energy Beverages LLC v Cantarella Bros Pty Ltd (No 2)  FCA 394
PRACTICE AND PROCEDURE - application for stay of dismissal orders pursuant to r 36.08 of the Federal Court Rules 2011 (Cth) (Rules) - whether stay or rectification of the Trade Marks Register more suitable course pending determination of appeal - consideration of Woolworths Ltd v BP plc (2006) 150 FCR 134;  FCAFC 52 and Woolworths Ltd v BP…
Judge: Halley J
- 6 Apr 2022:
Horizons (Asia) Pty Ltd v Enagic Co Ltd (Security for Costs)  FCA 365
PRACTICE AND PROCEDURE - application for security for costs of application for leave to appeal and appeal
Judge: Stewart J
- 30 Mar 2022:
Nasib Baik Pty Ltd v Sydney Ridelender Pty Ltd  FCA 301
PRACTICE AND PROCEDURE - application for default judgment pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) - where applicant sought declarations, injunctions and damages for alleged infringement of its trade mark pursuant to s 120 of the Trade Marks Act 1995 (Cth) (TM Act); misleading or deceptive conduct under the Australian…
Judge: Markovic J
- 18 Mar 2022:
Lamont v Malishus Limited (No 2)  FCA 237
PRACTICE AND PROCEDURE - where appellant was self-represented before the Federal Circuit Court of Australia ("FCCA") - whether FCCA erred by denying appellant right to fair hearing - whether FCCA erred by failing to inform appellant of court practices and procedures - relevant legal principles - relevance of characteristics of litigant and…
Judge: Burley J
- 17 Mar 2022:
Henley Arch Pty Ltd v Henley Constructions Pty Ltd (No 2)  FCA 231
COSTS - where the Respondents refused an offer made under r 25.14 of the Federal Court Rules 2011 (Cth) - whether to award indemnity costs - whether rejection of first Calderbank offer was unreasonable - whether the state of affairs provided for by the judgment was more favourable, as a matter of substance, to the offeror, compared with the state…
Judge: Anderson J
- 10 Mar 2022:
Marquis Macadamias Ltd v Mars Australia Pty Ltd  FCA 207
INTELLECTUAL PROPERTY - appeal from decision of Registrar of Trade Marks to refuse to register appellant's logo trade mark on basis of opposition by respondent under s 44 of the Trade Marks Act 1995 (Cth) - where parties agreed to settle the appeal proceeding and provided the Court with consent orders pre-hearing - consideration of Court's power…
Judge: O'Bryan J
- 8 Mar 2022:
Gen-Probe Incorporated v Beckman Coulter, Inc  FCA 194
INTELLECTUAL PROPERTY - appeal from decision of Registrar of Trade Marks refusing extension to Australia of protection for the trade mark OPEN ACCESS resulting from international registration under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks - application by the appellant seeking order directing …
Judge: O'Bryan 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.