Trademark Disputes Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern trademark litigation in your jurisdiction?

The Trade Marks Act 1995 (Cth) and the Trade Mark Regulations 1995 govern trademark litigation in Australia. If court proceedings are issued, the relevant court rules will also apply to the conduct of the litigation.

1.2 Which bilateral and multilateral agreements with relevance to trademark litigation have effect in your jurisdiction?

While there are no agreements relevant to trademark litigation specifically, Australia is a signatory to the Madrid Agreement and the Madrid Protocol. Therefore, it accepts international marks which designate Australia and is a base country for the purpose of filing international marks designating other signatory countries.

Australia is also a member of the Paris Convention for the Protection of Industrial Property which, among other things:

• affords priority status to trademark applications in Australia made by other member states in accordance with the terms of the convention; and
• allows Australian trademarks to form the basis of priority claims in other member states.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the trademark laws? What is the framework for doing so?

IP Australia is the government agency that:

• administers trademark rights and legislation; and
• determines trademark oppositions and removal actions, and in some cases revocation actions.

IP Australia is a statutory body within the portfolio of the Department of Industry, Science and Resources of the Australian government.

As trademarks are governed by Commonwealth (federal) law, pursuant to the Trade Marks Act 1995 (Cth), the prescribed courts that deal with trademark matters and disputes are:

• the Federal Court;
• the Federal Circuit Court; and
• the supreme courts of each Australian state and territory.

Most trademark disputes are heard in the Federal Court of Australia.

2 Forum

2.1 In what forum(s) is trademark litigation heard in your jurisdiction? Are trademark infringement and validity decided in the same forum or separate forums?

As trademarks are governed by Commonwealth (federal) law, pursuant to the Trade Marks Act 1995 (Cth), the prescribed courts that deal with trademark matters and disputes are:

• the Federal Court;
• the Federal Circuit Court; and
• the supreme courts of each Australian state and territory.

Most trademark disputes are heard in the Federal Court of Australia.

Infringement and validity proceedings can be determined in the same forum and as part of the same proceedings.

Oppositions to registration and applications for removal of a registered mark on the basis of non-use are heard by IP Australia, the statutory body that administers trademark rights. Applications for removal of a trademark from the Trade Marks Register can also be brought in court proceedings to be determined by a court.

Decisions of IP Australia can be appealed as of right to a court (single judge). Court decisions can be appealed as of right to an appellate court consisting of three judges (Full Court of the Federal Court or court of appeal of a state/territory).

2.2 Who hears and decides trademark disputes (eg, a judge, a panel and/or a jury)?

Trademark oppositions and applications for removal of a trademark from the Trade Marks Register on the basis of non-use are heard and determined by IP Australia, the statutory body responsible for administering trademark rights. A hearings officer of IP Australia will hear and determine such actions as a delegate of the registrar of trademarks.

Decisions of IP Australia can be appealed as of right to a court (single judge). Court decisions can be appealed as of right to an appellate court consisting of three judges (Full Court of the Federal Court or court of appeal of a state/territory). Appellate court decisions can be appealed only with special leave to the High Court.

Trademark infringement and validity actions can be brought in:

• the Federal Court;
• the Federal Circuit Court; or
• the supreme court of a state or territory.

Such actions will be heard by a single judge. Court decisions can be appealed as of right to an appellate court consisting of three judges (Full Court of the Federal Court or court of appeal of a state/territory). Appellate court decisions can be appealed only with special leave to the High Court.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

A party can choose to issue proceedings in any one of the prescribed courts (the Federal Court, the Federal Circuit Court and the supreme courts of each Australian state and territory).

The choice of jurisdiction may depend on a number of factors, including:

• the complexity of the issues;
• the resources of the parties;
• the need for an expeditious result;
• the causes of action for determination (which may include non-trademark matters); and
• specialised lists/expertise of the judiciary for IP matters.

3 Parties

3.1 Who has standing to file suit for trademark infringement? What requirements and restrictions apply in this regard?

Actions for trademark infringement are filed by the registered trademark owner (Section 20(2) of the Trade Marks Act 1995 (Cth)). With the consent of the owner, an authorised user can bring an action for trademark infringement (Section 26(1)(b)(i)). Authorised users may also bring an action without consent where the registered owner has failed to bring an action within two months of being requested to do so by the authorised user (Section 26(1)(b)(iii)).

3.2 Can a trademark infringement suit be brought against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction?

In Australia, a trademark infringement suit can be brought against a defendant which is a foreign entity without a place of business in the jurisdiction. However, in order to do so, an applicant must be mindful of the rules on service of proceedings.

For example, in the Federal Court, an originating application (to commence trademark infringement proceedings) can be served outside Australia:

• without leave (see Rule 10.42 of the Federal Court Rules 2011 (Cth), which includes proceedings that are based on a cause of action arising in Australia as well as where the damage has been wholly sustained in Australia); or
• with leave (see Rule 10.43 of the Federal Court Rules). Leave of the court should be obtained prior to serving an originating application or other court document outside Australia. Leave to serve an originating application outside Australia may be granted by the court if it is satisfied that:
• • the proceedings have a real and substantial connection to Australia;
  • Australia is an appropriate forum; and
  • in all the circumstances, the court should exercise jurisdiction in the proceedings.

Each court has its own rules on service of court process on a foreign defendant.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

A single infringement action may be brought against multiple defendants, provided that there is sufficient connection between the defendants in relation to the facts giving rise to the claim.

3.4 Can a third party seek cancellation of a national or international trademark in your jurisdiction? If so, how and on what grounds?

A third party can file an application to request the removal of a trademark from the register on the basis of non-use. No standing is required for an application for non-use.

There are two grounds on which such application can be made:

• There was no intention to use the trademark as of the date on which the application for registration was made (Section 92(4)(a) of the Trade Marks Act 1995 (Cth)); or
• There has been no use within a defined three-year period or, if there has been use, such use has not been in good faith (Section 92(4)(b)). Such an action can be brought only three years after the date of registration of the mark in question.

Both grounds can be claimed in one application and an application can be made to IP Australia (the statutory body responsible for administering trademarks) or as part of court proceedings.

A trademark registration can be revoked by the registrar if the registrar is satisfied that:

• the mark should not have been registered taking into account all circumstances that existed at the time of registration; and
• it is reasonable to revoke the registration, taking into account all circumstances.

If a trademark registration is revoked, the trademark will revert to a pending application. Depending on the circumstances, this will allow:

• an opposition to the registration of the application to proceed; or
• revocation of acceptance to allow the trademark examiner to re-examine the trademark application.

3.5 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

While there is no specific relief under Australian law relating to a declaration of non-infringement, courts have wide discretion in the relief that they can order. Although not common, a party may commence proceedings requesting that the court issue a declaration of non-infringement.

Further, a third party may seek the removal of a trademark from the Trade Marks Register on the basis of non-use or invalidity. For non-use, such an application can be made either to IP Australia or to a prescribed court (the Federal Court, the Federal Circuit Court or the supreme court of a state or territory). For invalidity, such an application must be made to a prescribed court.

IP Australia may direct a trademark to be removed from the Trade Marks Register and a court may order the removal of a trademark.

In non-use proceedings, a party may request that IP Australia or the court provide a certificate that a trademark:

• has been used in good faith during a particular period; or
• has not been used during a particular period solely due to circumstances that were an obstacle to use.

Such a certificate can be relied upon in subsequent proceedings in which non-use is alleged and stands as evidence of the facts stated therein.

4 Trademark infringement

4.1 What constitutes trademark infringement in your jurisdiction?

A trademark is infringed if a mark which is substantially identical or deceptively similar to a registered trademark is used as a sign without the trademark owner's authority in relation to:

• goods or services for which the mark is registered;
• goods that are of the same description as goods for which the mark is registered;
• services that are of the same description as services for which the mark is registered;
• goods that are closely related to services for which the mark is registered; or
• services that are closely related to goods for which the mark is registered.

4.2 How is infringement determined?

Substantially identical: A trademark is ‘substantially identical' if it closely resembles the registered trademark.

To determine infringement, the court will compare the two marks side by side to assess whether:

• the marks are indistinguishable; and
• the differences are negligible.

Deceptively similar: A trademark is ‘deceptively similar' if it so nearly resembles the registered trademark that it is likely to deceive or cause confusion.

The court will assess the mark based on the overall impression given by the marks. Among other factors, the court will consider:

• the appearance of the trademark;
• the sound of the trademark; and
• the likelihood of consumer confusion.

4.3 Is wilful infringement recognised? If so, what is the applicable standard?

Wilful infringement is recognised in the damages that can be awarded for infringement. In Australia, a court may award additional damages which are exemplary or punitive in nature. Additional damages are available in addition to compensatory damages but need not be tied to any award of other damages.

Additional damages are intended to act as a deterrent and are awarded having regard to:

• the flagrancy of the infringement;
• the need to deter similar infringements;
• the conduct of the party that infringed after the act constituting the infringement or after being put on notice of infringement;
• any benefit that has accrued to the infringing party; and
• all other matters.

Additional damages are a valuable remedy where actual damages are not an adequate remedy.

5 Bringing a claim

5.1 What measures can a trademark owner take to enforce its rights in your jurisdiction?

A trademark owner can take the following measure to enforce its rights in Australia:

• sending a cease and desist letter to the alleged infringer alleging infringement of a registered trademark;
• filing opposition or removal proceedings with IP Australia;
• filing infringement and/or revocation proceedings with a prescribed court (usually the Federal Court or the Federal Circuit Court); or
• submitting a notice of objection to the Australian Border Force.

5.2 What is the limitation period for bringing a trademark infringement claim in your jurisdiction?

The limitation period for a trademark infringement action in Australia is six years from the date on which the first act of infringement arose.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

Except in very limited cases, the alleged infringer must be notified in advance before court proceedings are commenced. The Civil Dispute Resolution Act requires an applicant that institutes civil proceedings in an eligible court to file a ‘genuine steps statement' at the time of commencing proceedings.

The genuine steps statement must specify:

• the steps that have been taken to try to resolve the issues in dispute between the applicant and the alleged infringer; or
• the reasons why no such steps were taken, which may relate to, but are not limited to:
• • the urgency of the proceedings; and
  • whether and to what extent the safety or security of any person or property would have been compromised by taking such steps.

Proceedings may be issued without notice if there is a real risk of evidence being destroyed if the alleged infringer is put on notice of the claims. An applicant may seek an urgent search and seizure order (known as an Anton Piller order) which allows its legal representatives, together with an independent lawyer, to attend the identified premises of the respondent to search the premises and seize any materials listed in the order.

5.4 What are the procedural and substantive requirements for bringing a claim for trademark infringement? How much detail must be presented in the complaint?

To commence court proceedings for trademark infringement, an applicant must file:

• an originating application or writ which sets out the orders sought by the applicant including any interim orders to be made;
• a statement of claim which sets out the complaint and the facts supporting the allegations and outcomes sought; and
• a genuine steps statement outlining the steps taken to try to resolve the dispute prior to issuing court proceedings.

The statement of claim must set out the legal basis for the claim, and the facts that give rise to the claim, including by reference to any ‘particulars' of each matter. There must be sufficient detail for the respondent to understand the claim made against it and to be able to respond.

5.5 Are interim remedies available in trademark litigation in your jurisdiction? If so, how are they obtained and what form do they take?

An application can be made to court for an interim injunction in trademark litigation.

This is an application to make the alleged infringer immediately stop specific activities or take specific actions. The application must be supported by an affidavit of the applicant or the applicant's representative.

The court will issue an injunction where it considers that:

• there is a serious issue to be tried; and
• damages (money) will not be an adequate remedy.

If the court issues an injunction, the alleged infringing conduct must cease immediately (even without the infringing conducted being proved or a final hearing taking place).

An injunction is usually ordered only if the applicant gives the court an undertaking to pay any damages suffered by the respondent if the applicant is ultimately unsuccessful at trial.

Interim injunctions are usually ordered for short periods of time. During the course of the proceedings, the court will decide whether the injunction should continue pending a final hearing.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

A trademark owner, as the applicant in a court proceeding, may be ordered to pay security for costs (on application by the other party) where there are reasonable concerns that it may be unable to pay the other party's legal costs of the proceedings if it is ultimately unsuccessful. Foreign applicants can also be subject to security for costs applications, particularly if they have no assets in the jurisdiction.

The court may order that security be given in any such manner it sees fit, which may include payment into court or a bank guarantee.

An application for security for costs is usually filed and determined in the early stages of the litigation before the parties begin to incur substantial costs. The application can be determined up to a certain stage of the proceedings and further applications can brought once that stage has passed.

The court may also stay proceedings until security has been paid by the applicant. The court's power to order security is discretionary and requires the court to consider all relevant circumstances.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

In Australia, parties can make an application to seek the production of documents from a prospective defendant prior to the commencement of proceedings under Rule 7.23 of the Federal Court Rules. However, this application can be used only after the applicant:

• has made reasonable enquiries to obtain sufficient information to decide whether to commence proceedings; and
• has been unable to obtain relevant documents.

Such applications are therefore rare.

In the normal course of trademark litigation, parties will be required to discover documents that are relevant to the issues in the proceeding. In some courts, requests for discovery must be made by a party, as it is not an automatic right.

The court encourages the informal exchange of documents to minimise the burden of discovery on the parties.

The court:

• will not approve expansive or unjustified discovery requests; and
• will generally approve a request for discovery only in circumstances where:
• • discovery would facilitate either the just resolution of the proceeding as quickly, inexpensively and efficiently as possible or a forthcoming mediation;
  • the court and the parties are sufficiently informed of the nature of the case and issues in dispute; and
  • the discovery applicant has adequately justified the need for the discovery.

Parties need not produce documents which are subject to legal professional privilege.

Where documents are confidential, the parties are encouraged to set up a confidentiality regime.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

Third parties can be compelled to produce documents or give evidence in trademark litigation if a subpoena is issued by the court at the request of a party to the litigation. A subpoena is a binding court order that may be issued where a party believes a third party has documents or evidence that is relevant to the issues in dispute. In some courts, leave is required before a subpoena can be issued.

If a subpoena is issued, the third party must comply with it or can otherwise apply to the court to have it set aside in whole or in part, on certain grounds.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

There are two types of legal professional privilege in Australia:

• Advice privilege protects confidential communications between a lawyer and his or her client or confidential documents prepared by the client, the lawyer or a third party where the communication was made for the dominant purpose of providing legal advice to the client.
• Litigation privilege protects confidential communications passing between a client (or another person) and a lawyer acting in the proceeding (or contemplated proceeding) or the contents of confidential documents which were prepared for the dominant purpose of the lawyer providing the client with legal services in relation to legal proceedings.

Legal professional privilege belongs to the client, not the lawyer, meaning that only the client has the authority to waive it.

The client waives privilege if it takes or authorises any action that is inconsistent with the confidentiality which the privilege is meant to protect. This could include, for example, disclosing legal advice within the client's business or to any third parties.

Communications between lawyers (or parties) can also be protected by ‘without prejudice' privilege. Without prejudice privilege allows the parties to negotiate, make offers and explore settlement options, on the basis that such communications cannot be disclosed to the court or used in any open communications or evidence. The communication should be marked ‘without prejudice' and should be treated confidentially.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in trademark infringement litigation?

Typically in Australian trademark litigation, evidence is prepared and exchanged well in advance of trial as sworn affidavits, with witnesses then required to be available for cross-examination at trial.

The parties can choose the witnesses they want to give evidence, who may include experts. If a party wishes to hear evidence from a person who has not been called by the other party, it can request the court to issue a subpoena addressed to that person, requiring him or her to:

• produce documents to the court;
• attend court to give evidence; or
• both.

Prior to the exchange of evidence, the parties are usually also required to discover documents relevant to the proceeding.

One party can also serve a notice to produce on the other party if it seeks the production of documents which have not otherwise been discovered by the party in the proceeding.

7.2 What types of evidence are permissible in your jurisdiction? Are (a) expert evidence and (b) survey evidence accepted in trademark infringement suits? Are they commonly used?

Expert evidence: Parties intending to rely on expert evidence at trial are expected to consider between them and inform the court at the earliest opportunity of the best way to efficiently manage and adduce expert evidence, including such matters as:

• the use of joint reports;
• concurrent evidence; and
• how evidence may best be given (orally or in writing).

The courts have issued practice notes that set out how expert evidence is to be given.

Expert evidence is not common in trademark litigation, although it can be used – particularly where the subject matter/industry is particularly complex.

Survey evidence: Survey evidence is used in Australian trademark litigation, although it is not common, and leave of the court is required if a party wishes to rely on survey evidence.

The courts have issued practice notes on the matters that parties should take into account if they are considering relying on survey evidence – primarily to ensure that the evidence will be admissible and afforded sufficient weight to justify the expense and difficulty in adducing the evidence.

7.3 Can evidence from criminal proceedings be used in civil proceedings and vice versa?

Evidence from criminal proceedings cannot be used in civil proceedings and vice versa, unless there are exceptional circumstances.

The ‘Harman undertaking' (taking its name from the English case of Harman v Secretary of State for Home Department [1983] 1 AC 280) is an implied undertaking by the parties to the court that documents obtained by the parties as a result of the compulsory processes of the court:

• will be used only for the purposes for which they were disclosed (ie, the proceedings on foot); and
• will not be used for a collateral or ulterior purpose.

7.4 What are the applicable standards of proof?

The standard of proof in trademark infringement proceedings is the balance of probabilities.

7.5 On whom does the burden of proof rest?

The burden of proof rests with the party bringing the claim. In infringement proceedings, this will be the trademark owner or authorised user.

For actions to remove a trademark from the register due to non-use, the onus shifts back to the trademark owner.

For invalidity actions, the burden of proof rests with the party seeking to invalidate the trademark.

8 Defences and counterclaims

8.1 What defences are typically available in trademark litigation?

It is a defence to trademark infringement if:

• the defendant is not using the mark ‘as a sign';
• the defendant is using its name or the name of a place in good faith;
• the defendant is using a sign in good faith to describe the characteristics of its goods and/or services;
• the defendant is using a sign to indicate the time of production of goods or the rendering of services;
• the defendant is using the mark in good faith to indicate the intended purpose of the goods (eg, as spare parts) or services;
• the defendant is using the registered mark for the purpose of comparative advertising;
• the court is of the opinion that the mark used by the defendant would have obtained registration;
• the use by the defendant is outside any limitations to which the registered mark is subject;
• the defendant is using part of a trademark that is subject to a disclaimer in respect of part of a registered trademark;
• the registered mark was affixed to the goods/applied in respect of the services with the consent of the trademark owner (parallel importing);
• the defendant's use has the consent of the registered owner; or
• the defendant was already using the mark before the date of first use of the mark by the registered trademark owner.

8.2 Can the defendant counterclaim for revocation or invalidation of the trademark? If so, on what grounds and what is the process for doing so?

Yes, a defendant can counterclaim for revocation or invalidity of the trademark in infringement proceedings.

To this end, the defendant may file a notice of cross-claim. This is usually filed and served at the same time as the defendant files its defence.

The grounds for seeking revocation or invalidity of a registered trademark are as follows:

• A condition or limitation entered in the Trademark Register in relation to the trademark has been contravened;
• The registered mark has become generic in relation to the relevant goods or services; or
• Any ground on which the mark may have been opposed exists, as follows:
• • The registered mark is not capable of distinguishing the goods and services from those of other traders;
  • The registered mark is scandalous;
  • Use of the registered mark is contrary to law;
  • The registered mark is substantially identical or deceptively similar to a prior filed mark;
  • The owner of the registered mark had no intention to use the mark at the time of filing;
  • Use of the registered mark is likely to deceive or cause confusion or deceive consumers because of a connotation in the mark itself;
  • The mark was filed for in bad faith; or
  • The mark contains or consists of a false geographical indication.

In addition, a party can request that the trademark be removed from the Trademark Register on the basis that the owner:

• had no intention to use the mark as at the date of filing; or
• has not used the mark for a continuous specified period. In such case:
• • at least five years must have passed since the filing date of the registered mark where the registered mark was filed before 24 February 2019; or
  • at least three years must have passed since the particulars of the registered mark were entered in the register where the registered mark was filed on or after 24 February 2019.

A court can order the full or partial removal of a trademark. A partial removal means that the mark will remain on the register for some goods or services.

8.3 Are there any grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant?

Yes, a trademark may be deemed unenforceable against a defendant where:

• the defendant has used the trademark prior to, and consistently with, the registered mark;
• the defendant has used the mark honestly and concurrently with the applicant's trademark;
• the defendant is an authorised user of the trademark and has been authorised to use the trademark by the trademark owner; or
• the trademark has been affixed to the goods or services with the trademark owner's consent (parallel importation).

The court also has wide discretion in relation to the enforceability of a registered mark.

9 Settlement

9.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

Judges actively manage cases so that they are resolved as quickly and efficiently as possible. Parties are expected to assist in bringing about this result.

Courts will generally order parties to attend mediation, unless there is a compelling reason not to do so. Each court's rules and the overarching Civil Dispute Resolution Act also apply to the management of cases and to alternative dispute resolution (ADR).

If you are a party to a dispute, you should expect that in the early stages of your case, the judge will consider whether any ADR process, such as mediation, may be appropriate and may order you to attend.

9.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

It is likely that mediation will be built into the timetable of court proceedings. The timetable may be extended by consent of the parties to allow for settlement discussions to take place or continue.

Proceedings will not be discontinued for settlement discussions unless the claimant seeks to discontinue the proceedings and accepts the costs consequences of doing so. However, this will bring the proceedings to an end rather than merely stay the proceedings.

Settlement may include an agreement to discontinue the proceedings on certain terms.

9.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

The details of a settlement are not reported to the court. The court will only need to know whether the matter has been settled and the outcome of the proceedings (ie, whether the proceedings have been dismissed or discontinued).

10 Court proceedings for infringement and validity

10.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

Court proceedings regarding claims of trademark infringement or validity are public and any member of the public can attend a hearing.

If there is sensitive data that the parties do not wish to be disclosed in a public forum, these matters can be treated as confidential and will not be read out in open court. However:

• the court must be satisfied that disclosure of the information would be prejudicial to a party; and
• typically, the information must still be disclosed to the other party under this confidentiality regime.

Trade Marks Office matters (oppositions, removal applications) are not public and hearings are conducted by a hearings officer with the parties and/or their representatives present, typically by video link. However, interested parties can make applications under freedom of information legislation to access evidence filed and other documents in the proceedings. These will be disclosed only after the owner of the documents has had an opportunity to object on grounds such as commercial sensitivity and disclosure of personal information. If the Trade Marks Office is satisfied that those grounds are made out, it will either:

• not disclose the documents; or
• disclose them only after making any necessary redactions.

10.2 Can a trademark owner sue for infringement and passing off in the same action?

There is no limit to the causes of action that can be brought in proceedings, provided that:

• they arise from the same factual circumstances between the same parties; and
• the court has jurisdiction to hear the matters.

In trademark infringement proceedings in Australia, it is quite common for claims of passing off and misleading and deceptive conduct (a cause of action under the Australian Consumer Law) to be brought together.

10.3 Procedurally, what are the main steps in trademark infringement proceedings in your jurisdiction? Is validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

The Federal Circuit Court, the Federal Court and the supreme courts of each state and territory have jurisdiction to hear trademark infringement and validity disputes.

The steps required for each jurisdiction are largely the same, although the Federal Circuit Court is a less formal jurisdiction with a focus on the expeditious and efficient resolution of disputes.

In general terms, to commence proceedings, an application and statement of claim must be filed and served. The respondent must file and serve a notice of appearance and then a defence. It is also open to the defendant to bring a cross-claim. It is often the case that if a trademark infringement claim is brought, a cross-claim is initiated by the defendant for validity of the impugned mark. Those claims are then heard in the same proceedings.

The parties:

• are ordered to attend a case management conference to seek to agree to a timetable on the procedural steps in the proceedings; and
• are usually ordered to attend mediation, which may be before or after discovery has taken place.

Evidence is usually by affidavit – that is, sworn statements which can then be tested at trial under cross-examination.

Discovery is typically ordered at an early stage in the proceedings. The parties must discover all documents relevant to the pleadings, which is often done by way of agreed categories of documents.

In the Federal Circuit Court, discovery obligations are often less onerous, focusing only on key documents with the aim of streamlining the proceedings.

Depending on the complexity of the matter, issues of liability can often be determined first and separately from issues of quantum.

10.4 What is the typical timeframe for trademark infringement proceedings? Is a fast-track procedure available? If separate trademark validity proceedings are available, what is the typical timeframe for those proceedings?

The Federal Circuit Court is the ‘fast-track' procedure available to parties. It seeks to dispose of matters within 12 months of the filing date of the originating application.

In the Federal Court and state or territory supreme courts, the likely timeframe from the originating application to a hearing at trial is likely to be more like 18 months to two years.

The courts typically reserve their decision, with written reasons for judgment usually delivered four to 12 months after the hearing, depending on:

• the complexity of the issues; and
• the workload of the court.

10.5 Can the court issue extraterritorial injunctions, whether interim or permanent?

Australian courts are limited to the territory of Australia. Accordingly, an Australian court cannot issue an injunction with extraterritorial effect.

Should a party require an injunction to be enforceable outside of Australia, this will depend on whether that territory allows for the enforcement of Australian orders. This is a complex issue of international law.

Currently, Australia is not a party to the Hague Convention on Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters and relies on statutory agreements and treaties between different nations.

10.6 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

As a common law country, the doctrine of precedents applies. This is an established legal principle which provides that a decision of a superior court should be followed by equal or lower courts in similar cases.

Australian courts are bound only to follow decisions of superior courts within Australia. Decisions from other jurisdictions may be influential, particularly if they are from common law jurisdictions with similar legal principles; however, they will not be binding.

11 Remedies

11.1 What remedies for infringement are available to a trademark owner in your jurisdiction?

The remedies available for trademark infringement under the Trade Marks Act in Australia are:

• declarations of infringement;
• injunctions;
• damages; and
• account of profits.

In terms of monetary relief, the applicant can elect between an account of profits and damages (but not both).

11.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

Additional damages are available under the Trade Marks Act. The factors taken into account in awarding additional damages include, but are not limited to:

• the flagrancy of the infringement;
• the conduct of the infringing party both after the infringing act and after it was put on notice of the infringement; and
• any benefit shown to have accrued to the infringing party.

11.3 What factors will the courts consider when deciding on the quantum of damages?

A trademark owner can elect between an account of profits and damages. If an account of profits is chosen, the matters taken into account are the profits made by the infringing party, after consideration of the cost of the goods and some other allowable deductions.

Where damages are elected, they may be:

• general damages;
• compensatory damages; and
• additional damages.

In determining the quantum of damages, the court will take into account the following factors:

• the loss of exclusivity in the monopoly granted by a registered trademark;
• the damage to the trademark owner's brand and reputation caused by the infringing party's use of the mark; and
• confusion in the market.

For additional damages, further considerations are taken into account as follows:

• the flagrancy of the infringement;
• the conduct of the infringing party both after the infringing act and after it was put on notice of the infringement; and
• any benefit shown to have accrued to the infringing party.

12 Appeals

12.1 Can the decision of a first-instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

A decision of the Trade Marks Office may be appealed as of right to the Federal Court or the Federal Circuit Court. Such an appeal is a de novo hearing and the parties can thus rely on any grounds and material in the appeal regardless of whether the issues were raised before the Trade Marks Office.

A decision of the Federal Circuit Court may be appealed as of right to the Federal Court (usually by a single judge).

A decision of the Federal Court (single judge) may be appealed as of right to the Full Court of the Federal Court, which consists of three Federal Court judges.

A decision of a state or territory supreme court may be appealed as of right to the court of appeal in that state or territory.

Further appeals are available from a decision of the Full Court of the Federal Court or the court of appeal of a state or territory to the High Court of Australia. However:

• an application for special leave to appeal must be made to the High Court; and
• the appeal will be heard only if certain criteria are satisfied (eg, a matter of public interest, uncertainty in the relevant question of law).

Such cases will be heard and determined by a full court of the High Court, consisting of at least two and up to all seven High Court judges.

The High Court of Australia is the final court of appeal in Australia and its decisions are final.

12.2 What is the average time for each level of appeal in your jurisdiction?

Decisions of the Trade Marks Office, the Federal Circuit Court, the Federal Court or the supreme court of a state or territory must be filed within 21 days of the date on which the decision was handed down.

An application for special leave to appeal a decision of the Full Court of the Federal Court or an appeal court of a state or territory before the High Court of Australia must be filed within 28 days of receipt of the decision. The application for leave is then listed at the next available sitting for High Court special leave applications.

If the application is successful, the matter will then be listed for an appeal hearing at the next available High Court appeal sitting.

Appeal decisions are generally much quicker than trial decisions: parties can expect an appeal hearing to be listed within approximately six months of the appeal being filed, with a decision and published reasons three to six months later.

13 Costs, fees and funding

13.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

Parties will incur costs in litigating in court, which are typically:

• the fees of their solicitors and barristers; and
• disbursements such as court filing fees and transcript costs.

In particular, a party may incur the following (noting that Australia has a split profession between solicitors and barristers):

• solicitor fees;
• barrister fees (usually junior and senior counsel);
• court filing fees;
• court setting down fees (ie, listing a matter for trial);
• hearing fees;
• transcript fees;
• expert fees;
• witness travel expenses;
• subpoena conduct money;
• search fees;
• courier disbursements;
• copying fees; and
• electronic discovery management fees.

The successful party will usually be ordered to have its costs paid by the unsuccessful party or parties. However, this is not generally full cost recovery and is usually in the range of 60%–70% of the actual costs incurred. Costs are recovered in relation to a ‘scale' of costs that forms part of the court rules, rather than the amounts actually charged. There are cases where a party may be awarded payment of its costs on an indemnity basis if the losing party previously rejected an offer which would have been a better result than that which it obtained at trial.

13.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

Contingency fees are prohibited in all Australian states and territories under the relevant legal profession regulations.

There are some exceptions to this for class actions (which do not include trademark infringement matters).

Alternative fee arrangements are permitted, which may encompass a range of options such as fixed fees or value-based billing as an alternative to the traditional hourly rates.

13.3 Is third-party litigation funding permitted in your jurisdiction?

Yes. Third-party litigation funding is permitted in Australia and is generally used in single-party, insolvency-related or class action proceedings, although it is also available for trademark litigants. Litigation funding generally arises from a contract between a funder and a litigating party that allows the funder to retain a share in the litigation proceeds in exchange for financing the litigation.

14 Protection of unregistered marks

14.1 Is any protection available for unregistered marks in your jurisdiction?

Unregistered trademarks are not recorded on the Trade Marks Register in Australia, as suggested by the name. However, they can still be recognised and protected to an extent under the causes of action of:

• passing off at common law; or
• misleading and deceptive conduct under the Australian Consumer Law.

In order to successfully protect an unregistered mark pursuant to these causes of action, there must be extensive history of use of the mark by reference to the goods or services. This history of use should establish sufficient reputation in the mark, such that the use of it (or of something very similar to it) would mislead or deceive consumers as to trade source. Additionally, for passing off, some damage must have occurred or be likely in order to establish these rights.

14.2 Under what circumstances may foreign trademarks not registered in your jurisdiction be enforced?

Foreign trademarks that are not registered in Australia will have limited protection. The only means of enforcing such marks is if the owner can establish, through use of the mark in Australia, that it has a significant reputation in the mark, such that the use of the mark or something similar to it by a third party would:

• mislead or deceive consumers as to trade source contrary to the Australian Consumer Law; or
• amount to passing off at common law.

15 Trends and predictions

15.1 How would you describe the current trademark litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

There have recently been a number of trademark litigation decisions, both at first instance and on appeal, indicating that the appetite to issue proceedings to enforce rights is strong.

The key trends to be aware of are:

• the use of trademarks – ‘use it or lose it';
• the importance of the form of the trademark as registered; and
• Indigenous knowledge and traditional cultural expression.

While there is no requirement in Australia to demonstrate ongoing use of your mark to maintain registration, you can lose registration if the mark is not used for a consecutive three-year period. The courts (and the trademark registrar) have discretion as to whether to remove a mark; however, they have recently demonstrated that they will remove unused marks, at least for those goods or services for which there is no use.

Further, it is clear from recent decisions that use of a mark in a format which departs from the version as registered may not protect the mark against an application for removal for non-use.

When filing a mark, it is important that the use of the mark in the marketplace reflects the version as filed. This is particularly crucial if a mark is objected to and evidence of use is required to overcome the objection. The use should be of the mark as filed.

Finally, protection of IP rights for First Nations people has been on the government's agenda for some time. IP Australia is looking at how to best protect Indigenous knowledge as an asset of the Aboriginal and Torres Strait Islander people, their communities, organisations and businesses.

16 Tips and traps

16.1 What would be your recommendations to parties facing trademark litigation in your jurisdiction and what potential pitfalls would you highlight?

Prior to litigating trademark infringement, applicants should review their portfolio to ensure that they have the protection they need and file for any marks that are not protected. It is common for a defendant in trademark infringement proceedings to attack the mark which it has allegedly infringed. Therefore, it is important to ensure that:

• all relevant marks are in use in the format in which they are registered; and
• coverage of goods and services is adequate for business needs.

This will help to protect against adverse action being taken against the registered marks.

Courts will also not look kindly on parties that litigate without first engaging with the other party and seeking a resolution at first instance, so it is important to write to the other side and seek an outcome before commencing court proceedings.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.