Seek binding, authoritative decisions

This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.

What is it?

If your efforts to resolve a dispute are unsuccessful, or if you require urgent action, you can escalate the matter and start court proceedings in the Federal Court of Australia, Federal Circuit and Family Court of Australia, or a State or Territory Supreme Court.

Courts can hear many types of trade mark disputes, notably:

actions against someone infringing your trade mark
matters relating to someone else’s trade mark registration
an appeal from a decision made by IP Australia.

Going to court is usually a last resort. Court proceedings are often expensive, time-consuming and can be emotionally intense, requiring significant commitment and resilience. It is prudent to seek legal advice prior to taking court action.

What are the benefits?

Courts can award damages to cover your losses, and legal costs should you be the successful party in the proceeding.
Court decisions are binding and enforceable.
Court proceedings can be initiated unilaterally and cannot be ignored by the other party.
Multiple matters can be brought before the court within one case. 
Court can take into consideration a wide range of factors which may fall outside the scope of other decision-making bodies.
Court proceedings allow cross-examination of evidence and expert witnesses, which could be helpful for prosecuting your argument if you have a highly technical case.
The gravity of court proceedings can encourage parties to negotiate or engage in other forms of dispute resolution.

What are the risks?

The outcome is highly unpredictable, as court cases are usually complex and subject to the judge’s interpretation of matters which are not black and white.
You could be subject to countersuits.
If you are unsuccessful, you may be required to pay the other party’s costs.
Cross-examination of evidence and expert witnesses may allow the other party to undermine your case and reinforce their argument.
Court proceedings are usually public, so it may not be suitable if confidentiality is important.
The mandatory ‘discovery’ phase which is where each side look over all the evidence which will be presented, can expose parts of your business to the other party which you may prefer to keep confidential
Court proceedings may attract unwanted publicity and potentially damage your reputation.

What are the possible outcomes?

There are a wide range of possible outcomes, and these will also depend on the type of court action you might take. Some possible outcomes are:

You might reach a negotiated settlement with the other party, including as part of court-ordered arbitration/mediation.
The other party might not respond, in which case you might get a default judgement.
The other party’s trade mark registration could be cancelled, removed or amended.
The court might decide against you, in which case you may need to pay the other party’s costs. Your trade mark registration could be cancelled, removed or amended.
You could be awarded damages to compensate for losses suffered from infringement, or an ‘account of profits’ (an amount equal to the profits they made from using your IP).
A permanent injunction may be put in place to prevent the infringer from undertaking any further infringing conduct. They won't be able to continue their actions without a licence from you.
A decision made by IP Australia can be affirmed, reversed or varied as the court sees fit.
Other outcomes may occur if your lawyer also suggests you take action under common law passing off, or the Australian Consumer Law.

In most cases, the outcome can be appealed to a higher court. 

What might the costs be?

Infringement and other court proceedings are generally very expensive as legal representation is usually involved and they can take a long time to resolve. Corporations in particular are generally required by court rules to use legal practitioners.

While the administration costs of attending court are relatively low (e.g. refer to Court Fees webpage available at the Federal Court of Australia website) the majority of the cost of a court action is for paying representatives, expert witnesses, gathering and examining evidence before the court date, and investigation. It is common for the costs of litigation in the Federal Court to exceed $100,000.

How much time might be involved?

Total duration

Courts can take a long time to resolve disputes. It usually takes some months and can take years to finalise the entire process. Timelines vary based on factors such as the type of court action, complexity of the case, and which court you are heard in.

There are also significant wait times followed by another 6-12 months for the written judgment (following the oral hearings). Additionally, if an appeal is filed, this can add another year or more to the timescale.  

Limitations on how long you can take to file an action

Note that the limitation period for a trade mark infringement action in most Australian states is six years from the date on which the first act of infringement took place, with the exception of Northern Territory where the limitation period is three years from the date which the first act of infringement took place.

If you are challenging a decision made by IP Australia, an appeal to the courts must be started within 21 days after the date of the decision. It may be possible to obtain an extension of time with the court.

Ways to make the court process faster

Where it is appropriate to do so, you may seek a faster (expedited or truncated) hearing process. Parties should request an expedited hearing process at or before the first case management hearing before the judge. The parties should also generally indicate this request at the time of filing. 

You can also seek limitations on certain actions, to try to keep the trial timeline contained. This includes time limits, limiting the number of witnesses to be called, and the length of written submissions.

How much is this used?

This is still being investigated and will be updated as the tool is refined.

Who can use this?

For infringement actions, the owner of the registered trade mark usually initiates infringement action. In some cases, an exclusive licensee or authorised user has the right to sue.

Other court actions can be taken by any person or an aggrieved person who meet the standing requirements before the courts. A party can appeal the Registrar’s decision relating to trade marks within 21 days after the date of the decision being made by the Registrar.

Who’s involved?

Parties to the dispute (a legal representative can help you decide who should be a party to a dispute):
In an opposition, it is usually the other party to the opposition heard before IP Australia.
If the IP Australia proceeding did not include anyone else, the respondent might include the Registrar of Trade Marks.
The relevant court – usually the Federal Court of Australia or the Federal Circuit and Family Court of Australia (Division 2), however some infringement matters can also be seen by a state or territory Supreme Court.
Legal practitioners representing each party.
Witnesses, including expert witnesses giving expert evidence.

For infringement actions, the owner of the registered trade mark usually initiates infringement action. In some cases, an exclusive licensee or authorised user has the right to sue.

What you need to proceed?

Understanding what is required in formal court proceedings can help you decide if it is the right option. There are a range of preparatory steps and strategic actions the parties can take in the litigation process.

Find a legal practitioner for advice and representation

Court proceedings can be a stressful, complicated process that can have serious impacts on you and your business. In the vast majority of cases professional advice from legal practitioners is involved, in order to have professional support for navigating court proceedings for such serious and complex matters. However, it is not mandatory to have legal representation (unless the party is a corporation).

Consider your goals before initiating court proceedings

You should decide whether the proceedings are intended to:

Obtain financial compensation for infringement
Stop further infringement
Reverse or vary IP Australia’s decision.

You may be able to achieve more than one of these goals, however it is useful to decide what your primary objective is before taking your dispute to court.

Decide who you intend to commence proceedings against

More than one person can be liable for IP infringement and your case may be more well-rounded if you name all relevant individuals. For example, a company and its directors may all be liable for the infringement. A legal representative can help you decide who should be a party to a dispute.

Consider the impact of publicity

Unless covered by a confidentiality order, evidence and documents read in open court will become available to the public.

Gather and review all your documents

Reports, contracts, licences and correspondence could all be relevant to the case. Some contracts require you to participate in alternative forms of dispute resolution before going to court. The Federal Court typically also requires a statement setting out ‘genuine steps’ taken to resolve the dispute out of court. The Federal Court often will require parties to undertake mediation before the proceedings develop too far.

Be prepared to write a statement of claim

This document officially starts proceedings. You'll need to state your complaint, the facts supporting your allegations and outcomes you're seeking.

Be prepared to seek affidavits and other evidence

To back up your complaint, you may need to gather other evidence. This could include affidavits, which Affidavits are written statements of evidence sworn on oath and signed by the person who makes them. They detail everything that person knows about the complaint. Filing an affidavit impliedly exposes the person executing the document to cross-examination in open court.

Affidavits are usually drafted by, or in consultation with, a lawyer to ensure all relevant evidence is obtained and all issues addressed. 

Preparing affidavits may involve tracking down former employees or business partners. 

Be prepared for the other party’s defence and counter-claims

They'll respond to your statement of claim by filing a defence document which addresses each of your allegations. In it they'll:

either admit if each allegation is correct, not admit if it's correct, or deny it
establish which facts they dispute that need to be addressed by the court.

They may also file their own application with the court, for example, seeking cancellation of the allegedly infringed trade mark.

Be prepared to disclose all your relevant documents

Both you and the other party will need to inform each other of any relevant documents which you or they have access to. These must be disclosed even if they assist the other party in its claim against you.

When you need immediate action

In some cases, your situation might require quick action. For example, if you want to stop an alleged infringer from using your IP now rather than waiting for a court hearing. In these situations, you can request an immediate action, such as an interim injunction or preliminary discovery (to identify an infringer), through an urgent application. For more information on interim injunction, refer IP First Response: Seek an urgent injunction.