1.1 This Practice Direction applies nationally from 1 September 2021 to all intellectual property (IP) proceedings in the Federal Circuit and Family Court of Australia (the Court).
1.2 This Practice Direction is to be read together with:
- the Federal Circuit and Family Court of Australia Act 2021 (Cth) (the Act);
- the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (the General Federal Law Rules);
- the Federal Court of Australia Act 1976 (Cth) (Federal Court Act);
- the Federal Court Rules 2011 (Federal Court Rules); and
- Central Practice Direction – General Federal Law proceedings (GENFED-CPD).
1.3 This Practice Direction applies to all proceedings commenced on or after 1 September 2021. This Practice Direction will also apply to all proceedings commenced prior to 1 September 2021, unless unfair or impractical to do so.
1.4 To the extent this Practice Direction is inconsistent with any Act, regulation, rule, or other legislative provision (whether or not expressly listed above), the Act, regulation, rule or other legislative provision prevails.
1.5 Where the General Federal Law Rules are insufficient or inappropriate, the Court may apply the Federal Court Rules. The General Federal Law Rules apply certain IP rules within the Federal Court Rules, in particular Division 34.3 of the Federal Court Rules.
2. Intellectual property jurisdiction
2.1 The Court has jurisdiction to hear and determine civil disputes concerning copyright, designs, trade marks and plant breeder's rights as set out below. The Court's jurisdiction in these matters is concurrent with that of the Federal Court of Australia.
2.2 The Court can provide declaratory and injunctive relief, and award damages or an account of profits. There is no limit on the award of damages or taking of an account of profits, or on the ability of the Court to award additional damages. However, there is a limit of $750,000 on damages in the Court's consumer law jurisdiction.
Copyright Act 1968
Trade Marks Act 1995
2.4 Under the Trade Marks Act 1995 (Cth) (Trade Marks Act), the Court has jurisdiction over the following matters:
- appeals from decisions of the Registrar of Trade Marks under sections 35, 56, 67, 83(2), 83A(8), 84A to 84D and 104;
- infringement actions under sections 120, 121 (see also sections 122 to 128) and 130;
- applications for relief from unjustified threats under section 129;
- decision on whether a person has used a trade mark under section 7;
- determining whether a trade mark has become generic under sections 24, 87 and 89;
- amendment or cancellation of registration under sections 85 and 86;
- revocation of registration by amendment or cancellation or entering a condition or limitation under sections 88 and 89;
- application for an order to remove a trade mark registration for non-use under section 92(3), and on referral to the Court by the Registrar of Trade Marks under section 94;
- application for rectification of the Register of Trade Marks by order of the Court under section 181; and
- variation of rules governing use of certification trade mark under section 182.
Designs Act 2003
2.5 Under the Designs Act 2003 (Cth) (Designs Act), the Court has jurisdiction over the following matters:
- appeals from decisions of the Registrar of Designs under sections 28(5), 67(4), 68(6), 50(6), 52(7) and 54(4);
- determination in the course of proceedings in the Court of an "entitled person" under section 53;
- infringement actions under sections 71 to 76;
- applications for relief from unjustified threats under sections 77 to 81;
- application for compulsory licences under sections 90 to 92;
- revocation of registration under section 93;
- application for the cessation of Crown use of a design under section 102; and
- rectification of the Register of Designs under section 120.
Plant Breeder's Rights Act 1994
2.6 The Court has jurisdiction over alleged infringements under the Plant Breeder's Act 1994 (Cth) (Plant Breeder's Act).
2.7 The Court has jurisdiction over claims under the following provisions of the Competition and Consumer Act 2010 (Cth) (Competition and Consumer Act) and can combine these proceedings with proceedings in another area of its jurisdiction:
- section 46 (Misuse of Market Power);
- Part IVB (Industry Codes);
- Part IVD (Consumer Data Right);
- Part XI (Application of the Australian Consumer Law as a law of the Commonwealth); and
- Schedule 2 (Australian Consumer Law).
2.8 Under section 134 of the Act, the Court has jurisdiction in respect of matters not otherwise within its jurisdiction that are associated with matters in which the jurisdiction of the Court is invoked.
2.9 In broad terms, that section invests the Court with jurisdiction in a federal matter, even if it has not otherwise been given that jurisdiction, if that matter is associated with another federal matter over which the Court does have jurisdiction.
3.1 The Court also has jurisdiction to hear any matter within the jurisdiction of the Federal Court of Australia which the Federal Court of Australia transfers. In accordance with rule 8.02(1) of the General Federal Law Rules, the Court may transfer a proceeding to the Federal Court of Australia at the request of a party or of its own initiative.
4. Before starting a proceeding
4.1 To the extent that Part 2 of the Civil Dispute Resolution Act 2011 (Cth) (Civil Dispute Resolution Act) applies to the proceeding, the applicant must take genuine steps to try to resolve the dispute before commencing proceedings in the Court: see sections 4 and 6 of the Civil Dispute Resolution Act.
5. Commencing proceedings
5.1 Subject to any contrary advice below, the General Federal Law Rules and forms apply to the commencement of proceedings in the IP jurisdiction of the Court.
5.2 Rule 4.01 of the General Federal Law Rules outlines the general requirements for commencing a proceeding including the requirement to file an approved form of application (originating application) supported by an affidavit. Rule 4.04(2) contains exceptions to that requirement where the applicant files a statement of claim or points of claim.
5.3 In the IP jurisdiction of the Court, the majority of proceedings are commenced by filing an originating application together with either a statement of claim or a points of claim.
5.4 When an IP matter is commenced in the Court, not being an appeal from a decision of the Registrar of Trade Marks or Designs, the originating application must identify the proceeding as being brought in 'General Federal Law' and state the principal legislation under which the proceeding is brought, namely Application – General Federal Law:
- application under the Consumer Law (Schedule 2 to the Competition and Consumer Act);
- application under the Copyright Act;
- application under the Designs Act;
- application under the Plant Breeder's Rights Act; or
- application under the Trade Marks Act.
5.5 For appeals from decisions of the Registrar of Trade Marks or the Registrar of Designs, use Notice of Appeal (Intellectual Property)— Federal Court Form 92 (adapted to identify this Court).
Additional documents for filing
5.6 The applicant must file a statement of claim or points of claim or an affidavit: see rules 4.04(1) and (2) of the General Federal Law Rules.
5.7 If Part 2 of the Civil Dispute Resolution Act applies to the proceeding, the applicant must also file an Applicant's Genuine Steps Statement: see rule 4.07.
5.8 Unless an exemption applies, the applicant must also pay the filing fee set by regulation.
Responding to an application
5.9 Where an applicant has filed an originating application and a statement of claim or points of claim, the respondent must file a defence or points of defence; if an affidavit is filed instead of a statement of claim, the respondent must file an affidavit in answer: see rules 4.03 and 4.04(3) of the General Federal Law Rules. If a respondent files a defence or points of defence, a respondent to an IP proceeding is excused from also filing a Response – General Federal Law. Otherwise, a respondent must file a Response – General Federal Law.
5.11 In urgent IP matters, relief in the nature of interlocutory injunctions, Anton Piller orders and orders in the nature of Norwich Pharmacal relief may be sought to alleviate the effects of alleged infringements.
5.12 Urgent applications are dealt with in Part 5 of the General Federal Law Rules. An urgent application must be brought in the appropriate form: either as part of the originating application or, if a proceeding is already commenced, by an Application in a Proceeding.
5.13 An application to deal with an urgent matter is to be accompanied by a draft of the order sought.
5.14 If service on the respondent or prospective respondent is not possible, the Court may make an order until a specified time or until further order: see rule 5.01 of the General Federal Law Rules. In certain circumstances, an urgent application may be made without notice to the other party or parties.
5.15 Evidence on urgent applications is by way of affidavit or orally with the leave of the Court. Rule 5.03 details the evidence that the Court requires for an urgent application, including the state of proceedings between the parties, the nature and circumstances of the application, and why the matter is urgent.
Points of claim or concise statement
6.1 An originating application must explain briefly the basis on which the orders are sought by identifying the supporting statement of claim, points of claim or affidavit, and must set out the orders sought.
6.2 Use of an originating application and affidavit may negate the need for pleadings but, where appropriate, a statement of claim or points of claim will be ordered, or an applicant may choose to file such pleading. The pleading should observe the requirements in Part 16 of the Federal Court Rules, as identified at items 10 to 16 of Schedule 1 to the General Federal Law Rules. It should identify in summary form the material facts on which the applicant relies, but not the evidence by which those facts are to be proved. All necessary particulars must be given.
6.3 Parties should consider whether the use of a concise statement in support of an originating application should be used, instead of points of claim or a supporting affidavit. The purpose of a concise statement is to enable the applicant to bring to the attention of the respondent and the Court the key issues and key facts at the heart of the dispute and the essential relief sought from the Court. It should be prepared like a pleading summons, and may be drafted in a narrative form. If a concise statement is filed with the originating application, no further originating material in support (points of claim or affidavit) is required to be filed until the Court orders.
6.4 The concise statement should not exceed 5 pages (including formal parts). It should be plain, concise and direct, and should summarise:
- the important facts giving rise to the claim;
- the relief sought and against whom;
- the primary legal grounds (causes of action) for the relief sought; and
- the alleged harm suffered by the applicant, including, wherever possible, a conservative and realistic estimate or range of loss and damage.
Defence and any cross claim
6.5 A respondent should file an affidavit or a defence or, where points of claim are filed, points of defence: see rule 4.04(3) of the General Federal Law Rules. A respondent may file a cross claim.
6.6 In the ordinary course, orders will be made at the first case management hearing in relation to the filing of a defence or points of defence, and any cross claim.
6.7 Where a concise statement is filed, the respondent may be required to file a concise statement in response, which may also be drafted in a narrative form.
7. Case management
7.1 All IP matters filed in the Court are docketed in the National Intellectual Property List (IP List) and case managed by the IP List judge through its interlocutory steps, and allocated to an IP List judge for hearing. Court appearances are managed by video link or telephone link when parties or their representatives are in differing locations.
7.2 The conduct of proceedings on the first court date is detailed in rules 10.01 to 10.03 of the General Federal Law Rules. The first court date is a case management hearing unless the judge directs that a directions hearing be conducted.
7.3 Wherever possible, the first case management hearing or directions hearing will take place within 3 weeks after the originating application is filed.
7.4 The first case management hearing flexibly organises the interlocutory steps in the proceedings so that the proceeding may be conducted as effectively and efficiently as possible. The Court may give directions, order the parties to mediation, fix a date for final hearing, conduct an interim hearing or finally determine the application. The purpose of the case management hearing is to formulate ways to manage the conduct of the proceeding so as to bring it to a final hearing in a manner proportionate to the nature of the dispute, the financial position of the parties, the degree of complexity of the case, the importance of the case and the amount of money or issues in dispute.
7.5 The parties and their legal representatives must attend court and must have a good knowledge of the case. At the case management hearing, the parties or their legal representatives must be prepared to engage in discussion with the judge about all aspects of the proceeding, including factual and legal issues likely to require determination, procedural issues likely to arise and whether it is likely to be appropriate to make orders in relation to witness statements, expert evidence, discovery as well as cross examination of witnesses.
7.6 Ordinarily, the case management hearing will be conducted in an informal manner in open court.
7.7 Unless otherwise ordered, once orders are made at the conclusion of the case management hearing, the parties will not be permitted to rely on additional evidence or on discovery or on written submissions, except in exceptional circumstances.
8.1 The Court may refer the matter to mediation under section 169 of the Act.
8.2 Mediation is conducted by registrars of the Court, in accordance with Divisions 23.1 and 23.2 of the General Federal Law Rules. Alternatively, the parties may use private mediators appointed under the schemes conducted by the Law Society or independent Bar of the State or Territory in which the proceeding was commenced, or otherwise as agreed by the parties.
9.1 The Court is a trial court, and it is intended that proceedings be conducted expeditiously.
9.2 The Court will take an active part in controlling the final hearing of an IP proceeding. Before the final hearing, the Court ordinarily makes directions that involve the parties preparing, filing and serving:
- a chronology of relevant events;
- a brief outline of the case;
- contentions of fact and law; and
- a form of proposed orders.
9.3 Cross examination will be controlled.
9.4 Where objection is taken to any affidavit material, parties are expected to privately confer in advance of the hearing with a view to discussing and resolving the objections, making appropriate amendments to the relevant affidavit material. Except in exceptional circumstances, the Court will not permit significant amounts of court time to be devoted to the hearing and determination of evidentiary objections.
9.5 Where time can be saved, the parties should reduce openings and final addresses to written form.
9.6 The judge will try to ensure that the final hearing does not take longer than 3 days.
9.7 If the parties agree and where the judge considers it appropriate to do so, the judge may conduct the final hearing entirely on the papers.
9.8 After the final hearing, where practicable, a decision will be given expeditiously.
10.1 Schedule 2 to the General Federal Law Rules provides an events-based costs regime. However, there is discretion to depart from this regime, and a judge may fix the amount of costs and disbursements payable. The Court may fix the maximum costs that may be recovered on a party and party basis.
10.2 If an order is made for costs to be paid in accordance with the scale of costs applied in the Federal Court of Australia, then failing agreement costs may be referred for assessment in accordance with the Federal Court Rules.
10.3 Rule 22.03 of the General Federal Law Rules provides that the Court may specify the maximum costs that may be recovered on a party-party basis. It is anticipated that the Court will use this provision in many matters dealt with in this list.
11. Ending a proceeding early
11.1 In accordance with rule 13.01 of the General Federal Law Rules, a party may choose not to continue with an application by filing a Notice of Discontinuance at least 14 days before the final hearing. The Notice of Discontinuance may be filed at a later date if the parties agree or with permission from a registrar or the Court: see rules 3.05 and 13.01.
11.2 A party discontinuing an application or part of an application may be liable for costs: see rule 13.02 of the General Federal Law Rules. However, parties may reach agreement that a proceeding be discontinued without costs. If so, parties can obtain orders to give effect to that agreement.
12. Further information
12.1 For information on how general federal law proceedings are conducted in the Court, please refer to Central Practice Direction – General Federal Law proceedings.
12.2 Parties should also consult the Court's website at www.fcfcoa.gov.au for further information about IP proceedings.
The Honourable Justice William Alstergren
Chief Judge (Division 2)
Federal Circuit and Family Court of Australia
Re-issued: 1 September 2021