Australian Fast Track IP Litigation

Recently the Federal Court of Australia introduced a fast track IP litigation procedure which makes copyright and trademark litigation faster and more cost effective. Studying the Australian fast track procedure is fruitful because Canada also suffers from expensive and time consuming IP litigation and because similarities between the two legal systems means that following Australian footsteps may be beneficial.

Australian Fast Track IP Litigation

In an interview with Donald Cameron of Cameron MacKendrick LLP, the Honourable Michael Black AC, the Chief Justice of the Federal Court of Australia, discusses the Fast Track Direction that affects trade-mark and copyright cases.

The Fast Track procedure, which was introduced after consultations with the IP bar of Australia, involves active case management and pre-trial scheduling conference. It relies on an individual docket system – in an individual docket system cases are randomly allocated to judges, who are responsible for managing the case until disposition – and limited discovery. The parties are allowed discovery only to the extent that they need it. The trial date is scheduled within 2 to 5 months of the scheduling conference and the trials do not exceed 5 days. The aim of the Fast Track procedure is to encourage parties to cooperate at the early stages of the commencement.

One of the major events in case management is the scheduling conference. Participants at the conference include a judge, parties’ counsels, and one of the court’s registrars with ADR qualifications, should ADR be needed. The parties or their representatives are also recommended to attend. At this conference, the judge hears the case, asks questions to narrow down the issues, and addresses issues regarding discovery. The result of this conference is a “blue print” for the trial. Ideally the judge present at the scheduling conference would be the trial judge.

The Fast Track Direction may apply to the following proceedings:

  • proceedings arising from or relating to a commercial transaction;
  • an issue that has importance in trade or commerce;
  • the construction of commercial documents;
  • an issue that has importance in personal insolvency; and
  • intellectual property rights (excluding patents).

A proceeding may be carried out under the Fast Track Direction by the request of the plaintiff, agreement of the parties, or judiciary referral.

The Fast Track procedure has specific requirements for interlocutory applications. Before making such applications, parties are required to cooperate, meet and confer their issues, and try to resolve their dispute in good faith. If parties cannot resolve their issues then a certificate stating that the meet and confer was completed, though unsuccessful should be presented. Failure to do so will result in the application being refused immediately.

The interlocutory applications proceed by way of a written brief not exceeding five pages. The responding party provides an answering written brief, also not exceeding five pages. The judge decides the interlocutory application based on the documents, unless (s)he feels that an oral hearing would specifically add to, clarify or explain the written briefs.

According to the Honourable Chief Justice Black, IP attorneys love the Fast Track Directions because clients like it.  It gets disputes resolved very fast and reduces costs.

The supporting statistics also show that the Fast Track procedure has been quite successful so far. Out of the 70 cases that proceeded through the Fast Track Directions only 17 required judgment, 33 were resolved through ADR, and 17 were either settled or discontinued. Furthermore there have been no appeals on grounds of procedural fairness.

One Comment
  1. I think that in some IP cases fast tracking can and should go even further. Think of all the completely straightforward infringement problems that exist. They don’t really need jury trials and full discovery. The expense and hassle of trial is a disincentive both to rights-holders with valid claims and people accused of infringement by those with dubious claims. It stifles creativity and innovation. I would
    favour a move to officially recognized best-practices ( and expedited procedures. While far from a model of perfection, the domain dispute resolution policy provides a neat system ( It’s set up to address a specific category of trademark disputes and includes some clear examples of expected outcomes in certain types of cases. Decisions are quick and based on written submissions. Applying the same sort of process to a subset of IP cases (most copyright and trademark infringement cases) makes sense, particularly if you’re happy with injunctive relief or the damages are based on a standard formula.

    Stepping a little further onto the limb, I’d even suggest that many such problems could be resolved in advance in a kind of playbook of IP cases. Song used in commercial without paying? Rights holder
    wins. AP article partially quoted in blog? Blog owner wins. You could probably narrow the case down to a single judgement call—eg: does the blog article build upon the quoted material? Beyond the savings of time and money, the additional certainty could be invaluable.

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