Lamont v Malishus Limited (NZ) and Ors (No.3)
[2020] FCCA 1908
•14 July 2020
FEDERAL CIRCUIT COURT OF AUSTRALIA
| LAMONT v MALISHUS LIMITED (NZ) & ORS (No.3) | [2020] FCCA 1908 |
| Catchwords: PRACTICE AND PROCEDURE – TRADE MARKS – Application for interlocutory relief – whether there is a real risk two of the four respondents will engage in infringing conduct – application not granted. |
| Cases cited: Lamont v Malishus & Ors (No.4) [2019] FCCA 3206 Lamont v Malishus Limited (NZ) & Ors(No 2) [2020] FCCA 1227 |
| Applicant: | DARREN LAMONT |
| First Respondent: | MALISHUS LIMITED (NZ) NZCN: 4429858 |
| Second Respondent: | ROBERT JURCIC |
| Third Respondent: | CLINTON SELWYN |
| Fourth Respondent: | CHRIS HAU |
| File Number: | SYG 787 of 2020 |
| Judgment of: | Judge Manousaridis |
| Hearing date: | 16 June 2020 |
| Date of Last Submission: | 16 June 2020 |
| Delivered at: | Sydney |
| Delivered on: | 14 July 2020 |
REPRESENTATION
| Applicant in person, by telephone |
| Second and third respondents in person, by telephone |
| No appearance by, or on behalf of, the first and fourth respondents |
ORDERS
The application in a case filed by the applicant on 9 June 2020 is dismissed.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT SYDNEY |
SYG 787 of 2020
| DARREN LAMONT |
Applicant
And
| MALISHUS LIMITED (NZ) NZCN: 4429858 |
First Respondent
| ROBERT JURCIC |
Second Respondent
| CLINTON SELWYN |
Third Respondent
| CHRIS HAU |
Fourth Respondent
REASONS FOR JUDGMENT
The applicant, Mr Lamont, applies for an interlocutory injunction and other orders in relation to conduct he alleges Mr Jurcic and Mr Selwyn, the second and third respondents respectively, have engaged in that constitutes the continuing infringement of his trade marks.
Much of the background to these reasons for judgment is contained in a judgment I delivered in this proceeding on 20 May 2020 (20 May reasons),[1] and in a judgment I delivered on 14 November 2019 in an earlier proceeding Mr Lamont had brought against a number of the respondents (earlier proceeding).[2] In the earlier proceeding I made declarations that Mr Jurcic and Mr Selwyn infringed the trade marks of Mr Lamont (Malishus Trade Marks), and an order restraining Mr Jurcic and Mr Selwyn from using in Australia as a trade mark any word in relation to clothing, footwear, or headgear that is substantially the same or deceptively similar to the word “Malishus”.
[1] Lamont v Malishus Limited (NZ) & Ors(No 2) [2020] FCCA 1227
[2] Lamont v Malishus & Ors (No.4) [2019] FCCA 3206
Mr Lamont submits that Mr Jurcic and Mr Selwyn have continued to infringe the Malishus Trade Marks after I published the 20 May reasons. Mr Lamont relies on screenshots of various social media pages annexed to his affidavit of 9 June 2020. It is unnecessary to set out each item of evidence. I need only record that the evidence is of a similar nature to that which I identified in detail in the 20 May reasons. Mr Jurcic and Mr Selwyn, on the other hand, submit that the material revealed by the screenshots Mr Lamont annexes to his affidavit is material that was posted long ago, and does not reflect any current activity.
In the 20 May reasons I found that Mr Lamont has a good arguable case that Mr Jurcic and Mr Selwyn have infringed the Malishus Trade Marks. The question is whether there are grounds for me to grant any form of interlocutory relief. That, at least in substantial part, depends on whether there is a risk Mr Jurcic or Mr Selwyn will engage in conduct which will constitute an infringement of the Malishus Trade Marks. That, in turn, depends on whether the material on which Mr Lamont relies discloses a good arguable case that Mr Jurcic or Mr Selwyn have engaged in infringing conduct after I published the 20 May reasons.
On the basis of the material on which Mr Lamont relies, I am satisfied there is an arguable case that Mr Jurcic and Mr Selwyn maintain social media accounts which can be accessed by members of the public; that material posted on those sites contains the word “Malishus” (Malishus related material); and that persons who can access the sites have the ability to access such material. None of the Malishus related material that Mr Lamont identifies in his affidavit, however, has been posted to any of the social media accounts arguably maintained by Mr Jurcic and Mr Selwyn after 20 May 2020. I am therefore not satisfied there is a real risk that Mr Jurcic and Mr Selwyn will post any Malishus related material before the final determination of Mr Lamont’s claims; and there is therefore no need to grant any injunction to restrain Mr Jurcic or Mr Selwyn from posting any further Malishus related material.
The screenshots Mr Lamont annexes to his affidavit also record persons responding to Malishus related material that has been posted. On my reading of the evidence, the responses were made at around the time each of the Malishus related material was posted, namely, before I published the 20 May reasons. On that reading of the evidence, I am not satisfied there is a real risk that persons will be responding to Malishus related material that has already been posted. For that reason, there is no need to grant any interlocutory relief on account of any risk that persons in Australia will be responding to the Malishus related material.
In his application in a case Mr Lamont seeks an order that all respondents cancel their social media accounts; that they contact every person whom the respondents have sponsored and request such persons desist their activities; and that the respondents cease using the name “Malishus”, not only in Australia but also internationally. Even if I were to have found there is a real risk Mr Jurcic and Mr Selwyn would engage in infringing conduct, I could not have granted the relief Mr Lamont seeks in the application in a case. In any event, for the reasons I have given, I am not satisfied Mr Lamont has established any ground for the granting of any interlocutory relief. I propose, therefore, to order that the application in a case by which Mr Lamont sought interlocutory relief be dismissed.
Before I conclude these reasons, I should note that at the hearing of the application for interlocutory relief, Mr Lamont requested that I consider making an order referring him to a lawyer for legal assistance. Before I give that request any further consideration, the parties might wish to attempt to resolve the matter between themselves. One possible solution (and I do not suggest this reflects my view of the likely outcome of the case if it proceeds to finality) is for Mr Selwyn and Mr Jurcic to take steps to remove from their social media accounts any Malishus related material, and for the first and fourth respondents to consider whether there can be implemented a system that prevents persons in Australia from accessing social media sites the first and fourth respondents maintain in New Zealand to which Malishus related material is posted.
I certify that the preceding eight (8) paragraphs are a true copy of the reasons for judgment of Judge Manousaridis
Associate:
Date: 14 July 2020
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