Lamont v Malishus Limited (NZ) (No 2) - [2024] FedCFamC2G 844

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Lamont v Malishus Limited (NZ) (No 2) [2024] FedCFamC2G 844

File number(s): SYG 787 of 2020

Judgment of: JUDGE MANOUSARIDIS

Date of judgment: 6 September 2024

Catchwords: INTELLECTUAL PROPERTY – application for summary dismissal of proceeding based on claims for trade mark infringement – whether applicant has reasonable prospects of successfully establishing that any one or more of the respondents used in Australia as a trade mark in the course of trade a name that forms part of the registered trade marks owned by the applicant – proceeding dismissed.

Legislation:
Federal Circuit and Family Court of Australia Act 2021 (Cth) s 143(1)

Federal Court of Australia Act 1976 (Cth) s 31A(2)

Trade Marks Act 1995 (Cth) ss 6(1), 7(4), 9(1)(c), 17, 20, 120, 126

Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) rr 13.13(a), 20.02

Cases cited:
Christian v Société des Produits Nestlé SA (No 2) [2015] FCAFC 153

Coca-Cola Co v All-Fect Distributors Ltd (1999) 47 IPR 481

iNova Pharmaceuticals (Australia) Pty Ltd v Letos Group Pty Ltd [2022] FedCFamC2G 1052

Lamont v Malishus & Ors (No.4) [2019] FCCA 3206

Lamont v Malishus & Ors [2018] FCCA 423

Lamont v Malishus Limited (No 2) [2022] FCA 237

Mantra group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291

Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589; [1981] HCA 45

Przybylowski v Australian Human Rights Commission (No 2) [2018] FCA 473

Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664

The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407

Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471

WD & HO Wills (Aust) Ltd v Rothmans Ltd (1956) 94 CLR 182

Woolworths Limited v BP plc (No 2) (2006) 154 FCR 97

Division: General

Number of paragraphs: 63

Date of hearing: 27 June 2023

Place: Sydney

The Applicant In person, by telephone

Counsel for the Respondents: Mr M Hall SC and Ms P Hart

ORDERS

SYG 787 of 2020

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)

BETWEEN:
DARREN LAMONT

Applicant

AND:
MALISHUS LIMITED (NZ) NZCN: 4429858

First Respondent

ROBERT JURCIC

Second Respondent

CLINTON SELWYN (and another named in the Schedule)

Third Respondent

ORDER MADE BY:

JUDGE MANOUSARIDIS

DATE OF ORDER:

6 SEPTEMBER 2024

THE COURT ORDERS THAT:
1.Pursuant to r 13.13(a) of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) the proceeding is dismissed.
2.The second, third, and fifth respondents have liberty to apply for an order for costs within 35 days after the pronouncement of these orders.

Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION

In 2014 the applicant, Mr Lamont, commenced a proceeding in this Court (earlier proceeding) in which he claimed that one or more of the first, second, and third respondents in this proceeding, together with another person, Mr Nicholas, infringed, within the meaning of s 120 of the Trade Marks Act 1995 (Cth) (TM Act), one or more of the following four registered trade marks of which Mr Lamont is the owner (Malishus Trade Marks).

TM No Description Registered Goods and services

1127629 [Images]
Word(s): Malishus
Koncept 03 August, 2006 until 03 August 2026 Class 25: Clothing, footwear, headgear

1523037 MALISHUS
Word: Malishus 30 October 2012 Until 30 October 2022 Class 25: Clothing, footwear, headgear

1639005 Word: Malishus 9 August 2014 Class 41: Music

1640398 Word: Malishus 17 August 2014 Class 25: Apparel

In the earlier proceeding Mr Lamont claimed the Malishus Trade Marks had been infringed in a number of ways. One was by the second respondent in this proceeding, Mr Jurcic, or the third respondent in this proceeding, Mr Selwyn, or both, registering and using domain names that included the word “malishus”. A second way was by the respondents in the earlier proceeding selling in Australia T-shirts and other items of apparel to which marks that included the word “Malishus” were applied. And a third way was by Mr Jurcic, Mr Selwyn, and, to a lesser extent, Mr Nicholas, posting material on Facebook that included the use of the word “Malishus” in connection with clothing.
On 14 November 2019 I published reasons for judgment (earlier reasons) in the earlier proceeding on the basis of which I made the following declarations:[1]
[1] Lamont v Malishus & Ors (No.4) [2019] FCCA 3206
(1)From around July 2011 to around August 2013 the second respondent, Mr Jurcic, and the third respondent, Mr Selwyn, infringed within the meaning of s 120 of the Trade Marks Act 1995 (Cth) (TM Act) Australian registered trade mark no. 1127629 in class 25 (first Malishus Trade Mark), and from 30 October 2012 until around August 2013 Mr Jurcic and Mr Selwyn infringed Australian registered trade mark no. 1523037 in class 25 (second Malishus Trade Mark), by using the word “Malishus” as part of the domain name that resolved to a website that displayed and offered for sale clothing that contained marks and words which included the word “Malishus”.
(2)From around July 2011 the second respondent, Mr Jurcic, and the third respondent, Mr Selwyn, infringed within the meaning of s.120 of the TM Act the first Malishus Trade Mark, and from 30 October 2012 the second Malishus Trade Mark, and, from 17 August 2014 Australian registered trade mark no. 1640398 in class 25 (fourth Malishus Trade Mark), by selling or offering to sell in Australia clothing and headgear that contained marks and words which included the word “Malishus”.
(3)From around:
a)July 2011 until around November 2015 the second respondent, Mr Jurcic, and the third respondent, Mr Selwyn, infringed within the meaning of s.120 of the TM Act the first Malishus Trade Mark;
b)30 October 2012 until around November 2015, the second respondent, Mr Jurcic, and the third respondent, Mr Selwyn, infringed within the meaning of s.120 of the TM Act the second Malishus Trade Mark; and
c)17 August 2014 until around November 2015, the second respondent, Mr Jurcic, and the third respondent, Mr Selwyn, infringed within the meaning of s.120 of the TM Act the fourth Malishus Trade Mark,
by posting material on Facebook that included the use of the word “Malishus” in connection with clothing depicted in the material.
I also made orders 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”; an order that Mr Jurcic and Mr Selwyn pay nominal damages of $10, and an order that Mr Jurcic and Mr Selwyn jointly and severally pay Mr Lamont additional damages of $32,686.57. Mr Lamont appealed to the Federal Court of Australia in relation to some of the orders I made, but, on 18 March 2023, the Federal Court dismissed the appeal.[2]
[2] Lamont v Malishus Limited (No 2) [2022] FCA 237
In the meantime, on 30 March 2020 Mr Lamont commenced a fresh proceeding in this Court in which he alleges that Mr Jurcic and Mr Selwyn have continued to infringe the Malishus Trade Marks after 14 November 2019, and, incidentally, have breached the orders I made on that day.
On 3 November 2020 Mr Lamont filed an amended statement of claim (ASC); and, by email sent on 12 October 2022 to the respondents and their pro bono counsel, Mr Lamont purported to provide particulars of the infringing conduct alleged in the ASC (Particulars). Mr Lamont did so by providing screenshots of posts made on various social media platforms which Mr Lamont contends are associated with one or other of the respondents.
On 6 February 2023 the respondents filed an application in a proceeding seeking an order under r 13.13 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) (GFL Rules) that the proceeding be dismissed. The respondents, through their counsel, submit that Mr Lamont does not have reasonable prospects of successfully prosecuting his claims for relief based on infringement of the Malishus Trade Marks because he has not particularised, or he has otherwise not identified evidence, that any of the respondents have engaged in infringing conduct after 14 November 2019, being the date on which I made final orders in the earlier proceeding; and to the extent Mr Lamont has provided particulars or evidence that the fifth respondent, Mr Hau, has engaged in infringing conduct, Mr Lamont is estopped from bringing a claim against Mr Hau because Mr Lamont ought reasonably to have brought such claims against Mr Hau in the earlier proceeding.[3] Mr Lamont, on the other hand, submits that the evidence shows that the respondents have continued to infringe the Malishus Trade Marks.
[3] Mr Hau was added as a fifth respondent at the time Mr Nicholas had been removed as the fourth respondent.
In these reasons for judgment, therefore, I consider whether Mr Lamont does not have reasonable prospects of successfully prosecuting his claims that the respondents infringed the Malishus Trade Marks after 14 November 2019, and Mr Hau infringed the Malishus Trade Marks at any time. To be in a position to determine these questions, it will be necessary to set out the allegations Mr Lamont makes in the ASC, describe the Particulars, and describe the effect of the evidence on which Mr Lamont relied at the hearing of the application for summary dismissal.
These reasons for judgment assume familiarity with my earlier reasons, and also to the reasons for judgment I published on 1 December 2018.[4]
[4] Lamont v Malishus & Ors [2018] FCCA 423
THE ASC
The ASC may be summarised as follows.
Mr Lamont
Mr Lamont is the owner of a number of Class 25 trade marks (Malishus Clothing marks),[5] and one Class 35 trade mark (Malishus Retailing mark).[6]
[5] ASC, [5]
[6] ASC, [6]
Malishus NZ
Since 14 November 2019 the first respondent (Malishus NZ) is and has been the owner of:
(a)the “Malishus Apparel Facebook” page which is directed to an Australian audience and market; displays “shop now”, “message”, and “like and follow” buttons; does not state words to the effect that “our Malishus apparel is not available in Australia”; and does not restrict persons in Australia from viewing the page (7(a) allegation);[7]
(b)the “Malishus Apparel online Instagram” page, which has people following the page who live in Australia; is directed to people in Australia; and does not state the products offered on that page are not available in Australia (paragraph 7(b) allegation);[8]
(c)the “online Instagram page” found at the specified address which has people following the page who live in Australia; is directed to people in Australia; and does not state the products offered on that page are not available in Australia (paragraph 7(c) allegation);[9]
(d)the “online Instagram page” found at the specified address that displays apparel for sale bearing the Malishus brand, but does not state that the products offered on that page are not available in Australia (paragraph 7(d) allegation);[10]
(e)the “Malishus Entertainment Facebook page” which displays “message” and “like and follow” buttons; posted a competition in which Malishus NZ was giving away as a prize a “pair of Malishus Thongs”; is liked and commented on by people from around Australia; and does not state the products offered on that page are not available in Australia (paragraph 7(e) allegation); and[11]
(f)the “Malishus Apparel” website domain which posted a competition in which Malishus NZ was giving away as a prize a “pair of Malishus Thongs”; is liked and commented on by people from around Australia; and does not state the products offered on that page are not available in Australia (7(f) allegation).[12]
[7] ASC, [7(a)]
[8] ASC, [7(b)]
[9] ASC, [7(c)]
[10] ASC, [7(d)]
[11] ASC, [7(e)]
[12] ASC, [7(f)]
Because of the conduct alleged in the paragraph 7(a)-(f) allegations, Malishus NZ sold products in Australia as advertised, “the extent to which will be identified following discovery and evidence” (paragraph 7(g) allegation).[13]
[13] ASC, [7(g)]
The conduct alleged in the paragraph 7(a)-(g) allegations constituted the use by Malishus NZ of “Malishus” as a trade mark, and in so doing Malishus NZ infringed:
(a)the Malishus Clothing Marks (paragraph 8(a) allegation); and
(b)the Malishus Retailing Mark (paragraph 8(b) allegation).[14]
[14] ASC, [8]
Mr Jurcic
Since 14 November 2019 the second respondent, Mr Jurcic:[15]
(a)maintained a personal Facebook profile under the name “Robbie Jay” which promotes “Malishus” branded apparel; and
(b)in his capacity as a shareholder of Malishus NZ has co-ordinated, procured, or assisted in the infringing conduct alleged against Malishus NZ, the third respondent, Mr Selwyn, and the fifth respondent, Mr Hau (paragraph 9 allegation).
[15] ASC, [9]
The conduct alleged in the paragraph 9 allegation constituted the use by Mr Jurcic of “Malishus” as a trade mark, and in so using “Malishus” he infringed:
(a)the Malishus Clothing Marks (paragraph 10(a) allegation); and
(b)the Malishus Retailing Mark (paragraph 10(b) allegation).[16]
[16] ASC, [10]
Mr Selwyn
Since 14 November 2019 Mr Selwyn, as a director of Malishus NZ and, since January 2020 as its sole director, directed the infringing conduct of Malishus NZ referred to in paragraphs 14 and 15 (paragraph 11 allegation).[17]
[17] ASC, [11]
Mr Selwyn supplied a basketball team in Melbourne with apparel bearing the name “Malishus” which was worn by the team in a team competition (paragraph 12 allegation).[18]
[18] ASC, [12]
The conduct referred to the paragraphs 11 and 12 allegations constitutes the use by Mr Selwyn of “Malishus” as a trade mark, and in so using “Malishus” he infringed:
(a)the Malishus Clothing Marks (paragraph 13(a) allegation); and
(b)the Malishus Retailing Mark (paragraph 13(b) allegation).[19]
[19] ASC, [13]
Mr Hau
Since 14 November 2019 Mr Hau (paragraph 14 allegation):[20]
(a)has been the owner of an Instagram page which displays the “Malishus TM Logo” and states “@Malishus_Clothing and @MalishusEnt”, and does not contain words to the effect that the Malishus apparel that is advertised on that page is not available in Australia; and
(b)has co-ordinated, procured or assisted in the infringing conduct alleged to have been engaged in by Malishus NZ referred to in paragraphs 14 and 15.
[20] ASC, [14]
The conduct alleged in the Paragraph 14 allegation constitutes the use by Mr Selwyn of “Malishus” as a trade mark, and in so using “Malishus” he infringed:
(a)the Malishus Clothing Marks (paragraph 15(a) allegation); and
(b)the Malishus Retailing Mark (paragraph 15(b) allegation).[21]
[21] ASC, [15]
Mr Lamont has suffered loss as a result of the respondents’ infringing conduct.
PARTICULARS OF ASC
On 2 September 2022 I made orders that included an order that Mr Lamont provide the following particulars of at least one instance of each type of trade mark infringement alleged in:
(a)the paragraph 8(a) allegation (being the conduct alleged in the paragraphs 7(a)-(g) allegations);
(a)the paragraph 8(b) allegation (being the conduct alleged in the paragraphs 7(a)-(g) allegations);
(b)the paragraph 10(a) allegation (being the conduct identified in the paragraph 9 allegation);
(c)the paragraph 10(b) allegation (being the conduct identified in the paragraph 9 allegation);
(d)the paragraph 13(a) allegation (being the conduct identified in the paragraphs 11 and 12 allegations);
(e)the paragraph 13(b) allegation (being the conduct identified in the paragraphs 11 and 12 allegations);
(f)the paragraph 15(a) allegation (being the conduct identified in the paragraph 14 allegations); and
(g)the paragraph 15(b) allegation (being the conduct identified in the paragraph 14 allegation).
On 12 October 2022 Mr Lamont sent to the respondents and to their counsel the following email:
I Darren Lamont (Applicant) attach the (Zip Links to Folders Holding) the requested “Particulars” as ordered in the orders of his honour judge Manousaridis on 02 September 2022.
Please find attached the following folders which hold the requested “Particulars” for each paragraph of the applicants Amended Statement of Claim dated 03 November 2020, I explain the folders as follows;
1. Folder in support paragraph 8. a) and b) of the statement of claim; which holds (6) folders in support of Paragraph 7. a), b), c), d), e) and f) of the amended statement of claim;
a) Folder in support of 7. a) holds (3) screenshots “Particulars”; and
b) Folder in support of 7. b) holds (3) screenshots “Particulars”; and
c) Folder in support of 7. c) holds (4) screenshots “Particulars”; and
d) Folder in support of 7. d) holds (3) screenshots “Particulars”; and
e) Folder in support of 7. e) holds (8) screenshots “Particulars”; and
f) Folder in support of 7. f) holds (3) screenshots “Particulars”.
2. Folder in support of paragraph 10 a) and b) of the statement;
Which holds (1) folder in support of paragraph 9. a) and b) of the statement of
claim;
a) Folder in support of paragraph 9. a) and b) holds (3) screenshots “Particulars”.
3. Folder in support of paragraph 13. a) and b) of the statement of claim;
Which holds (2) folders in support of paragraphs 11. and 12. of the statement of claim;
a) Folder in support of paragraph 11. holds (6) screenshots “Particulars”; and
b) Folder in support of paragraph 12. holds (2) screenshots “Particulars”.
4. Folder in support of paragraph 15. a) and b) of the statement of claim;
Which holds (1) folder in support of paragraph 14. a) and b) of the statement
of claim;
a) Folder in support of paragraph 14. a) and b) holds (9) screenshots “Particulars”.
The applicant also wishes to ask the respondents and their legal counsel Mr. Hall if they could please forward this email onto the fifth respondent (Mr. Hau) as the applicant believes the emails have been bouncing back from the fifth respondent for some reason, though the applicant believes Mr. Hall represents the fifth respondent also, so therefore the fifth respondent has been served through Mr. Hall legal counsel.
If you have any issues with anything regarding the links to folders or screenshots, please let me know.
[]support of 8. a) and b).zip
[]support of 10. a) and b).zip
[]support of 13. a) and b).zip
[]support of 15. a) and b).zip
Thus the particulars Mr Lamont has provided are screenshots as follows:
(a)Paragraph 7(a) of ASC (“malishusapparel”):
(i)A screenshot from the Instagram account of “Malishus @malishusapparel” posted at 6:02 am on 6 February 2020. It is a post by a [J A A] of a photograph of a group of people.
(ii)A screenshot from the Facebook Page named “Malishus @malishusapparel” posted at 11:50 am on 6 February 2020. The screenshot is of a post made by “Malishus @malishusapparel Clothing (Brand) 3,685 likes”, contains screenshots of links to three videos, underneath of which there is a “Shop Now” button. Under the word “about” there is:
Send Message
“ ,
Clothing (Brand) Apparel & Clothing
(iii)A screenshot from the Facebook Page named “Malishus @malishusapparel” as at 8:30 pm on 3 May 2020. The screenshot is of a photograph posted at 21:07 on 12 January 2020 of three persons, two wearing T shirts which include the name “Malishus”. Under the photographs there appear the words “Malishus updated their business hours”. To the right of the photograph, under the words “Team Members” appears the name “Clinton Selwyn”.
(b)Paragraph 7(b) of ASC:
(i)A screenshot from the Instagram profile of “Malishus Clothing & Apparel as at 12:49 pm on 23 May 2020. It contain a post of an event posted by “malishus entertainment”.
(ii)A screenshot from the Instagram account of “Malishus Clothing & Apparel” identifying as one of the followers a person resident in Perth. The screenshot was taken at 4:36 pm on 31 January 2020.
(c)Paragraph 7(c) of the ASC:
(i)A screenshot of a “like” posted by a follower located in Melbourne to what appears to be the Instagram account of “Malishus Entertainment”. The screenshot was taken at 6:50 pm on 21 January 2020; and it relates to the offer of “Malishus Slides Giveaway!!”
(d)Paragraph 7(d) of the ASC:
(i)A screenshot of a post to the Instagram profile of “malishus_streetwear” offering for a “malishus_streetwear Malishus One B-Ball Singlet” for “$44.99 NZD”. The screenshot was taken at 9:23 pm on 9 September 2022.
(ii)A screenshot of a post of three photographs to the Instagram profile of “malishus_streetwear” of persons wearing T shirts with marks that include the name “malishus”. The screenshot was taken at 1:41pm on 11 October 2022.
(e)Paragraph 7(e) of the ASC:
(i)A screenshot of the following message posted on 19 January 2020 on the Facebook page of “Malishus Entertainment” (19 January 2020 message):
MALISHUS SLIDES GIVEAWAY
To thank you all for the support so far we are giving away limited edition Malishus Slides as shown in the photos above.
Simply follow instructions below:
1.   FOLLOW @malishusent @malishus_clothing
2.   TAG 3 friends
3.   LIKE & SHARE this post on your Instagram or Facebook story – don’t forget to tag us!
The screenshot was taken at 10:39 pm on 22 July 2020, and was shared with Mr Lamont by a person who resides in Australia.
(ii)A screenshot of a post of the 19 January 2020 message made to Mr Hau’s Facebook page.
(f)Paragraph 7(f) of the ASC:
(i)A screenshot of the Facebook Page named “Malishus @malishusapparel”, contains screenshots of links to three videos, underneath of which there is a “Shop Now” button. The screenshot was taken at 11:50 am on 6 February 2020.
(ii)A screenshot of an Instagram account which contains the words “getmalishus . . . Malishus Limited The screenshot was taken at 1.50 pm on 11 October 2022.
(g)Paragraph 9 of the ASC:
(i)A screenshot taken on 7 January 2020 of a post made to the “DealStream” platform. It offers for sale for $65,000 of “High Concept Apparel IP – Malishus Athletics”, noting that “Management will stay”. It also includes “Business for sale” and “United States”.
(ii)A screenshot taken on 9 April 2020 from Mr Jurcic’s Facebook page of three persons wearing T shirts, one of which has the word “Malishus”
(h)Paragraph 11 of the ASC:
(i)A screenshot taken on 9 April 2020 of post made to Mr Selwyn’s Facebook page containing a comment to George Pell’s success in the High Court.
(ii)A screenshot from the New Zealand Companies Office recording that as at 7 September 2020 Malishus Limited is registered, with Mr Selwyn being the owner of all 100 issued shares.
(iii)A screenshot from the New Zealand Companies Office recording that on 20 January 2020 Mr Jurcic ceased to own 50 shares in Malishus Limited.
(iv)A screenshot taken on 18 September 2022 of a photograph on a Facebook page of one person, who is resident in Brisbane, wearing a pullover bearing the name “Malishus”.
(v)A screenshot taken on 15 August 2022 from an Instagram account which has the word “kint_manager. You’re finally home . . . . this time”, on the left of which there is a photo of four males, two of which wear apparel that have the name “Malishus”.
(vi)A screenshot from Mr Selwyn’s Facebook page taken on 9 April 2020 which contains comments on what appear to have been George Pell’s success in the High Court. On the left of the comments there are photographs, one of which is of six men wearing apparel with the “Malishus” name.
(i)Paragraph 12 of the ASC:
(i)A screenshot of fixtures of games in February and March 2020 between Melbourne basketball teams, one of which is named “Malishus”.
(ii)A photograph taken on 24 February 2020 of four persons during a break or at the end of a basketball game played on that day, with one of the persons wearing a basketball singlet with the word “Malishus”.
(j)Paragraph 14 of the ASC:
(i)A screenshot of a post made to the Facebook page of Mr Hau, the post being the 19 January 2020 message. The screenshot was taken on 4 February 2020.
(ii)A screenshot, taken on 4 June 2020, which shows that one of the persons who posted to Mr Hau’s Facebook page message resides in Australia.
(iii)A screenshot taken on 24 January 2020 of Mr Hau’s Facebook page as at November 2016.
(iv)A screenshot taken on 24 January 2020 of Mr Hau’s Facebook page as at November 2016 which contains a post screenshots of links to three videos, underneath of which there is a “Shop Now” button.
(v)A screenshot taken on 16 April 2020 of Mr Hau’s Facebook page as at 26 April 2016.
(vi)A screenshot taken on 15 February 2020 of Mr Hau’s Instagram account. It contains the following:
Chris H
MALISHUS.COM
·@malishus_clothing
·@malishusent
·@xris_da1st
(vii)Screenshots taken on 20 July 2020 of two persons resident in Perth and Melbourne who follow or are friends of Mr Hau.
EVIDENCE AT THE HEARING

Counsel for the respondents sought to read affidavits each of Mr Jurcic and Mr Selwyn made on 16 March 2023. Mr Lamont said he wanted to cross-examine Mr Jurcic and Mr Selwyn; but he had not given notice that he required them to appear for that purpose. Counsel for Mr Jurcic and Mr Selwyn said he sought to read the affidavits for the limited purpose of there being evidence which disputes matters to which Mr Lamont deposes in his affidavits. I read the affidavits of Mr Jurcic and Mr Selwyn limited to that purpose, it being the case that a hearing of an application for summary dismissal is not the occasion for the Court to make findings of facts on disputed facts. The question I must determine is whether Mr Lamont does not have reasonable prospects of successfully prosecuting the claims he makes in the ASC.
Mr Lamont, for his part, read affidavits he made on 22 May 2023, 24 May 2023, and 29 May 2023. It would be convenient if I describe the evidence Mr Lamont gives in his affidavit 29 May 2023 because in that affidavit Mr Lamont refers to matters he has deposed, not only in his affidavits of 22 and 24 May 2023, but also in an affidavit he made on 9 June 2020 (which, in his affidavit of 29 May 2023 Mr Lamont incorrectly says he made on 6 June 2020).
Mr Lamont’s affidavit of 29 May 2023
Mr Lamont says as follows:
(a)Mr Jurcic has been the “CEO” and “Presenter” of Malishus NZ right up to 15 January 2021 when it was deregistered, even though Mr Jurcic was removed from the register as a shareholder on 19 January 2020, with Mr Selwyn remaining on the register as shareholder and director.[22]
[22] Affidavit D Lamont 29.05.2023, [4]
(b)Mr Hau was a director of Malishus NZ from mid-2016 to 15 January 2021.[23] Mr Lamont refers to a post made on 10 February 2016 (it is unclear when the post was made) stating that Mr Nicholas had stepped down as director of Malishus NZ, and that “[s]tepping into his shoes . . . is our new director (Chris Hau)”.[24]
[23] Affidavit D Lamont 29.05.2023, [4. a) v.]
[24] Affidavit D Lamont 29.05.2023, [39. a)]; Annexure-E17
(c)Mr Jurcic has been the owner and creator of the Malishus Apparel Facebook Page.[25]
[25] Affidavit D Lamont 29.05.2023, [5], [6]. Mr Lamont there says he relies on paragraphs 5, 9, 11, 13, 14, 16, and 17 of his affidavit made on “6 June 2020”. Hat is a reference to the affidavit made on 6 June 2020.
(d)In January 2011 Mr Jurcic and Mr Selwyn decided they needed a Facebook page, and to that end created a Facebook page for “Malishus” (this being the Malishus Apparel Facebook Page I describe in (b)). Mr Selwyn “managed the content and Facebook page”.[26] The Malishus Apparel Facebook Page:
[26] Affidavit D Lamont 29.05.2023, [7], referring to affidavit of D Lamont 24.05.2020 at [44] which in turn refers to the earlier reasons (Lamont v Malishus & Ors (No.4) [2019] FCCA 3206), at [40].
(i)recorded “@malishusapparel” and “
(ii)stated Mr Selwyn was the “Team Manager” of the page;
(iii)was directing its posts at and to its Australian fans and audience in Australia;
(iv)“was displaying Infringing Material posts” after 14 November 2019;
(v)was owned by Mr Jurcic until around 2021, after which he had Mr Selwyn run the Malishus Apparel Facebook Page; and
(vi)as at 6 February 2020 the Malishus Apparel Facebook Page had 3,673 followers.[27]
[27] Affidavit D Lamont 29.05.2023, [10]
(e)Mr Hau had an Instagram account.
(i)A screenshot taken on 15 February 2020 records:[28]
[28] Affidavit D Lamont 29.05.2023, [13. a)] referring to page 29 of annexures to affidavit D Lamont 09.06.2020
Chris H
MALISHUS.COM
·@malishus_clothing
·@malishusent
·@xris_da1st
This “proves that” Mr Hau “was in fact advertising and promoting the . . . Malishus Apparel TM Logo on his online social media platform being on “Instagram””.
(ii)One of the followers of Mr Hau’s Instagram page is a resident of Australia.[29] Mr Hau, therefore, “has knowingly directed his online social media “Instagram” profile at and towards the Australian public”.
[29] Affidavit D Lamont 29.05.2023, [13. b), c)] referring to page 30 of annexures to affidavit D Lamont 09.06.2020
Mr Lamont then refers to a number of screenshots, and makes submissions in relation to them. These may grouped into a number of classes.
Malishus Facebook Page
The first class relates to screenshots of posts to the Malishus Apparel Facebook Page, as follows:
(a)Screenshot taken at 2:00 pm on 9 April 2020 of the results of a search of “Malishus” on Facebook. This shows the return of five pages that have the word “Malishus”, which includes Mr Lamont’s use of “Malishus”. One of the returns is the Malishus Apparel Facebook Page, which records “3.6K like this”. This appears next to a logo which includes the word “Malishus” (Malishus TM Logo).[30]
[30] Affidavit D Lamont 29.05.2023, [22. a)]; Annexure E-2
(b)Screenshot taken at 2:02 pm on 9 April 2020 of the Malishus Apparel Facebook Page, which displays the following:[31]
[31] Affidavit D Lamont 29.05.2023, [22. b)]; Annexure E-2
(i)the Malishus TM Logo;
(ii)next to the Malishus TM Logo a photograph of three persons, two of whom are wearing apparel that contains the Malishus TM Logo;
(iii)3,660 like the page;
(iv)3,646 follow the page; and
(v)“Send Message” and “ taken at 2:27 pm on 29 December 2019 of the Malishus Apparel Facebook Page. The first page contains a statement of the outcome of the earlier proceeding. The statement includes “[a]pparel will start shortly from New Zealand once our court issues are cleared up”. The Malishus Apparel Facebook Page does not make any attempt to “Geo-Block Australia”, or otherwise record that Malishus apparel is unavailable to be purchased in Australia. [32]
(d)Screenshot taken at 11:32 am on 6 February 2020 of a post made to the Malishus Apparel Facebook Page. This records the Malishus TM Logo, next to which there appears “Malishus updated their business hours” and “shop now” and “send message”. It also records 3,687 people like the page, and 3,673 follow the page. The Malishus Apparel Facebook Page does not make any attempt to “Geo-Block Australia”, or otherwise record that Malishus apparel is unavailable to be purchased in Australia.[33] Mr Lamont says that when he clicked on the number of people who interacted with the post, a pop-up box appeared displaying a list of people; and when Mr Lamont hovered the mouse pointer over a named person, another pop-up box appeared displaying the person lived in Sydney, Australia.[34]
(e)Screenshot taken at 11:49 am on 6 February 2020 of the Malishus Apparel Facebook Page which, under the Malishus TM Logo, records a photograph of three persons, two of whom are wearing apparel with the Malishus TM Logo. Under the photograph there appears the words “Malishus updated their business hours”; and there are “shop now” and “send message” buttons.[35]
[32] Affidavit D Lamont 29.05.2023, [24. a)]
[33] Affidavit D Lamont 29.05.2023, [24. b)]
[34] Affidavit D Lamont 29.05.2023, [24. c)]
[35] Affidavit D Lamont 29.05.2023, [24. d)]
Malishus Instagram pages
A second class are screenshots of the Malishus Streetwear Instagram Page.
(a)Screenshot taken at 1:37 pm on 9 April 2020 of the Malishus Streetwear Instagram page, which records photographs of persons wearing apparel that have the word “Malishus”.[36]
(b)Screenshot taken at 2:30 pm on 21 March 2020 of Malishus_Clothing Instagram page.[37] It records a post made on 1 May 2014 displaying a number of photographs, one of which is a group of six persons each wearing basketball singlets in Melbourne on which there appear “Malishus”. Next to the photograph there appears the Malishus TM Logo, next to which appears the following text:
malishus_clothing Team Malishus is back on the court for another season at MSAC. These guys hustle with the best of them and play like its game 7 every night. *malishus
*malishusstreetwear
*basketball . . . .
Mr Lamont refers to this screenshot as proof that Mr Jurcic had “fabricated” statements he made in an earlier affidavit about when Mr Selwyn had created the Malishus basketball team.
[36] Affidavit D Lamont 29.05.2023, [25. b)]
[37] Affidavit D Lamont 29.05.2023, [35]; Annexure – E13
Instagram page of Mr Jurcic
A third class is a screenshot taken at 3:56 pm on 9 April 2020 of what Mr Lamont states is Mr Jurcic’s “malishus_clothing Instagram page”. It records the words “MALISHUS CLOTHING & APPAREL “374 posts 835 followers [and] 410 following”.[38] The page contains a logo depicting Australia within a red circle with a red line running across it (Not for Sale in Australia Logo). That signifies that the products of “Malishus Clothing & Apparel” are not available to be sold or supplied in Australia.
[38] Affidavit D Lamont 29.05.2023, [25. a)]
Malishus Entertainment Facebook Page
A fourth class relates to the following screenshots of the Malishus Entertainment Facebook Page.
(a)Screenshot taken at 12:25 pm on 10 April 2020 of the Malishus Entertainment Facebook Page. It contains the following post (Malishus Giveaway Post):[39]
[39] Affidavit D Lamont 29.05.2023, [28. a)]
MALISHUS SLIDES GIVEAWAY
To thank you all for the support so far we are giving away limited edition Malishus Slides as shown in the photos above.
Simply follow instructions below:
4.   FOLLOW @malishusent @malishus_clothing
5.   TAG 3 friends
6.   LIKE & SHARE this post on your Instagram or Facebook story – don’t forget to tag us!
(b)A screenshot taken at 3:50 pm on 9 April 2020 of the Malishus Entertainment Facebook Page. It displays, among other things, an image and a post of the Malishus Giveaway Post.[40]
(c)Screenshot taken at 6:28 pm on 10 April 2020 of the Malishus Entertainment Facebook Page which contains the Malishus Giveaway Post together with “Send Message”, and “send Email” buttons.[41]
(d)Screenshot taken at 6:26 pm on 22 May 2020 of the Malishus Entertainment Facebook Page which contains the Malishus Giveaway Post. Mr Lamont says that when he clicked the “share” button, a pop-up box appeared which displayed that Mr Hau had shared the Malishus Giveaway Post; and that his “proves” Mr Hau had aided and abetted in the infringing conduct of Mr Jurcic and Mr Selwyn.[42]
(e)Screenshot taken at 2:29 pm on 1 July 2020 of the Malishus Entertainment Facebook Page. It thanks sponsors; has a photograph of a number of persons which includes Mr Hau wearing a “Malishus apparel top”.[43] A screenshot taken at 6:20 pm on 22 May 2020 of Mr Selwyn’s Facebook page which “proves” that Mr Selwyn has posted the material “in Australia”.[44] Mr Lamont says that he clicked on the number of people who interacted with the post, he identified two persons who resided in Australia.[45]
[40] Affidavit D Lamont 29.05.2023, [31]
[41] Affidavit D Lamont 29.05.2023, [28. b)]
[42] Affidavit D Lamont 29.05.2023, [28. c)]
[43] Affidavit D Lamont 29.05.2023, [29. a)]
[44] Affidavit D Lamont 29.05.2023, [29. b)]
[45] Affidavit D Lamont 29.05.2023, [29. c), d)]
Facebook and Instagram pages of Mr Selwyn
A fifth class consists of screenshots of Instagram and Facebook pages of or associated with Mr Selwyn. These are as follows:
(a)Screenshot taken at 12:30 pm on 13 May 2021 of an Instagram account in the name of “klint_275”, containing a post from Malishus Entertainment. The post from Malishus Entertainment contains a Not for Sale in Australia Logo. Mr Lamont says Mr Selwyn used “Klint_275” “to continue to advertise, rather than delete the page altogether”.[46]
[46] Affidavit D Lamont 29.05.2023, [30]
(b)Screenshot taken on 15 August 2020 of Instagram page in the name of “Klint_mangere” which displays Mr Selwyn’s name.[47] It displays a photograph of Mr Selwyn wearing a Malishus T shirt; it records the Instagram page has 75 followers; and Mr Lamont says that two of the persons who follow that Instagram page are residents of Australia. The post states: “You’re finally home uncle”.
[47] Affidavit D Lamont 29.05.2023, [34], referring to affidavit D Lamont 22.05.2023, [9]; Annexure-A10
(c)Screenshot taken at 10:16 pm on 23 January 2020 of a post made to Mr Selwyn’s Facebook Page which shares a post made on 28 December 2019 describing the outcome of the earlier proceeding (Mr Lamont’s emphasis):[48]
[48] Affidavit D Lamont 29.05.2023, [36. b)]; Annexure – E14
Down but not out in Australia!
To all our loyal friends, family and supporters, you may be wondering why we have been so quiet over the last 6-12 months. Over the last few years Malishus has been involved in an ongoing law suit. We have been in court and even went to trial over accusations we have been selling Malishus apparel in Australia. Although two of the owners are based in Australia our business has been operating and trading solely out of New Zealand through our Director/Owner there.
A few weeks ago the judge finally delivered his verdict and we have been . fine severely. The crux of it is, Social Media knows no boundaries. All the FB/Insta posts and pics of Kiwis wearing our clothing in Australia has made the judge believe that we have been selling in Australia. This couldn’t be further from the truth but the sword of justice takes no prisoners. We have been fighting all these accusations but it seems random pictures on social media wearing Malishus in Australia means we have sold it to them. (According to the judge)
For a couple of entrepreneurs who were trying to get a business of the ground we now find ourselves in a tough situation. We have taken a huge hit and ar4e deciding the best way to move forward. We do have a few things we are working on and we maybe [sic] moving into a new area within Australia in 2020. Apparel will start shortly from New Zealand once our court issues are cleared up. It’s been hard 12 months but we look forward to connecting with you all again if you’ll have us.
Mr Lamont notes that this screenshot displays the Malishus TM Logo; and under “Intro” Mr Selwyn is described as the “Brand Manager at Malishus”, and lives in Melbourne Australia. The screenshot also displays images of “Malishus” apparel “being worn, advertised and promoted on [Mr Selwyn’s] Facebook profile page in Australia.
(d)Screenshot of pop-up box of a person resident in Australia who interacted with the post referred to in (c).[49]
(e)Screenshot taken at 5:41 pm on 9 April 2020 of Mr Selwyn’s Facebook Page of a comment Mr Selwyn made about George Pell’s success in the High Court, displaying a pop-up box Mr Lamont says appeared when hovering the mouse over the word “malishus”. The pop up box displays “@malishusapparel Clothing (Brand) 3,600 likes . . . http// below which appear three Malishus promotional video clips and, in turn, below which there appear “shop now”, “like”, “follow”, and “message”. Mr Lamont says this “proves” that Mr Selwyn knowingly and intentionally breached the orders I made on 14 November 2019.[50]
(f)Screenshot taken at 5:43 pm on 9 April 2020 of Mr Selwyn’s Facebook Page which displays photos of persons wearing “Malishus” apparel.[51]
(g)Screenshot taken at 6:04 pm on 22 May 2020 of Mr Selwyn’s Facebook Page. Mr Lamont notes that Mr Selwyn had removed in the “Introduction” section the words “Brand manager at Malishus” and “Manages Malishus”.[52]
(h)Screenshot taken at 4.48.44 pm on 6 October 2022 of Mr Selwyn’s Facebook Page. It contains a post of a photograph of Mr Selwyn and his daughter posted in around October 2020. Mr Selwyn is wearing a “Malishus” hoody jumper. The screenshot contains a comment from a person who is a resident of Australia noting that “that hoodie is awesome”. Mr Lamont asserts that this manifests a breach of the orders I made on 14 November 2019 because, contrary to what Mr Selwyn swore in his affidavit of 10 December 2029, Mr Selwyn does retain items that have the word “Malishus”.[53]
(i)A screenshot of a photograph Mr Lamont took of Mr Selwyn “and his basketball team mates wearing MALISHUS Basketball singlets”. Mr Lamont says that he performed a search and found out that Mr Selwyn had created a basketball team under the name “Malishus”.[54]
(j)Screenshot taken at 12:17 pm on 16 April 2020 of Mr Selwyn’s Facebook Profile as at 8 February 2020 containing a message from Mr Hau. Mr Lamont asserts that this “proves that [Mr Selwyn] directs his posts towards [Mr Hau] due to the fact that [Mr Selwyn] lives in Australia and tags [Mr Hau] in his posts, he is directing Australian public Audiences to [Mr Hau] in New Zealand”; and, therefore, “there is strong beyond reasonable doubt that [Mr Selwyn] was also directing his Australian Audience in Australia to [Mr Hau] in New Zealand in order to purchase Malishus apparel from [Mr Hau] via “Private Messaging””.[55]
[49] Affidavit D Lamont 29.05.2023, [36. c)]; Annexure – E14
[50] Affidavit D Lamont 29.05.2023, [36. d)]; Annexure – E14
[51] Affidavit D Lamont 29.05.2023, [36. e)]; Annexure – E14
[52] Affidavit D Lamont 29.05.2023, [36. f)]; Annexure – E14
[53] Affidavit D Lamont 29.05.2023, [36. g)]; Annexure – E14
[54] Affidavit D Lamont 29.05.2023, [37]; Annexure – E14
[55] Affidavit D Lamont 29.05.2023, [38]; Annexure – E14
DealStream website
A sixth class consists of a screenshot taken at 5:53 pm on 14 December 2019 of a page from the DealStream website. The first page displays “High Concept Apparel IP – Malishus Athletics” underneath of which appear the words “Business For Sale”, “United States”, “Clothing Wholesalers” “$65,000” and “New Listing”.[56] There is then displayed the Malishus TM Logo. The next three pages contain the same information, but photographs of various items of apparel that include the Malishus TM Logo. Under each photograph on each page appear the words: “Seize the opportunity to acquire a high concept brand geared toward the growing impact sports and lifestyle apparel market”. The fifth page contains the following:
[56] Affidavit D Lamont 29.05.2023, [33]; Annexure – E12
Background:
Malishus (a phonetic play on Malicious) was conceived in 2010 as an ultra-aggressive streetwear brand taking influence from the hip-hop, action sports and the streetwear scene. With registered trademarks in the USA, Canada and New Zealand, the brand was looking to evolve into a formidable player in the growing action sports market (specifically boxing and MMA). The founders initially laid commercial roots in New Zealand and built a brand with a strong and respected reputation which was recognized and supported by various high-profile athletes and training gyms across the country.
What’s prompting the sale:
Due to a change in circumstances, the founders have decided to cease operations and offer the brand as a trademark/domain package to a capable buyer who can further monetise the brand.
Buyer profile and opportunity:
This brand would suit an enterprising fighter, established hip-hop artist, a passionate newcomer or an existing apparel group that’s looking to add to their existing portfolio. With the right strategy, team and marketing push, the Malishus brand could achieve strong commercial traction in North America and various global markets.
High concept trademark names such as ‘Malishus’ are becoming extremely difficult to secure and it will continue to diminish as original and memorable generic names are all eventually registered. This is especially true for apparel trademarks.
What’s included:
Included in the sale are domestic and global trademarks in various classes (primarily apparel) and website domain specific to each trademarked country – A detailed IP portfolio can be provided on request.
Note: Established website is not available as it was in development when the founders ceased operating. Inventory and other assets were sold off as part of the wind-up. The IP will be rolled into an LLC holding company which will be transferred to the buyer.
Sale process:
Engagement will be made with serious buyers only. We require a $5’000 [sic] deposit held in escrow which will conclude the sale. Due diligence and transaction activities are the buyer’s responsibility, so we highly recommend the services of a trademark attorney. Accrued fees and legal costs will be borne by the buyer, not the seller.
Mr Hau’s Facebook Page

Mr Lamont has referred to a number of screenshots of Mr Hau’s Facebook Page, as follows:
(a)A screenshot taken at 12:13 pm on 4 June 2020 of a post made to Mr Hau’s Facebook Page on 26 April 2016, which displays Mr Hau wearing a Malishus jacket. Mr Lamont said on clicking people who have liked or interacted with the post, there appeared a pop-up box; and one of the persons was a resident of Australia. Mr Lamont asserts that as director of Malishus NZ he “was directing his posts to the Australian market”, noting that Mr Hau made no attempt to state that Malishus apparel is unavailable in Australia.[57]
[57] Affidavit D Lamont 29.05.2023, [40]; Annexure – E18
(b)A screenshot taken at 6:04 pm on 28 November 2019 of Mr Hau’s Facebook Page which records that on 28 December 2016 Mr Hau posted a video clip shared from Mr Selwyn’s Facebook Page. The videoclip depicts Mr Selwyn wearing a Malishus T-shirt. Mr Hau’s Facebook Page also displays images of Malishus apparel being worn, and that the post had 5,450 views. Mr Lamont asserts that this “proves” that Mr Hau, as a director of Malishus NZ, “was directing his posts towards and at the Australian audience, market and public for” Malishus NZ, Mr Jurcic, and Mr Selwyn.[58]
[58] Affidavit D Lamont 29.05.2023, [42]; Annexure – E20
(c)A screenshot taken at 1:33 pm on 14 March 2014 of Mr Hau’s Facebook Page. It displays Mr Hau with Mr Selwyn who is wearing a Malishus T-shirt. The photograph appears under the words: “Malishus Night I Melbourne # offthehook With the . . . Clint and . . .” Mr Lamont asserts this shows Mr Hau was in Melbourne for “business organisations, meeting, advertising and promotions”, and “also to build a contact base in Australia”.[59]
[59] Affidavit D Lamont 29.05.2023, [43]; Annexure – E21
(d)A screenshot taken at 1:58 pm on 6 March 2020 of Mr Hau’s Facebook Page. It displays photos and videos Mr Hau posted on 1 May 2018. The photos show Mr Selwyn and Mr Hau wearing Malishus apparel. There is also a screenshot which shows that one of the people who interacted with the posts was a resident of Melbourne.[60]
[60] Affidavit D Lamont 29.05.2023, [44]; Annexure – E22
(e)A screenshot taken at 5:16 pm on 21 January 2020 of Mr Hau’s Facebook Page displaying a post made on 19 January 2020 of the Malishus Slides Giveaway.[61]
(f)A screenshot taken at 5:28 pm on 21 January 2020 of Mr Hau’s Facebook Page displaying “MALISHUS ENT 2020 – Show announcements coming soon”, together with images of Mr Hau wearing Malishus apparel.[62]
(g)A screenshot taken at 5:32 pm on 21 January 2020 of Mr Hau’s Facebook Page. Mr Lamont says this is the same screenshot as in (f), but Mr Selwyn “tried being sneaky to make [it] look like he had restricted the post from being viewed in Australia”. That appears to be a reference to the following text:[63]
This content isn’t available right now.
When this happens, it’s actually because the owner only shared it with a small group of people, changed who can see it or it’s been deleted
(h)A screenshot taken at 5:32 pm on 21 January 2020 of Mr Hau’s Facebook Page. Mr Lamont says this is the same screenshot as in (f), but displays that Mr Selwyn is one of the persons who shared the post; and he is identified as “Brand Manager at Malishus”.[64]
(i)A screenshot taken at 5:32 pm on 21 January 2020 of Mr Hau’s Facebook Page. Mr Lamont says this is the same screenshot as in (f), but displays that Mr Selwyn is one of the persons who shared the post; and he is identified as “Brand Manager at Malishus”.[65]
(j)A screenshot taken at 5:34 pm on 21 January 2020, which is the same as (f), except it reveals that a person resident in Australia interacted with Mr Hau’s post.[66]
[61] Affidavit D Lamont 29.05.2023, [45]; Annexure – E23
[62] Affidavit D Lamont 29.05.2023, [46. a)]; Annexure – E24
[63] Affidavit D Lamont 29.05.2023, [46. b)]; Annexure – E24
[64] Affidavit D Lamont 29.05.2023, [46. c)]; Annexure – E24
[65] Affidavit D Lamont 29.05.2023, [46. d)]; Annexure – E24
[66] Affidavit D Lamont 29.05.2023, [46. e)]; Annexure – E24
Basketball fixture
Mr Lamont has included a screenshot taken at 2:00 pm on 21 March 2020 of a basketball fixture which identifies a number of teams, one of which is named “Malishus”.[67]
[67] Affidavit D Lamont 29.05.2023, [46. d)]; Annexure – E14
The respondents’ evidence
In his affidavit made on 16 March 2023 Mr Jurcic deposes to the following matters:
(a)the domain name “ has been deregistered;
(b)when he types the address “ Mr Jurcic is led to a website of a domain name registration company which is offering the domain name for sale;
(c)the former “Malishus Apparel” Facebook page had been maintained by Mr Selwyn, but has been shut down; and, in any event, Mr Jurcic made no posts to the “Malishus Apparel” Facebook;
(d)the only remaining social media account of which Mr Jurcic is aware that features the word “Malishus” is the Malishus Streetwear Instagram account; that account was created and managed around 2015 by Mr Selwyn, using an email address which was then current, and which itself used the extension “@malishus.com”; because of the deletion of all “Malishus” websites and URL’s after the orders were made in November 2019, that email address ceased to exist; the Instagram page cannot be removed, however, unless instructions are sent from the address that was used to establish it; for these reasons, it has proved impossible to remove that Instagram page entirely; but it does not link to any website;
(e)there was an inactive Instagram page, “GetMalishus”, that had been established in 2016 as part of a plan Mr Jurcic and Mr Selwyn had to create a reality TV show for the US market; the idea went nowhere, but Mr Jurcic and Mr Selwyn had forgotten about that page when they were deleting various “Malishus” media pages, starting in November 2019.
(f)Malishus NZ has been deregistered in early 2020; but it had not been trading.
In his affidavit Mr Selwyn deposes to the following matters:
(a)Since November 2019 Mr Selwyn has been deleting and modifying numerous social media pages and websites he had been managing that used “Malishus” in the title.
(b)Mr Selwyn continued to use the “Malishus Facebook Apparel” page “for a few New Zealand activities up until it was shut down mid 2020”, with the last post being made in February 2020.
(c)Mr Selwyn had set up the “Malishus_Streetwear Instagram” page using an email address that was linked to the website that included “Malishus.com”, which Mr Selwyn deregistered in November 2019; but when Mr Selwyn tried to deregister the Instagram page, Instagram informed him that could occur only if an email was sent from the email address that had been used to set up the Instagram account.
(d)Since about 2015 Mr Selwyn had been playing basketball in a social league in Melbourne; in 2017 or 2019 that team required “new kit”, in response to which Mr Selwyn gifted the team members with Malishus singlets; and after members of the team began to wear singlets, then decided to name the team “Malishus; but in 2020, in response to Mr Selwyn’s request, the basketball team ceased to call themselves “Malishus”.
(e)Mr Selwyn maintains in the “timeline” section of his Facebook page what Mr Selwyn says is in effect his “CV”, which includes a reference to when he was brand manager of the business that Mr Selwyn and Mr Jurcic believed they could use the word “Malishus”; noting that the timeline section of his Facebook Page is not a commercial page, not being a page that carries advertising.
PARTIES’ SUBMISSIONS
In their written submissions the respondents make two broad submissions. The first relates to the fifth respondent, Mr Hau. The respondents submit that to the extent there is any evidence Mr Hau made any use as a trade mark of the word “Malishus”, Mr Lamont ought reasonably to have made a claim against him in the earlier proceeding, but, having failed to do so, is estopped from doing so in the current proceeding.
The respondents rely on what is commonly referred to as “Anshun estoppel”.[68] The second submission relates to all respondents, and are to the effect that Mr Lamont has been unable to provide any particulars of any infringing conduct by any of the respondents. The respondents submit as follows:
In response to the order that he give such particulars he filed, electronically, a bundle of images drawn from the internet, some of them annotated with notes assumed to be in the Applicant’s hand. None of them identifies any act taken by any of the Respondents after 14 November 2019, capable of constituting an infringement of the Applicant’s trade marks. Rather, they fall into three categories, and in some instances, the same example falls into more than one:
(i) matter posted by one or other of the Respondents prior to the judgment in the earlier case, the continued presence of which is not within their control,
(ii)responses to that material, such as “likes” on Facebook or Instagram, by third parties unrelated to the Respondents;
(iii)conduct plainly occurring entirely outside of Australia and with no connection to Australia.
Conduct in any of those categories is incapable of supporting the cause of action for infringement of Australian registered trade marks.
[68] After Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589; [1981] HCA 45.
In his oral submissions, the respondents’ counsel classified into four groups the conduct counsel submitted Mr Lamont contends constitutes an infringement of one or more of the Malishus Trade Marks.
(a)The first are posts made to the Malishus Apparel Facebook page, and the Malishus Clothing Instagram page, these being the particulars Mr Lamont provided in relation to the paragraphs 7(a)-(f) allegations I identify above. Counsel submits that, save for two examples, the screenshots on which Mr Lamont relies do not show any fresh activity in the form of posting material after 14 November 2019. Counsel identified only one exception, being the post that refers to the outcome in the earlier proceeding to which I refer in paragraph 30(c) and 34(c) of these reasons. Counsel (in effect) submitted that these posts were made at a time when the site was used to sell or offer to sell infringing material, but the continued presence of “Malishus” reflects a short delay in the removal of the post.
(b)The second group are pages from private Facebook pages or other social media pages maintained by Mr Jurcic, Mr Selwyn, and Mr Hau. Counsel submits that the material is entirely of a non-commercial and private nature; and to the extent they represent Malishus apparel, it is plain that it had been supplied before 14 November 2019. Counsel particularly referred to the post Mr Selwyn made on 15 August 2022,[69] which counsel submitted consists of a farewell to a passing uncle.
(c)The third group relates to the activities of Malishus Entertainment. Counsel submits that this name was connected with the activities of Malishus NZ; and there is nothing to suggest the activities were directed to any person in Australia.
(d)The fourth group relates to the DealStream post. Counsel submits the post represents an attempt by Mr Jurcic to sell the non-Australian trade mark registrations.
[69] Affidavit D Lamont 29.05.2023, [34], referring to affidavit D Lamont 22.05.2023, [9]; Annexure-A10
In his oral submissions Mr Lamont took me in detail through most of the screenshots that are annexed to his affidavits, and which I identified above. In the course of doing so, Mr Lamont made a number of submissions, that included the following:
(a)Malishus NZ was in fact not based in New Zealand, but had been set up to make it look as if it had been trading in New Zealand. Mr Lamont relied on an affidavit of service made on 5 June 2020 where it is deposed that the address of the registered office of Malishus NZ, as recorded in the New Zealand Companies Office Register, does not exist.[70]
(b)Mr Jurcic has been in control of Malishus NZ at all times on behalf of himself, Mr Selwyn, and Mr Hau.
(c)The post to DealStream indicates that Mr Jurcic failed to cancel the Malishus.com registration, and Mr Jurcic still described himself as the brand manager of Malishus.
[70] Affidavit of K K F Lewis 05.06.2020, a copy of which is “Annexure-8” to Mr Lamont’s affidavit of 22 May 2023.
SUMMARY DISMISSAL – PRINCIPLES
The respondents rely on r 13.13(a) of the GFL Rules, which provides:
The Court may order that a proceeding be stayed, or dismissed generally or in relation to any claim for relief in the proceeding, if the Court is satisfied that:
(a)the party prosecuting the proceeding or claim for relief has no reasonable prospect of successfully prosecuting the proceeding or claim . . .
This rule repeats the language of s 143(1) of the Federal Circuit and Family Court of Australia Act 2021 (Cth) which, in turn, is substantially similar to s 31A(2) of the Federal Court of Australia Act 1976 (Cth).
The principles governing the exercise of the power conferred by s 31A were set out by Perry J in Przybylowski v Australian Human Rights Commission(No 2):[71]
[71] Przybylowski v Australian Human Rights Commission(No 2) [2018] FCA 473, at [7]
The principles governing the application of s 31A are well established and can be summarised as follows:
(1)The respondent as the moving party bears the onus of persuading the Court that the application has no reasonable prospects of succeeding: Australian Securities and Investments Commission v Cassimatis [2013] FCA 641; (2013) 220 FCR 256 (Cassimatis) at 271 [45] (Reeves J).
(2)With respect to the scope of s 31A, French CJ and Gummow J explained in Spencer v The Commonwealth of Australia [2010] HCA 28; (2010) 241 CLR 118 (Spencer) at [22], that the section:
… will apply to the case in which the pleadings disclose no reasonable cause of action and their deficiency is incurable. It will include the case in which there is unanswerable or unanswered evidence of a fact fatal to the pleaded case and any case which might be propounded by permissible amendment. It will include the class of case in the long-standing category of cases which are “frivolous or vexatious or an abuse of process”. The application of s 31A is not, in terms, limited to those categories.
(3)Section 31A sets a lower threshold than the previous test for summary dismissal which required that the claim be “manifestly groundless” or “hopeless”: Spencer at [52]-[53] (Hayne, Crennan, Kiefel and Bell JJ). Nonetheless, the discretion must still be exercised with caution (Spencer at [24] (French CJ and Gummow J) and [60] (Hayne, Crennan, Kiefel and Bell JJ)).
(4)An assessment of whether a proceeding has no reasonable prospects of success for the purposes of s 31A involves the making of value judgments in the absence of a full and complete factual matrix and argument, with the result that the provision vests a discretion in the Court: Kowalski v MMAL Staff Superannuation Fund Pty Ltd [2009] FCAFC 117; (2009) 178 FCR 401 (Kowalski) at [28] (the Court).
(5) Consistently with this, Reeves J in Cassimatis explained at [46] that:
…the determination of a summary dismissal application therefore does not require a mini-trial based upon incomplete evidence to decide whether the proceedings are likely to succeed or fail at trial. Instead, it requires a critical examination of the available materials to determine whether there is a real question of law or fact that should be decided at trial. Each application for summary judgment or summary dismissal has to be determined according to its particular circumstances. What is required is a practical judgment of the case at hand. The relevant circumstances will partly depend upon the stage which the proceedings have reached. Among other things, this will affect the materials available to the Court considering the application, for example, whether pleadings have been exchanged, or discovery of documents has occurred.
(6)To illustrate the application of these principles, Reeves J explained at [47] that the moving party is more likely to succeed if she or he demonstrates that the applicant’s success relies on a question of fact that is fanciful, trifling, implausible, improbable, tenuous, or contradicted by all the available documents or evidence. Conversely, his Honour explained that, as a general principle, such an application is unlikely to succeed where, on a critical examination of all the available materials, the Court is satisfied that there appears to be a real question of fact to be determined. The latter, in his Honour’s view, is more likely to be the case where the available materials include pleadings that raise factual disputes that can truly be described as significant, substantial, plausible or weighty.
NO REASONABLE PROSPECTS OF PROSECUTING CLAIMS?
Approach
The submissions of the parties have largely been directed to the details of the limited number of screenshots on which Mr Lamont relies for resisting the respondents’ contention that he does not have reasonable prospects of successfully prosecuting his claims of infringement of the Malishus Trade Marks. The focusing of attention on the details of the individual screenshots, however, tends to obscure the question that arises on the respondents’ application for summary dismissal. The question is whether Mr Lamont does not have reasonable prospects of successfully prosecuting the causes of action for infringement as pleaded in the ASC against each respondent. The determination of that question turns on:
(a)identifying the elements of an action under s 120 of the TM Act for infringement of a registered trade mark;
(b)considering whether Mr Lamont has identified evidence in relation to each of the respondents that is reasonably capable of showing that one or more of the respondents has or have infringed one or more of the Malishus Trade Marks, as alleged in the ASC; and
(c)to the extent (b) is answered in the affirmative, whether Mr Lamont does not have reasonable prospects of succeeding on his claim for relief based on s 120 of the TM Act as against one or more of the respondents.
Elements of a cause of action based on s 120 of the TM Act
Subject to the terms of the TM Act,[72] a registered owner of a trade mark has the exclusive right to use the trade mark, and to authorise other persons to use the trade mark “in relation to the goods and/or services in respect of which the trade mark is registered”.[73] The registered owner also has the right to obtain relief under the TM Act if the trade mark has been infringed.[74] The relief provided under the TM Act consists of the granting of injunctions, and damages or an account of profits.[75]
[72] I repeat in this and the following three paragraphs what I said in iNova Pharmaceuticals (Australia) Pty Ltd v Letos Group Pty Ltd [2022] FedCFamC2G 1052, at [121]-[124].
[73] TM Act, s 20(1)
[74] TM Act, s 20(2)
[75] TM Act, s 126
The circumstances in which a person infringes a registered trade mark are defined in s 120 of the TM Act; and that section identifies three sets of circumstances, one of which are those provided for by s 120(1):
A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
Subsection 120(1) must be read with s 20(1) and (2) of the TM Act which provide:
If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.
(2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.

There are a number of elements to infringing a registered trade mark.
(a)First, the person who is alleged to have infringed a trade mark (claimed infringer) must use a “sign”. “Sign” is defined to include the following or any combination of the following: “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”.[76]
[76] TM Act, s 6(1)
(b)Second, the claimed infringer must use the sign as a trade mark “in relation to goods or services”. The expression “use of a trade mark in relation to goods” means “use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)”.[77] A trade mark is taken to be “applied in relation” to goods or services if it is used “on a signboard or in an advertisement (including a televised advertisement)”; or “in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document”, and “goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used”.[78]
[77] TM Act, s 7(4)
[78] TM Act, s 9(1)(c)
(c)Third, the claimed infringer must use the sign “as a trade mark”. “Trade mark” is defined to mean a “sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.[79] Whether there has been use of a trade mark:[80]
[79] TM Act, s 17
[80] Woolworths Limited v BP plc (No 2) (2006) 154 FCR 97, at [77]
involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons; that is to say, it must distinguish them in the sense of indicating origin. . . .
Further, to use a sign “as a trade mark” means to use the sign “as a “badge of origin” that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods”.[81] Thus, to use the language of s 17 of the TM Act, the claimed infringer must use the claimed infringing mark to distinguish goods or services dealt with or provided in the course of trade by the claimed infringer from goods and services so dealt with or provided by another person or other persons.
[81] Coca-Cola Co v All-Fect Distributors Ltd (1999) 47 IPR 481, at page 489-490 (Black CJ, Sundberg and Finkelstein JJ)
(d)Fourth, the sign must be used as a trade mark “in the course of trade”. That expression was considered in WD & HO Wills (Aust) Ltd v Rothmans Ltd:[82]
The word “trade” is . . . a very wide word, but the use of a trade mark for the purposes of trade would have to be at least a use of the mark to indicate the origin of goods. . . . [T]he use of the mark would have to be a use for the purposes of trade in the goods. . . . “After goods have reached the consumer they are no longer in the course of trade. The trading in them has reached its objective and its conclusion in their acquisition by the consumer”.
Using a sign in the course of trade does not require that there be an actual sale. “In the course of trade” means “for the purposes of trade”.[83]
(e)Fifth, the mark used by the claimed infringer (claimed infringing mark) must be substantially identical with or deceptively similar to the registered trade mark. In The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited Windeyer J described how a court should determine whether a claimed infringing mark is substantially identical with the registered trade mark that is claimed to have been infringed as follows:[84]
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court's own judgment and partly on the burden of the evidence that is placed before it” . . . Whether there is substantial identity is a question of fact....
(f)Sixth, the claimed infringer must use the claimed infringing mark in Australia.
[82] WD & HO Wills (Aust) Ltd v Rothmans Ltd (1956) 94 CLR 182, at page 191
[83] Christian v Société des Produits Nestlé SA (No 2) [2015] FCAFC 153, at [11], referring to WD & HO Wills (Aust) Ltd v Rothmans Ltd (1956) 94 CLR 182, at page 191
[84] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, at page 414 (Windeyer J)
A domain name is capable of being used as a trade mark. How and why that might be so has been usefully explained as follows (footnotes omitted and errors in original):[85]
Every computer or user connected to the Internet must be distinguished and located by other users. Thus, every user is assigned an Interworking Protocol Address (IP Address), a unique combination of numbers separated by periods to represent different fields, such s 123.101.23.128
These strings of digits contain a network portion that locates the specific network to which the user is connected, as well as a local address that identifies the user within the network. IP addresses are, unfortunately, unwieldly and difficult to remember. As a result, the IP Address system has been overlaid with a more user-friendly system of domain names, in which IP Address holders are given an easily remembered mnemonic designation. Computer programs that connect users to the Internet have been programmed automatically to look up the numeric IP Address that corresponds to the designated mnemonic domain name address.
Domain names are made up of a number of characters separated by periods to designate fields. Often, domain names consist of a word that will easily identify the holder of that address, such as an individual’s or organization’s name, a brand name or trademark, or a nickname, followed by a three letter abbreviation that designates the user’s type of organization. . . .
For a company doing business on the Internet, a domain name is an extremely valuable tool for reaching and maintaining communication with customers. Because there is no effective alternative method of finding a company’s Internet location, having a domain name that corresponds to a well-known trademark nay be a prerequisite for a company that wants to establish an Internet presence. Indeed, “for businesses to communicate effectively on the Internet, it is essential that they have a unique ‘address’ that is easily recognizable to customers.”
The registration of a domain name does not by itself constitute a use of the name registered as a trade mark. What must be shown is that the domain name is used “as a sign to distinguish the goods or services of one trader in the course of trade from the goods or services of another trader”; and this will be shown if the public is “likely to understand a domain name . . . as a sign for the online services identified by the [sign] as available at the webpage to which it carries the internet user”.[86]
[85] G Weiswasser “Domain Names, the Internet, and Trademarks: Infringement in Cyberspace”, 20 Santa Clara High Tech L.J. 215 (2003) 137, at pages 145-147 See also the description in the judgment of Reeves J in Mantra group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291, at [18]-[30].
[86] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, at [153] (Kenny J)
The registration of a domain name does not by itself constitute a use of the name registered as a trade mark. What must be shown is that the domain name is used “as a sign to distinguish the goods or services of one trader in the course of trade from the goods or services of another trader”; and this will be shown if the public is “likely to understand a domain name . . . as a sign for the online services identified by the [sign] as available at the webpage to which it carries the internet user”.[87]
[87] Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, at [153] (Kenny J)
It would also be useful to refer to that Merkel J said in Ward Group Pty Ltd v Brodie & Stone Plc,[88] about uploading information on the internet outside of Australia.[89]
In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.
[88] [2005] FCA 471
[89] [2005] FCA 471 at [43]
Claims against Malishus NZ
Malishus NZ has been deregistered; for that reason alone, Mr Lamont cannot maintain any action against Malishus NZ because it has ceased to exist.
Claims against Mr Jurcic, Mr Selwyn, and Mr Hau
The foundational premise of Mr Lamont’s claims against the respondents is that Mr Jurcic, Mr Selwyn, and Mr Hau have been engaged in a business, or at least in concerted activities that consists or consist of the sale or supply, or the offering for sale or supply, of apparel in or into Australia. I am satisfied that the material on which Mr Lamont relies is not reasonably capable of establishing that Mr Jurcic, Mr Selwyn, and Mr Hau have engaged in any such activities. The material on which Mr Lamont relies is reasonably capable of showing no more than that in 2020 Malishus NZ continued to offer for sale or was contemplating offering for sale apparel or some other products, and that it did so, or contemplated doing so, by use of the domain name “ In the earlier reasons, however, I found that Mr Jurcic and Mr Selwyn intended to direct the domain name “ to persons in New Zealand, and not to persons in Australia.[90] I am satisfied that the material on which Mr Lamont relies is not reasonably capable of showing that Mr Jurcic, or Mr Selwyn intended to alter, or they altered their intention, or that Mr Hau himself formed an intention to direct the domain name “ to persons in Australia.
[90] Lamont v Malishus & Ors (No.4) [2019] FCCA 3206, at [87]
It is true that the material on which Mr Lamont relies discloses a very small number of people who are resident in Australia who have engaged with or responded to posts that were made to the Malishus Apparel Facebook Page, and to the Facebook and Instagram pages of Mr Selwyn and Mr Hau. But this must be viewed in the light of three other matters.
(a)First, the number of Australian residents Mr Lamont has identified is very small in proportion of the number of persons the screenshots represent have engaged or who otherwise follow the relevant page. For example, the screenshot taken at 11:32 am on 6 February 2020 of a post made to the Malishus Apparel Facebook Page records that 3,687 people like the page, and 3,673 follow the page. Mr Lamont identified only one person who was a resident of Australia.[91] Mr Lamont does not say whether he tried to determine whether the other persons who liked or followed the page were residents of Australia, or whether it was possible to obtain that information in the same way he was able to determine that the one person he identified was a resident of Australia.
(b)Second, in the post Mr Selwyn made to his Facebook Page on 28 December 2019,[92] and in the post that was made to the Malishus Apparel Facebook page on 28 December 2019, [93] it is made clear that Malishus apparel cannot be sold in Australia; and the message is accompanied by a Not for Sale in Australia Logo.
(c)Third, Mr Lamont has provided no evidence of any website associated, or which appears to be associated, with Mr Jurcic, or Mr Selwyn, or Mr Hau, from which it has been possible for any person, whether in New Zealand or in Australia, to purchase any apparel or any other product. Mr Lamont has proved adept at being able to search the Internet; and his not having identified any such website renders it unlikely that any such website has existed after 14 November 2019.
[91] Affidavit D Lamont 29.05.2023, [24. c)]
[92] Affidavit D Lamont 29.05.2023, [36. b)]; Annexure – E14
[93] Affidavit D Lamont 29.05.2023, [36. b)]; Annexure – E14
That the material on which Mr Lamont relies may not reasonably be capable of proving that Mr Jurcic, Mr Selwyn, or Mr Hau, together or alone, engaged in activities, or contemplated engaging in activities, that involved or would involve the sale or supply, or the offering for sale or supply, of apparel or any other goods or services in Australia does not necessarily mean that Mr Lamont would have no reasonable prospects of proving at a final hearing that Mr Jurcic, Mr Selwyn, or Mr Hau, did engage, or propose to engage, in such activities. It may be that Mr Lamont will be able to obtain evidence by means of discovery or some other method of disclosure of documents. I am satisfied, however, there is no reasonable prospect of Mr Lamont obtaining further evidence by means of discovery or by some other procedure.
As I have noted, Mr Lamont has proved adept in searching the Internet to identify material that has been posted on websites with which Mr Jurcic, Mr Selwyn, and Mr Hau are or have been associated or apparently associated; and it may reasonably be supposed that Mr Lamont has obtained all that is available to be obtained from the various social media sites with which any of Mr Jurcic, Mr Selwyn, and Mr Hau are or have been associated or apparently associated. Further, it is relevant that Mr Lamont submitted that the respondents have attempted to hide their activities by blocking Mr Lamont from having access to websites with which the respondents are or have been associated, but these attempts have not prevented Mr Lamont from investigating and identifying their activities. Thus, in his affidavit of 29 May 2023, Mr Lamont deposed as follows (emphasis in original):[94]
[T]he applicant wishes to again remind the Court, that the third respondent had “Blocked” the applicant from Facebook and thought the applicant wouldn’t be able to see this continual infringing material/conduct, he was wrong, there’s a way around everything, just got to find the way
[94] Affidavit D Lamont 29.05.2023, [36. b) iv.]
Given I am satisfied that Mr Lamont does not have reasonable prospects of showing at a final hearing that any of Mr Jurcic, Mr Selwyn, or Mr Hau, engaged, or proposed to engage, either alone or in concert, in activities consisting of the sale or supply, or the offering for sale or supply, of apparel in Australia, it necessarily means I am satisfied that, even if it be assumed that the appearance of the word “Malishus” in any of the screenshots constitutes the use of that word as a trade mark in the course of trade, Mr Lamont does not have reasonable prospects of succeeding on his claims that the appearance of the word “Malishus” in any of the screenshots constituted the use of any trade mark in Australia.
Mr Lamont has made a number of claims that the respondents have failed to comply with some of the orders I made on 14 November 2019. There are two things that may be said about that. First, even if correct, the fact the respondents may have failed to comply with those orders by itself is incapable of supporting Mr Lamont’s claim that the respondents have used a trade mark that includes the word “Malishus” in Australia in the course of trade. Second, where a party complains that another party has breached an order of this Court, and the complaining party asks the Court to make an order in relation to such breach, the complaining party must follow the procedure provided for by r 20.02 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth). By referring to this rule, however, I do not intend to suggest Mr Lamont has grounds or sufficient grounds for making an application under the rule, or that he should make such an application.
CONCLUSION AND DISPOSITION
I am satisfied that Mr Lamont does not have reasonable prospects of successfully prosecuting his claims for relief against the respondents; and, for that reason, I propose to order that the proceeding be dismissed.
As for costs, I will grant the respondents liberty to apply within 35 days if they intend to apply for an order for costs.

I certify that the preceding sixty-three (63) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis.
Associate:
Dated: 6 September 2024
SCHEDULE OF PARTIES

SYG 787 of 2020

Respondents

Fifth Respondent:

CHRIS HAU

File number(s):	SYG 787 of 2020
Judgment of:	JUDGE MANOUSARIDIS
Date of judgment:	6 September 2024
Catchwords:	INTELLECTUAL PROPERTY – application for summary dismissal of proceeding based on claims for trade mark infringement – whether applicant has reasonable prospects of successfully establishing that any one or more of the respondents used in Australia as a trade mark in the course of trade a name that forms part of the registered trade marks owned by the applicant – proceeding dismissed.
Legislation:	Federal Circuit and Family Court of Australia Act 2021 (Cth) s 143(1) Federal Court of Australia Act 1976 (Cth) s 31A(2) Trade Marks Act 1995 (Cth) ss 6(1), 7(4), 9(1)(c), 17, 20, 120, 126 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) rr 13.13(a), 20.02
Cases cited:	Christian v Société des Produits Nestlé SA (No 2) [2015] FCAFC 153 Coca-Cola Co v All-Fect Distributors Ltd (1999) 47 IPR 481 iNova Pharmaceuticals (Australia) Pty Ltd v Letos Group Pty Ltd [2022] FedCFamC2G 1052 Lamont v Malishus & Ors (No.4) [2019] FCCA 3206 Lamont v Malishus & Ors [2018] FCCA 423 Lamont v Malishus Limited (No 2) [2022] FCA 237 Mantra group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291 Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589; [1981] HCA 45 Przybylowski v Australian Human Rights Commission (No 2) [2018] FCA 473 Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471 WD & HO Wills (Aust) Ltd v Rothmans Ltd (1956) 94 CLR 182 Woolworths Limited v BP plc (No 2) (2006) 154 FCR 97
Division:	General
Number of paragraphs:	63
Date of hearing:	27 June 2023
Place:	Sydney
The Applicant	In person, by telephone
Counsel for the Respondents:	Mr M Hall SC and Ms P Hart

SYG 787 of 2020
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN:	DARREN LAMONT Applicant
AND:	MALISHUS LIMITED (NZ) NZCN: 4429858 First Respondent ROBERT JURCIC Second Respondent CLINTON SELWYN (and another named in the Schedule) Third Respondent

ORDER MADE BY:	JUDGE MANOUSARIDIS
DATE OF ORDER:	6 SEPTEMBER 2024

TM No	Description	Registered	Goods and services
1127629	[Images] Word(s): Malishus Koncept	03 August, 2006 until 03 August 2026	Class 25: Clothing, footwear, headgear
1523037	MALISHUS Word: Malishus	30 October 2012 Until 30 October 2022	Class 25: Clothing, footwear, headgear
1639005	Word: Malishus	9 August 2014	Class 41: Music
1640398	Word: Malishus	17 August 2014	Class 25: Apparel

SYG 787 of 2020
Respondents
Fifth Respondent:	CHRIS HAU