Lamont v Malishus Limited (NZ) (No 2)

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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…

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Details
Case
[2024] FedCFamC2G 844
Decision Date

CaseChat Overview and Summary

Lamont v Malishus Limited (NZ) (No 2) involved a proceeding brought by Mr Lamont against Malishus Limited (NZ) and others for trade mark infringement. The dispute centred on whether the respondents had used a trade mark that included the word "Malishus" in Australia in the course of trade, in violation of Mr Lamont's registered trade marks. Mr Lamont argued that the respondents had not complied with certain court orders made on 14 November 2019 and had continued to use the "Malishus" name in various capacities. The respondents denied the allegations and provided evidence to counter Mr Lamont's claims.

The primary legal issue before the court was whether Mr Lamont had reasonable prospects of successfully establishing that the respondents had used the "Malishus" name as a trade mark in Australia. The court considered the evidence presented by both parties, including screenshots, affidavits, and statements regarding the use of the "Malishus" name in social media, websites, and a basketball team. The court examined the respondents' efforts to deregister domains, delete social media accounts, and modify websites that featured the "Malishus" name. Ultimately, the court concluded that Mr Lamont had not demonstrated a reasonable prospect of proving that the respondents had used the "Malishus" name as a trade mark in Australia.

The court found that even if the respondents had failed to comply with certain court orders, this did not necessarily support Mr Lamont's claim of trade mark infringement. Furthermore, the court noted that Mr Lamont had not followed the proper procedure for reporting alleged breaches of court orders. As a result, the court was satisfied that Mr Lamont did not have reasonable prospects of successfully prosecuting his claims. The proceeding was dismissed, and the respondents were granted liberty to apply for costs if they chose to do so within 35 days.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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 – E14The 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

Decision

Reasons for decision

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.

Ratio Decidendi

Legal Principle Established

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