Catchwords: PRACTICE AND PROCEDURE – Whether, within the meaning of s.17A(2) of the Federal Circuit Court of Australia Act 1999 (Cth), the applicant has no reasonable prospects of prosecuting claims based on infringement of trade mark and on misleading or deceptive conduct – application for summary dismissal dismissed.
TRADE MARKS – Applicant registers trade mark in Australia (registered trade mark) – second and third respondents who reside in Australia incorporate company in New Zealand with a name that is identical to a word included in the registered trade mark – second and third respondents cause first respondent to register trade mark (claimed infringing mark) in New Zealand that includes the same name that forms part of the registered trade mark – the second and third respondents also register in the United States of America and in the United Kingdom the claimed infringing mark – respondents upload the claimed infringing mark on Facebook – whether the uploading of the claimed infringing mark on Facebook arguably constitutes a use of the claimed infringing mark – whether the uploading of the claimed infringing mark on Facebook was intended to be directed to Australia and for that reason arguably constituted the use of the claimed infringing mark in Australia – whether it is reasonably arguable that the first respondent sold in Australia goods bearing the claimed infringing mark – whether it is reasonably arguable that the second, third, and fourth respondents, each of whom are directors, are jointly liable for the first respondent’s infringement of the registered trade mark.
PRACTICE AND PROCEDURE – Application for leave to file an amended statement of claim - whether proposed amendments futile – whether respondents will suffer prejudice – leave granted subject to removal of a number of allegations.
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
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Details
AGLC
Lamont v Malishus [2018] FCCA 423
Case
[2018] FCCA 423
Decision Date
CaseChat Overview and Summary
The applicant, the registered owner of an Australian trade mark, brought proceedings against the respondents, alleging trade mark infringement and misleading or deceptive conduct. The respondents applied for summary dismissal of the applicant's claims pursuant to s 17A(2) of the *Federal Circuit Court of Australia Act 1999* (Cth), arguing the applicant had no reasonable prospects of prosecuting these claims. The proceedings were heard in the Federal Circuit Court of Australia.
The central legal issues before the Court were whether the applicant had reasonable prospects of establishing that the respondents' actions constituted trade mark infringement and misleading or deceptive conduct within Australia. Specifically, the Court considered whether the registration of a New Zealand trade mark identical to a word within the applicant's registered mark, and the subsequent use of this mark on Facebook and in other jurisdictions, could be considered use in Australia. The Court also examined whether it was reasonably arguable that the first respondent sold goods bearing the infringing mark in Australia, and whether the individual respondents, as directors, could be held jointly liable for the first respondent's alleged infringement.
The Court dismissed the application for summary dismissal, finding that the applicant had raised arguable cases on each of the pleaded causes of action. The Court reasoned that the uploading of the infringing mark on Facebook, even if hosted overseas, could arguably constitute use directed to Australia, particularly given the respondents' connection to Australia. Furthermore, the Court found it reasonably arguable that the first respondent had sold goods in Australia bearing the infringing mark, and that the directors could be jointly liable. The Court also granted the applicant leave to file an amended statement of claim, subject to the removal of certain allegations deemed futile, finding that the proposed amendments would not cause undue prejudice to the respondents.