Lamont v Malishus & Ors
[2018] FCCA 423
•14 March 2018
FEDERAL CIRCUIT COURT OF AUSTRALIA
| LAMONT v MALISHUS & ORS | [2018] FCCA 423 |
| Catchwords: 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. |
| Legislation: Australian Consumer Law, ss.2, 18, 236(1), 237(1), 243 |
| Cases cited: Arktos Pty Ltd v Idyllic Nominees Pty Ltd [2004] FCAFC 119 Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63 Campbell v Backoffice Investments Pty Ltd [2009] HCA 25; (2009) 238 CLR 304 Campomar Sociedad Limited v Nike International Limited [2000] HCA 12; (2000) 202 CLR Christian v Société des Produits Nestlé SA (No 2) [2015] FCAFC 153 Coca-Cola Co v All-Fect Distributors Ltd (1999) 47 IPR 481 Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 Dow Jones & Company Inc v Gutnick (2002) 210 CLR 575 Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 Gunns Ltd v Marr [2005] VSC 251 Henjo Investments Pty Limited & Ors v Collins Marrickville Pty Limited [1988] FCA 40; (1988) 79 ALR 83 |
| Applicant: | DARREN LAMONT |
| First Respondent: | MALISHUS NZCN 4429858 |
| Second Respondent: | ROBERT JURCIC |
| Third Respondent: | CLINTON SELWYN |
| Fourth Respondent: | RIMA NICHOLLS |
| File Number: | SYG 2008 of 2014 |
| Judgment of: | Judge Manousaridis |
| Hearing date: | 08 November 2016 & 01 December 2016 |
| Date of Last Submission: | 01 December 2016 |
| Delivered at: | Sydney |
| Delivered on: | 14 March 2018 |
REPRESENTATION
| Applicant appeared in person |
| The second and third respondents appeared in person and on behalf of the first respondent |
| No appearance by or on behalf of the fourth respondent |
ORDERS
The application in a case filed by the second respondent on 7 September 2016 for an order dismissing the application is dismissed.
The applicant have leave to file an amended statement of claim in the form of the proposed amended statement of claim that is annexed to the affidavit of the applicant made on 30 August 2016 subject to the following:
(a)Malishus LLC and Mr Chris Hau will not be named as respondents;
(b)all allegations against, and all references to, Malishus LLC and Mr Chris Hau, be removed; and
(c)paragraphs 20, 24, 32, and 33 be deleted.
The applicant file and serve on the second and third respondents the amended statement of claim by 11 April 2018.
The matter be listed for directions before Judge Manousaridis at 9.30 am on 17 April 2018.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT SYDNEY |
SYG 2008 of 2014
| DARREN LAMONT |
Applicant
And
| MALISHUS NZCN 4429858 |
First Respondent
| ROBERT JURCIC |
Second Respondent
| CLINTON SELWYN |
Third Respondent
| RIMA NICHOLLS |
Fourth Respondent
REASONS FOR JUDGMENT
Introduction
Before the Court are two applications in a case, one filed by the applicant, Mr Lamont, and one filed by the second respondent, Mr Jurcic.
In his application Mr Lamont seeks leave to file an amended statement of claim in the form of the proposed amended statement of claim (PASOC) annexed to his affidavit of 30 August 2016. In the current form of his statement of claim Mr Lamont alleges the respondents infringed his trade mark which includes the word “Malishus”, and seeks relief under the Trade Marks Act 1995 (Cth) (TM Act). Mr Lamont also alleges that, by using his trade mark, or signs similar to his trade mark, the respondents have engaged in conduct that was misleading or deceptive contrary to the Competition and Consumer Act 2010 (Cth) (CC Act), and committed the tort of passing off.
In his application in a case Mr Jurcic seeks an order that the proceeding be dismissed. Mr Jurcic claims the manner in which Mr Lamont has expressed his claims is embarrassing and, to the extent Mr Lamont’s articulation of his claims can be understood, there are no reasonable prospects Mr Lamont will succeed on any of them. Mr Jurcic has set out in an affidavit the grounds on which he relies for submitting the proceeding should be dismissed.[1]
[1] Affidavit of R Jurcic, 06.09.2016
At the hearing of the applications Mr Jurcic and Mr Lamont represented themselves. The third respondent, Mr Selwyn, also appeared and represented himself. Mr Jurcic and Mr Selwyn said they also appeared for the first respondent. The fourth respondent or, more accurately, the purported fourth respondent, did not appear.
At the hearing on 8 November 2016 I informed the parties that I considered there are two broad questions that arise on the applications. The first is whether Mr Lamont has no reasonable prospects of succeeding on his claims as stated in the current form of the statement of claim. The second question is whether Mr Lamont would have no reasonable prospects of succeeding on his claims as stated in the PASOC if I were to grant him leave to file it. I also informed the parties that I would be considering these questions having regard to the evidence Mr Lamont has filed, noting that, when considering that evidence, I would not be making any findings of fact but would assume that the evidence, to the extent it was admissible, or at least not clearly inadmissible, would be accepted at a final hearing.
After the hearing of the applications I relisted the matter on 1 December 2016 because Mr Lamont had sent emails to the Court’s Registry in which he stated he wanted to rely on material he did not tender at the hearing before me. At the relisted directions hearing it became apparent that the material on which Mr Lamont said he wanted to rely, but which he did not tender at the hearing, consisted of a number of documents contained in the three volumes of materials that are exhibited to his affidavit of 30 April 2014. Mr Jurcic objected to my reading that affidavit because he submitted it was irrelevant and contained scandalous allegations. I ruled that I would read the affidavit subject to relevance. I informed the parties that my purpose in reading this affidavit was not to fish out a case for Mr Lamont but to determine whether the evidence reasonably supports the allegations Mr Lamont makes in the statement of claim in its current form.
Approach
Mr Jurcic’s application is to be assessed, at least in large part, by applying s.17A(2) of the Federal Circuit Court of Australia Act 1999 (Cth) which provides as follows:
The Federal Circuit Court of Australia may give judgment for one party against another in relation to the whole or any part of a proceeding if:
(a)the first party is defending the proceeding or that part of the proceeding; and
(b)the Court is satisfied that the other party has no reasonable prospect of successfully prosecuting the proceeding or that part of the proceeding.
This provision is also relevant to Mr Lamont’s application for leave to amend his statement of claim because if the PASOC has no reasonable prospect of succeeding it would be futile to grant leave that it be filed.
In these circumstances I propose to deal with the applications as follows. I will first set out the allegations made in the current form of the statement of claim. I will then undertake three tasks. The first is to consider whether the statement of claim pleads facts that are not embarrassing. Second, assuming the statement of claim is not entirely embarrassing, I will consider whether the statement of claim pleads reasonable causes of action. Third, assuming I am not satisfied the statement of claim does not plead at least one reasonable cause of action, I will consider whether, given the evidence on which Mr Lamont proposes to rely, there are no reasonable prospects that Mr Lamont will be able to establish at least one of the causes of action pleaded in his statement of claim. Finally, I will consider whether the granting of leave to file the PASOC will be futile because, if such leave were granted, Mr Lamont would have no reasonable prospects of successfully prosecuting the proceeding to the extent of the claims made in the PASOC.
Current statement of claim
It is accepted by the parties that the current form of the statement of claim (SOC) is the document that is annexed to the affidavit of Mr Lamont affirmed on 10 November 2014.
The SOC begins by identifying the parties. The applicant is Mr Lamont; and it is alleged that he is the creator and is and, at all material times was, the owner of the “fancily unique spelt [sic] word MALISHUS pronounced with a shus; distinctively created for its clothing brands to display (three) syllables being (MALISHUS IS US) shown MALISHUS”.[2] The SOC then identifies the respondents as follows:
a)The first respondent, “MALISHUS LIMITED NZCN: 4429858” (Malishus Limited) is a partnership limited body corporate in New Zealand under the Corporations Act 2001 (NZ). The SOC further alleges that Malishus Limited is a corporation within the meaning of CC Act.[3]
b)The second and third respondents, Mr Jurcic and Mr Selwyn, are and at all material times were the co-founders and co-partners of “MALISHUS Apparel”, “MALISHUS – Queensland and Victoria in 2010 – ABN: 12 404 973 516”, and of Malishus Limited.[4]
c)The fourth respondent, Mr Nicholas, lives and at all material times has been living in New Zealand, and “became co-partnership [sic] and part shareholder of” “MALISHUS Apparel”, “MALISHUS – Australia – ABN: 12 404 973 516”, and Malishus Limited.[5]
[2] SOC, [1]
[3] SOC, [2]
[4] SOC, [3], [4]
[5] SOC, [5]
The SOC alleges Mr Lamont has been the registered owner of a trade mark and has used that trade mark in Australia since 2006 in connection to the supply of clothing. The details of the trade mark (Trade Mark) of which Mr Lamont alleges he is the registered owner are as follows:[6]
[6] SOC, [6]
TM No
Description
Registered
Goods and services
1127629
Word(s): MALISHUS KONCEPT
Image(s): MK, gun scope, Bullet holes.
03 August, 2006
Class 25 – Clothing, footwear, headwear
The SOC then alleges Mr Lamont did the following things involving the use of the Trade Mark or the words that make up the Trade Mark:
a)In around mid-2005 Mr Lamont created the word “Malishus” with the bona fide intention of using it in the course of trade for his clothing brands in Australia and abroad “on and off-line”.[7]
b)In around mid-2005 Mr Lamont started designing and creating designs prominently displaying the word “Malishus”.[8]
c)In around mid-2008 Mr Lamont registered the email address “[email protected]” for business and personal reasons.[9]
d)Mr Lamont was the owner of Australian business “Susstreem Clothing & Beyond…registered 5/08/2008 – 2013” through which he traded “Malishus Koncept goods and services and advertised Malishus Inc brand under this business”.[10]
e)On 8 March 2013 Mr Lamont became the registered owner of the Australian business name “Malishus Industries”.[11]
f)On 26 August 2013 Mr Lamont registered the domain name “
g)Since December 2008 and “possibly earlier” Mr Lamont has been a supplier of goods and services to customers in Australia “for provisions of clothing” and, since “at least” 18 August 2009, “on-line for provisions [sic] of clothing and on-line retail” (Goods and Services).[13]
h)Since December 2008 Mr Lamont has “extensively promoted” the Goods and Services and “the word” by “reference to the applicant’s Trade Mark”.[14]
[7] SOC, [7]
[8] SOC, [8]
[9] SOC, [9]
[10] SOC, [10]
[11] SOC, [12]
[12] SOC, [11]
[13] SOC, [13], [14]
[14] SOC, [15]
The SOC then alleges that, as a consequence of his use of the Trade Mark, Mr Lamont has “attained a substantial publicised reputation in Australia and abroad” for the provision of the Goods and Services.[15]
[15] SOC, [16]
Having pleaded facts relevant to Mr Lamont’s use of the Trade Mark, the SOC alleges the respondents engaged in the following conduct:
a)On 6 August 2007 Malishus Limited and Mr Jurcic became the owners of the domain name “ and on 8 May 2007 had become the owners of the website “Malishus – Get Inflicted”. The website is hosted in Australia and “its target market is clothing, urban wear, tees, and hoods”.[16]
b)Mr Jurcic and Mr Selwyn are the owners of the “Australian partnership body corporate”, being “MALISHUS – ABN: 12 404 973 516” registered in Queensland and Victoria on 18 and 21 August 2010 respectively.[17]
c)Mr Jurcic created “Linkedin profiles” in which he represented he was the co-founder of “MALISHUS apparel”, the owner of “Malishus Detroit Area Apparel & Fashion”, and the owner of “Malishus… High concept urban wear label”.[18]
d)Since a date unknown to Mr Lamont, but “at least” since 7 June 2010, Malishus Limited, Mr Jurcic, and Mr Selwyn “have engaged in purchases of goods to be used in the course of trade from a number of Australian and international businesses and companies”.[19] This allegation is particularised with examples of Mr Jurcic having placed orders or having received quotes for clothes with marks that included the word “Malishus”.
e)Mr Selwyn created a “Linkedin profile” stating that he was the brand developer at “MALISHUS Apparel” in Melbourne and the co-founder of a streetwear brand “Malishus”.[20]
f)Mr Jurcic and Mr Selwyn are the directors of “MALISHUS LIMITED” incorporated under the Corporations Act 2001 (Cth) and trading in New Zealand.[21]
g)On 12 March 2011 Mr Jurcic created a Facebook page for the display of the brand “Malishus”; on 4 March 2012 Mr Jurcic updated the cover photo of his personal Facebook page “Robbie Jay” to display a photo of “Malishus T-shirts being worn and advertised”; from 30 October 2013 Mr Selwyn began to display “Malishus clothing uploads” on his personal Facebook page “Clinton Selwyn”; and from around 2 January 2013, Mr Nicholas displayed “Malishus clothing uploads” on his Facebook page under various names.[22]
h)Mr Nicholas created a “Linkedin profile” in which he stated he was a shareholder of Malishus.[23]
[16] SOC, [18]
[17] SOC, [19]
[18] SOC, [20]
[19] SOC, [21]
[20] SOC, [22]
[21] SOC, [23]
[22] SOC, [24], [25.], [26], [27]
[23] SOC, [28]
In a separate section of the SOC, under the heading “THE RESPONDENTS [sic] CONDUCT”, matters including the following are alleged:
a)From a date unknown to Mr Lamont, but at least from 12 March 2011:
i)Malishus Limited and Mr Jurcic had activated the website to which “ resolved,
ii)Malishus Limited, Mr Jurcic, and possibly Mr Selwyn made the Malishus Facebook page active,
and engaged in conduct by supplying, advertising, and trading the Goods and Services.[24]
b)Malishus Limited, Mr Jurcic, and possibly Mr Selwyn have displayed on their Facebook page T-shirts branded with composite marks featuring the expressions “Malishus Skamma”, “Malishus Intent”, “Malishus Vaa’sa”, “Malishus Princess”, and “Malishus Athletics”;[25] and they have displayed these composite marks from at least the following dates:
i)“Malishus Skamma” – since at least 17 July 2012;
ii)“Malishus Intent” – since at least 1 January 2013;
iii)“Malishus Vaa’sa” – since at least 18 August 2013;
iv)“Malishus Princess” – since at least 5 February 2013; and
v)“Malishus Atheletics” – since at least 7 October 2014.[26]
[24] SOC, [29], [30], [38]
[25] SOC, [31]
[26] SOC, [33]
The SOC then pleads the following conclusions based on conduct alleged against the respondents:
a)The composite marks identified above are “potentially identical with or deceptively similar to or likely to mislead and cause confusion” in relation to the Trade Mark and the words “Malishus Koncept”.[27]
b)The “marks” have been applied in relation to the “same/similar goods and services in respect of which” the Trade Mark has been registered.[28]
c)Because of Malishus Limited’s, Mr Jurcic’s, and possibly Mr Selwyn’s use of the composite marks, these respondents have infringed the Trade Mark.[29]
d)Further:
i)by using the composite marks in the course of their trading the Goods and Services Malishus Limited, Mr Jurcic, and Mr Selwyn represented to consumers in trade and commerce that they have the sponsorship and approval of Mr Lamont, that they are affiliated with Mr Lamont, that they supply goods and services supplied by Mr Lamont, and that they have the approval of Mr Lamont;[30]
ii)these representations were misleading or deceptive because Malishus Limited and Mr Jurcic do not have the sponsorship and approval of Mr Lamont, they are not affiliated with Mr Lamont, and they do not supply Goods and Services supplied to them by Mr Lamont;[31]
iii)Malishus Limited, Mr Jurcic, and Mr Selwyn contravened “section 18 of the Competition and Consumers [sic] Act 2010”, and “[p]assed off its goods and services as the goods and services of the applicant”;[32]
iv)Mr Selwyn and Mr Nicholas have engaged in the conduct in which Mr Lamont relies for claiming that Malishus Limited and Mr Jurcic infringed the Trade Mark and, for that reason, “have potentially aided, abetted, counselled and procured” and “were directly or indirectly knowingly concerned” in the contraventions of s.120 of the TM Act, s.121 of the TM Act, and s.18 of the CC Act.[33]
[27] SOC, [34]
[28] SOC, [35]
[29] SOC, [36]
[30] SOC, [39]
[31] SOC, [40]
[32] SOC, [41]
[33] SOC, [42], [43]
Finally, the SOC alleges that on 18 May 2012 Mr Lamont sent to Mr Jurcic’s address a “kind letter via express post” addressed to Mr Selwyn and Mr Nicholas in which Mr Lamont made them aware he was using the word for “the same [or] identically similar goods and services” and Mr Lamont requested that they contact him to resolve the issue. Mr Lamont received no reply. Instead, on or about 21 July 2012 Mr Lamont was served with an application filed by Malishus Limited and Mr Jurcic for the removal of the Trade Mark for non-use.[34]
[34] SOC, [45], [46]
Is the SOC embarrassing?
A statement of claim, being a pleading, is liable to be struck out if it is “embarrassing”. The notion of “embarrassment” goes to the intelligibility of a pleading. A pleading is embarrassing where it is “unintelligible, ambiguous, vague or too general, so as to embarrass the opposite party who does not know what is alleged against him”.[35]
[35] Gunns Ltd v Marr [2005] VSC 251, [14]-[15]
The SOC is not embarrassing. Although it suffers from some infelicities of style, it is reasonably clear in what it alleges. It alleges Mr Lamont is the owner of the Trade Mark; that it has been registered for a particular class of goods, namely clothing, footwear, and headwear; that Mr Lamont intended to use and has used the Trade Mark in connection with the supply of clothing; that at the very least Malishus Limited, Mr Jurcic, Mr Selwyn and, to a lesser extent, Mr Nicholas, have used deceptively similar trade marks in connection with the supply of clothing; and that, in so doing Mr Jurcic and Malishus Limited have infringed the Trade Mark and, additionally, or alternatively, by using trade marks that are deceptively similar as the Trade Mark, misleadingly represented an association with Mr Lamont in breach of the CC Act.
The SOC lacks some clarity in its allegations of infringement of the Trade Mark by Mr Selwyn and Mr Nicholas. In the case of Mr Selwyn, the SOC alleges that he “possibly” infringed the Trade Mark.[36] In my opinion, however, this part of the SOC is to be reasonably read as alleging that Mr Selwyn infringed the Trade Mark. Mr Lamont has used the word “possibly” to express some doubt on his part whether he will in fact be able to establish this allegation. That does not mean, however, that it manifests an absence of belief by Mr Lamont, or an absence of reasonable grounds for so believing, that the allegation is true.
[36] SOC, [36]
So far as Mr Nicholas is concerned, the SOC does not in terms allege he infringed the Trade Mark. The SOC instead alleges that Mr Nicholas used the word “Malishus”;[37] and by that conduct Mr Nicholas “aided, abetted, counselled, and procured; and been directly or indirectly knowingly concerned” in the “contraventions” of s.120 of the TM Act.[38] This, however, in substance is an allegation that Mr Nicholas joined in Malishus Limited’s infringement of the Trade Mark and, for that reason, himself infringed the Trade Mark.
[37] SOC, [27], [28]
[38] SOC, [43(a)]
The SOC also lacks some clarity in its allegations concerning Mr Selwyn’s and Mr Nicholas’ contraventions of the ACL; but, again, it is reasonably clear what the SOC alleges. It alleges that by using the word “Malishus” in the manner alleged in the SOC each of Mr Selwyn and Mr Nicholas “aided, abetted, counselled, and procured; and been directly or indirectly knowingly concerned” in Malishus Limited’s and Mr Jurcic’s contraventions of s.18 of the ACL.[39]
[39] SOC, [43(c)]
Does the SOC plead reasonable causes of action?
The next question I address is whether the allegations made in the SOC disclose reasonable causes of action. Before I answer that question, it will be useful if I set out the elements of a cause of action for infringement of a trade mark and a cause of action based on misleading or deceptive conduct.
Elements of cause of action for trade mark infringement
Subject to the terms of the TM Act, a registered owner of a trade mark has the exclusive rights 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”.[40] The registered owner also has the right to obtain relief under the TM Act if the trade mark has been infringed.[41] The relief provided under the TM Act consists of the granting of injunctions, and damages or an account of profits.[42]
[40] TM Act, s.20(1).
[41] TM Act, s.20(2).
[42] 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 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.
There are a number or elements to infringing a registered trade mark. 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”.[43]
[43] TM Act, s.6(1)
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)”.[44] 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”.[45]
[44] TM Act, s.7(4)
[45] TM Act, s.9(1)(c)
Relevant to the issues I have to consider are the circumstances in which the display of a trade mark on a website can be said to constitute the use of a trade mark in relation to goods or services.[46] Merkel J considered that question in Ward Group Pty Ltd v Brodie & Stone Pl.[47] There it was alleged that the respondents infringed the applicant’s Australian trade mark by displaying a similar mark on its websites that were operated on servers located in the United Kingdom. The infringement was alleged to have occurred when trap purchasers in Australia ordered goods by accessing the respondents’ websites.
[46] This overlaps with the question of when a trade mark can be said to be used in Australia.
[47] [2005] FCA 471
In determining whether there was an infringement of the applicant’s trade mark Merkel J referred to the High Court’s description in Dow Jones & Company Inc v Gutnick[48] of the manner in which documents are transmitted over the Internet by use of the World Wide Web:[49]
The World Wide Web is but one particular service available over the Internet. It enables a document to be stored in such a way on one computer connected to the Internet that a person using another computer connected to the Internet can request and receive a copy of the document. As Dr Clarke said, the terms conventionally used to refer to the materials that are transmitted in this way are a ‘document’ or a ‘web page’ and a collection of web pages is usually referred to as a ‘web site.’ A computer that makes documents available runs software that is referred to as a ‘web server’; a computer that requests and receives documents runs software that is referred to as a ‘web browser’.
The originator of a document wishing to make it available on the World Wide Web arranges for it to be placed in a storage area managed by a web server. This process is conventionally referred to as ‘uploading’. A person wishing to have access to that document must issue a request to the relevant server nominating the location of the web page identified by its ‘uniform resource locator (URL)’. When the server delivers the document in response to the request the process is conventionally referred to as ‘downloading’.”
[48] (2002) 210 CLR 575 at 597-598 [15]-[16] Gleeson CJ, McHugh, Gummow and Hayne JJ
[49] [2005] FCA 471 at [15]
After referring to some authorities Merkel J concluded as follows:[50]
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.
[50] [2005] FCA 471 at [43]
The third element of infringing a registered trade mark is that 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”.[51] Whether or not there has been use of a trade mark:[52]
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. . . .
[51] TM Act, s.17
[52] Woolworths Limited v BP plc (No 2) (2006) 154 FCR 97 at [77]
Further, to use a sign “as a trade mark” means to use the sign “as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods”.[53] 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.
[53] Coca-Cola Co v All-Fect Distributors Ltd (1999) 47 IPR 481 at page 489-490 (Black CJ, Sundberg and Finkelstein JJ)
The fourth element of trade mark infringement is that 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:[54]
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”.
[54] (1956) 94 CLR 182 at page 191
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”.[55]
[55] 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
The fifth element of trade mark infringement is that the mark used by the infringer (claimed infringing mark) must be substantially identical with or deceptively similar to the registered trade mark. A claim that a mark infringes a registered trade mark because it is substantially identical with the registered trade mark and a claim that a mark infringes a registered trade mark because it is deceptively similar “are to be judged in different ways”.[56]
[56] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at page 414 (Windeyer J)
Section 10 of the TM Act defines a trade mark to be “deceptively similar to another trade mark” where “it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. This definition, however, is silent about a number of matters. The words “deceive” and “confusion” refer to states of mind, yet s.10 does not identify the person or classes of persons who are required to have those states of mind. And to the extent s.10 requires or permits the state of mind to be that of hypothetical persons, it does not specify the characteristics such persons are assumed to have, or the information that is assumed to be available to such persons by reference to which their states of mind are to be assessed. Further, s.10 of the TM Act does not state the matters about which a person or class of persons is required to be deceived or what is meant by “confused”. These omitted details are supplied by the cases, and the following principles may be noted:
a)The matter about which persons are required to be deceived or confused for the purposes of s.10 of the TM Act is whether the goods or services in relation to which the claimed infringer uses the claimed infringing mark (claimed infringer’s goods or services) come from the same source as the goods or services in relation to which the registered trade mark has been used (non-infringer’s goods or services). That is, a person will be deceived within the meaning of s.10 of the TM Act if he or she believes the claimed infringer’s and the non-infringer’s goods or services share a common source; and a person will be confused if he or she is confused about whether or not the claimed infringer’s goods or services have the same source as the non-infringer’s goods or services.[57]
[57] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1999) 93 FCR 365 at page 382 ([50]); Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661 at page 674 ([77])
b)The state of mind denoted by the word “confusion” is that of “wonder” or “doubt”; there must be a doubt or wonder about whether the claimed infringer’s goods or services and the non-infringer’s goods or services come from the same source. [58]
c)The persons who must be deceived or confused are the actual and prospective customers of the goods or services in relation to which the claimed infringer has used or proposes to use the claimed infringing mark.[59]
d)The effect or impression produced on the mind of the actual or potential customers by the mark or device for which the protection of an injunction is sought, must be assessed on the assumption that the customers are “persons of ordinary intelligence and memory”.[60] The “usual manner in which ordinary people behave must be the test of what confusion or deception may be expected”.[61] Potential customers “are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.”[62]
e)Section 10 of the TM Act implies that the deception or confusion produced by the claimed infringing mark in the mind of actual or potential customers of the claimed infringer’s goods or services must arise from the resemblance the claimed infringing mark bears to the registered trade mark. In the words of Windeyer J, the “deceptiveness that is contemplated must result from similarity”.[63] In assessing that question, however, the “marks are not now to be looked at side by side”:[64]
The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.
f)The resemblance the claimed infringing mark bears to the registered trade mark must be such as to give rise to more than a mere possibility of confusion; there must be a “real, tangible danger” of confusion occurring.[65] It will be “sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source”. It will be “enough if the ordinary person entertains a reasonable doubt”.[66]
g)Although the extent of the resemblance or similarity between the registered trade mark and the claimed infringing mark is to be assessed by comparing the impressions of customers, “the question whether one mark is likely to cause confusion with another, is a matter upon which the judge must make up his mind and which he, and he alone, must decide”. The judge “cannot, as it is said, abdicate the decision in that matter to witnesses before him”.[67] That question is “never susceptible of much discussion”, but “depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs”. [68]
h)When determining what those impressions are, or are likely to be, the Court takes into account a number of matters. First it takes into account the extent to which the registered trade mark and the claimed infringing mark share similar features, and the nature of the features that are similar. And here, the cases have identified a number of “signposts”[69] or “rules of comparison”[70] that are available to be applied to assist in that task. Second the Court may take into account “the background of the usages in the particular trade”.[71] This includes things such as the characteristics of the consumers of the relevant goods or services, and the manner in which the goods or services are marketed.[72] Third, the Court may take into account the claimed infringer’s intention. If the court finds the claimed infringer has adopted a mark “for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse”.[73]
[58] Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661 at page 674 ([77])
[59] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 658: “An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.”; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at page 595: “Of course, it is in relation to commercial dealings with goods that the question of confusion has to be considered, and the persons whose state of mind is material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark.”
[60] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at page 415 (Windeyer J)
[61] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 658 (Dixon and McTiernan JJ)
[62] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 658 (Dixon and McTiernan JJ)
[63] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at page 416
[64] Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at page 415
[65] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at page 595 (Kitto J)
[66] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at page 595 (Kitto J).
[67] Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 at page 31. This passage was quoted with approval by the Full Federal Court in Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 at page 377.
[68] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 659
[69] That is the expression of Finn J in CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63 at page 74 ([35])
[70] Shanahan’s Australian Law of Trade Marks and Passing Off 5th ed., Lawbook Co, 2012, page 266.
[71] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at page 410 (Windeyer J)
[72] CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63 at page 61 ([42]) (Finn J)
[73] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at page 657 (Dixon and McTiernan JJ)
The final element of trade mark infringement is that the claimed infringer must use the claimed infringing mark in Australia. That does not necessarily require that the claimed infringer itself carry out any activity in Australia. That point was made by the Full Court of the High Court in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd:[74]
By the Act [Trade Marks Act 1955-58] a trade mark means “a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person” and “use” in s. 23 must be understood in this context. Its denotation is not limited by any concept of the physical use of a tangible object and we have no doubt that when an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer. Indeed, in this case, the respondent is the only person who has the right to use the mark and the retailer to whom the goods have been sold for re-sale does not, in any relevant sense, use it.
[74] (1967) 116 CLR 254 at page 271
There is one final matter to note in relation to the infringement of a registered trade mark, and that concerns infringements by corporations. In certain circumstances, directors and even shareholders of corporations who have infringed a registered trade mark may be jointly liable – that is, will be held to be a joint tortfeasor - with the corporation for the infringement. The circumstances in which a director of a corporation will be liable as a joint tortfeasor cannot be simply stated. Given the nature of the issues I need to decide on the applications before me, I need only set out the following passage from the reasons for judgment of Besanko J in Kellers v LED Technologies Pty Ltd:[75]
[272] Two tests of liability have been discussed in the cases. The first test of liability is that a director is liable as a joint tortfeasor where he or she has directed or procured the infringing acts by the company. It is the company which performs the tortious acts and a director is liable if he or she directs or procures it to do so. Sometimes the word “authorise” is also used. One thing is clear and that is that a director is not liable as a joint tortfeasor merely because he or she sits on the board of directors which allows or even “directs” the company to carry on a business during which the infringing acts are performed. Something more by way of personal involvement in the tortious acts is required. The first test has been referred to as the Performing Right Society test because it was the test formulated by Atkin LJ in Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 (Performing Right Society).
[273] The second test of liability is that a director is liable as a joint tortfeasor only where he or she has engaged in the deliberate, wilful and knowing pursuit of a course of conduct that is likely to constitute infringement or which reflected an indifference to the risk of it. It is clear that, despite the use of the words “deliberate” and “knowing” in this test, it is not necessary to prove that the director knew the relevant acts were infringing acts. The second test has been referred to as the Mentmore test because it was the test formulated by Le Dain J in the Canadian Federal Court of Appeal in Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195 (Mentmore).
[274] The precise formulation of the common law test has not been the subject of authoritative determination by the High Court.
[75] [2010] FCAFC 55 at [272]-[274]
Cause of action for misleading or deceptive conduct - jurisdiction
The SOC claims the respondents have contravened s.18 of the CC Act. It is reasonably clear, however, that the SOC intends to allege the respondents have contravened s.18 of the Australian Consumer Law (ACL); and that is because it is s.18 of the ACL, not s.18 of the CC Act, which provides that a “person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive”. The ACL, however, is part of the CC Act. The expression “Australian Consumer Law” is defined in s.130 of the CC Act to mean Schedule 2 to the CC Act as applied under Subdivision A of Division 2 of Part XI of the CC Act. Subsection 131(1) of the CC Act provides that the ACL “applies as a law of the Commonwealth to the conduct of corporations, and in relation to contraventions of Chapter 2, 3 or 4 of Schedule 2 by corporations”.
Subsection 18(1) of the ACL substantially reproduces s.52(1) of the Trade Practices Act 1974 (Cth) (TPA).[76] The substantial body of case law that has considered and applied s.52(1) of the TPA, therefore, remains directly relevant to the application of s.18(1) of the ACL.
[76] Section 18(1) substituted s.52(1) on 1 January 2-11 with the coming into effect of the Trade Practices Amendment (Australian Consumer Law) Act (No. 2) 2010 (Cth)
Subsection 18(1) of the ACL “does not purport to create liability, nor does it vest in any party any cause of action in the ordinary sense of that term”; rather, it “establishes a norm of conduct, and failure, by the corporations and individuals to whom it is addressed in its various operations, to observe that norm has consequences provided for elsewhere in the” ACL.[77] Relevant to claims made in the SOC is s.236(1) and s.237(1) of the ACL. Subsection 236(1) of the ACL provides:
[77] Re Tobacco Institute of Australia Limited v Australian Federation of Consumer Organisations Inc [1988] FCA 373; (1988) 19 FCR 469 at [20]
If:
(a) a person (the claimant) suffers loss or damage because of the conduct of another person; and
(b) the conduct contravened a provision of Chapter 2 or 3;
the claimant may recover the amount of the loss or damage by action against that other person or against any person involved in the contravention.
The word “involved” is defined in s.2 of the ACL as follows:
a person is involved, in a contravention of a provision of this Schedule or in conduct that constitutes such a contravention, if the person:
(a)has aided, abetted, counselled or procured the contravention; or
(b)has induced, whether by threats or promises or otherwise, the contravention; or
(c)has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; or
(d) has conspired with others to effect the contravention.
Subsection 237(1) of the ACL provides that, on the application of a person (injured person) who has suffered, or who is likely to suffer, loss or damage because of, among other things, the conduct of another person that was engaged in a contravention of a provision of Chapter 2, 3, or 4, the court may make such order or orders as the court considers appropriate against the person who engaged in that conduct, or a “person involved in that conduct”. The orders a court may make are specified in s.243 of the ACL, one of which is an order directing the respondent to pay the injured person the amount of the loss or damage.
Subsections 236(1), 237(1), s.243 of the ACL, and the definition in s.2 of “involved”, substantially reproduce s.82(1), s.87, and s.75B of the CC Act respectively which continue to apply to contraventions of provisions of the CC Act other than provisions of the ACL. Cases that have considered and applied s.82(1), s.87, and s.75B of the CC Act, therefore, remain relevant to the operation of s.236(1), s.237(1) and s.243 of the ACL, and the definition of “involved” in s.2 of the ACL.
Subsection 138A(1) of the CC Act confers jurisdiction on this Court “in relation to any matter under” Part XI “or the Australian Consumer Law in respect of which a civil proceeding is instituted by a person other than the Commonwealth Minister”. Subsection 138A(2) provides this Court does not have jurisdiction to award an amount for loss or damage that exceeds $750,000 or any other amount that may be specified in the regulations.
Subsection 18(1) of the ACL only applies to the conduct of corporations. A person who is not a corporation may also be liable to an order under s.236 or s.237 of the ACL in connection with a corporation’s contravention of s.18(1) the ACL. Liability for involvement, however, requires that it be proved that the person alleged to have been involved in the corporation’s contravention both participated in the contravention and had knowledge of the facts that constitute the corporation’s contravention of s.18(1) of the ACL.
Although an individual who has participated in a corporation’s contravention of s.18(1) of the ACL may only be liable under the ACL as an accessory, the individual may nevertheless be liable as a principal contravener under almost an identical law, also known as the “Australian Consumer Law” that each State Parliament has enacted. In New South Wales, for example, Parliament enacted s.32 of the Fair Trade Act 1987 (NSW) which provides that the ACL applies to various persons within New South Wales or who have a connection with New South Wales. It has been held that “a director of a corporation who acts on its behalf in the course of trade or commerce also acts himself or herself in trade or commerce and, if the corporation is liable under a State Fair Trading Act for their conduct, they also attract primary liability under the same statute”.[78] This Court has jurisdiction to determine alleged contraventions of s.18 of the ACL by persons who are not corporations as it is applied by the law of a State because of s.79 of the Judiciary Act 1903 (Cth).
[78] Arktos Pty Ltd v Idyllic Nominees Pty Ltd [2004] FCAFC 119 at [13]
Elements of a cause of action under s.236(1) of ACL against contravener
In order to succeed on a cause of action for damages under s.236(1) of the ACL based on a contravention of s.18(1) of the ACL, an applicant must establish that:
a)the respondent engaged in conduct in trade or commerce;
b)the conduct was misleading or deceptive, or likely to mislead or deceive; and
c)the applicant suffered loss or damage “because of” such conduct.
For conduct to occur “in trade or commerce”, it must be “an aspect or element of activities or transactions which, of their nature, bear a trading or commercial character”.[79] And to be misleading or deceptive, the conduct must convey a meaning which is inconsistent with the truth,[80] or be liable to cause a person to err.[81]
[79] Concrete Constructions (NSW) Pty Ltd v Nelson [1990] HCA 17; (1990) 169 CLR 594 at [7]
[80] World Series Cricket Pty Limited v Parish (1977) 16 ALR 181 at 201 (Brennan J)
[81] Henjo Investments Pty Limited & Ors v Collins Marrickville Pty Limited [1988] FCA 40; (1988) 79 ALR 83 at [29] (Lockhart J)
The separation of the second and third elements recognises that “whether conduct is misleading or deceptive or likely to mislead or deceive within the meaning of” of s.18(1) of the ACL “is logically anterior to the question whether a person has suffered loss or damage thereby for the purposes of” s.236 of the ACL, and that the “distinction between characterisation of the conduct and determination of the causation of the claimed loss said to result from it must be maintained”.[82] Here, “characterisation” is “a task that generally requires consideration of whether the impugned conduct viewed as a whole has a tendency to lead a person into error”.[83]
[82] Campbell v Backoffice Investments Pty Ltd [2009] HCA 25; (2009) 238 CLR 304 at [24] (French CJ)
[83] Campbell v Backoffice Investments Pty Ltd [2009] HCA 25; (2009) 238 CLR 304 at [25] (French CJ)
Misleading or deceptive conduct generally consists of representations, express or implied, but it need not so consist.[84] Whether or not conduct amounts to a misrepresentation “is a question of fact to be decided by considering what is said and done against the background of all surrounding circumstances”.[85] An important circumstance when assessing whether conduct is misleading or deceptive is “when the public is involved, on the one hand, and where the conduct occurs in dealings between individuals on the other”.[86] Where the conduct is not directed to any particular individual, whether or not such conduct is misleading or deceptive must be assessed by reference to that section of the public to whom the conduct is directed, and “to isolate by some criterion a representative member of that class”.[87]
[84] Henjo Investments Pty Limited & Ors v Collins Marrickville Pty Limited [1988] FCA 40; (1988) 79 ALR 83 at [31] (Lockhart J)
[85] Taco Company of Australia Inc & Anor v Taco Bell Pty Ltd & Ors [1982] FCA 136; (1982) 42 ALR 177 at 202
[86] Campbell v Backoffice Investments Pty Ltd [2009] HCA 25; (2009) 238 CLR 304 at [26] (French CJ)
[87] Campomar Sociedad Limited v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 at [101]
The final element of a cause of action for damages under s.236(1) of the ACL is that the applicant suffered loss or damage, and that the applicant suffered such loss or damage “because of” the contravention of s.18(1). Section 82(1) of the CC Act, as it currently stands, and as it applied to claims based on contraventions of Part V of the TPA that occurred before 1 January 2011, uses the word “by”, whereas s.236(1) of the ACL uses the word “because of”. The word “by” “clearly expresses the notion of causation without defining or elucidating it”,[88] and that the relevant notion of causation that had to be established is the “common law practical or common-sense concept of causation”.[89] It has been held that the words “because of” that appear in s.236(1) of the ACL, like the word “by” that appears in s.82(1) of the CC Act, “should be understood to import the traditional notion of causation as a question of fact to be determined by reference to common sense and experience into which policy considerations and value judgments necessarily enter”.[90]
[88] Wardley Australia Ltd v Western Australia [1992] HCA 55; (1992) 175 CLR 514 at [11]
[89] Wardley Australia Ltd v Western Australia [1992] HCA 55; (1992) 175 CLR 514 at [11]. The common law notion of causation is that identified in March v Stramare (E & MH) Pty Ltd [1991] HCA 12; (1991) 171 CLR 506.
[90] Norcast S.ár.L v Bradken Limited (No 2) [2013] FCA 235 at [326] (Gordon J)
Does the SOC plead reasonable causes of action for trade mark infringement?
I am satisfied the SOC pleads sufficient facts to constitute a reasonable cause of action against each of the respondents for trade mark infringement. In particular, the SOC alleges:
a)The Trade Mark is a trade mark registered under the TM Act and that Mr Lamont is the owner of the Trade Mark.
b)The Trade Mark is registered in relation to clothing.
c)Each of Malishus Limited, Mr Jurcic, Mr Selwyn and Mr Nicholas have used marks that include the word “Malishus” on social media or on a website and have had involvement in the supply of goods using that word in Australia.
d)The marks the respondents have used are substantially identical with or deceptively similar to the Trade Mark.
I am also satisfied the SOC pleads reasonable causes of action based on misleading or deceptive conduct against each of the respondents. In particular:
a)The SOC alleges Mr Lamont has used the Trade Mark in connection with the supply and promotion of the sale of clothing to consumers in Australia as a consequence of which he gained an established reputation.
b)By using substantially identical or deceptively similar marks to the Trade Mark in connection with the supply of clothing in Australia, Malishus Limited and Mr Jurcic represented they had the sponsorship and approval of Mr Lamont, or that they are affiliated with, Mr Lamont.
c)The representations were misleading or deceptive because none of Malishus Limited or Mr Jurcic had Mr Lamont’s approval to use the Trade Mark, and thus, by making the representations, Malishus Limited and Mr Jurcic contravened s.18 of the ACL.
d)Because of their use of the word “Malishus” each of Mr Selwyn and Mr Nicholas “aided, abetted, counselled, and procured; and been directly or indirectly knowingly concerned” in Malishus Limited’s and Mr Jurcic’s contraventions of s.18 of the ACL.[91]
[91] SOC, [43(c)]
Evidence
I will now consider whether Mr Lamont has filed evidence that, if accepted, is reasonably capable of proving the elements of the causes of action alleged in the SOC based on infringement of the Trade Mark and based on misleading or deceptive conduct.
Registration of Trade Mark
There is evidence that on 7 June 2007 the Trade Mark was registered, the registration of the Trade Mark took effect from 3 August 2006, and that Mr Lamont is the owner of the Trade Mark.[92] Mr Lamont applied to register the Trade Mark before 27 November 2006. That is the date of a letter IP Australia sent to Mr Lamont stating that Mr Lamont’s application to register the Trade Mark had cleared the examination stage of the registration process.[93] There is also evidence that Mr Lamont created the word “Malishus” and the designs that form part of the Trade Mark.[94]
[92] Affidavit of D Lamont, 30.04.2014, annexure 5 at page 177
[93] Affidavit of D Lamont, 30.04.2014, annexure 6 at page 179
[94] Affidavit of D Lamont, 30.04.2014, annexures 3 and 4, pages 160-175
Evidence of use of Trade Mark by Mr Lamont
In this section of my reasons I set out in chronological order the effect of the evidence relating to Mr Lamont’s use of the word “Malishus”.
On 14 November 2008 Mr Lamont registered with “ebay” with the user name “malishus81”.[95]
[95] Affidavit of D Lamont, 30.04.2014, annexure 18 at page 202
On 31 December 2008 a person purchased a “MALISHUS KONCEPT” hat from Mr Lamont for $15.[96]
[96] Affidavit of D Lamont, 30.04.2014, annexure 158, page 575
On 23 December 2008 a business known as “Phoenix Shirts” issued an invoice addressed to “Sussteem clothing been [sic] for Malishus Koncept Clothing”.[97]
[97] Affidavit of D Lamont, 30.04.2014, [173], annexure 160, page 581
On 24 January 2009 Mr Lamont leased a market stall at the Bomaderry Pool Side Markets to advertise and sell his clothing brand.[98]
[98] Affidavit of D Lamont, 30.04.2014, annexure 20, page 229
On 25 January 2009 Mr Lamont leased a market stall at the Shoalhaven Grey Racing Club to advertise and sell his clothing brand.[99]
[99] Affidavit of D Lamont, 30.04.2014, annexure 21, page 231
At the market stalls referred to in paragraphs 62 and 63 Mr Lamont handed out flyers and other advertising material in relation to T-shirts depicting the names “Malishus Inc” and “Malishus Koncept Clothing”.[100]
[100] Affidavit of D Lamont, 30.04.2014, annexure 23, pages 235-242
On 11 February 2009 a business known as “Phoenix Shirts” issued an invoice addressed to “Sussteem clothing been [sic] for Malishus Koncept Clothing”.[101]
[101] Affidavit of D Lamont, 30.04.2014, [173], annexure 160, page 581
Sometime in 2009 Mr Lamont inquired of the proprietor of a “local clothing shop” known as “Whats in Clothing” whether the proprietor would be interested in stocking Mr Lamont’s brand name apparel “MALISHUS KONCEPT”.[102]
[102] Affidavit of D Lamont, 30.04.2014, [171], annexure 158, page 576
On 25 July 2009 Mr Lamont leased a market stall at the Bomaderry Pool Side Markets to advertise and sell his clothing brand.[103]
[103] Affidavit of D Lamont, 30.04.2014, annexure 26, page 248
On 26 July 2009 Mr Lamont leased a market stall at the Shoalhaven Grey Racing Club to advertise and sell his clothing brand.[104]
[104] Affidavit of D Lamont, 30.04.2014, annexure 21, page 250
At the market stalls referred to in paragraphs 67 and 68 Mr Lamont handed out flyers and other advertising material in relation to T-shirts depicting the names “Malishus Inc” and “Malishus Koncept Clothing”.[105]
[105] Affidavit of D Lamont, 30.04.2014, annexure 23, pages 235-242
On 24 October 2009 Mr Lamont leased a market stall at the Bomaderry Pool Side Markets to advertise and sell his clothing brand.[106]
[106] Affidavit of D Lamont, 30.04.2014, annexure 31, page 259
On 25 October 2009 Mr Lamont leased a market stall at the Shoalhaven Grey Racing Club to advertise and sell his clothing brand.[107]
[107] Affidavit of D Lamont, 30.04.2014, annexure 32, page 261
In February 2010 Mr Lamont showed a friend who visited him two designs using the words “MALISHUS INC CREW” and “MALISHUS KONCEPT”.[108]
[108] Affidavit of D Lamont, 30.04.2014, annexure 341, page 982
On 9 March 2010 Mr Lamont uploaded photographs of “MALISHUS Clothing” onto his online “MALISHUS INC KREW” Facebook page and his personal Facebook page. The photographs purport to show T-shirts and hoods with the words “MALISHUS KONCEPT” together with prices.[109]
[109] Affidavit of D Lamont, 30.04.2014, annexures 34, and 35, pages 264-271
On 29 May 2010 Mr Lamont registered with “My Space” as “MC MALISHUS” in which Mr Lamont stated “I also have my own clothing range that I’m working on as well --- MALISHUS KONCEPT ---”.[110]
[110] Affidavit of D Lamont, 30.04.2014, annexure 36, pages 273
On 5 January 2010 a person bought four “Malishus Koncept” T-shirts and one “Malishus Koncept” hooded jumper from “Susstreem Clothing and Beyond”.[111]
[111] Affidavit of D Lamont, 30.04.2014, annexure 110, page 460
On 8 and 10 July 2012, 1 August 2012, 25 December 2012, 21 March 2013, 3 April 2013, 6 April 2013, 21 April 2013, 24 June 2013, 14 September 2013, and 3 January 2014 Mr Lamont uploaded onto his “MALISHUS KONCEPT CLOTHING” Facebook page information and photographs concerning Malishus clothing.[112] Mr Lamont made other uploads on his personal Facebook page and another Facebook Page called “Malishus Inc Krew Facebook” page.
[112] Affidavit of D Lamont, 30.04.2014, annexures 92, 93, 94, 93, 102, 125, 165, 166, 180, 184, 194, 201, 226, 277, 278, 279
On 30 October 2012 Mr Lamont applied to register the word “MALISHUS” without any associated logo for class 25.[113] That trade mark was accepted on 6 February 2014.[114]
[113] Affidavit of D Lamont, 30.04.2014, [130], annexure 117, pages 475-476
[114] Affidavit of D Lamont, 30.04.2014, annexure 117, page 477
On 13 February 2013 Mr Lamont purchased the domain name “malishusclothing.com.au”,[115] and on 14 February 2013 Mr Lamont registered that domain name to “MALISHUS CLOTHING 64 012 918 299”.[116]
[115] Affidavit of D Lamont, 30.04.2014, annexure 148, page 540
[116] Affidavit of D Lamont, 30.04.2014, annexure 151, page 548
Evidence of respondents’ use of the word “Malishus” other than on social media
In this section of my reasons, I set out in chronological order the effect of the evidence filed by Mr Lamont that relates to the use by the respondents of the word “Malishus” other than their use of that word on social media.
On 6 August 2007 the domain name “malishus.com” was registered. The “Registrant Contact” was “Malishus Brands Robert Jurcic”.[117] The title of the site to which the domain name resolved was “Malishus – Get Inflicted”.[118]
[117] Affidavit of D Lamont, 30.04.2014, annexure 9, page 186
[118] Affidavit of D Lamont, 30.04.2014, annexure 8, page 184
On 12 October 2007 Mr Jurcic and Mr Selwyn filed an application in the United States of America for the registration of the word “Malishus” for clothing items. The owners of the word were stated to be Mr Selwyn and Mr Jurcic.[119]
[119] Affidavit of D Lamont, 30.04.2014, annexure 10, page 190
On 7 November 2008 Mr Jurcic and Mr Selwyn filed an application in the United States of America for the registration of the word “Malishus” for clothing items. The owners of the mark were stated to be Mr Selwyn and Mr Jurcic.[120]
[120] Affidavit of D Lamont, 30.04.2014, annexure 14, page 199
On 10 January 2009 Mr Jurcic and Mr Selwyn applied as “owners” to IP Australia for the registration of “M MALISHUS” together with the image depicted in the application described as a “2 ANGLED BRUSHSTROKES FORM LTR M” (Malishus Logo).[121] The trade mark was for “Class 9 Sunglasses”.
[121] Affidavit of D Lamont, 30.04.2014, annexure 16, page 204
On 13 January 2009 Mr Jurcic and Mr Selwyn applied in the United Kingdom to register the word “Malishus” and the Malishus Logo for class 9 (Sunglasses), class 18 (backpacks, luggage, duffel bags, leather wallets, pocket wallets), and class 25 (clothing, footwear, headgear).[122]
[122] Affidavit of D Lamont, 30.04.2014, annexure 19, page 224-227
On 13 June 2009 Mr Jurcic and Mr Selwyn applied in the United States to register the word “M Malishus”. This application was abandoned on 15 March 2010.[123]
[123] Affidavit of D Lamont, 30.04.2014, annexure 25, page 246
On 7 June 2010 a business known as “Disent Designs” issued an invoice to “Malishus Att. Robbie/Clint” for “Logo based tee design” and “Artwork based tee design”. The invoice provided the email address “[email protected]”.[124]
[124] Affidavit of D Lamont, 30.04.2014, annexure 37, page 278
On 29 July 2010 a business known as “Super Special Screenprinting” issued an invoice to “MALISHUS”. The invoice related to the supply and printing of t-shirts and hoods.[125]
[125] Affidavit of D Lamont, 30.04.2014, annexure 38, page 280
On 18 August 2010 Mr Jurcic and Mr Selwyn registered with the Australian Securities and Investment Commission the partnership name “MALISHUS”.[126]
[126] Affidavit of D Lamont, 30.04.2014, annexures 9 and 38, pages 188 and 282
On 12 March 2011 the following was uploaded on to Facebook:[127]
Malishus
March 13, 2011. . . .
Joined Facebook
March 12. 2011
. . .
[127] Affidavit of D Lamont, 30.04.2014, annexure 43, pages 291, 292
Created in 2010
On 7 June 2011 a business by the name of “Dupack” issued an invoice to “Malishus”, “Your ref.: Rob”, for the supply of 3,260 “Woven Label”.[128]
[128] Affidavit of D Lamont, 30.04.2014, annexure 49, page 305
On 21 June 2011 a business by the name of “machine” issued an invoice for $10,035.30 to “Malishus” for the supply of t-shirts.[129]
[129] Affidavit of D Lamont, 30.04.2014, annexure 48, pages 302-303
On 2 August 2011 a business by the name of “Dupack” issued an invoice to “Malishus” for the supply of 3,000 “33 x 180mm Malishus Swing Tag” for “Delivery to Melbourne”.[130] The invoice states “sent to: [email protected]”.
[130] Affidavit of D Lamont, 30.04.2014, annexure 51, page 310
On 13 August 2011 a business from Hong Kong known as “New Generation” issued an invoice to “Malishus – Clinton Selwyn” for a “Black Fitted Cap Sample”;[131] and on 9 September 2011 issued an invoice to “Malishus – Clinton Selwyn” for the supply of black fitted caps.[132]
[131] Affidavit of D Lamont, 30.04.2014, annexure 52, page 312
[132] Affidavit of D Lamont, 30.04.2014, annexure 54, page 316
On 7 November 2011 Mr Selwyn applied for the registration in New Zealand of “Malishus” and the Malishus Logo. The application was made in relation to class 25, “Clothing”.[133]
[133] Affidavit of D Lamont, 30.04.2014, annexure 58, pages 324-327
On 10 December 2011 Mr Jurcic and Mr Selwyn applied for the registration of a composite trade mark which contained the letter and word “M MALISHUS” and the Malishus Logo for “Class: 25 Apparel (clothing, footwear, headgear)”.[134] On the same day there was posted on Facebook the message, “Launching Sunday!”[135]
[134] Affidavit of D Lamont, 30.04.2014, annexure 60, page 331
[135] Affidavit of D Lamont, 30.04.2014, annexure 61, page 333
On 13 December 2011 a company called “Jiaxing Mengdi Import and Export Co., Ltd” issued an invoice to “Malishus LLC (Agent: Innovative Sourcing Pty Ltd 816/60 Siddeley Street Docklands, 3008 Melbourne Vic” for the supply of 255 pieces of “100% polyester man sport wear Style: Malishus Basketball Singlet”.[136]
[136] Affidavit of D Lamont, 30.04.2014, annexure 63, page 337
On 2 February 2012 there appeared on “Sneaker Talk/Nine Talk” an upload by “lyfeis2short”.[137] Although Mr Lamont deposes he believes that “lyfeis2short” is Mr Selwyn, the upload does not contain Mr Selwyn’s name. The upload includes the following:
Wussup NT! I’ve gone and done it. I’ve started a clothing label when were [sic] on the brink of another recession.
Introducing Malishus – A streetwear brand from bottom half of the world trying to break into the global market. You guys are the first to get a look at our limited (meaning small not exclusive) line of gear.
[137] Affidavit of D Lamont, 30.04.2014, annexure 65, page 341
On 29 July 2012 a business known as “Forbes Clothing” issued an invoice to “Malishus”, attention “Robbie”.[138]
[138] Affidavit of D Lamont, 30.04.2014, annexure 91, page 417
By letter dated 24 October 2012 Mr Jurcic and Mr Selwyn applied to remove the Trade Mark for non-use.[139] For the purposes of that application, Mr Jurcic and Mr Selwyn submitted an affidavit made by Mr Jurcic on 18 December 2012 in which he made the following statements:
[Mr Jurcic and his] business partner . . . registered the MALISHUS trade mark on 10 December 2011 with a bona fide intention to commercialize the trade mark in Australia.[140]
The MALISHUS brand of apparel has been actively marketed through online and social media channels since 12 March 2011. We have an active ecommerce website at which displays our products and shows that our products are being used in a commercial capacity.[141]
The MALISHUS brand has an active social media presence which can be highlighted from the MALISHUS Facebook page. The MALISHUS Facebook page currently has 1049 likes and is constantly active with updates, promotional events and product listings.[142]
The MALISHUS brand has been designing and producing garments for the US and UK markets through various local suppliers, offshore suppliers and freelance designers.[143]
The MALISHUS brand is in [the] process [of] discussing opportunities and product placement support in Australia. Investment interest in Australia has been shown by various individuals once we can secure trade mark rights to MALISHUS in class 25. This investment will allow Mr Selwyn and me to structure a commercial entity with strong employment opportunities for local creative talent.[144]
[139] Affidavit of D Lamont, 30.04.2014, [128]; annexure 115, page 471
[140] Affidavit of D Lamont, 06.10.2016, [16]
[141] Affidavit of D Lamont, 06.10.2016, [22] (emphasis in original)
[142] Affidavit of D Lamont, 06.10.2016, [23]
[143] Affidavit of D Lamont, 06.10.2016, [24]
[144] Affidavit of D Lamont, 06.10.2016, [25]
In a statutory declaration Mr Selwyn made on 4 March 2015, apparently for the purpose of opposing Mr Lamont’s application to register the word “Malishus” as a trade mark, the following history is given about the use of the word “Malishus”:
Robert [Jurcic] offered to do the leg work and secure the word mark by registering the trademark with IP Australia. When he conducted a search, he discovered that someone already had a similar stylised mark on the registry spelt ‘Malishus Koncept Clothing’ which was registered in Class 25 in August 2006. There was also an additional conflicting mark ‘Malicious’ which was listed on the registry. The discovery of these marks caused us to rethink our market and consider focusing on America instead. Unbeknownst to us . . . we were in a position to register the mark but our lack of understanding of ‘first-use’ rule ended our efforts to secure the trademark in class 25.[145]
[145] Affidavit of D Lamont, 06.10.2016, [28]
Undeterred, we opted to continue moving forward, and in May of 2007 Robert secured the domain name ‘ and later that year in October 2007 he lodged an application for the word ‘Malishus’ with the USPTO in class 25.[146]
We continued developing the apparel brand in Australia as we felt the apparel will complement our commercial ambitions of setting up in the USA. The fact that we were physically based in Australia also meant we could physically sample and test deigns amongst friends and family.[147]
Around August 2008, Robert was eager to explore the possibilities of producing a sunglasses range. Using Oakley as inspiration, Robert felt we could develop an aggressive sunglasses brand which would feed our apparel brand and also open up our exposure into the Australian market as well as overseas.[148]
So we decided we would stick with apparel and follow a traditional growth pattern like most traditional streetwear brands at the time. All the while we were continually producing one off samples in Australia and giving them to anybody who wanted to wear them.[149]
Between the time Robert lodged the first application for Malishus in class 25 in the United States, we finalised our logo and new typeface and subsequently re-registered Malishus in class 25 again in the United States on Nov 7, 2008. We just let the original application lapse whilst the new mark went on to get registered.[150]
Robert was still determined to explore the sunglasses angle and lodged an application with IP Australia for the ‘Malishus’ mark in Class 9 on January 2009. It was not met with any opposition and was registered in Dec,2010.[151]
Robert also lodged an application for the mark ‘Malishus’ in the UK in class 9, 18 and 25 in January of 2009 which was registered without opposition in April 2009.[152]
As our personal finances marginally improved, we managed to pool together enough funds to manufacture our first commercial t-shirt range using an assortment of reputable screen printers in Australia which we intended to sell in America and New Zealand. This range featured on the website.[153]
Due to the fact we were very careful about commercially promoting the brand in Australia due to possible trade mark infringement, most of our market efforts were resigned [sic] to our offshore audience (via Facebook etc). Our first range performed very poorly and we sold a handful of garments to friends and family here and in New Zealand. Most of the stock was eventually used as a giveaway to promote the brand and also given to buyers, online bloggers and an assortment of sports and entertainment personalities. Many of those personalities were based in Australia, New Zealand and in the United States.[154]
In Dec 2011, we felt we needed to secure the mark in Australia due to the mounting frustration of trying to build an apparel brand abroad even though it was truly developed in Australia. So Robert proceeded to register Malishus in class 25 in Australia assuming it may be accepted on the basis it was distinctly different. The trademark ‘Malicious’ co-existed with ‘Malishus Koncept Clothing’ so we felt there could be a slight chance it would proceed to registration.[155]
[146] Affidavit of D Lamont, 06.10.2016, [29]
[147] Affidavit of D Lamont, 06.10.2016, [30]
[148] Affidavit of D Lamont, 06.10.2016, [31]
[149] Affidavit of D Lamont, 06.10.2016, [32]
[150] Affidavit of D Lamont, 06.10.2016, [33]
[151] Affidavit of D Lamont, 06.10.2016, [34]
[152] Affidavit of D Lamont, 06.10.2016, [35]
[153] Affidavit of D Lamont, 06.10.2016, [36]
[154] Affidavit of D Lamont, 06.10.2016, [37]
[155] Affidavit of D Lamont, 06.10.2016, [38]
On 17 May 2013 Malishus Limited was incorporated in New Zealand. Mr Jurcic and Mr Selwyn are listed as the two directors, and the company’s business classification was stated to be “Clothing wholesaling”.[156]
[156] Affidavit of D Lamont, 30.04.2014, annexure 209, pages 687-690
On 22 July 2013 Mr Jurcic and Mr Selwyn acquired by assignment “Trade Mark 1178782” which had the word “Malicious” together with an image described as “half annulus with studs on stand”; and on 1 August 2013 were registered as the owners of that trade mark.[157] The background to this acquisition was stated by Mr Jurcic in a document he provided in support of his and Mr Selwyn’s application to have the Trade Mark removed for non-use:[158]
We would like to take this final opportunity to provide additional support in reference to the application to remove the ‘Malishus Koncept Clothing’ trademark for non-use. We feel we have provided sufficient evidence and accurate historical information to prove the mark has not been used in any commercial capacity for the duration of its registration. We also firmly feel the trademark holder has failed to provide sufficient evidence to support his claim and has only opposed the application after witnessing our mark take shape in the form of a viable brand. We are two entrepreneurs who have enormous ambitions for the brand both in Australia and abroad. To prove this and to overcome any additional opposition, we have recently negotiated to purchase the ‘Malicious’ trademark which was hampering our original trademark application. Transmission documents are being submitted later this week. By securing the Australian trademark to Malishus, we have a far greater chance of raising additional growth capital from local investors who prefer to see the brand originate from our home soil and expand organically. The brand has many notable Australian athletes and recognised entertainers waiting to support its commercial entry into the marketplace. Unfortunately, we cannot maximize these opportunities and many others due to the possibility of infringement of the Malishus Koncept Clothing trademark that has no existence in the marketplace to begin with.
[157] Affidavit of D Lamont, 30.04.2014, annexure 242, pages 755-757
[158] Affidavit of D Lamont, 30.04.2014, annexure 252, page 778
On 22 July 2013 Mr Nicholas became registered as a shareholder of Malishus Limited.[159] Mr Nicholas is shown as having an address in Auckland, New Zealand.
[159] Affidavit of D Lamont, 30.04.2014, annexure 249, page 771
As I note below, on 16 August 2013 a delegate of the Registrar of Trade Marks published her decision on the application Mr Jurcic and Mr Selwyn made to remove the Trade Mark for non-use in which the delegate exercised the Registrar’s discretion under s.101(3) of the TM Act to allow the Trade Mark to remain on the register for all goods listed in the registration.[160]
[160] Affidavit of D Lamont, 30.04.2014, annexure 249, page 786-792
On 21 October 2013 Mr Jurcic and Mr Selwyn applied for the registration of “M MALISHUS” as a trade make for class 9 (helmets, helmet accessories, sunglasses), class 18 (backpacks, wallets, and bags), and class 35 (retail apparel stores, retail clothing boutiques).[161] On 22 October 2013 they applied for the registration of “M MALISHUS” as a trade mark for class 18 (bags), class 28 (surfboards, guards for use in skateboarding, roller skates, skateboarding, skateboards), and class 41 (arranging and conducting of concerts, concert services, management of concerts, music concert services, film production, production of films, production of cable television programs, production of television programs).[162]
[161] Affidavit of D Lamont, 30.04.2014, annexure 286, page 852
[162] Affidavit of D Lamont, 30.04.2014, annexure 289, page 867-868
On 18 February 2014 the following message appeared on the website “Hookit”:[163]
Punchy, hardcore, visually intimidating…. yes, we claim to be all that. Welcome to Malishus - - A Hyper Aggressive Athletic Wear label that transcends across all sports - Now recruiting!
[163] Affidavit of D Lamont, 30.04.2014, annexure 445, page 1195
As at 4 March 2014 Mr Jurcic described himself on his “Linkedin” profile as the “Co-founder, Malishus Apparel February 2010 – Present (4 years 2 months) Melbourne Area, Australia”,[164] and Mr Selwyn described himself on his “Linkedin” profile as follows:[165]
[164] Affidavit of D Lamont, 30.04.2014, annexure 461, page 1230
[165] Affidavit of D Lamont, 30.04.2014, annexure 462, page 1232
Brand developer at Malishus Apparel
Melbourne Area, Australia
Apparel & FashionCo-founded a streetwear brand – “Malishus” with a business partner in Australia
There is annexed to Mr Lamont’s affidavit of 30 April 2014 an extract from a website associated with Mr Jurcic and Mr Selwyn. The date on which this appeared on the website is not shown in the copy that is annexed to Mr Lamont’s affidavit. The matters on the web page appear to be addressed to retailers. At the beginning of the pages, under the heading “MALISHUS” it is asked: “So you wanna [sic] stock Malishus apparel”. It sets out a catalogue of t-shirts, hoods, and a cap, their prices, and shipping and handling details including to Australia. It also contains short biographies of Mr Jurcic and Mr Selwyn.[166]
[166] Affidavit of D Lamont, 30.04.2014, annexure 17, pages 207-220
Finally, I should refer to what Mr Lamont in his affidavit says are quotes from statutory declarations Mr Selwyn and Mr Jurcic made for the purpose of their opposing Mr Lamont’s application to register as a trade mark the word “Malishus”. Mr Selwyn stated (emphasis added):[167]
In conclusion, I have been the true owner of the Malishus mark in class 25 and have used it in an honest and concurrent manner since January 2005. Both Robert and I have invested a substantial amount of time and money attempting to build our apparel brand Malishus in all our markets. We have secured the domain name and also own the domain name in the UK, Canada, United States, Germany, France and New Zealand. We have recently completed our second line and have launched our New Zealand website to specifically cater to that market. . . .
[167] Affidavit of D Lamont, 06.10.2016, [45]
Mr Jurcic stated (emphasis added):[168]
Clinton Selwyn is the true owner of the word mark ‘Malishus’ in Australia. He has used the mark honestly and concurrently in Australia since around January 2005.
By engaging in a partnership together, Clinton Selwyn authorized the use of the Malishus word mark to myself around April, 2007. From this point until the date of this statutory declaration, both Clinton and I have been using the Malishus word mark in an honest and concurrent capacity in Australia in relation to t-shirts and headwear.
[168] Affidavit of D Lamont, 06.10.2016, [47], [48]
Evidence of respondents’ use of word “Malishus” on social media
The bulk of the evidence on which Mr Lamont relies are copies of pages apparently downloaded from social media sites, mostly Facebook, with which the respondents appear to be associated and on which the evidence may reasonably be taken to suggest the respondents uploaded messages and photographs. It would be convenient to distinguish between uploads the evidence may suggest were made by Mr Jurcic and Mr Selwyn, and uploads by Mr Nicholas.
As I have already noted, the first upload on social media made by Mr Jurcic or Mr Selwyn occurred on 12 March 2011 on Facebook[169] The first upload the evidence suggests was made by Mr Nicholas occurred on 3 January 2013 when he uploaded on his “Facebook Timeline” the following:[170]
[169] Affidavit of D Lamont, 30.04.2014, annexure 43, pages 291, 292
[170] Affidavit of D Lamont, 30.04.2014, annexure 127, page 497
Rima Nicholas
January 3Malishus
Welcome to Malishus – A clothing brand spawned from the creative minds of a Croatian and a Kiwi. More than a label, Malishus is an ideology, a way of life, a movement! It’s taking the aggressive streak that’s in all of us and harnessing that emotion to succeed. Fighters, athletes, businessmen – u…Clothing: 2,817 like this
I have listed in a footnote the evidence of the uploads the evidence could reasonably be taken to suggest were made by Mr Jurcic or Mr Selwyn,[171] and those which the evidence could reasonably be taken to suggest were made by Mr Nicholas.[172] Most of the uploads refer to an event, such as a boxing event, or an event at a nightclub, or a particular sportsman or boxer, and to musicians; and they contain photographs of persons wearing clothing that displays the word “Malishus” and the Malishus Logo. Some of the uploads explicitly refer to the offer for sale of “Malishus” T-shirts. Here are some examples the evidence may reasonably suggest of posts made by Mr Jurcic or Mr Selwyn:
[171] Affidavit of D Lamont, 30.04.2014, annexures 50, 59, 61, 62, 64, 67-77, 79, 91, 82, 83, 84, 88, 98, 99, 100, 103, 105, 106, 107, 108, 111, 118-123, 126, 135, 136, 138, 144, 146, 153, 154, 164, 173, 174, 175, 176, 177178, 181, 185, 186, 187, 191, 192, 193, 194, 196, 197, 198, 199, 200, 202, 203, 204, 206, 208, 211, 212, 214, 215, 216, 218, 219, 220, 221, 222, 227, 230, 231, 235, 237, 245, 248, 251, 253, 254, 257, 258, 261, 269, 283, 346, 351, 359, 363, 366, 367, 385, 391, 392, 393, 394, 395, 399, 401, 404, 412, 418
[172] Affidavit of D Lamont, 30.04.2014, annexures 127, 128, 145, 163, 168, 169, 171, 172, 179, 182, 205, 207, 210, 213, 217, 223, 224, 225, 228, 229, 232, 233, 238, 240, 243, 244, 246, 250, 259, 265, 266, 267, 268, 270, 271, 272, 274, 275, 291, 299, 300, 301, 303, 304, 305, 308, 309, 310, 319, 320, 321, 322, 323, 326, 327, 329, 330, 331, 332, 333, 337, 338, 339, 340, 342, 344, 345, 347, 348, 349, 350, 352, 353, 354, 355, 356, 357, 358, 360, 361, 362, 364, 365, 381, 369, 370, 377, 378, 379, 394, 382, 384, 386, 387, 388, 389, 390, 396, 397, 398, 402, 403, 405, 406, 407, 408, 409, 410, 411, 413, 414, 415, 416, 417, 418, 421, 422, 423, 424, 476, 477, 478, 479, 493.
a)An upload made on 18 December 2013 stating:[173]
[173] Affidavit of D Lamont, 30.04.2014, annexure 346, page 992
Clinton Selwyn shared Malishus’s album
December 18, 2013Malishus Gear (2 photos)
There are photographs of clothing containing the word “MALISHUS” and the Malishus Logo.
b)An upload made on 24 December 2013 stating:[174]
[174] Affidavit of D Lamont, 30.04.2014, annexure 363, page 1026
Clinton Selwyn shared Malishus’s photo
December 24, 2013
Thanks for love!
To all our friends, family and supporters.Thanks for embracing Malishus and look forward to a hard 2014!
Stay hood ya’ll!
c)An upload made on 6 January 2014 stating:[175]
[175] Affidavit of D Lamont, 30.04.2014, annexure 385, page 1069
Clinton Selwyn shared Malishus’s album
January 6
Doggies !!!!S/O to [name of National Rugby League Player] (5 photos)
d)An upload made on 7 January 2014 stating “Unleashing Rocky P Saute! (5 photos)”.[176] The post contains a number of photographs, five of which depict a person with boxing gloves wearing a top that has the word “Malishus” on it.
[176] Affidavit of D Lamont, 30.04.2014, annexure 391, page 1081
e)On 9 January 2014 an upload was made referring to a “very talented hip-hop artist who is also making a name for himself in the ring!” It has a photograph of three persons one of whom is wearing a t-shirt with the word “MALISHUS”. Next to the photograph there are the signs and words “#malishusstreetwear,” “#malishusapparel”, and “#hiphop”.[177]
[177] Affidavit of D Lamont, 30.04.2014, annexure 401, page 1101
f)On 14 January 2014 the following upload was made stating:[178]
[178] Affidavit of D Lamont, 30.04.2014, annexure 412, page 1124
Clinton Selwyn shared Malishus’s album
January 14Rima Malishus Nicholas
Malishus Ts available now! (4 photos)
g)On 16 January 2014 the following was uploaded:[179]
Clinton Selwyn
January 16
Get the good stuff and message my man Rima Malishus Nicholas for your hook ups…Hit me up on private message if you want one of these T’s $45 each .. Get Inflicted 2014
[179] Affidavit of D Lamont, 30.04.2014, annexure 419, page 1138
There are a number of photographs that include persons wearing apparel that include the word “Malishus”.
h)On 21 January 2014 the following upload was made:[180]
[180] Affidavit of D Lamont, 30.04.2014, annexure 419, page 1146
Clinton Selwyn
January 21
Holla at cha boy Rima Malishus Nicholas for all the details …
Malishus – Est.@ birthMalishus Ts available now! (4 photos)
There are a number of photographs that include persons wearing apparel that include the word “Malishus”
Here are some examples of uploads the evidence may reasonably suggest were made by Mr Nicholas:
a)An upload made on 3 January 2014 that included the following statements about a person Mr Nicholas met (errors in original):[181]
[181] Affidavit of D Lamont, 30.04.2014, annexure 377, page 1053
He Bouncers in Darwin Aus & Here, he asked about our Logo .. I said II hook him up if he wants to promote/Rep in the Darwin scene for MALISHUS while he’s bouncing ..gave him our business card etc
b)An upload made on 15 January 2014 stating:[182]
[182] Affidavit of D Lamont, 30.04.2014, annexure 414, page 1126
Rima Malishus Nicholas shares Malishus’s photo
January 15
Holla at me if you want to buy one of these Get Inflicted MALISHUS 2014
With Clinton Selwync)An upload made on 21 January 2014 stating:[183]
[183] Affidavit of D Lamont, 30.04.2014, annexure 421, page 1142
Rima Malishus Nicholas
January 21Private message me, if you need one of these $45
The upload includes two images, both of which contain the word “Malishus” and the Malishus Logo.
d)An upload made on 21 January 2014 as follows:[184]
Dei Hamo
January 21S/o to the Malishus Clothing!. Keep up the Good Work Fam:. Rima Malishus Nicholas Clinton Selwyn!
The upload includes images of the word “Malishus” and the Malishus Logo
[184] Affidavit of D Lamont, 30.04.2014, annexure 422, page 1144
Communications between Mr Lamont and the respondents
On 18 May 2012 Mr Lamont sent to Mr Jurcic and Mr Selwyn a letter in which he stated the following:[185]
[185] Affidavit of D Lamont, 30.04.2014, annexure 85, page 399
I am writing to you in the hope that we can resolve the unfortunate issue as detailed below.
I am aware you are using Malishus spelt the same way as I have spelled it in my trademark. This is unacceptable as this could lead to erroneous brand misidentification/association from our respective customers.
I have sole and exclusive rights to use Malishus spelt this way as per my Trademark registration for use on my range of T-shirts and other clothing apparel.
I am indifferent to any other way you might wish to spell Malishus for example (Malicious).
In order to resolve this issue it would be appreciated if you could contact me to further discuss a way ahead and suitable resolution.
I wish you well in your future enterprises and I apologise for the inconvenience of you having to change the spelling of the word Malishus on your Sunglasses and any associated advertising.
On 27 June 2012 Mr Lamont sent the same letter by email to “[email protected]”.[186]
[186] Affidavit of D Lamont, 30.04.2014, annexure 89, page 409
Mr Jurcic and Mr Selwyn did not respond to Mr Lamont’s letter. Instead, on 21 June 2012 they lodged an “Application for removal of a registered trade mark for non use”.[187]
[187] Affidavit of D Lamont, 30.04.2014, annexure 90, page 412
By letter dated 24 October 2012 IP Australia informed Mr Lamont that, on the application of Mr Jurcic and Mr Selwyn, the Trade Mark was removed for non-use. Mr Lamont says the Trade Mark was removed accidentally.[188] The basis of that assertion appears to be Mr Lamont’s having lodged with IP Australia on 4 October 2012 a declaration made by him in support of his opposition to removal. It appears that the ground on which Mr Lamont opposed the removal of the Trade Mark for non-use was that he was “still using and will be using this trade mark in future”, and that he had “proof of sales, proof of having a business and proof of advertising and the fact that” Mr Lamont “came up with the word and registered it spelt this way first and have big plans for this trade mark”. Mr Lamont further said that “[i]t’s also my personal mark of clothing I wear every day”.[189]
[188] Affidavit of D Lamont, 30.04.2014, [128]; annexure 115, page 471
[189] Affidavit of D Lamont, 30.04.2014, annexure 256, page 789
In February 2013 Mr Lamont sent a letter to Mr Jurcic and Mr Selwyn in which Mr Lamont stated that “your business, M MALISHUS appears to be trading, advertising and promoting clothing through your business for purchase in Australia”.[190] After referring to the Trade Mark and alleging that Mr Jurcic and Mr Selwyn have been infringing the Trade Mark, Mr Lamont requested that Mr Jurcic and Mr Selwyn “Cease & Desist, in any further partial/full use of my Australian trade mark: MK MALISHUS KONCEPT CLOTHING In Association with the marketing, sale, distribution or identification of your products, or services in Australia”. Mr Lamont sent at the same time a similar letter but in relation to the Trade Mark.[191]
[190] Affidavit of D Lamont, 30.04.2014, annexure 156, pages 558-560
[191] Affidavit of D Lamont, 30.04.2014, annexure 157, pages 562-564
On 8 March 2013 Mr Lamont sent a similar letter to “Skamma Fight Club” in relation to the use of the word “Malishus”.[192] On 12 March 2013 Mr Lamont received an email from “SKAMMA Fight Club” as follows:[193]
[192] Affidavit of D Lamont, 30.04.2014, annexure 162, page 588
[193] Affidavit of D Lamont, 30.04.2014, annexure 156, page 595
The tshirts you mention were done over a year ago. It was a limited run of 20, there a [sic] no tshirts left, we do not stock or regularly produce garments with this brand. We were approached by an old friend who supposedly owned this brand who offered to make the tshirts as a colloboration [sic]. We were not aware that he was not the owner of the brand name. He produces many items with this brand.
There is an active facebook page and website which is owned by this person.
Please direct all your issues regarding your brand to the people actively using your brand.
On 16 August 2013 a delegate of the Registrar of Trade Marks published her decision on the application Mr Jurcic and Mr Selwyn made to IP Australia to remove the Trade Mark for non-use.[194] The delegate found that the ground for removal was established in relation to “footwear and accessories being scarves and belts”, but the delegate exercised the Registrar’s discretion under s.101(3) of the TM Act to allow the Trade Mark to remain on the register “for all goods listed in the registration”.
[194] Affidavit of D Lamont, 30.04.2014, annexure 256, pages 786-792
On 3 February 2014 Mr Lamont sent a message to the Facebook pages of “Malishus”, addressed to Mr Jurcic and Mr Selwyn asking that there be removed “all MALISHUS CLOTHING Material that you have uploaded onto your Facebook “Malishus Page” in regards to Australia”.[195] Mr Lamont sent a similar message to Mr Nicholas.[196] Mr Jurcic responded with a message that included the following:[197]
Your claim for infringement is unfounded and has no basis. Your [sic] failing to understand that we own intellectual property in 5 other countries and representation of people wearing our apparel in Australia and abroad is not a violation of you [sic] trademark, Be aware we have taken this matter further and discussed our concerns with a [sic] IP law firm in Melbourne. . . . We take this matter very seriously and will not hesitate to take action.
[195] Affidavit of D Lamont, 30.04.2014, annexures 437 and 438, pages 1176-1180
[196] Affidavit of D Lamont, 30.04.2014, annexure 439, pages 1182-1183
[197] Affidavit of D Lamont, 30.04.2014, annexure 440, page 1185
Is the evidence reasonably capable of supporting trade mark infringements alleged in SOC?
In his affidavit of 6 September 2016 Mr Jurcic raises a number of objections to the SOC, and in particular to paragraphs 29 and 30 of the SOC, which allege the respondents used the website “Malishus.com” and Facebook to actively supply, advertise, and market Malishus clothing goods and services in Australia.[198]
[198] Affidavit of R Jurcic 06.09.2016, [9(a)]-[9(b)]
Mr Jurcic submits Mr Lamont has failed to provide “any factual evidence that Malishus.com has been actively marketing and supplying Malishus branded apparel to the Australian market”.[199] Mr Jurcic further submits that Mr Lamont’s allegations are based on the assumption that “Malishus.com” is hosted in Australia when, in truth, it is hosted in the United States of America, and the domain name has always been registered in the United States of America.[200]
[199] Affidavit of R Jurcic 06.09.2016, [10(a)]
[200] Affidavit of R Jurcic 06.09.2016, [10(a)]
Mr Jurcic further submits that Mr Lamont’s reliance on uploads to social media, and in particular Facebook, is based on “broad assumptions that these featured posts on our Facebook page are a form of advertising and we are aggressively targeting Australian consumers”. [201] Mr Jurcic submits Mr Lamont “has failed to provide any factual explanation about the nature of the alleged infringement, what financial impact it caused, confusion it created and what damage was sustained to the Applicants [sic] Trademark reputation”. Mr Jurcic submits that “[a]ll Facebook activities were conducted by the Respondents in good faith to support their New Zealand fan base”, and that the “Facebook activities only serve to strengthen our brand awareness in New Zealand and also serve as a platform to share our brand culture”.[202]
[201] Affidavit of R Jurcic 06.09.2016, [10(b)]
[202] Affidavit of R Jurcic 06.09.2016, [10(b)]
Mr Jurcic repeated the substance of these submissions at the hearing before me. He also said that boxers and fighters wear the “Malishus” gear, they are New Zealanders who come to Australia wearing the gear and “we put posts on Facebook”; and that when they come to Australia, “we’re not saying “Hey, guys. Buy our gear here in Australia. You can buy it at a retailer””. Mr Jurcic further submitted “[w]e have no . . . commercial presence with apparel in Australia”, and that is because Mr Lamont has registered the Trade Mark in Australia.[203]
[203] T27.10
There are a number of observations that may be made about Mr Jurcic’s submissions. First, that a sign is used as a trade mark on a website that is hosted outside Australia does not necessarily mean the use of the trade mark on the website cannot be said to be a use of the trade mark in Australia. As was held by Merkel J in Ward Group to which I have referred earlier in these reasons, whether or not a trade mark that is used on a website hosted outside Australia constitutes a use of the trade mark in Australia depends on whether the use of the trade mark on the website was “intended to be made in, or directed or targeted at” Australia. If that question is answered in the affirmative “then there is likely to be a use in that jurisdiction when the mark is downloaded”.[204]
[204] Ward Group Pty Ltd v Brodie & Stone Pl. [2005] FCA 471
Second, Mr Jurcic, at least to some extent, appears to assume that to establish an action for infringement of a trade mark under the TM Act it is necessary for the registered trade mark owner to prove the infringing activity had a financial impact on the owner or that the trade mark owner sustained damage to the “Trademark reputation”. Those assumptions are incorrect. Proof of damage is not an element of a claim for relief provided for by s.126 of the TM Act for the infringement of a trade mark.
Third, Mr Jurcic appears to assume that Mr Lamont was required to provide evidence of actual confusion by consumers or potential consumers of goods bearing the word “Malishus”. That assumption, however, is incorrect. Although evidence of actual confusion may be admitted to prove that a particular person has been misled or confused by a trade mark, whether or not a claimed infringing mark is identical with or deceptively similar to a registered trade mark is a matter for the Court to determine.
Finally, there is Mr Jurcic’s submission that the respondents used the word “Malishus” in good faith and in order to “support their New Zealand fan base”, and that they have no commercial presence in Australia or that they do not sell clothes bearing the word “Malishus” in Australia. It may be that at a hearing Mr Jurcic may be able to prove that is so. The question I have to consider, however, is whether the evidence on which Mr Lamont relies, if accepted, is capable of proving that one or more of the respondents have used the word “Malishus” in Australia in relation to clothing. In my opinion, the evidence is capable of doing so.
At least some of the Facebook uploads suggest commercial activity in Australia. For example, there is the Facebook upload of 3 January 2014 where Mr Nicholas refers to the possibility of suggesting “to promote/Rep in the Darwin scene for MALISHUS while he’s bouncing”; [205] and there is the upload by Mr Selwyn, a resident of Australia, on 16 January 2014 stating: “Get the good stuff and message my man Rima Malishus Nicholas for your hook ups” and: “Hit me up on private messaging if you want one of these T’s $45 each”.[206] There is the statements Mr Selwyn and Mr Jurcic Mr Lamont claims they made in their statutory declarations in 2015 when opposing Mr Lamont’s application to register the word “Malishus” as a trade mark where Mr Jurcic is alleged to have stated that Mr Selwyn is the true owner of the word “Malishus” in Australia, that Mr Selwyn “has used the mark honestly and concurrently in Australia since around January 2005”, and that, by Mr Jurcic engaging in a partnership with Mr Selwyn, in around April 2007 Mr Selwyn authorised the use by Mr Jurcic of the “Malishus word mark” and that, from that point on, Mr Jurcic and Mr Selwyn “have been using the Malishus word mark in an honest and concurrent capacity in Australia in relation to t-shirts and headwear”.
[205] Affidavit of D Lamont, 30.04.2014, annexure 377, page 1053
[206] Affidavit of D Lamont, 30.04.2014, annexure 419, page 1136
I am satisfied, therefore, that the evidence on which Mr Lamont proposes to rely, if accepted, is reasonably capable of supporting the following findings:
a)Mr Lamont is the owner of the Trade Mark;
b)the first respondent, Malishus Limited, through its directors, Mr Jurcic, Mr Selwyn, and Mr Nicholas, have extensively used the word “Malishus” and the Malishus Logo in connection with clothes, and in particular clothes such as T-shirts;
c)The word “Malishus” is substantially identical with or deceptively similar to the Trade Mark;
d)the respondents’ extensive uploading on social media of the word “Malishus” and the Malishus Logo together with images of clothing was directed to a particular class of consumers or potential consumers who have a particular set of attitudes or who would wish to view themselves as having a particular attitude;
e)the purpose, or one of the purposes, of the extensive use of the word “Malishus” and the Malishus Logo used in connection with images of clothing has been to articulate the set of attitudes and to associate the word “Malishus” and the Malishus Logo with that set of attitudes with a view to inducing people who see themselves having or wishing to have that set of attitudes to acquire clothing and associated items that bear “Malishus” and the Malishus Logo;
f)the respondents uploaded “Malishus” in association with images of clothing to indicate a connection between the respondents and the clothing bearing the word “Malishus” and the Malishus Logo; and, for that reason, constituted a use by each of the respondents of the word “Malishus” as a trade mark in relation to clothes, being the class of goods in respect of which the Trade Mark is registered;
g)the uploading on social media of the word “Malishus” was intended by each of the respondents, at least in substantial part, to be made in, or was directed to jurisdictions that include Australia; and, for that reason, the uploading of clothing with the word “Malishus” by the respondents constitutes a use of the word “Malishus” as a trade mark in Australia in relation to the goods in respect of which the Trade Mark is registered; and
h)Malishus Limited, through Mr Jurcic, Mr Selwyn and Mr Nicholas, has sold clothes in Australia bearing the word “Malishus” and, to that extent, Malishus Limited used the word “Malishus” as a trade mark in relation to the goods in respect of which the Trade Mark is registered.
I am also satisfied that the evidence on which Mr Lamont proposes to rely, if accepted, is reasonably capable of supporting the findings that:
a)each of Mr Jurcic, Mr Selwyn, and Mr Nicholas has directed or procured Malishus Limited to commit one or more of the infringing acts, namely the use of the word “Malishus” and the Malishus Logo on social media and the sale in Australia of clothes bearing the word “Malishus” and the Malishus Logo; and/or in the alternative; and
b)the conduct of each of Mr Jurcic, Mr Selwyn, and Mr Nicholas constituted a deliberate, wilful, and knowing pursuit of a course of conduct that was likely to constitute an infringement of the Trade Mark.
The evidence on which Mr Lamont intends to rely, therefore, if accepted, is reasonably capable of supporting the cause or causes of action for infringement of the Trade Mark pleaded in the SOC. That means that I am not satisfied Mr Lamont has no reasonable prospects of succeeding on his application to the extent it relies on infringement of the Trade Mark.
Is the evidence reasonably capable of supporting misleading or deceptive or passing off claims alleged in SOC?
This part of Mr Lamont’s case relies on proving the “Malishus Koncept” acquired a reputation. The evidence on which Mr Lamont relies for reputation in the use of “Malishus Koncept”, however, appears to be weak; but it is not non-existent. For that reason, I am not satisfied Mr Lamont has no reasonable prospects of establishing a case based on misleading or deceptive conduct or for passing off.
Application for leave to file PASOC
I now consider whether I should grant Mr Lamont leave to amend the SOC by filing the PASOC.
Principles
Under r.7.01(1) of the Federal Circuit Court Rules 2001 (Cth) the Court has power to “allow or direct a party to amend a document (other than an affidavit) in the way and on the conditions the Court . . . thinks fit”. The principles that should guide the exercise of that discretion may be taken to be those identified by Stone J in Medich v Bentley-Smythe Pty Ltd:[207]
[L]eave to amend should be granted unless the proposed amendment is obviously futile or would cause substantial prejudice or injustice which could not be compensated for. These considerations require the Court to take account of the nature of the proposed amendment, whether it is made in good faith, the stage in the proceedings at which leave is sought, the nature of the prejudice that may be caused and the means by which such prejudice might be redressed. The question of delay is relevant to these considerations however it is not the purpose of the Court to punish a party for delay in seeking an amendment.
[207] [2010] FCA 494 at [8]
The PASOC
The PASOC does not mark up the amendments to the SOC Mr Lamont wishes to make by filing the PASOC. It is therefore necessary to determine the changes by comparing the PASOC with the SOC.
The PASOC intends to make the following amendments to the SOC (Expanded Existing Claims):
a)It adds “Malishus LLC” as the first respondent and a “Mr Chris Hau” as a sixth respondent to the proceeding. The PASOC describes Malishus LLC as a corporation incorporated in the states of Nevada and Missouri in the United States of America.[208] Mr Hau is alleged to be a director of Malishus Limited (the second respondent in the PASOC).[209]
b)In addition to alleging Mr Lamont is the creator and owner of “fancy and uniquely spelt word Malishus”, the PASOC alleges Mr Lamont is and at all material times was the registered owner of an Australian clothing business “Susstreem Clothing n Beyond”, “Malishus Clothing”, and “Malishus Industries”.[210]
c)The PASOC provides a more precise description of Malishus Limited.[211]
d)The PASOC presents a more detailed description of Mr Jurcic and Mr Selwyn. It alleges that each of Mr Jurcic and Mr Selwyn is the “owner director” of Malishus LLC and Malishus Limited, the registered owner of the business “Malishus” in Victoria and Queensland, and a shareholder of Malishus Limited.[212]
e)The PASOC presents updated details concerning Mr Nicholas. These arise because the PASOC alleges Mr Nicholas no longer is a shareholder or director of Malishus Limited and is now a police officer in New Zealand.[213]
f)The PASOC alleges Mr Lamont is the registered owner of the word “Malishus” for classes 25, 35 and 41,[214] and of the words “Malishus Koncept”.[215]
g)The PASOC identifies the trade marks of which Mr Jurcic and Mr Selwyn are the registered owners.[216] These are the trade marks bearing the word “Malishus” and the Malishus Logo for classes 9, 18, 28, and 41, and the trade mark which has the word “Malicious”.
h)The PASOC sets out what it alleged Mr Lamont has done in relation to the use of word “Malishus”. The PASOC repeats the substance of what the SOC alleges Mr Lamont has done,[217] but provides substantial additional details.[218]
i)The PASOC sets out what it alleges the respondents have done in relation to the use of the word “Malishus”. It provides substantial additional details to those provided by the SOC.[219]
[208] PASOC, [2]
[209] PASOC, [8]
[210] PASOC, [1]
[211] PASOC, [4]
[212] PASOC, [5], [6]
[213] PASOC, [7]
[214] PASOC, [9], [11]
[215] PASOC, [10]
[216] PASOC, [12]
[217] SOC, [7]-[11]
[218] PASOC, [14] – [19], [20]-[23]
[219] PASOC, [35]-[83], [103] - [113]
The matters I have so far described in the PASOC may fairly be characterised as a restatement, but with greater particularity, of the substance of that which is alleged in the SOC. There are, however, matters alleged in the PASOC that may be considered to be substantive additions.
a)The PASOC alleges activities by the respondents that are alleged to have occurred after Mr Lamont commenced these proceedings.[220]
b)The PASOC alleges acts by the proposed sixth respondent, Mr Hau. These consist of Mr Hau uploading on his Facebook page in March 2015 “Malishus tee’s”;[221] on 22 March 2015 permitting Mr Nicholas to post a message on Mr Hau’s Facebook page responding to an enquiry by a person in Sydney about the availability of “Malishus branded clothing in Australia”;[222] Mr Hau having started in around November 2015 to work for Malishus Limited, Mr Jurcic, and Mr Selwyn;[223] and Mr Hau visiting Melbourne in around March 2016 for business meetings with Mr Jurcic and Mr Selwyn “to promote the Malishus brand within Australia for a purpose of trade in Australia”.[224]
c)There is the allegation made in paragraph 20 of PASOC that Mr Lamont met with Mr Jurcic at a night club on the Gold Coast in around 2006 during which Mr Lamont “mentioned his trademarks Malishus Koncept and Malishus Inc” and “also his rap name Malishus”.[225] Mr Lamont refers to such meeting in paragraph 7 of his affidavit of 6 October 2016.
d)The PASOC makes allegations concerning Mr Lamont’s mental health.[226]
[220] PASOC, [84]-[99]
[221] PASOC, [88]
[222] PASOC, [89]
[223] PASOC, [92]
[224] PASOC, [95]
[225] PASOC, [20]
[226] PASOC, [24],[32], [33]
Should leave be granted?
I first consider whether it would be obviously futile to permit Mr Lamont to file the PASOC. More relevantly, the question is whether, if I were to grant leave, Mr Lamont would not have reasonable prospects of succeeding on all or any part of the claims made in the PASOC. In my opinion, to the extent the PASOC makes the Expanded Existing Claims, the filing of the PASOC would not be futile, and for reasons I have given for not being satisfied Mr Lamont has no reasonable prospects of succeeding on the claims made in the SOC, I am also not satisfied that Mr Lamont would have no reasonable prospects of succeeding on the Expanded Existing Claims. I am also of the opinion it would not be obviously futile to permit the filing of the PASOC to the extent it relies on the alleged conduct of Mr Jurcic, Mr Selwyn, and Mr Nicholas that is alleged to have occurred after Mr Lamont commenced this proceeding.
In relation to Malishus LLC, the PASOC does not allege any activity by Malishus LLC on its own. The PASOC alleges Malishus LLC engaged in conduct together with one or more of the other respondents. Thus the PASOC alleges Malishus LLC, Mr Jurcic and Mr Selwyn are the owners of “Australian application TM 1464367 – M Malishus (device) filed 10 December 2011”,[227] and that Malishus LLC placed orders for apparel bearing the word “Malishus” with one or both of Mr Jurcic and Mr Selwyn,[228] and Malishus LLC and Mr Jurcic created an “account/profile” with “Behance”,[229] and together with Mr Selwyn, a Facebook page that was “excessively displaying, promoting and trading their Malishus branded goods and services within class 25 Apparel in Australia”.[230] In my opinion, the evidence on which Mr Lamont proposes to rely cannot reasonably support the allegations the PASOC makes concerning Malishus LLC. For that reason, it would be futile to permit Mr Lamont to file the PASOC to the extent it has joined Malishus LLC and makes allegations against it. If I were to grant Mr Lamont leave to file the PASOC, it would be on terms that he remove all references to Malishus LLC.
[227] PASOC, [13], [63]
[228] PASOC [48], [49], [53] – [60], [62]
[229] PASOC, [51]
[230] PASOC, [52]
As for Mr Hau, the facts alleged in the statement of claim against him, even if proved, have no reasonable prospects of sustaining a finding that Mr Hau is jointly liable with Malishus Limited or Mr Jurcic or Mr Selwyn or Mr Nicholas for any infringement of the Trade Mark or any misleading or deceptive conduct. At their highest, the allegations would sustain a finding of use of the word “Malishus” in New Zealand. If I were to grant Mr Lamont leave to file the PASOC, it would be on terms that he remove all references to Mr Hau.
I next turn to the allegation made in paragraph 20 of PASOC. In my opinion that paragraph does not plead a material fact. The PASOC does not allege any cause of action based on Mr Jurcic having any duty to Mr Lamont in connection with the use of the word “Malishus” other than under the TM Act, the CC Act, and the tort of passing off. If I were to grant Mr Lamont leave to file the PASOC, therefore, it would be on terms that he remove paragraph 20.
Finally, although Mr Lamont may wish to rely on his mental health as a reason why he did not more actively develop or market the “Malishus Koncept” brand, it is not appropriate that he plead such matters. That is so because Mr Lamont’s mental health is not an element of any cause of action based on the infringement of the Trade Mark or of misleading or deceptive conduct or of passing off. Thus, if I were to grant Mr Lamont leave to file the PASOC, it would be on terms that he remove all references to his mental health.
The next question I must consider is whether there would be any prejudice to the respondents if I were to permit Mr Lamont to file the PASOC. In my opinion, there would no prejudice. The respondents have not filed a defence. Further, the respondents have the benefit of Mr Lamont’s disclosure of the material on which he relies for making the allegations contained in the PASOC.
Finally, I need to refer to the explanation Mr Lamont has given for applying to file the PASOC. The explanation is contained in his affidavit of 30 August 2016. He gives the reasons why he did not file new evidence with the SOC. That is a reference to directions I made on 3 September 2014 that Mr Lamont file and serve a draft proposed statement of claim. Mr Lamont says that “around 95% of the evidence” on the basis of which he based the SOC “had only come to light since after” he prepared the SOC. That statement was not tested in cross-examination. Whether it is true or not, however, does not matter. From my summary of the SOC and the Expanded Existing Claims, and the evidence that Mr Lamont has prepared, it is clear that Mr Lamont has, within the limitations of his not being legally represented, pursued with determination and thoroughness what he believes are his rights as the owner of the Trade Mark.
Having regard to these matters, I am satisfied it is necessary in the interests of justice that I permit Mr Lamont to file an amended statement of claim in the form of the PASOC subject to there being removed from the PASOC paragraph 20, and all references to Malishus LLC, Mr Hau, and Mr Lamont’s mental health.
Disposition
I propose, therefore, to make orders to the following effect:
a)The application filed by Mr Jurcic to dismiss the proceeding be dismissed.
b)Mr Lamont have leave to file an amended statement of claim in the form of the PASOC subject to there being removed from the PASOC paragraph 20, and all references to Malishus LLC, Mr Hau, and Mr Lamont’s mental health.
c)Mr Lamont file and serve on Mr Jurcic and Mr Selwyn the amended statement of claim within four weeks of my publishing these reasons.
d)I will stand the matter over for directions after the parties have had an opportunity to consider these reasons.
I do not propose at this stage to order that the amended statement of claim in the form of the PASOC be served on Malishus Limited. That is so because, although Mr Jurcic and Mr Selwyn said to me they appeared on behalf of Malishus Limited, Malishus Limited has not filed a notice of appearance. I also do not propose to order that Mr Lamont serve the PASOC on Mr Nicholas because he appears to reside in New Zealand and he has not entered an appearance. Mr Lamont will require an order giving him leave to serve the statement of claim in the form of the PASOC on Mr Nicholas in New Zealand. I will raise these matters with the parties at the directions hearing I will set down when I publish these reasons.
I certify that the preceding one hundred and fifty (150) paragraphs are a true copy of the reasons for judgment of Judge Manousaridis
Date: 14 March 2018
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