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Lamont v Malishus & Ors (No.4)

Lamont v Malishus & Ors (No.4)

Case [2019] FCCA 3206 14 November 2019

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Statutory Construction

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Intellectual Property

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FEDERAL CIRCUIT COURT OF AUSTRALIA

LAMONT v MALISHUS & ORS (No.4)

[2019] FCCA 3206

Catchwords:
INTELLECTUAL PROPERTY – TRADE MARKS – Action for infringement of registered trade mark – whether use of a word as part of domain name constituted the use of the word as a trade mark – whether the domain name that included the word was substantially the same or deceptively similar to registered trade mark – whether goods to which the word was applied were sold or offered for sale in Australia – whether the posting of material on Facebook that included the word constituted the use of the word as a trade mark – infringement established – remedies awarded.

Legislation:

Business Names Registration Act 2011 (Cth), s.51

Competition and Consumer Act 2010 (Cth), Schedule 2, s.18

Federal Circuit Court Act 1999 (Cth), s.76

Trade Marks Act 1995 (Cth), ss.4, 17, 88(2)(a), 120, 126

Cases cited:

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

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

Halal Certification Authority Pty Limited v Scadilone Pty Limited [2014] FCA 614

Paramount Pictures Corporation v Hasluck [2006] FCA 1431

Lamont v Malishus & Ors [2018] FCCA 423

Lamont v Malishus & Ors (No.3) [2018] FCCA 1294

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

QS Holdings Sarl v Paul’s Retail Pty Ltd (No 2) [2011] FCA 1038

Solahart Industries Pty Ltd v Solar Shop Pty Ltd (No 2) [2011] FCA 780

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

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

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

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

Applicant:

DARREN LAMONT

First Respondent:

MALISHUS LIMITED NZCN: 4429858

Second Respondent:

ROBERT JURCIC

Third Respondent:

CLINTON SELWYN

Fourth Respondent:

RIMA NICHOLAS

File Number:

SYG 2008 of 2014

Judgment of:

Judge Manousaridis

Hearing date:

10 December 2018

Date of Last Submission:

10 December 2018

Delivered at:

Sydney

Delivered on:

14 November 2019

REPRESENTATION

Applicant in person

Second and Third Respondent in person and on behalf of the First Respondent

No appearance by or on behalf of the Fourth Respondent

THE COURT DECLARES THAT

From around July 2011 to around August 2013 the second respondent, Mr Jurcic, and the third respondent, Mr Selwyn, infringed within the meaning of s.120 of the Trade Marks Act 1995 (Cth) (TM Act) Australian registered trade mark no. 1127629 in class 25 (first Malishus Trade Mark), and from 30 October 2012 until around August 2013 Mr Jurcic and Mr Selwyn infringed Australian registered trade mark no. 1523037 in class 25 (second Malishus Trade Mark), by using the word “Malishus” as part of the domain name that resolved to a website that displayed and offered for sale clothing that contained marks and words which included the word “Malishus

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Lamont v Malishus & Ors (No.4)

Details

AGLC: Lamont v Malishus & Ors (No.4) [2019] FCCA 3206
Case: [2019] FCCA 3206
Decision Date: 14 November 2019

CaseChat Overview and Summary

In *Lamont v Malishus & Ors (No.4)*, the applicant, Lamont, alleged that the respondents had infringed registered trade marks by using the word "Lamont" as part of their domain name and in their online advertising, including on Facebook. The dispute concerned whether the respondents' use of the word constituted trade mark infringement under the relevant legislation. The matter came before Judge Manousaridis in the Federal Court of Australia.

The court was required to determine several key legal issues. These included whether the use of the word "Lamont" as part of a domain name amounted to the use of the word as a trade mark. Further, the court had to consider whether the respondents' domain name was substantially identical or deceptively similar to Lamont's registered trade marks. The court also had to assess whether goods to which the word was applied were sold or offered for sale in Australia, and whether the posting of material on Facebook that included the word constituted trade mark use.

Judge Manousaridis found that the respondents' use of the word "Lamont" in their domain name and on Facebook constituted infringement of Lamont's registered trade marks. The court reasoned that the use was in relation to goods and services for which the trade marks were registered, and that the use was likely to deceive or cause confusion. The court applied the principles of trade mark law concerning the use of a mark as a trade mark, the test for substantial identity or deceptive similarity, and the territorial scope of trade mark rights.

Having established infringement, the court awarded remedies to the applicant, Lamont.

Orders