Lamont v Malishus & Ors

The applicant, the registered owner of an Australian trade mark, brought proceedings against the respondents, alleging trade mark infringement and misleading or deceptive conduct. The respondents applied for summary dismissal of the applicant's claims pursuant to s 17A(2) of the *Federal Circuit Court of Australia Act 1999* (Cth), arguing the applicant had no reasonable prospects of prosecuting these claims. The proceedings were heard in the Federal Circuit Court of Australia.

The central legal issues before the Court were whether the applicant had reasonable prospects of establishing that the respondents' actions constituted trade mark infringement and misleading or deceptive conduct within Australia. Specifically, the Court considered whether the registration of a New Zealand trade mark identical to a word within the applicant's registered mark, and the subsequent use of this mark on Facebook and in other jurisdictions, could be considered use in Australia. The Court also examined whether it was reasonably arguable that the first respondent sold goods bearing the infringing mark in Australia, and whether the individual respondents, as directors, could be held jointly liable for the first respondent's alleged infringement.

The Court dismissed the application for summary dismissal, finding that the applicant had raised arguable cases on each of the pleaded causes of action. The Court reasoned that the uploading of the infringing mark on Facebook, even if hosted overseas, could arguably constitute use directed to Australia, particularly given the respondents' connection to Australia. Furthermore, the Court found it reasonably arguable that the first respondent had sold goods in Australia bearing the infringing mark, and that the directors could be jointly liable. The Court also granted the applicant leave to file an amended statement of claim, subject to the removal of certain allegations deemed futile, finding that the proposed amendments would not cause undue prejudice to the respondents.