Lamont v Malishus Limited & Ors (No.4)  FCCA 3206 (14 November 2019)
Successful action for trade mark infringement by Lamont. None of the parties were professionally represented.
Two of the respondents infringed Lamont’s trademark registrations for MALISHUS in class 25.
Lamont owned four registrations for trade marks containing or consisting of the word MALISHUS, the earliest being a registration in class 25 for a composite mark also containing the word Koncept dating from 3 August 2006 and, relevantly, other class 25 registrations for the word marks MALISHUS and Malishus dating from 30 October 2012 and 17 August 2014 respectively. Lamont has, since 2005, been a music performer.
The respondent company was incorporated in New Zealand in May 2013 with Mr Jurcic and Mr Selwyn as directors. Both of them resided in Victoria and, prior to incorporation, operated in partnership. Mr Jurcic first became aware of Lamont’s earliest trade mark registration in 2007. In August 2007, Mr Jurcic registered the malishus.com domain name and thereafter the malishusbrands.com domain name. Mr Jurcic and Mr Selwyn subsequently registered the malishus.com.au domain name in 2013. Business name registrations for MALISHUS were obtained by Mr Selwyn in August 2010 for Victoria and Queensland. A Facebook social media page was created in March 2011. Mr Jurcic and Mr Selwyn also owned various Australian trade mark registrations and applications containing Malicious or Malishus. They also owned various Malishus trade marks in New Zealand, USA, Canada and the UK. From around July 2011, they operated an ecommerce website under the malishus.com domain name, but this was closed down around August 2013 and they subsequently shifted this to operate under the malishus.co.nz domain name. This website promoted and offered clothing. The respondents had, in 2012, previously tried to remove Lamont’s earliest Australian composite trade mark registration on the ground of non-use, but were unsuccessful. Essentially, the respondents contended that only their sunglasses were directed to the Australian market and their clothing business was directed outside of Australia.
Judge Manousaridis was satisfied that use of the malishus.com and malishus.co.nz domain names by Mr Jurcic and Mr Selwyn was trade mark use in relation to clothing in Australia. These domain names were substantially identical with Lamont’s Malishus word mark registration and deceptively similar to Lamont’s earlier registered composite mark. Hence infringement was found. His Honour also found that that Mr Jurcic and Mr Selwyn had offered for sale and sold clothing items (albeit relatively few) bearing the Malishus trade mark in Australia to persons other than family and friends which was a further category of infringement. Also, there was infringing conduct arising from the offer to sell T-shirts bearing the Malishus trade mark via the Facebook page. However, his Honour was not satisfied Mr Jurcic and/or Mr Selwyn engaged in conduct for or on behalf of Malishus Limited and so there was no infringement by the New Zealand company.
There was no evidence as to use of the malishus.com.au domain name by the respondents and infringement did not arise by the mere registration of that domain name.
His Honour granted an injunction restraining each of Mr Jurcic and Mr Selwyn from using in Australia the word “Malishus” or any other sign which is substantially identical with or deceptively similar to the word “Malishus” as a trade mark in relation to T-shirts or any other clothing apparel or any footwear or headgear including without limitation in social media or in sales or by way of promotion and sponsorship.
His Honour also ordered cancellation of the MALISHUS business name registrations as well as the malishus.com and malishus.com.au domain names.
His Honour considered there was a sensible possibility that Mr Jurcic and Mr Selwyn have possession of infringing articles of clothing or headgear and ordered them to file an affidavit stating whether they hold any such articles of clothing; and, if they do, identify the articles they hold and whether they have destroyed such articles or, in the alternative, whether they have removed the name “Malishus” from the articles of clothing and headgear.
His Honour did not find that Lamont had suffered any loss or damage and so awarded nominal damages of $10. However, additional damages of $25,000 (with interest) were also awarded jointly against Mr Jurcic and Mr Selwyn since they operated in the course of a partnership.
Finally, Lamont’s claim under the Australian Consumer Law for misleading or deceptive conduct were not established because his Honour was not satisfied Lamont had established a sufficient reputation.
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