Lamont v Malishus & Ors (No.4) [2019] FCCA 3206 (14 November 2019)

The case was heard by the Federal Circuit Court of Australia, a lower level court with jurisdiction to hear trade mark infringement matters (and other matters under the Trade Marks Act). The parties appeared without legal representation.

The plaintiff, Mr Lamont, alleged trade mark infringement against several parties, including Mr Jurcic and Mr Selwyn.

Brief Facts:

  • Mr Lamont was the owner of several registered trade marks incorporating the word “MALISHUS” covering clothing and apparel.
  • Mr Jurcic and Mr Selwyn collectively registered several domain names including malishus.com, malishusbrands.com, malishus.com.au, and malishus.co.nz.
  • The court found that clothing was promoted and offered for sale to Australian customers on the malishus.com and malishus.co.nz websites, and Facebook, and a small number of sales were made to customers in Australia.
  • The activities of Mr Jurcic and Mr Selwyn, in the circumstances, constituted infringement of the registered trade marks owned by Mr Lamont.

Given the finding of trade mark infringement, the court needed to determine the appropriate remedies.

The court granted an injunction against the infringers further use of MALISHUS (or deceptively similar signs) in relation to clothing apparel, footwear, and headgear in Australia, including use or promotion of such marks on social media. The court also ordered that domain names malishus.com and malishus.com.au, and a registered Australian business name for “Malishus” be cancelled, as their ongoing registration presented a temptation to breach the injunction. Further, the court ordered the respondents to divulge if they retained any goods bearing the MALISHUS mark, for the purpose of potential destruction or alteration.

With regards to damages, the court held that as no loss or damage had been proved, Mr Lamont was only entitled to nominal compensatory damages. Mr Lamont could not prove any loss of potential licensing income or damage to reputation. The court awarded $10 in compensatory damages.

However, Mr Lamont also requested “punitive damages”. The Trade Marks Act does not allow for punitive damages but does allow the court broad discretion to award “additional damages”.

The court determined that Mr Jurcic and Mr Selwyn had been aware of the registered trade mark belonging to Mr Lamont, and had proceeded undeterred with use of an infringing mark. The court also considered that there was a need to deter similar acts of infringement.

While the court was also satisfied that no benefit resulted to Mr Jurcic and Mr Selwyn as a result of the infringement, they were ordered to pay a total of $25,000 plus interest in additional damages.

This case highlights the power of the court to award significant “additional damages” in cases of what it considers to be flagrant infringement. Such damages can be orders of a magnitude higher than any compensatory damages.