FEDERAL COURT OF AUSTRALIA
Lamont v Malishus Limited (No 2) [2022] FCA 237
ORDERS
Appellant | ||
AND: | First Respondent ROBERT JURCIC Second Respondent CLINTON SELWYN (and another named in the Schedule) Third Respondent | |
DATE OF ORDER: |
THE COURT ORDERS THAT:
1. The appeal be dismissed.
2. There be no order as to costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
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[2] | |
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[54] | |
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[85] | |
[105] |
BURLEY J:
1 This appeal concerns whether or not a judge of the Federal Circuit Court of Australia (FCCA) (as it was then known) erred in failing to inform a self-represented litigant of various matters concerning the conduct of his proceedings. It also concerns whether or not the primary judge erred in concluding that the fourth respondent, Rima Nicholas, did not engage in conduct that infringed trade marks owned by the appellant, Darren Lamont. For the reasons set out below I conclude that no error has been established and the appeal must be dismissed.
2 Mr Lamont is the owner of three trade marks, each of which feature the word MALISHUS, relevantly registered in respect of goods in class 25 including clothing. On 14 July 2014, Mr Lamont filed an application in the FCCA, seeking relief for trade mark infringement, misleading and deceptive conduct under the Australian Consumer Law (ACL) (contained within sch 2 to the Competition and Consumer Act 2010 (Cth)), and passing off against four respondents: (1) Malishus Ltd, which is a company registered in New Zealand; (2) Robert Jurcic, who is a former director and shareholder of Malishus Ltd; (3) Clinton Selwyn, who was at the time the sole director and shareholder of Malishus Ltd; and (4) Mr Nicholas, a former officer of Malishus Ltd who resides in New Zealand. All of the parties were self-represented during the proceedings in the FCCA, with the exception of Mr Nicholas who did not participate in the proceedings at all.
3 On 30 August 2016 Mr Lamont filed an application in a case in the FCCA that purported to set out the orders sought in the proceedings. He sought leave to file a further amended statement of claim and identified that he sought damages by reference to provisions in the ACL, the Trade Marks Act 1995 (Cth) and interest. He also sought an injunction, an account of profits, the delivery up or destruction of infringing articles bearing the word MALISHUS and costs.
4 On 6 September 2016 Mr Jurcic filed an application in a case seeking orders that the proceedings be dismissed with costs (strike out application).
5 On 8 November 2016 and 1 December 2016, the primary judge heard Mr Lamont’s application for leave to file the amended statement of claim and Mr Jurcic’s strike out application.
6 On 14 March 2018 the primary judge delivered judgment in those applications: Lamont v Malishus & Ors [2018] FCCA 423 (2018 judgment). His Honour dismissed the strike out application and granted leave to Mr Lamont to file a proposed amended statement of claim subject to certain amendments.
7 On 3 April 2018, Mr Lamont filed an application in which he sought orders, amongst others, that a “worldwide asset preservation order” be made in relation to each of the respondents to the proceedings, and that they “file and serve on the applicant a copy of their financials and asset statements from the past 5 years in Australia and around the world”.
8 On 6 April 2018 the primary judge dismissed that application: Lamont v Malishus & Ors (No. 2) [2018] FCCA 895.
9 On 19 April 2018 Mr Lamont filed his amended statement of claim.
10 On 24 April 2018 Mr Lamont filed an application in a case in which he sought, amongst other things:
(1) the leave of the court to serve Mr Nicholas out of the jurisdiction in New Zealand;
(2) the leave of the court to issue a subpoena pursuant to rule 15A.02 of the Federal Circuit Court Rules 2001 (Cth); and
(3) an order that the first, second or third respondent provide him and/or the court with Mr Nicholas’ known address and email address.
11 On 2 May 2018 the primary judge dismissed that application: Lamont v Malishus & Ors (No 3) [2018] FCCA 1294.
12 On 4 June 2018 the first, second and third respondents filed a defence to the amended statement of claim.
13 On 26 June 2018 the primary judge granted an ex parte application filed by Mr Lamont for substituted service to be permitted to be made on Mr Nicholas in New Zealand.
14 On 27 June 2018 Mr Lamont filed a further amended statement of claim.
15 The proceedings were heard on 10 December 2018.
16 On 14 November 2019 the primary judge delivered final judgment in the proceedings: Lamont v Malishus & Ors (No 4) [2019] FCCA 3206 (2019 judgment).
17 The primary judge found that Mr Jurcic and Mr Selwyn had infringed three of the asserted trade marks, granted an injunction restraining them from using the trade mark MALISHUS in relation to clothing, footwear or headgear, made an order that Mr Jurcic and Mr Selwyn pay nominal compensatory damages and additional damages in the amount of $32,686.75, and ordered that Mr Jurcic and Mr Selwyn pay the costs of the proceedings.
18 The primary judge found that Mr Lamont had failed to establish liability against Mr Nicholas, because he did not consider that Mr Nicholas had engaged in any infringing activity in Australia. The 2019 judgment makes extensive reference to the 2018 judgment.
19 In this court, Mr Lamont sought, and subsequently obtained, an extension of time to appeal from the 2019 judgment and orders on the limited bases set out below. Following the grant of leave, Mr Lamont, Mr Jurcic and Mr Selwyn reached a settlement of the proceedings and the proceedings were discontinued against them and Malishus Ltd by consent. No settlement was reached with Mr Nicholas and the present appeal concerns only Mr Lamont’s claims against him.
20 Mr Lamont was represented at the application for the extension of time, and at the appeal, by Ms Melanie Cairns and Ms Amy Reid of counsel, both of whom appeared pro bono, and to whom the Court would like to express its gratitude for their considerable assistance.
21 On 16 October 2020 leave was granted for Mr Lamont to serve process on Mr Nicholas in New Zealand: Lamont v Malishus Limited [2020] FCA 1535 (Burley J). On 2 November 2020, Mr Nicholas filed a submitting appearance in this Court pursuant to r 12.01 of the Federal Court Rules 2011 (Cth) in which he elected to submit “to any order the Court may make in the proceeding” except as to costs. He took no part in the application for the extension of time or the appeal.
22 Mr Lamont initially relied on four grounds of appeal, which in submissions were reduced to the following two:
(1) that the primary judge erred in concluding (at [88] and [89](d)) that Mr Nicholas did not engage in conduct that infringed Mr Lamont’s trade marks under s 120 of the Trade Marks Act; and
(2) that Mr Lamont was denied his right to a fair hearing in the proceedings below.
23 Ground 1 concerns an alleged error of law on the part of the primary judge. Ground 2 concerns the role that the primary judge must play in providing information about the conduct of proceedings in the court.
24 In particulars appended to ground 2, Mr Lamont advances the following contentions:
(1) He was a self-represented litigant who had no legal training and little understanding of the court’s practices and procedures, including:
(a) discovery, notices to produce and subpoenas;
(b) his right to make an informed election between seeking an account of the fourth respondent’s profits, or damages for loss suffered by him;
(c) that this election did not need to be made until after evidence had closed at final hearing; and
(d) the need for quantum evidence, being the amount of profit made by the fourth respondent or the losses suffered by Mr Lamont, as a result of the alleged trade mark infringement, before the Court would make any order that such an amount be paid to him.
(2) The primary judge did not adequately inform or explain to him the practices and procedures in (1) during the proceedings.
(3) The primary judge should have done so in sufficient time for Mr Lamont to: (a) consider whether to engage in the document production process; (b) seek to obtain documents to inform his election between an account of profits and damages and enable him to produce admissible evidence of the fourth respondent’s profits; and (c) file admissible evidence of actual loss or damage suffered by him as a result of any trade mark infringement.
(4) Further or in the alternative to (3), if the primary judge erred by failing to inform Mr Lamont of the practices and procedures in (1) only at the final hearing, the primary judge erred by not informing Mr Lamont that the Court had power to adjourn the hearing for the purpose of allowing Mr Lamont time to engage the document production process, so that he could then make an informed election between account of profits or damages, and provide evidence of quantum to the court.
(5) The primary judge should have informed or explained to Mr Lamont the practices and procedures in (1) in sufficient time for him to: (a) consider whether to engage in the document production processes for the purpose of obtaining documents to evidence infringement by the fourth respondent; (b) seek to obtain such documents; and (c) if appropriate, tender or file those documents as admissible evidence at the final hearing.
25 In his submissions Mr Lamont contends that the failure of the primary judge to inform him of the matters in (1) above meant that he did not understand his ability to utilise document production processes to adduce evidence relevant to the infringing conduct of Mr Nicholas in Australia and, further, that even if he had been successful as against Mr Nicholas on liability, Mr Lamont was not in a position at the conclusion of the final hearing meaningfully to choose between seeking an account of profits or damages.
26 On appeal, Mr Lamont relies upon extracts of affidavits that he affirmed on 30 April 2014 and parts of three affidavits that he read in support of his application for an extension of time affirmed on 21 April 2020, 28 July 2020 and 13 October 2020. In the last of those he deposes to his limited understanding of court practices and procedures in the lead up to the hearing before the primary judge.
27 Mr Lamont also relies on transcript taken of various hearings before the primary judge namely:
transcript dated 8 November 2016 which concerns the strike-out application and Mr Lamont’s application to file an amended statement of claim. As noted above, those applications are the subject of the 2018 judgment;
transcript dated 6 April 2018 which concerns the application filed by Mr Lamont on 3 April 2018 for an asset preservation order;
transcript dated 2 May 2018 which concerns the application filed by Mr Lamont on 24 April 2018 seeking leave to serve Mr Nicholas out of the jurisdiction, leave to issue a subpoena and an order that the first, second or third respondent provide him with Mr Nicholas’ address and email address;
transcript dated 26 June 2018 which concerns an application filed by Mr Lamont on 14 June 2018 seeking leave to effect substituted service of documents on Mr Nicholas;
an audio recording of the hearing of the proceedings on 10 December 2018 which resulted in the 2019 judgment, part of which was played during the conduct of the appeal;
transcript dated 14 November 2019 from the hearing during which the primary judge delivered the 2019 judgment; and
transcript of a hearing conducted on 17 December 2019 which was listed at the request of Mr Jurcic seeking additional time to pay the judgment debt.
2. THE DECISIONS OF THE PRIMARY JUDGE
28 In the 2019 judgment the primary judge identified the three ways in which Mr Lamont contended that the respondents had infringed one or more of his trade marks. One was by Mr Jurcic and/or Mr Selwyn registering and using the domain names www.malishus.com, www.malishusbrands.com, and www.malishus.com.au. A second was by the respondents selling in Australia T-shirts and other items of apparel to which marks that include the word “Malishus” were applied. A third was by Mr Jurcic, Mr Selwyn and, separately Mr Nicholas, posting material on Facebook that included the use of the word “Malishus” in connection with clothing (at [2]).
29 In the 2019 judgment the primary judge records that Mr Jurcic and Mr Selwyn did not in their pleadings contest much of the factual basis for the claims, including the ownership by Mr Lamont of his MALISHUS trade marks or their conduct. They did, however, deny that they undertook the impugned activities in connection with the promotion or carrying on of any business in Australia. They contended that they undertook these activities in connection with the use in overseas markets of trade marks they registered in New Zealand, the United States of America, and the United Kingdom that include the word “Malishus” (at [3]).
30 The primary judge posed two principal questions for determination. The first was whether the impugned acts of the respondents consisted “use” of Mr Lamont’s trade marks within the sense required within s 120 of the Trade Marks Act in relation to the goods of the registrations. The second was whether any of the allegedly infringing acts occurred in Australia (at [4]).
31 Prior to considering those matters, the primary judge noted that he had in the 2018 judgment considered the application brought by Mr Jurcic for summary dismissal of the proceedings. He noted that he had described in some detail the evidence on which Mr Lamont relied at the final hearing. Accordingly, he said that the 2019 judgment was to be read as incorporating the passages at [57]-[122] of the 2018 judgment (at [8]).
32 The primary judge set out in some detail the terms of the amended statement of claim and the defence filed by Malishus Limited, Mr Jurcic and Mr Selwyn. In his summary he notes that the following allegations were made against Mr Nicholas and also the responses given by Mr Jurcic and Mr Selwyn in their defence in relation to those allegations:
(a) that from around at least early 2013 Mr Nicholas displayed and promoted on his Facebook page the Malishus brand in Australia. Mr Jurcic and Mr Selwyn did not plead to this allegation;
(b) that in around July 2013 Mr Nicholas went to Melbourne for business meetings and brand promotions in Australia. Mr Jurcic and Mr Selwyn admitted that Mr Nicholas visited Melbourne, but denied the visit was for the purpose of brand promotion;
(c) that in around October 2013 Mr Nicholas went to Queensland for business meetings and brand promotions in Australia. Mr Selwyn denied this allegation; and
(d) that on about 22 March 2015 Mr Nicholas posted a message on one of his friend’s Facebook pages in New Zealand responding to a woman’s question as to whether she could obtain Malishus brand clothing in Australia. Mr Jurcic and Mr Selwyn did not plead to this allegation.
33 The primary judge summarised the evidence before him led by Mr Lamont (at [25]-[27]). He noted that Mr Jurcic relied on affidavit evidence and that he was cross-examined by Mr Lamont (at [28]-[38]). The primary judge also summarised the evidence given by Mr Selwyn (at [39]-[41]). In the course of his reasons the primary judge noted that the evidence of these witnesses had a bearing on the findings that he made in relation to the conduct of Mr Nicholas.
34 The primary judge then considered whether or not the respondents had used the word MALISHUS as a trade mark within s 120(1) of the Trade Marks Act. After stating the relevant principles, about which there is no complaint on appeal, the primary judge considered each of the alleged infringing acts. He relevantly found as follows.
35 First, that Mr Jurcic and Mr Selwyn arranged for the registration of the domain name www.malishus.com for the purposes of a partnership they had formed to promote a business to develop around the use of the word “Malishus” (J S Malishus Partnership). The primary judge found that they did so, not only for the purpose of designating the address of the website to which the domain name resolved, but also for the purpose of using it as a sign to distinguish the apparel available on the website “malishus.com” from the apparel of other traders (at [60]).
36 Secondly, that Mr Jurcic and Mr Selwyn permitted www.malishus.com to be used in the course of the J S Malishus Partnership for the purpose of permitting members of the public to purchase through the website apparel that bore words and other marks that included the word “Malishus”. He also found that they used the domain name www.malishus.com not only for the purpose of designating the address of the website to which the domain name resolved, but also for the purpose of using it as a sign to distinguish the clothing the website indicated “malishus.com” was in a position to sell from the clothing other traders were or may have been in a position to sell (at [62]).
37 Thirdly, that the domain name www.malishus.com is: (1) deceptively similar to the first MALISHUS trade mark (“Malishus Koncept”) (at [67]); and (2) substantially identical with and deceptively similar to the second MALISHUS trade mark (“Malishus”) after it was registered on 30 October 2012 (at [64] and [67]).
38 Fourthly, that according to Mr Jurcic, the www.malishus.com website was closed down “to open the way for www.malishus.co.nz and our focus on the New Zealand market”. His Honour found, on the basis of that evidence, and the other evidence Mr Jurcic gave about that website, that Mr Jurcic and Mr Selwyn used that site to sell or offer for sale clothes that included the name “Malishus”. He found that Mr Jurcic and Mr Selwyn used www.malishus.co.nz as a trade mark, and that www.malishus.co.nz is substantially identical with the second MALISHUS trade mark and deceptively similar to the first MALISHUS trade mark (at [68]).
39 Fifthly, that in the course of the business of the J S Malishus Partnership, Mr Jurcic and Mr Selwyn purchased for sale clothing in relation to which they applied words and other signs that included the word “Malishus” (at [70]). The primary judge found at [72] that Mr Jurcic and Mr Selwyn did sell some apparel within Australia in the course of the J S Malishus Partnership in relation to which they used as a trade mark a sign that included the word “Malishus”. It is clear that the primary judge considered that Mr Jurcic and Mr Selwyn were the only partners in the J S Malishus Partnership, and that Mr Nicholas was not a partner.
40 The primary judge then gave separate consideration to the alleged infringing uses on social media. He found that most of the impugned posts were made to the “Malishus clothing Facebook page of Mr Jurcic and Mr Selwyn”.
41 The primary judge said:
[77] Many of the posts refer to an event, such as a boxing event, or an event at a nightclub, or to a particular sportsman or boxer, and to musicians; and they contain photographs of persons wearing clothes that display the word “Malishus”; and that some of the uploads explicitly refer to the offer for sale of “Malishus” T-shirts. I set out some examples of posts offering the sale of T-shirts in the earlier reason[s] [a footnote here refers to [113] and [114] of the 2018 judgment]. Each of these examples constituted the use of “Malishus” as a trade mark. I have also again considered each of the posts I identified in the footnotes of my earlier reasons, and I am satisfied that the posts I identify in the footnote to this sentence made on the Facebook page maintained by Mr Jurcic and Mr Selwyn constituted the use of “Malishus” as a trade mark in relation to clothes [a footnote here refers to a number of annexures to the 30 April 2014 affidavit of Mr Lamont]. The first of these posts was made on 31 July 2011 and the last on 9 January 2014. I find that these posts were made in the course of or for the purposes of the J S Malishus Partnership.
(emphasis added and citations omitted)
42 Paragraph [113] of the 2018 judgment was lengthy. It commenced as follows:
[113] 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 Selwyn171, and those which the evidence could reasonably be taken to suggest were made by Mr Nicholas172. 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:
[the primary judge then extracted eight examples of posts uploaded to Facebook]
43 The reference to the evidence concerning posts by Mr Jurcic and Mr Selwyn in footnote 171 was to approximately 100 annexures contained in Mr Lamont’s 30 April 2014 affidavit, each apparently containing screenshots of the impugned Facebook posts. The reference to posts concerning Mr Nicholas in footnote 172 listed about 218 annexures to Mr Lamont’s affidavit. At [114] the primary judge set out four examples of uploads to Facebook that he considered “may reasonably suggest were made by Mr Nicholas”. One of those posts, the details of which are quoted in [114] of the 2018 judgment, suggests that Mr Nicholas travelled to Australia:
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
44 The qualifying language “could reasonably be taken to suggest” chosen by the primary judge in [113] of the 2018 judgment is to be understood in the context in which it appears. His Honour was not there making factual findings, but rather was dealing with the strike out application and in that context was considering whether the proposed amended statement of claim being advanced by Mr Lamont should be permitted to proceed.
45 It is apt to refer to three further paragraphs of the 2018 judgment. The primary judge found at [131] that:
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”; 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”…
46 After referring in that paragraph to further evidence, the primary judge concluded at [132] of the 2018 judgment that he was satisfied “that the evidence upon which Mr Lamont proposes to rely…is reasonably capable of supporting” a number of findings which form the basis of the allegations in the statement of claim that he pleaded. On that basis, the primary judge concluded at [134] of the 2018 judgment that the summary dismissal application failed.
47 Returning to the 2019 judgment, the primary judge made several other key findings relevant to the present appeal by reference to the issue of whether the use by the respondents of the MALISHUS trade mark was use in Australia. He found that, in addition to the Facebook posts identified in footnote 224 to the 2019 judgment (being a subset of the posts identified in footnote 171 to the 2018 judgment), three further posts by Mr Jurcic and Mr Selwyn signified trade mark use (at [78]).
48 The primary judge specifically considered the Facebook page maintained by Mr Nicholas and said at [81]:
I have also considered the posts made on the Facebook page Mr Nicholas maintained, and I am satisfied that the posts I identify in the footnote to this sentence constitute the use of “Malishus” as a trade mark in relation to clothing apparel229. The first of these posts was made on 3 January 2013, and the last on 21 January 2014.
49 Footnote 229 provides references which consist of a subset of 18 of the annexures identified by the primary judge in footnote 172 in the 2018 judgment. Accordingly, the primary judge found, after considering the evidence at trial, that a sub-set of the 218 posts relied upon in the evidence of Mr Lamont as having been made by Mr Nicholas could be considered to amount to trade mark usage in relation to clothing apparel.
50 In relation to the question of whether such use amounted to use of the impugned signs in Australia, the primary judge quoted the decision of Merkel J in Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471; 143 FCR 479 at [43], to which I refer further later in these reasons.
51 The primary judge considered that whether Mr Jurcic or Mr Selwyn used the domain name www.malishus.com in Australia depended on whether they intended or directed or targeted the domain name www.malishus.com to persons in Australia. He answered that question in the affirmative (at [85]). He reached the same conclusion in relation to the posting by Mr Jurcic and Mr Selwyn of material on Facebook (at [86]).
52 However, the primary judge reached different conclusions in relation to the posting by Mr Jurcic and Mr Selwyn of material on the domain name www.malishus.com.nz, and also in relation to posts by Mr Nicholas on Facebook:
[87] I am satisfied Mr Jurcic and Mr Selwyn intended to direct the domain name www.malishus.con.nz [sic] to persons in New Zealand, and not to persons in Australia. I rely on five matters: the domain name includes the letters “nz”; the evidence of Mr Selwyn, which I accept, that sometime in 2012 he and Mr Jurcic had agreed with Mr Nicholas that Mr Nicholas would promote “Malishus” in New Zealand; Mr Jurcic and Mr Selwyn incorporating in New Zealand Malishus Limited; Mr Nicholas posting material on Facebook that include the word “Malishus”; and Mr Nicholas being a resident of New Zealand.
[88] Finally, there is what I have found to be the use as a trade mark of the word “Malishus” in posts that were made to the Facebook page maintained by Mr Nicholas. I find that these posts were directed to persons in New Zealand; and I rely on the matters on which I rely for finding that Mr Selwyn intended to direct the domain name www.malishus.con.nz [sic] to persons in New Zealand, and not to persons in Australia.
…
[89](d) Given I have found that Mr Nicholas’ posting of material on his Facebook page was directed to persons in New Zealand, but not to persons in Australia, I am not satisfied that Mr Nicholas has infringed any of the Malishus Trade Marks.
[89](e) Although Mr Jurcic and Mr Selwyn formed Malishus Limited, and they are directors and shareholders of that company, I am not satisfied that they engaged in the Infringing Conduct I found they engaged in for or on behalf of Malishus Limited. That is so because I accept Mr Jurcic’s evidence that he and Mr Selwyn established Malishus Limited to carry on business in New Zealand. I am therefore not satisfied that Malishus Limited infringed any of the Malishus Trade Marks.
53 The primary judge then proceeded to consider the remedies sought by Mr Lamont. In this context he noted that Mr Lamont did not claim an account of profits (at [103]) but rather damages, which he assessed to be nominal (at [108]). He then noted that Mr Lamont sought “punitive damages” (at [109]) which he took to mean “additional damages” within s 126(2) of the Trade Marks Act (at [110]). He assessed those damages in the amount of $25,000 which were to be paid jointly by Mr Jurcic and Mr Selwyn (at [116]). As the claim against Mr Nicholas failed, he awarded no damages against him.
54 In ground 1 Mr Lamont contends that the primary judge erred in concluding that Mr Nicholas did not engage in conduct that infringed his trade marks under s 120 of the Trade Marks Act. He submits that the finding of the primary judge at [88] and [89(d)] of the 2019 judgment was contrary to earlier findings that the primary judge made in the 2018 judgment where, at [113] and in footnote 172, he identified numerous references to posts on Facebook “which the evidence could reasonably be taken to suggest were made by Mr Nicholas”. He contends that the primary judge misapprehended the facts and erred in reaching his conclusion that Mr Nicholas did not engage in infringing conduct in Australia.
55 Section 120(1) of the Trade Marks Act provides:
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.
56 In [88] and [89](d) of the 2019 judgment, the primary judge concluded that whilst certain posts on his Facebook page amounted to trade mark use, they did not amount to trade mark use in Australia. Mr Lamont criticises that result against the background of the broader findings made by the primary judge in his 2018 judgment and the content of some of those Facebook posts referred to therein.
57 The conclusion of the primary judge is to be understood in the context of the case advanced by Mr Lamont in his further amended statement of claim. On appeal, there is no complaint that Mr Lamont did not understand what his statement of claim was to include. Indeed, he was the beneficiary of the 2018 judgment which set out the primary judge’s observations in relation to it.
58 The statement of claim identified that the first respondent, Malishus Ltd, is a company registered in New Zealand. It pleads that each of Mr Jurcic and Mr Selwyn are owners, directors and shareholders of Malishus Ltd, as well as the registered owners of Australian businesses trading under the name “Malishus” in Victoria and Queensland. It then proceeds to address the role and activities of Mr Jurcic and Mr Selwyn in considerable detail. It pleads that they are registered owners of Australian trade marks including the word MALISHUS, that they had filed non-use applications against Mr Lamont’s MALISHUS trade marks and that since about mid-2010 they had supplied goods and services to the public in relation to apparel branded with the word MALISHUS in Australia. In addition, the statement of claim alleges that Mr Jurcic and Mr Selwyn are the registered owners (either together or separately) of various domain names, websites, and other forms of social media that have been using or referring to the word MALISHUS.
59 By contrast, the pleading against Mr Nicholas is far more limited. The statement of claim identifies him as, at all material times, living in New Zealand, being a co-director of Malishus Ltd in New Zealand, being part shareholder of Malishus Ltd in New Zealand, being now a former co-director and part shareholder of Malishus Ltd, and alleging that he “is a New Zealand Police Officer”. The pleaded activity of Mr Nicholas first appears at [62] and [65] where it is alleged that:
The fourth respondents Facebook page started engaging in conduct by displaying and promoting the second and third respondents Malishus brand in Australia since around at least early 2013…
…
The first second and third respondents recruited the fourth respondent to become the co-director of the first respondent in New Zealand from around at least mid-2013...
60 The statement of claim pleads that Malishus Ltd and Mr Nicholas went to Melbourne and Queensland “for business meetings and brand promotions in Australia” in around July 2013 and October 2013 respectively. It pleads that Mr Nicholas posted a message on a friend’s Facebook page in New Zealand in 2015 concerning the availability of MALISHUS branded clothing in Australia.
61 The statement of claim alleges that all of the respondents have used the impugned mark on Facebook and that each of Malishus Ltd, Mr Jurcic and Mr Selwyn use infringed the MALISHUS marks owned by Mr Lamont. It also alleges that Mr Jurcic and Mr Selwyn alone used the word MALISHUS in the course of trade in Australia and made representations of sponsorship by, affiliation with, or approval of, Mr Lamont and thereby engaged in misleading or deceptive conduct. It separately alleges that Malishus Ltd and Mr Nicholas engaged in, or was knowingly concerned in, that conduct.
62 It is apparent from the pleaded case that the primary infringement case alleged was that Mr Jurcic and Mr Selwyn engaged in activity in Australia and that they recruited Mr Nicholas to act in concert with Malishus Ltd in New Zealand. It is in the context of his role in Malishus Ltd that Mr Nicholas’ visits to Australia must be understood.
63 The primary judge proceeded to consider the pleaded case against the background of the evidence led. I have summarised his reasoning above. It is of significance to note that after considering the affidavit and oral evidence adduced by each of Mr Lamont, Mr Jurcic and Mr Selwyn, the primary judge concluded that the conduct of Mr Jurcic and Mr Selwyn formed part of the business of the J S Malishus Partnership (at [60] and [70]). Mr Nicholas was not a member of that partnership. The primary judge disbelieved the evidence of Mr Jurcic that the J S Malishus Partnership did not trade in Australia (at [71] and [72]) and concluded that it did so trade using the impugned signs from about July 2011 to about August 2013 (at [73]).
64 The primary judge also considered the posts made on the Facebook page maintained by Mr Nicholas and identified, by footnote 229 to [81] of the 2019 judgment, several posts that he considered amounted to trade mark use.
65 However, for the five reasons given in [87], the primary judge did not find that the domain name www.malishus.com.nz was directed to the promotion and sale of goods in Australia. In this context he found that sometime in 2012, Mr Selwyn and Mr Jurcic had agreed with Mr Nicholas that Mr Nicholas would promote MALISHUS in New Zealand and for that reason they had incorporated Malishus Ltd in New Zealand. He concluded that the www.malishus.com.nz domain name and also the posts made by Mr Nicholas to his own Facebook page were directed to persons in New Zealand and not persons in Australia (at [87] and [88]).
66 In this regard, the question of whether Mr Lamont had demonstrated whether Mr Nicholas had used the impugned sign in Australia was to be determined by established principle set out by Merkel J in Ward Group at [43] and as followed in the Full Court (see, for example, Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153; 115 IPR 421 at [78] (Bennett, Katzmann and Davies JJ):
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.
67 The primary judge scrutinised the evidence of use by Mr Nicholas relied upon by Mr Lamont and was not satisfied that it was use in Australia.
68 I am not satisfied that the primary judge’s reasons reflect error in this respect. Mr Lamont in his submissions directed attention to the particular examples set out by the primary judge at [114] of the 2018 judgment. He also relied on an example which is referred to as annexure 291 in footnote 172 in the 2018 judgment which is as follows:
Rima Nicholas
October 23
One more sleep and IL be in Brisbane checking out the GC Scene. Can’t wait to catch up with everyone and anyone MALISHUS NZ will make it’s Mark and Set up Business & Networks with All. I’ll be catching up with my brothers Hale Vaa’sa, Livingstone LeagusNation Nani, Tevita Koloii & Southside MMA Family while we in Brisbane. Don’t be shy, come on down and show your support “Southside” Don’t hesitate if you want to have a yarn with me or Clinton. Get inflicted....Est @ Birth – with [obscured] 36 others.
[photograph of three people, two wearing T-shits with MALISHUS on them]
Daniel Warneke Where can I purchase some shirts and singlets from? I’m in the Gold
October 23 at 7:47pm via mobile
Hale Vaa’sa Rima Nicholas & Clinton Selwyn bro!
October 23 at 7.54pm via mobile
69 In my view, none of these examples, or other ones to which I was directed in submissions, constitutes evidence of an intention on the part of Mr Nicholas that his use of the MALISHUS mark was to be made in, or directed or targeted at, Australia. To the contrary, each example is consistent with the primary judge’s finding that the uses of the MALISHUS mark in Australia were on the part of the J S Malishus partnership, constituted by Mr Jurcic and Mr Selwyn, which was the entity established by Mr Jurcic and Mr Selwyn to trade in Australia.
70 At one point in submissions Mr Lamont suggested that the primary judge erred in failing to find that the evidence of Mr Lamont travelling to Australia suggested use by him in this jurisdiction. However, the Facebook post quoted in the primary judge’s reasons at [114(a)] does not demonstrate such use (see [43] above). At best, it suggests that Mr Nicholas offered to introduce a person to someone else if that person wished to promote something in Darwin.
71 Ground 1 of the appeal must be dismissed.
72 In support of ground 2 Mr Lamont contends that he was denied the right to a fair hearing in that the primary judge failed to inform or explain to him: first, the court production processes of discovery, subpoenas and notices to produce; secondly, his right to choose between an account of profits or damages; thirdly, his right to defer that election until after the production of documents or after the evidence at trial had closed; and fourthly, that he needed evidence of actual amounts of profit or damage suffered in order to be awarded more than a nominal sum.
73 In this respect, he submits that the proceedings in the FCCA proceeded for almost five and a half years and yet no discovery was ordered and no subpoena was issued. The primary judge did not explain to him such processes which, had he availed himself of them, may have provided him with the evidence needed to obtain judgment against Mr Nicholas for infringement and an order that Mr Nicholas give an account for any profits that he may have obtained from infringing conduct. Furthermore, he submits that during the course of the final proceedings on 10 December 2018, the exchanges that took place between him and the primary judge were such that the primary judge ought to have been aware:
(1) that there may have been insufficient evidence to prove liability against Mr Nicholas which could have been rectified by requiring the production of documents;
(2) that he did not understand that he needed evidence to establish the quantum of damages or his entitlement to an account of profits;
(3) that he was not aware of his right to elect between damages and an account of profits (or that he could delay that election until after evidence had closed at the final hearing); and
(4) that he did not understand that he could engage document production processes to establish the amount of profit made by Mr Nicholas.
74 Mr Lamont submits that the court has an overriding duty to ensure that a trial is conducted fairly and in accordance with the law, citing Dietrich v The Queen [1992] HCA 57; 177 CLR 292 at 330 (Deane J) and 362 (Gaudron J). He submits that where a litigant is self-represented, that duty requires the court to take appropriate steps to ensure that the person has sufficient information about the practice and procedure of the court so that they do not suffer a disadvantage by exercising their right to be self-represented, citing Hamod v New South Wales [2011] NSWCA 375 at [309]-[316] (Beazley JA, with whom Giles and Whealy JJA agreed) and Flightdeck Geelong Pty Ltd v All Options Pty Ltd [2020] FCAFC 138; 280 FCR 479 at [51] (Markovic, Derrington and Anastassiou JJ).
75 Mr Lamont relies on the audio recording and a written transcript of part of his closing oral submissions at the trial to support the contention that it ought to have been apparent to the primary judge that he did not have an understanding of pre-trial procedures. He submits that once it became apparent to the primary judge in the course of the final hearing that Mr Lamont had failed to engage any document production processes, Mr Lamont should have been advised and either, an order made deferring the hearing on quantum to a future date, or the final hearing on both quantum and liability adjourned, to allow Mr Lamont to engage in those processes and also to make an informed election between an account or damages. He submits that the primary judge’s failure to inform him of such matters meant that he did not understand his ability to use the document production processes to adduce evidence relevant to Mr Nicholas’ infringing conduct and, had he been successful as against Mr Nicholas on liability, he was not in a position meaningfully to choose between seeking an account of profits or damages.
76 By way of illustration, Mr Lamont draws attention to the primary judge’s finding at [88] and [89](d) of the 2019 judgment to the effect that posts on the Facebook page maintained by Mr Nicholas were directed to persons in New Zealand, and submits that:
(a) evidence of communications and sales through the Facebook page could have been obtained through document production processes, to reveal “the true position”; and
(b) the fact that Mr Nicholas resides in New Zealand is not determinative to whether he infringed the trade marks in Australia, as Mr Lamont produced photos (obtained through the internet) of Mr Nicholas in Australia promoting MALISHUS branded goods.
77 Mr Lamont submits that the primary judge had a duty in these circumstances to provide information to him in relation to these matters given that he is a person with no legal training, limited knowledge of the court’s processes, as well as him being an unsophisticated person with limited commercial or business experience. He submits that the failure to advise him of these matters worked a practical injustice on him because by availing himself of the relevant court processes he could have obtained evidence of communications and sales made through Facebook to reveal the true position and also explored the conduct of Mr Nicholas in Australia.
78 Ground 2 relies on the contention that Mr Lamont was denied procedural fairness because he was a litigant in person who was not given sufficient assistance by the primary judge.
79 A party does not have a right to representation in court, but where that party is not represented courts have an overriding duty to ensure that a trial is fair: Dietrich at 330 and 362. Judges must ensure that trials are conducted fairly and in accordance with law. In the context of a criminal trial, it has been said that the trial judge is bound to give the accused such information and advice as is necessary to ensure that he or she has a fair trial: MacPherson v R [1981] HCA 46; 147 CLR 512 at 523-524 (Gibbs CJ and Wilson J) and 534 (Mason J). As the High Court said in Neil v Nott [1994] HCA 23; 68 ALJR 509 at 510:
A frequent consequence of self-representation is that the court must assume the burden of endeavouring to ascertain the rights of parties which are obfuscated by their own advocacy.
80 Most self-represented persons lack two qualities that competent lawyers possess – legal skill and ability, and objectivity. Self-represented litigants therefore usually stand in a position of disadvantage in legal proceedings of all kinds. Consequently, a judge has a duty to ensure a fair trial by giving self-represented litigants due assistance. Doing so helps to ensure the litigant is treated equally before the law and has equal access to justice: Tomasevic v Travaglini [2007] VSC 337; 17 VR 100 at [140] (Bell J); see also Flightdeck at [51]. The trial judge has an obligation to take appropriate steps to ensure that the unrepresented litigant has sufficient information about the practice and procedure of the court, so far as is reasonably practicable for the purpose of ensuring a fair trial: Hamod at [311] (Beazley JA, with whom Giles and Whealy JJA agreed). However, this is to be balanced against the fact that the duty does not extend to advising an unrepresented litigant as to how his or her rights should be exercised: Hamod at [312].
81 The duty upon a trial judge does not arise in a vacuum. One relevant contextual matter is the nature of the hearing. Thus, the seriousness of the consequences to a person who is self-represented is a factor to be taken into account. For instance, where the nature of the hearing under consideration concerns whether a sequestration order is to be made in bankruptcy proceedings, where the outcome of the proceedings affects not only the private rights and obligations of the debtor and creditor, but also concerns the status of an individual who may become susceptible to criminal conduct for what would otherwise be innocent conduct, is a relevant factor to the assistance which must be given to the self-represented litigant: Boensch v Somerville Legal [2021] FCAFC 79 at [88] (Katzmann, Markovic and Abraham JJ). A fortiori, where the proceedings are criminal trials, as in Dietrich, and MacPherson. In each of these cases it may be said that the duty weighs more heavily than in a commercial action where the liberty or status of an individual is not at stake. The content of the duty to ensure that a trial is fair remains an imperative in other kinds of proceedings although the content of the duty will vary according to the circumstances: Mendonca v Legal Services Commissioner [2020] NSWCA 84 at [21] (McCallum JA, with whom Basten and Leeming JJA agreed).
82 Another contextual matter is the apparent capacity of the self-represented party concerned. In Abram v Bank of New Zealand [1996] FCA 635; ATPR 41-507 the Full Court (Hill, Tamberlin, Sundberg JJ) said:
His Honour said that he must endeavour to ascertain the true legal character of the Abrams' claims. What a judge must do to assist a litigant in person depends on the litigant, the nature of the case, and the litigant's intelligence and understanding of the case. We have already referred to his Honour's assessment of Mr Abram as an intelligent man who was quick to appreciate the consequences and implications of what was said in evidence and submissions. Having ourselves heard him conduct the appeal, it is clear that he had as good a grasp as one could expect a layman to have of the factual and legal issues relevant to the case.
83 In each case the exercise of the duty involves a balancing exercise to be undertaken by the judge between the rights of the self-represented litigant and the obligation to ensure a fair trial for all parties. For this reason the duty is usually stated in terms that require that the impartial function of the judge is preserved, whilst also requiring the judge to intervene where necessary to ensure that the trial is fair and just: Hamod at [310].
84 In order to warrant intervention on appeal a denial of procedural fairness must work a practical injustice on the appellant in order for the court to exercise its discretion to grant relief: Re Minister for Immigration and Multicultural and Indigenous Affairs; Ex Parte Lam [2003] HCA 6; 214 CLR 1 [36]-[38] (Gleeson CJ). As the Full Court said in Flightdeck at [58]:
…An appellant alleging a denial of procedural fairness need only demonstrate that they were deprived of the possibility of a successful outcome; to negate that possibility it is necessary to find that a properly conducted trial could not possibly have produced a different result: Stead v State Government Insurance Commission (1986) 161 CLR 141, 147. To put it another way, as framed by the Full Court in King v Delta Metallics Pty Ltd [2013] FCAFC 93 [59], “[i]f the denial of procedural fairness would have made no difference to the outcome of the proceeding, relief will not be granted”: see also Nobarani, 248 [39]; Gambaro v Mobycom Mobile Pty Ltd (2019) 271 FCR 530, 544 [49].
85 In order to ascertain the assistance to which a self-represented litigant is entitled to receive from the court it is necessary, first, to establish an understanding of the circumstances and the characteristics of the litigant which include his or her intelligence and literacy: Flightdeck at [61]-[70]; Rajski v Scitec Corp Pty Ltd [1986] NSWCA 1 at 26-27 (Samuels JA).
86 The objective matters apparent to me from the materials available on appeal include the following.
87 Mr Lamont is the applicant in commercial proceedings where he is the protagonist seeking a remedy from the court.
88 The statement of claim was competently prepared and logically presented. It identified the parties, the causes of action, the factual bases relied upon to establish liability, and the relief sought. It substantively survived the strike out application the subject of the 2018 judgment.
89 The transcript of the hearing of the strike out application conducted on 8 November 2016 shows that the primary judge explained the processes and procedures of the court relevant to the application. He received into evidence six affidavits from Mr Lamont and two from Mr Jurcic. Mr Lamont coherently explained the gist of his case. When asked about the remedy he sought, he said that he wanted, amongst other things, an injunction, damages and an account of profits. When Mr Lamont said that he was getting overwhelmed by the conduct of the case, the primary judge offered him an adjournment. During the course of argument, Mr Lamont explained that the respondents had responded to his letter before action by seeking to rectify the trade marks register by removing the trade marks in suit but that he had successfully defended that action in the Trade Marks Office. In other words, by his actions and his written and spoken language, Mr Lamont demonstrated that he was literate, intelligent and coherent.
90 After being granted leave to rely on the amended statement of claim, on 3 April 2018 Mr Lamont filed an application in a case seeking the following relief:
1. The applicant requests for a (without notice) “Worldwide Asset Preservation Order” be filed on Malishus Ltd, Mr. Robert Jurcic, Mr. Clinton Selwyn and Mr. Rima Nicholas; and
2. [the respondents] file and serve on the applicant a copy of their financial and asset statements from the past “5 years” in Australia and the world; and
3. [the respondents] file and serve on the applicant all their residential addresses and not a PO Box Address; and
...
91 The application was heard ex parte on 6 April 2018. The transcript reveals that the primary judge explained to Mr Lamont what was required for him to be entitled to a freezing order. During the course of the hearing the primary judge explained to him the fact that he needed to establish that he had an arguable case and also that he must establish some entitlement to damages or an account of profits and that he had a right of election between them. The primary judge explained the distinction between the two remedies. The primary judge also informed Mr Lamont that he would have to prove his loss by way of evidence. Those comments came against a background where Mr Lamont had specifically sought in his originating application and amended application damages and an account of profits.
92 On 2 May 2018 Mr Lamont moved on an application in a case filed on 24 April 2018 where he sought leave of the court to serve the originating process upon Mr Nicholas. He also relevantly sought the following orders:
2. The applicant wishes to request that the court issue a subpoena under rule 15A.02 of the (FCC) rules (Cth); and
3. The applicant wishes to ask the court under Rule 14.02 of the (FCC) rules (Cth) that the first, second or third respondents in the case "Provide" the court and/or the applicant the fourth respondents current known address/email in order to bring him into this proceeding by "Substituted Service" as I allege at least the third respondent knows of his contact details as evidence in recent documents provides proof; and/or
4. The applicant wishes to ask the court under Rule 15A.17 of the (FCC) rules (Cth) that the first, second or third respondents be issued with a “Notice to Produce” the fourth respondents current known address/email in order to bring the fourth respondent into this proceeding…
…
93 Rule 15A.02(1) of the Federal Circuit Court Rules 2001 (Cth) (FCCR) relevantly provided at the time that the Court or a Registrar may, on the Court’s or the Registrar’s own initiative or at the request of a party issue: (a) a subpoena for production; (b) a subpoena to give evidence; or (c) a subpoena for production and to give evidence. Rule 14.02(1) provided that a declaration may be made to allow discovery on the application of a party. Rule 15A.17 provided that a party may require another party at the hearing of the proceeding to produce a specified document that is in its possession, custody or control.
94 During the course of the 2 May 2018 hearing the primary judge explained the rules of service upon a respondent in New Zealand. The following exchange also took place:
HIS HONOUR: Now you are applying for orders for discovery against the – the other defendants, that they give you details of his address?
MR LAMONT: Yes.
HIS HONOUR: that’s not feasible. I’m not saying at all, but certainly not until I can be satisfied what attempts have been made to serve [Mr Nicholas].
95 Later the primary judge said:
HIS HONOUR: ...I can’t give you the orders for discovery and whatever that you’ve sought because the document must be served personally and you haven’t done that...
96 On 9 June 2018 Mr Lamont filed an ex parte application in a case seeking an order under r 6.14 of the FCCR for leave to serve process on Mr Nicholas in New Zealand. The primary judge explained the process by which service should be effected in a detailed exchange with Mr Lamont.
97 These matters are contextually important. By the time that the trial was conducted Mr Lamont had demonstrated himself to be an intelligent and capable litigant in person. He had shown capacity to ascertain and understand the FCCR and utilise them in order to prosecute his case. He had provided rational answers to questions from the bench, and had filed and relied upon evidence. The primary judge was entitled to form the view, having regard to the conduct of the case by Mr Lamont, that he was aware of his ability to invoke the rules of the court to seek the production of documents, as indeed he appeared to have done in his interlocutory application of 2 May 2018. Mr Lamont’s affirmative response to the question that he was seeking relief in the nature of discovery would no doubt only have served to confirm that Mr Lamont was familiar with these procedures. It was apparent that Mr Lamont had taken the opportunity to consider and use the rules of practice and procedure governing the FCCA. Mr Lamont is obviously literate and intelligent. The competence with which he prepared his own statement of claim demonstrated that he was able to read and comply with the requirements of such a document and, as his successful defence of the summary dismissal application demonstrated, Mr Lamont was capable of not only preparing that document, but also filing affidavit evidence to support the claims made therein.
98 In the present appeal, Mr Lamont relies upon his affidavit of 28 July 2020 filed in support of ground 2 in this appeal wherein he contends that he did not have familiarity with court processes of discovery, notices to produce and subpoenas. He gives evidence that had he known about such processes he would have taken steps to seek documents by way of discovery going to the profits of the respondents (relevantly, only Mr Nicholas) and also a subpoena to the ANZ bank for bank statements in relation to any accounts held in the respondents’ names (relevantly, only Mr Nicholas). Mr Lamont also gives evidence that although he had a vague memory of the primary judge mentioning discovery and subpoenas, he thought that this was after the delivery of the 2019 judgment. He gives evidence that he did not understand: (a) any of those processes before the delivery of the 2019 judgment; and (2) that he could wait until after the conclusion of the hearing to elect between damages and an account of profits.
99 Mr Lamont also places reliance on the audio file of the trial of the proceedings on 10 December 2018 where the primary judge informed him that it was necessary for him to prove by evidence a rational basis for seeking damages or an account of profits. He submits that his answers to the comments made by the primary judge should have put the primary judge on notice that Mr Lamont did not understand that he could engage the processes of discovery and the issue of subpoenas to demonstrate that Mr Nicholas was indeed liable for infringing conduct in Australia and also that he needed evidence to establish quantum of damages or an account of profits with respect to the actions of Mr Nicholas.
100 Despite the care with which the submissions were advanced for Mr Lamont, I do not consider that he has established that he was denied a right to a fair hearing in the proceedings below.
101 First, the factual matters surveyed above demonstrate that, whatever Mr Lamont’s subjective knowledge was, during the course of the proceedings prior to the trial the primary judge had the opportunity on several occasions to observe Mr Lamont and form a view as to his capacities. Viewed objectively, those capacities included, as I have noted, the ability to distil factual assertions and legal arguments into a competent statement of claim, and to file evidence in support of it.
102 Secondly, in addressing the interlocutory applications advanced by and against Mr Lamont, the primary judge was in a position to perceive that Mr Lamont had invoked procedures available under the FCCR in order to prosecute his case. The primary judge was entitled to form the view that Mr Lamont had obtained access to and understood the rules relevant to the issue of subpoenas and notices to produce, as well as discovery. Indeed, in his application in a case filed on 24 April 2018 Mr Lamont had referred to the rules in the FCCR in respect of each of those procedures.
103 Thirdly, by the time of the trial, the proceedings had been ongoing for several years. The primary judge had, during the course of interlocutory applications, explained to Mr Lamont the need for him to support his case by way of evidence, and Mr Lamont had done so. He was informed by the primary judge during the 6 April 2018 interlocutory hearing that, assuming he was successful in establishing his claim for trade mark infringement, he also needed to prove any claim for damages or an account of profits. To an objective observer, and no doubt also to the primary judge, Mr Lamont appears to have been a litigant who was able to understand broadly the nature of his case and what he was required to do to prove it. In this regard, Mr Lamont’s position is in stark contrast with that of a defendant in criminal proceedings or a bankrupt the subject of sequestration orders: c.f. Dietrich and Boensch. He is the active protagonist in commercial proceedings conducted for his own benefit.
104 The court had a duty to ensure that he had a fair trial, but not to advise him about how he might maximise the return that he might receive for the conduct of his case, or explain to him that he should seek discovery, issue notices to produce or subpoenas in circumstances where it was objectively plain that he knew of his ability to invoke those processes to support his case. Had the primary judge taken steps to advise him of such matters at the trial, or granted him an adjournment during the conduct of the trial for that purpose, the self-represented respondents would quite justifiably have been concerned that the court was giving Mr Lamont advice as to how he could best succeed in the case. In my view, the primary judge correctly balanced his duty to provide assistance to Mr Lamont with ensuring that the trial was fair for all parties: see Hamod at [315].
105 For the reasons set out above, the appeal must be dismissed. As Mr Nicholas did not participate in the proceedings, I make no order as to costs.
I certify that the preceding one hundred and five (105) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Burley. |
Associate:
NSD 33 of 2020 | |
RIMA NICHOLAS |
