Background and decision
On 26 November 2013 Besanko J handed down a decision restraining Bob Jane from using his own name to sell tyres, wheels, batteries and other accessories for cars (see Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255).
In addition to a successful racing career, Bob Jane (‘the respondent’) founded the well-known tyre company Bob Jane T-Marts in 1965. He acted as a company directorand shareholder until 2011, when his son, Rodney Jane (‘the applicant’), took over as CEO after a bitter family dispute.Following his departure from Bob Jane Corporation Pty Ltd (owner of Bob Jane T-Marts), Bob Jane commenced conducting business selling tyres, wheels and other car accessories through new company names (such as Bob Jane Global Tyre Corporation Limited and Bob Jane Southern Motors Pty Ltd), trade marks (see below) and domain names (such as www.bobjaneglobal.com and www.janetyres.com) containing his name or variations of it.
Bob Jane also contacted a number of Bob Jane T-Marts’s long time suppliers and franchisees in what appeared to be an attempt to redirect their business relationships. In response to Rodney Jane’s request that his father cease contacting Bob Jane Corporation Pty Ltd’s affiliates, Bob Jane responded with an email stating “… I will contract who I like, when I like, about what I like. You are a liar and a thief. Sue me …” Accordingly, Rodney Jane took his father up on his invitation by commencing proceedings on 19 May 2011 for trade mark infringement, passing off and misleading and deceptive conduct. Rodney Jane was successful on all grounds.
Trade mark infringement, passing off and misleading and deceptive conduct
The applicant succesfully made out trade mark infringement based on the degree of similarity between Bob Jane Corporation Pty Ltd’s trade marks (below) and the trade marks owned by Bob Jane’s new companies (below). Besanko J found that the use of the words “JANE” and “BOB JANE” in Bob Jane’s marks (as well as the use of the words in company names, domain names and paid advertising on Google) was identical or deceptively similar to Bob Jane Corporation Pty Ltd’s marks. Further, the Court heard evidence of confusion caused as a result of the similarity between the marks.
he court explored a possible defence under s 122 of the Trade Marks Act since he was using his own name. However this defence was rejected by his Honour for several reasons. Not only did the respondent fail in discharging the onus of proof, there was a vast amount of contradictory evidence supporting the fact that Bob Jane had not acted in good faith in his use of the trade marks. On the facts, his Honour found that it was obvious that Bob Jane was relying on the reputation of Bob Jane Corporation Pty Ltd and Bob Jane T-Marts to sway suppliers, franchisees and customers to his new businesses.
Subsidiary to the infringement claim, his Honour also found that Bob Jane’s use of the marks constituted passing off. Further, Bob Jane’s representation to suppliers and franchisees that his Bob Jane online superstore would sell products “30%-50% cheaper” than the applicant constituted misleading and deceptive conduct contrary to ss 18 and 29 of the Australian Consumer Law since the respondent failed to consider all input costs such as freight, delivery to store, disposal of old tyres and so on.
Costs
Besanko J did not appear hesitant to order indemnity costs for the applicant, especially in light of the setting aside of a final judgment of the Court, on the basis that the respondent would defend the proceeding and that it had arguable grounds to do so. His Honour described such a move as a “big step.”