FEDERAL COURT OF AUSTRALIA
Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255
| IN THE FEDERAL COURT OF AUSTRALIA | |
| DATE OF ORDER: | |
| WHERE MADE: |
THE COURT ORDERS THAT:
1. The applicant be granted leave to change the name of the first respondent to ACN 149 801 141 Pty Ltd.
2. The applicant be granted leave to change the name of the second respondent to Bob Jane Southern Motors Pty Ltd.
3. The applicant be granted leave to change the name of the third respondent to Calder Park Promotions Pty Ltd (in liq).
4. The applicant be granted leave to proceed against the third respondent pursuant to the provisions of the Corporations Act 2001 (Cth).
FINAL RELIEF
THE COURT DECLARES THAT:
1. By the respondents making representations in:
(i) an email sent by the fourth respondent to the applicant's suppliers on 5 May 2011;
(ii) advertisements placed on the Google search facility between 8 June 2011 and 25 October 2011,
that the products available from the respondents are “30% to 50% cheaper” than those of the respondents’ competitors, when such representation does not take into account the cost of:
(a) freight;
(b) delivery to store;
(c) removal of the old tyre;
(d) fitting of the new tyre, including a new valve;
(e) wheel balancing;
(f) disposal of the old tyre,
the respondents have engaged in conduct that is misleading or deceptive or likely to mislead or deceive in contravention of s 18 of the Australian Consumer Law.
AND THE COURT ORDERS THAT:
1. The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, selling, supplying, offering for sale or supply, or advertising or promoting for sale or supply, in Australia:
(a) tyres for motor vehicles;
(b) wheels for motor vehicles;
(c) batteries for motor vehicles;
(d) accessories for auto motive vehicle parts (including tyres and wheels);
(e) services relating to the installation and fitting of vehicle wheels, tyres, batteries and other vehicle parts and fittings,
(the “respondents’ goods and services”),
bearing or under or by reference to the following marks (or any of them):
(f) the mark “BOB JANE”;
(g) the mark “BOB JANE GLOBAL”;
(h) the BOB JANE device depicted in Section 1 of Annexure A hereto or any other mark substantially identical with or deceptively similar to the BOB JANE device;
(i) the device depicted in Section 3 of Annexure A hereto,
(the “respondents’ marks”)
or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to either of:
(j) trade mark No. 929097 for the mark “BOB JANE”,
(k) trade mark No. 919561 for the mark “BOB JANE T-MARTS” and device,
(the “applicant’s trade marks”).
2. The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, selling, supplying or offering for sale or supply or advertising or promoting for sale or supply, in Australia, the respondents’ goods and services, bearing or under or by reference to the following marks (or any of them):
(a) the mark “JANE TYRES”;
(b) a mark that includes the term “JANE TYRES”,
(the “respondents’ JANE marks”),
or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to either of:
(c) trade mark No. 1102780 for the mark “JANE FLEET” and device;
(d) trade mark No. 1124705 for the mark “JANE FLEET” and device,
(the “applicant’s JANE FLEET trade marks”).
3. The respondents (and each of them) be restrained, whether by themselves or by their servants or agents or howsoever otherwise, from trading as a business under any name that is (or includes) JANE or a name that is substantially identical with or deceptively similar to the respondents’ marks or the respondents’ JANE marks, or under or by reference to any other trade mark that is substantially identical with or deceptively similar to the applicant’s trade marks or the applicant’s JANE FLEET trade marks.
4. The second respondent and sixth respondent forthwith change its company name to a name that does not include JANE or any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks and which is not substantially identical with or deceptively similar to any of applicant’s trade marks or the applicant’s JANE FLEET trade marks.
5. The first, fourth and seventh respondents forthwith change the signage of the premises located at 509 King Street, West Melbourne, Victoria so as to cease using as a trade mark any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks, or any mark that is substantially identical with or deceptively similar to any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks.
6. The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, representing that the products available from the respondents are “30% to 50% cheaper” than those of the respondents’ competitors, when such representation does not take into account the cost of:
(a) freight;
(b) delivery to store;
(c) removal of the old tyre;
(d) fitting of the new tyre, including a new valve;
(e) wheel balancing;
(f) disposal of the old tyre.
7. The respondents forthwith deliver up on oath to the applicant all of the respondents’ goods and advertising and promotional material bearing the respondents’ marks or the respondents’ JANE marks or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to applicant’s trade marks or the applicant’s JANE FLEET trade marks.
8. The respondents forthwith transfer to the applicant registration of the:
(a) bobjaneglobal.com domain name; and
(b) janetyres.com domain name,
and any other domain name that is substantially identical with or deceptively similar to the applicant’s trade marks or the applicant’s JANE FLEET trade marks.
9. The cross-claim commenced by Notice of Cross-Claim dated 2 August 2011 be dismissed.
10. The respondents pay the applicant’s costs of the proceeding (including reserved costs) on an indemnity basis from 2 February 2012, and otherwise on a party/party basis.
ANNEXURE A
Section 1 – BOB JANE device
Section 2 – JANE FLEET device
Section 3 – the Respondents’ New Logo
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
| SOUTH AUSTRALIA DISTRICT REGISTRY | |
| GENERAL DIVISION | VID 418 of 2011 |
| BETWEEN: | BOB JANE CORPORATION PTY LTD ACN 005 870 431 Applicant |
| AND: | aCn 149 801 141 PTY LTD First Respondent BOB JANE SOUTHERN MOTORS PTY LTD Second Respondent CALDER PARK PROMOTIONS PTY LTD (IN LIQ) (ACN 138 012 021) Third Respondent ROBERT FREDERICK JANE Fourth Respondent DENNIS PETER RIGON Fifth Respondent BOB JANE GLOBAL TYRE CORPORATION (HONG KONG) LIMITED Sixth Respondent ACN 154 904 604 PTY LTD Seventh Respondent |
| JUDGE: | BESANKO J |
| DATE: | 26 November 2013 |
| PLACE: | ADELAIDE via video link to melbourne |
REASONS FOR JUDGMENT
INTRODUCTION
1 The applicant, Bob Jane Corporation Pty Ltd, claims injunctive, declaratory and other relief against the respondents. The basis of the applicant’s claims are alleged infringements of the applicant’s trade marks, passing off, alleged misleading and deceptive conduct under s 18(1) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) and alleged misrepresentations in relation to the supply or possible supply of goods and services under s 29(1)(g) of the Australian Consumer Law. The corporate respondents are alleged to be directly liable in relation to the causes of action pleaded against them and the respondents who are natural persons, are alleged to be liable as joint tortfeasors and as persons involved in the contraventions under the Australian Consumer Law.
The parties
2 Mr Robert Frederick Jane, or Bob Jane as he is known, was a well-known racing car driver who established a successful business involving the sale of automotive accessories, principally tyres. From approximately 1981 the business was owned and conducted by the applicant and it has established a substantial reputation as a trader in the area. A major component of its business is the Bob Jane T-Marts business. Mr Rodney Bruce Jane, Bob Jane’s son, has worked in the Bob Jane T-Marts business in various capacities since 1990. He became a director of the applicant on 5 May 2000 and the chief executive officer of the company in January 2002. He described the applicant as one of the leading automotive tyre and wheel retailers in Australia. The business of the applicant involved and involves the following:
(1) the sale of automotive vehicle parts including tyres and wheels for motor vehicles;
(2) the sale of accessories for automotive vehicles and parts including tyres and wheels;
(3) the sale of batteries; and
(4) the provision of tyre and wheel installation and fitting, balancing, calibration and testing services.
3 Until January 2011 Bob Jane was a director and shareholder of the applicant. As a result of a dispute between Bob Jane and members of his family, Bob Jane ceased to be a director and shareholder of the applicant. He commenced conducting a business in essentially the same area of operation as the applicant and that led to the applicant commencing this proceeding on 19 May 2011.
4 The first respondent was incorporated on 11 March 2011. From that date to 17 July 2011, the name of the company was Bob Jane Global Tyre Corporation (Australia) Pty Ltd. From 18 July 2011 to 6 February 2013, the name of the company was Webtyre.net Pty Ltd. From 7 February 2013 to 1 August 2013, the name of the company was Kings Cheapest Tyres Pty Ltd. From 2 August 2013 to the date of trial, the name of the company was ACN 149 801 141 Pty Ltd.
5 The second respondent was incorporated on 27 January 2011. From that date to 7 March 2011, the name of the company was Bob Jane China Corporation Pty Ltd. From 8 March 2011 to 9 August 2011, the name of the company was Bob Jane China Corporation (Australia) Pty Ltd. From 10 August 2011 to 3 February 2013, the name of the company was Webtyre.net Victoria Pty Ltd. From 4 February 2013 to 1 August 2013, the name of the company was Bob Jane Networking Plus Pty Ltd. From 2 August 2013 to the date of trial, the name of the company was Bob Jane Southern Motors Pty Ltd.
6 The third respondent was incorporated on 30 June 2009. From that date to 2 July 2009, the name of the company was ACN 138 012 021 Pty Ltd. From 3 July 2009 to 22 December 2009, the name of the company was Australian Motorsport Club Pty Ltd. From 23 December 2009 to the date of trial, the name of the company was Calder Park Promotions Pty Ltd. The third respondent went into liquidation on 26 June 2013. The liquidators are aware of the orders sought by the applicant, and I am satisfied that they do not oppose the making of those orders.
7 As I have said, Bob Jane who is the fourth respondent, was a former director and shareholder of the applicant. He has been a director, company secretary and the sole shareholder of the first respondent since 11 March 2011. He has been a director, company secretary and the sole shareholder of the second respondent from 27 January 2011. From 2 December 2011 he has been the sole director of the second respondent. He has been a director and company secretary of the third respondent from 30 June 2009. From 2 December 2011 he has been the sole director of the third respondent. From 21 December 2009 he has been the sole shareholder of the third respondent. He has been a director of the sixth respondent from 31 January 2011.
8 Bob Jane has been a director, company secretary and the sole shareholder of the seventh respondent from 22 December 2011 and he has been the sole director from 22 December 2012.
9 Mr Dennis Peter Rigon, who is the fifth respondent, was a director of the first respondent from 11 March 2011 to 27 November 2012.
10 In his amended defence dated 2 August 2011 Bob Jane admitted that he was at that time, and at all material times, had been the controlling mind of each of the first, second, third and sixth respondents. In the same defence, Mr Rigon admitted that he was the controlling mind of the first, second and sixth respondents, but he denied that he was the controlling mind of the third respondent.
11 The sixth respondent was incorporated in Hong Kong on 7 January 2011. From that date to 22 February 2011, it was known as Best Select Holdings Limited. From 23 February 2011 to the date of trial, it was known as Bob Jane Global Tyre Corporation (Hong Kong) Limited.
12 The seventh respondent was incorporated on 22 December 2011. From that date to 1 August 2013, it was known as Bob Jane Southern Motors Pty Ltd. From 2 August 2013 to the date of trial, it was known as ACN 154 904 604 Pty Ltd and the second respondent took the name of Bob Jane Southern Motors Pty Ltd.
13 A number of the corporate respondents have or have had the words, Bob Jane, in their name. The relationship between this fact and when Bob Jane left the applicant on or about 14 January 2011 should be noted. The first respondent, Bob Jane Global Tyre Corporation (Australia) Pty Ltd, was incorporated on 11 March 2011. The second respondent, Bob Jane China Corporation Pty Ltd, was incorporated on 27 January 2011. Although the sixth respondent, Bob Jane Global Tyre Corporation (Hong Kong) Limited, was incorporated before 14 January 2011, the name of the company was changed to the aforementioned name on 23 February 2011. The seventh respondent, Bob Jane Southern Motors Pty Ltd, was incorporated under that name on 22 December 2011.
The history of the proceeding
14 The proceeding has a long history. When the proceeding was commenced there were five respondents, namely, the first five respondents referred to above. The sixth respondent was joined to the proceeding on 12 July 2011 and the seventh respondent was joined to the proceeding on 8 August 2013. The key figure in the respondents’ camp is Bob Jane.
15 In addition to seeking final relief, the applicant sought an interlocutory injunction based on the infringement of the applicant’s trade marks, passing off and contraventions of ss 18 and 29(1)(g) of the Australian Consumer Law. On 9 June 2011, a judge of this Court granted the following interlocutory relief:
1. The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents of howsoever otherwise, selling, supplying or offering for sale or supply or advertising or promoting for sale or supply, in Australia:
(a) tyres for motor vehicles;
(b) wheels for motor vehicles;
(c) batteries for motor vehicles;
(d) accessories for auto motive vehicle parts (including tyres and wheels);
(e) services relating to the installation and fitting of vehicle wheels, tyres, batteries and other vehicle parts and fittings;
bearing or under or by reference to the following marks (or any of them):
(a) the mark “BOB JANE”
(b) the mark “BOB JANE GLOBAL”;
(c) the BOB JANE device, further and alternatively a mark substantially identical with or deceptively similar to the BOB JANE device,
or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to either of the applicant’s trade marks, being:
(a) trade mark No. 929097 for the mark “BOB JANE”,
(b) trade mark No. 919561 for the mark “BOB JANE T-MARTS” and device,
until the hearing and determination of the proceeding or until further order of the Court.
(Bob Jane Corporation Pty Ltd v Bob Jane Global Tyres Corporation (Australia) Pty Ltd [2011] FCA 739). The Judge also made orders designed to progress the proceeding to a trial of the applicant’s claims for final relief.
16 The applicant filed and served an amended application and an amended statement of claim on 15 July 2011.
17 The applicant alleged that the respondents did not comply with interlocutory orders of a procedural nature made by the Court on 12 July 2011 and 13 October 2011. It brought an application for judgment against the respondents on its application and on a cross-claim which the respondents had brought. The applicant relied on Rules 5.22(b) and 5.23(2)(c) of the Federal Court Rules 2011 (Cth). The application came on for hearing before a judge of this Court on 3 November 2011.
18 The following events occurred before 3 November 2011. First, on 15 July 2011 the applicant amended its statement of claim to add a claim that the respondents had also infringed two other trade marks owned by it, namely, the Jane Fleet trade marks which are described below (at [47] and [48]). Secondly, the solicitors who had previously acted for the respondents ceased to act for them in late September/early October 2011. Thirdly, the applicant also sought final relief with respect to a representation made by the respondents about the savings which could be achieved by the purchase of their goods and services. This had been part of the applicant’s original claim, but it had not been the subject of the interlocutory relief granted on 9 June 2011.
19 The respondents did not appear at the hearing on 3 November 2011. Bob Jane did communicate with the applicant and, it seems, the Court, and he sought an adjournment of the hearing on the ground that the respondents’ solicitors had recently ceased to act for them and further time was needed to prepare for the hearing. The Judge proceeded with the hearing of the applicant’s application.
20 The Judge found that the applicant had made out the elements of its application and he granted final relief which may be summarised as follows:
(1) injunctive relief preventing the respondents from infringing the applicant’s trade marks;
(2) injunctive relief preventing the respondents from making misrepresentations about savings achieved by purchasing the respondents’ goods and services;
(3) orders for the delivery up of infringing goods, advertising and promotional material;
(4) orders for the transfer by the respondents to the applicant of specified domain names; and
(5) orders for corrective notice to be given to the respondents’ suppliers.
21 The respondents’ cross-claim was dismissed and various orders for the payment of indemnity costs were made (Bob Jane Corporation Pty Ltd v Bob Jane Global Tyres Corporation (Australia) Pty Ltd (No 2) [2011] FCA 1363).
22 On 11 November 2011 the respondents applied to set aside the final judgment entered against them on 3 November 2011. Their application was heard on 5 December and 15 December 2011. By the latter date they had engaged a new firm of solicitors to act for them. A further hearing was held on 2 February 2012. The Judge hearing the respondents’ application considered that the issues were whether the respondents had an acceptable explanation for their failure to attend on 3 November 2011 and whether they had an arguable case which justified the matter going to trial.
23 As to the first matter, the Judge found:
[20] … The circumstances are unusual. I am satisfied that Mr Jane, and through him, the corporate respondents, were under the influence of a persuasive charlatan. Mr Jane’s capacity to choose an independent course was restricted by his age and medical conditions. Mr Rigon, who resisted Mr McClure’s advice, ultimately gave way to Mr Jane, who was primarily interested as the sole shareholder in the corporate respondents.
(Bob Jane Corporation Pty Ltd v Webtyre.net. Pty Ltd [2012] FCA 168).
24 As to the second matter, the Judge found that there was sufficient material before the Court for him to conclude that it could be found that it was unlikely the respondents would engage in unlawful conduct in the future and therefore a permanent injunction might be refused. The Judge also found that the respondents had an arguable case that some of the orders made on 3 November 2011 were too wide. The Judge set aside the final judgment and, in essence, reinstated the interlocutory injunction he made on 9 June 2011 (Bob Jane Corporation Pty Ltd v Webtyre.net Pty Ltd [2012] FCA 168).
25 I have mentioned a cross-claim by the respondents. That was a claim by the first, fourth and sixth respondents against the applicant. On 2 May 2012 the then solicitors for those respondents wrote to the applicant’s solicitors stating that they would not be pursuing the cross-claim.
26 In December 2012 the respondents’ then solicitors ceased to act for them.
27 In April 2013 the parties were advised that the proceeding was listed for trial commencing on 2 September 2013. I held a directions hearing on 8 August 2013.
28 On 5 August 2013 Bob Jane wrote to the Court asking that the hearing listed for 8 August 2013 take place in the latter part of August 2013. I decided to proceed with the directions hearing and on 8 August 2013 I made the following orders and directions:
1. The Applicant be granted leave to join ACN 154 904 604 Pty Ltd as the Seventh Respondent to the proceeding.
2. The Applicant be granted leave to change the name of the First Respondent to Kings Cheapest Tyres Pty Ltd.
3. The Applicant has leave to file and serve a Further Amended Statement of Claim substantially in the form of the Further Amended Statement of Claim which comprises part of Annexure RRH-17 to the affidavit of Richard Rodney Lester Hoad sworn on 7 August 2013 on or before 9 August 2013.
4. The Applicant has leave to file and serve a Further Amended Application substantially in the form of the Further Amended Application which comprises part of Annexure RRH-17 to the affidavit of Richard Rodney Lesley Hoad sworn on 7 August 2013 on or before 9 August 2013.
5. The Respondents file and serve any Amended Defence to the Applicant's Further Amended Statement of Claim on or before 19 August 2013.
6. The Applicant file and serve any Reply to any Amended Defence on or before 22 August 2013.
7. The parties file and serve any objections as to the admissibility of evidence on or before 22 August 2013.
8. Each party give notice to the other of witnesses that they intend to call for cross examination on or before 22 August 2013.
9. Costs reserved.
10. Liberty to apply.
29 On 29 August 2013 my chambers received an email message from Mr Rigon in the following terms:
I have just received today your email to my Hotmail address dated 21/08/2013.
Since 2 January 2013 I have been in China and I do not regularly check my Hotmail as it is rarely used.
I would like to inform the Court that on 20 November 2012, I had resigned for (sic) all Mr. Bob Jane companies and have not contacted Mr Jane since my departure on that date.
On Wed, 17 Jul 2013 07:50 I had advised the Applicants Solicitors Clayton Utz, that I was in China and would not be able to attend court proceedings in this matter and that I was not privy to the ongoing procedures and the matters relating to this hearing. (see attached)
I’m currently in Zhuhai, travelling to Guangzhou then Shanghai on business.
I would like to request the courts permission to attend this hearing via video conference or skype.
For video conference on 2 September I can be in Guangzhou our local office.
Further to this I have received and (sic) email from the Applicants Solicitors on Wed, 28 Aug 2013 02:47:57 advising “that that the Applicants have filed an additional volume of the Court Book with the Court. You have been served with all the documents contained in the additional volume”. However I am not in possession of this Court book.
Regardless of this, I am willing to be cross-examined via video conference if the Court grants leave to do so.
30 By letter emailed to Mr Rigon on the same date he was advised by my chambers that his request to appear by video conference or skype on 2 September 2013 had been refused. There was no proper reason to grant the request. The reason proffered by Mr Rigon, that he would be in China and unable to attend the hearing, was a matter for him.
31 On the morning of the first day of trial my chambers received an email from Bob Jane’s daughter, Ms Courtney Jane. The email was in the following terms:
This email is to advise you that my Father, Robert Frederick Jane has been admitted into hospital overnight. As a result he will be unable to attend the court hearing that is scheduled for tomorrow, the 2nd September 2013.
At this stage, he will be in hospital for several days.
If you need anything further, please do not hesitate to contact me on 0438 204 062 or courtneyjane@vendettatyre.com.
32 I instructed my associate to respond to that email as follows:
I refer to Ms Courtney Jane’s email dated 2 September 2013. Please be advised that the hearing is proceeding. Please also be advised that if the Respondents wish to be heard during the hearing they should appear at Court either personally or by a solicitor or (should the Court grant leave) by an authorised representative.
A letter containing that response was sent by email at lunchtime on 2 September 2013.
The NON APPEARANCE OF THE RESPONDENTS AND THE conduct of the trial
33 None of the respondents appeared at the trial on 2 September 2013 or on the following day when the trial continued. The trial proceeded in their absence.
34 Bob Jane and his companies have been involved in a number of disputes with the applicant and Mr Rodney Jane. One such dispute was a claim by Bob Jane against the applicant and another in the Supreme Court of Victoria. The trial was due to commence on 6 May 2013. Five days before that date Bob Jane’s solicitors sought to be released from their retainer. On 6 May 2013 a friend of Bob Jane appeared before the Court seeking an adjournment on the grounds of Bob Jane’s poor health and the fact that he had recently lost his legal team. The Court adjourned the hearing to the following day. Bob Jane appeared the following day and renewed the application for an adjournment. That application was refused and in due course the trial proceeded with Bob Jane being represented by both solicitors and counsel. Judgment was delivered in the action on 9 August 2013 and a further hearing on costs and the orders to be made was held on 30 August 2013. The day before that hearing Bob Jane wrote to Mr Rodney Jane about matters relating to the proceeding and at the hearing on 30 August 2013 Bob Jane was represented by solicitors and counsel. That was on the Friday and the trial before me commenced on the following Monday.
35 It did not seem to me that the Court should adjourn a trial which had been listed for some time on the basis of the email received on the morning of the trial (see in this context, Pachkovski v Australian Executor Trustee Ltd [2011] NSWCA 94). The email did not establish a genuine medical emergency and I considered that it was appropriate to proceed with the trial having regard to the history of the disputes between the parties. In any event, the respondents had the opportunity to appear at the Court either on the afternoon of 2 September 2013 or the morning of 3 September 2013 and put forward evidence in support of their application for an adjournment. They did not do that.
36 At the trial the applicant opened its case and then tendered 28 affidavits and a number of documents. It then made closing submissions and addressed the orders it sought. Although the proceeding was not contested, it is necessary for me to make findings of fact on the balance of probabilities and to determine if it is appropriate to make the orders sought having regard to the relevant legal principles.
THE FACTS
37 The facts set out below are my findings of fact.
38 The applicant’s business of Bob Jane T-Marts is conducted from stores operated by the applicant or through franchisees who have franchise agreements with the applicant. The first franchise for the Bob Jane T-Marts business was granted in 1972. That number steadily grew and there are now stores operated by the applicant or stores operated by franchisees in every capital city and major regional area in Australia. In May 2011 there were approximately 133 Bob Jane T-Mart stores in Australia. The business is one of Australia’s leading automotive tyre and wheel retailers.
39 The applicant owns a number of trade marks in Australia and elsewhere throughout the world. For the purposes of this case, four Australian trade marks are relevant.
40 The first two trade marks were referred to in the evidence and in the applicant’s submissions as the “Bob Jane trade marks” and I will adopt that description except where it is necessary to distinguish between them. The first of the two trade marks is a word mark, “BOB JANE”, which was registered with effect from 1 October 2002 in relation to five classes of goods and services. There is no need for me to identify the classes precisely; it is sufficient to say that they relate to tyre fitting equipment, automotive vehicle parts including tyres and wheels, retail automotive parts, accessories and tyre stores, automotive maintenance and repair services and testing of vehicles, vehicle parts and accessories.
41 The second Bob Jane trade mark is a device mark containing words and a logo which was registered with effect from 11 July 2002 and is as follows:
42 The Bob Jane device mark was registered with respect to three of the five classes in relation to which the Bob Jane word mark was registered. It is not necessary for me to set out any further details.
43 The applicant’s stores and the stores of the franchisees trade under and by reference to the Bob Jane trade marks. The franchisees consider that the trade marks and the goodwill in them are important assets of the businesses (including goodwill) which they conduct. Since the 1980’s, the Bob Jane word mark and a Bob Jane device mark similar to the Bob Jane device mark have been fundamental to the marketing and branding strategy of the Bob Jane T-Marts business conducted by the applicant directly or through franchisees. The Bob Jane device mark was developed in the late 1990’s and has been fundamental to the marketing and branding strategy of the Bob Jane T-Marts business since then.
44 The Bob Jane trade marks have been extensively used to promote the Bob Jane T-Marts business through a variety of media including, for example, store signage, television, the internet and sponsorship of major motorsport events.
45 There was evidence before the Court, which I accept, of the various forms of advertising over the years including, for example, store signage, magazines, catalogues and newspapers, directory listings and the internet. The applicant’s advertising budget is substantial and the words, BOB JANE, and the Bob Jane device mark are essential elements of the applicant’s marketing and branding strategy.
46 The respondents admitted in their amended defence dated 14 July 2011 and, in any event, I find on the evidence that the applicant has generated a substantial reputation and goodwill in Australia in the Bob Jane trade marks.
47 The applicant’s third and fourth trade marks were referred to in the evidence and in submissions as the applicant’s Jane Fleet marks and I will adopt that description. They relate to a business division of the applicant which services the fleet industry in Australia. The Jane Fleet marks consist of the following device:
48 There are two Jane Fleet marks. The first was registered with effect from 9 March 2006 with respect to batteries and the retailing and wholesaling of tyres, wheels, batteries and associated parts and accessories. The second was registered with effect from 20 July 2006 with respect to general automotive parts for vehicles being tyres, wheels and associated parts and accessories.
49 The applicant’s Jane Fleet division operates a website which features the Jane Fleet marks. It provides what is described as a total tyre replacement solution to fleet operators including the management and replacement of passenger, four wheel drive and light and heavy commercial tyres on fleet vehicles. It operates in conjunction with the Bob Jane T-Marts business, as well as a number of independent tyre retailers.
50 In his evidence Mr Rodney Bruce Jane listed the fleet management businesses for which the applicant’s Jane Fleet division is the preferred supplier. There are 24 of them, but it is not necessary for me to set out the details.
51 The applicant’s Jane Fleet division was formally launched under the Jane Fleet trade marks in approximately the middle of 2009. The Jane Fleet mark had been used by the applicant on an ad hoc basis before that date. Since approximately the middle of 2009 the Jane Fleet mark has been used extensively in the promotion of the applicant’s Jane Fleet division by a variety of media including, for example, store signage, magazines, the internet and sponsorship of major participants in major motorsport events. The division generates substantial income for the applicant. The applicant’s franchises are service centres for customers of the Jane Fleet division. This is an opportunity provided by the applicant to its franchisees.
52 I am satisfied that by early 2011 the applicant had generated a substantial reputation and goodwill in Australia in relation to its Jane Fleet trade marks.
53 I turn now to the respondents’ conduct.
54 On or about 14 January 2011 Bob Jane sent an email to all Bob Jane T-Marts franchisees advising them as follows:
(1) that he had resigned as chairman, shareholder and owner of the applicant;
(2) that he had been the victim of a major fraud perpetrated on him by, among others, Mr Rodney Jane;
(3) that he was in the process of establishing some new global companies, including “a new online business in Australia for tyres and wheels including a new range of Bob Jane Featherlite truck wheels and truck tyres in addition to car tyres and wheels, batteries, tools and equipment etc.”; and
(4) that he was the chairman of the first three respondents.
55 On 8 February 2011 one of the applicant’s Italian suppliers met with Bob Jane and Mr Rigon and formed the mistaken impression that he was dealing with representatives of the applicant.
56 On 28 March 2011 the applicant wrote to Bob Jane asking him to cease contacting its franchisees and threatening him with legal proceedings if he continued to do so. Bob Jane’s response on 31 March 2011 was in the following terms:
Rodney,
I will contact who I like, when I like, about what I like.
You are a liar and a thief.
Sue me
Bob Jane
57 Before 18 April 2011 someone on the respondents’ side developed the following device:
I will refer to this as the Bob Jane Global device.
58 It was seen on the third respondent’s website and the applicant was advised.
59 On or about 4 May 2011 the applicant became aware that the respondents were operating a website at the web address of www.bobjaneglobal.com and that the website contained the Bob Jane Global device and variations of it and that it advertised a range of car and truck tyres, wheels, batteries and other equipment and tools.
60 The variations to the Bob Jane Global device were similar to the one set out above (at [57]) with the difference being the word(s) in the rectangular box. Various words appeared in that box instead of the word, Global, including “Global Tyres”, “Alloy Wheels”, “Battery”, “Racing”, “Workshop” and “Mobile Tyres”. To the right of the device in a black, rectangular box appeared the words, “BOB JANE GLOBAL TYRES” and those words, with the addition of the word “Store” appeared at the end of each section of the advertisements. There was also the website address or domain name and a map of the world with the words, “Bob Jane Global Tyre Corporation”. The map of the world sign, which I will refer to as the Bob Jane Global Tyre Corporation device, is as follows:
61 A Google search of “bob jane” and “bob jane t-mart” resulted in a paid advertisement for the respondents’ business. At about this time the third respondent’s website contained a device or logo in the form of the Bob Jane Global device. Furthermore, at about this time the applicant’s franchisees were being contacted by customers or potential customers seeking to purchase the respondents’ products or in response to the respondents’ advertisements. A number of affidavits from franchisees were put into evidence and I think it is clear that by reason of the respondents’ conduct, customers or potential customers were confused. It is clear that franchisees of the applicant were also confused and in some cases angry. A further device or logo appeared on the website. In May 2011 the respondents used the Bob Jane Global device in connection with an advertisement in the TraderTAG newspaper. The respondents sent a letter to the applicant’s suppliers in early May 2011 in the following terms:
Dear Friend,
As you know I have been in Tyre business for almost 50 years as the founder of the ‘Bob Jane T-Marts’ franchise, one of the world’s largest retailers of Tyres, Wheels & Auto Accessories. I have now seen the opportunity to launch full steam into the online business.
On the 4th May 2011, Bob Jane launched a new online website business www.bobjaneglobal.com.
The Bob Jane Global ONLINE SUPERSTORE is the largest of it’s kind globally.
Products and prices are some 30% to 50% lower than most competitors; the range is the widest available of any online business in it’s category and the delivery service is unique.
Launched initially in Australia, this online business will rapidly expand globally.
Bob Jane Global source globally, buy in bulk and pass those savings onto online customers. This ensures that customers obtain the LOWEST PRICES with an extensive range of Tyres, Wheels, Batteries for Passenger Vehicles, 4WD’s, Vans, Light Trucks, Heavy Trucks & Buses. Enhanced by our Motorsport heritage, Bob Jane also offers a range of Racing Apparel, Workshop Tools and Equipment.
Please visit our website and pass on to me your comments or better still pass this on to your colleagues who may be interested in purchasing some of the fine products online.
Kindest Regards,
Bob Jane
Chairman
www.bobjaneglobal.com
Bob Jane Global Tyre CorporationHong Kong Limited
Bob Jane Global Tyre Corporation(Australia) Pty Ltd
Bob Jane china Corporation (Australia) Pty Ltd
Calder Park Promotions Pty Ltd
Phone: + 61 3 9091 0800 I fax: +61 3 9217 8965
Direct: +61 3 9091 0801 I bobjane@bobjaneglobal.com
Address: 1 Holden Road I Diggers Rest, Vic, 3427 I Australia
62 Finally, the respondents were using a contact telephone number which was very similar to the applicant’s customer contact number.
63 Some time between 9 May 2011 and 10 June 2011 the respondents removed the Bob Jane Global Tyres device (and the variations thereof) from their website and replaced them with the following device:
I will refer to this as the Bob Jane Online Super Store device.
64 The respondents’ Bob Jane website as it appeared on 7 June 2011 contained the following features:
(1) each section of the website contained the respondents’ “Bob Jane Online Super Store” device in a prominent position;
(2) each section featured the words “Bob Jane Global Tyres” in a prominent position;
(3) the respondents’ product range was essentially unchanged;
(4) the websites’ homepage contained the following statement:
Bob Jane Global Tyre Corporation (Australia) Pty Ltd, will replace FREE of charge (not including fitting) any tyre that fails due to a manufacturing fault for the life of the tyre …”
(5) the website contained the “Bob Jane Global Tyre Corporation” device.
65 Invoices and receipts issued by the respondents at about this time contained the Bob Jane Online Super Store device and references to Bob Jane Global. A Google search of bob jane or bob jane t-mart referred to the respondents’ Bob Jane Global website and savings of 30% to 50% when buying online tyres, wheels and batteries.
66 In response to the interlocutory injunction granted on 9 June 2011 the respondents set up a new location for their online store, at www.janetyres.com, and adopted a new device for their business as follows:
I will refer to this as the Jane Tyres Online Superstore device.
67 As I understand it, to gain access to the website one was still directed through the Bob Jane Global website. On the Jane Tyres website the goods and services offered were very similar to the goods and services offered by the applicant’s business. The words, “JANE TYRES” appeared in a prominent position on each page of the website, together with the respondents’ Jane Tyres Online Superstore device. The following statements appeared on the website:
Bob Jane founder of the Bob Jane T-Marts commenced business as a car dealer in 1957 with Bob Jane Autoland, whilst binding his auto business and tyre business. In 1982 Bob Jane was the importer of Fulda tyres from Germany. The demand for tyres grew substantially and Bob Jane very shortly established Bob Jane Pty Ltd, Bob Jane Tyres Service Pty Ltd. In 1985 Bob Jane’s advertising agency at the time and Australian advertising guru Phillip Adams created the Bob Jane brand for the auto business and ultimately the tyre business. During these years Bob Jane raced several race cars and used motorsport to promote his brand. Today Bob Jane no longer has any commercial interests in the Bob Jane T-Mart business. Bob Jane now has a business venture known as “JANETYRES.COM”, Mr Jane continues to innovate and bring the lowest possible prices and quality products to consumers.
What Wikipedia says:
Robert “Bob” Jane (born 1929) is an Australian former race car driver and prominent businessman. A four-time winner of the Armstrong 500, the race that became the prestigious Bathurst 1000 and a four time Australian Touring Car Champion, Jane is perhaps best known nowadays for his chain of tyre retailers, Bob Jane T-Marts, Bob Jane was inducted into the V8 Supercar Hall of Fame in 2000.
68 In the About Us section of the website only, the following appears:
NOTICE TO OUR www.janetyres.com CUSTOMERS
Mr. Bob Jane founder of the ‘Bob Jane T-Marts’ is not in any way associated with the ‘Bob Jane T-Mart’ organization. Furthermore, ‘janetyres.com’ and Bob jane Tyre Corporation (Australia) Pty Ltd is also not in any way associated with Bob Jane T-Marts or the Bob Jane Corporation Pty Ltd
Therefore a NEW ONLINE business model is required. Our ONLINE business, ‘janetyres.com’ is a worldwide business that covers the globe. Bob Jane Global Tyre Corporation (Australia) Pty Ltd has registered headquarters in Australia, Hong Kong, Dalian China and is Australia’s first and largest ONLINE tyre portal dedicated to the SELLING DIRECT to consumers and end-users in Australia and worldwide.
69 The following may be noted about these statements. First, any disclaimer is not relevant to the alleged infringements of the applicant’s trade marks. Secondly, the reproduction of what is reported in Wikipedia has the potential to confuse the message in the disclaimer. Finally, the disclaimer comes too late. The searcher is already in the website, more interested in viewing the advertisements than reading disclaimers.
70 The Jane Tyres domain name, “janetyres.com” was registered in the name of the sixth respondent. The Bob Jane Global domain name (i.e., www.bobjaneglobal.com) was transferred from the third respondent to the sixth respondent.
71 On or about 28 June 2011 the respondents established a website at www.webtyre.net and on or about 14 July 2011 they established a website at www.trucktyre.net.
72 From at least about September 2011, the respondents began offering for sale and selling products bearing a variation of the Bob Jane mark, the mark Bob Jane Global or a variation thereof.
73 At least from 16 September 2011 until a date not known to the applicant, the respondents were offering through their trucktyre business jackets bearing what the applicant described as an earlier incarnation of the Bob Jane device.
74 At least from 8 August 2012 to November 2012 and until a date unknown to the applicant, the respondents’ trucktyre business and their webtyre business were offering for sale automotive accessories and, in particular, car jacks, under and by reference to relevant marks. A franchisee of the applicant purchased a lightweight jack from the respondents in August 2012 through the trucktyre website. He received the jack through the mail and it had “Bob Jane Global Co” on the box containing the jack and a sticker on the box as follows:
This is one of the variations of the Bob Jane Global device referred to earlier (at [60]).
75 In addition, the sticker had the domain name of Bob Jane Global.
76 A licensed private enquiry agent engaged by the applicant purchased a jack from the respondents in September 2012. He was issued with an invoice which contained the following words:
Webtyre.net Pty Ltd (Formerly Bob Jane Global Tyre Corporation Australian Pty Ltd).
77 He was given a receipt in the name of “Bob Jane Global Tyre”. The box containing the jack had a sticker with the Bob Jane Racing device (at [72]) on it. In late October 2012 the agent purchased a jack combo through the respondents’ trucktyre website and it was delivered in a case or box on which the following appeared:
(1) the Bob Jane Racing device;
(2) the Bob Jane Global domain name; and
(3) the name, Bob Jane Global Co.
78 From at least 15 April 2013 the respondents have been operating a retail outlet at 509 King Street, West Melbourne under the name “Bob Jane”. The signs on the outside of the premises refer to:
BOB JANE
SOUTHERN MOTORS
AUTO EQUIPMENT
and
KING’S CHEAPEST TYRES
OWNED BY BOB JANE AUSTRALIA’S TYRE KING FOR 50 YEARS
79 The business issued an invoice in the name of King’s Cheapest Tyre Pty Ltd, but an Eftpos receipt in the name of “Bob Jane Global Tyre”. A business card refers on one side to:
King’s Cheapest Tyres Pty Ltd
A company owned by Bob Jane
The Australian Tyre King for 50 years.
and on the other side it read:
BOB JANE SOUTHERN MOTORS PTY LTD
AUTO EQUIPMENT SPECIALISTS
80 A leaflet referred to:
Bob Jane
Racing Heritage
81 I now summarise the respondents’ use of the marks previously referred to.
82 The respondents have used the following marks in the course of their business:
(1) BOB JANE;
(2) BOB JANE GLOBAL;
(3) BOB JANE GLOBAL TYRE;
(4) BOB JANE GLOBAL TYRE CORPORATION;
(5) the Bob Jane Global device and variations thereof (see [57] and [72]);
(6) the Bob Jane Global Tyre Corporation device (see [60]);
(7) the Bob Jane Online Super Store device (see [63]);
(8) BOB JANE SOUTHERN MOTORS;
(9) JANE;
(10) JANE TYRES; and
(11) the Jane Tyres Online Superstore device (see [66]).
83 The respondents’ business has involved the provision of the following goods and services: the supply of automotive vehicle tyres and wheels, batteries and accessories for automotive vehicle parts; the provision of automotive and repair services; the provision of services consisting of the installation of vehicle wheels, tyres, batteries and other vehicle parts and fittings; the retail of automotive parts, accessories and tyre stores, and the retailing of vehicle parts, fittings and accessories.
84 As to the use by the respondents of each of these marks referred to above (at [57] – [80]), my findings are as follows.
85 BOB JANE has been used by the respondents in relation to all or some of the respondents’ goods or services. It has been used in the following media:
(1) sponsored Google advertisements from 4 May 2011 to 10 June 2011;
(2) keywords in respect of which the respondents acquired sponsored Google advertisements, alone and as keywords “Bob Jane T-Mart”, from 4 May 2011 to about 15 July 2011;
(3) as part of a device appearing on jackets sold through the respondents’ trucktyre business from at least September 2011 to a date unknown;
(4) as part of the signage on the respondents’ retail outlet in West Melbourne from at least April 2013 to the present; and
(5) as part of promotional material used at the respondents’ retail outlet in West Melbourne from at least 15 April 2013 to the present.
86 BOB JANE GLOBAL has been used in relation to all of the respondents’ goods and services. It has been used in the following media:
(1) in the operation of the respondents’ Bob Jane Global website from www.bobjaneglobal.com (“Bob Jane Global domain name”) home page from 4 May 2011 to about 10 June 2011;
(2) included in TraderTAG print media advertisements by reference to the Bob Jane Global domain name from 5 May 2011 to 11 May 2011;
(3) for inclusion in sponsored Google advertisements by reference to the Bob Jane Global domain name from 4 May 2011 to about 10 June 2011;
(4) for redirection of traffic from the Bob Jane Global website to the respondents’ Jane Tyres website from about 10 June 2011 to a date unknown;
(5) for redirection of traffic from the Bob Jane Global website to the respondents’ trucktyre business from at least 31 August 2011 to a date unknown;
(6) for inclusion throughout the respondents’ Bob Jane Global website from 4 May 2011 to about 10 June 2011;
(7) by way of multiple references on the respondents’ Bob Jane Global website from 4 May 2011 to around 10 June 2011;
(8) by way of multiple references on the respondents’ Jane Tyres website from about 10 June 2011 to about 8 July 2011.
87 BOB JANE GLOBAL TYRE has been used in relation to all of the respondents’ goods and services. It has been used in the following media:
(1) on receipts and invoices issued in respect of the respondents’ Jane Tyres website and the respondents’ webtyre business from at least 4 July 2012 to a date unknown;
(2) on receipts issued by the respondents’ retail outlet in West Melbourne from at least 15 April 2013 to the present.
88 BOB JANE GLOBAL TYRE CORPORATION has been used in relation to all of the respondents’ goods and services. It has been used in the following media:
(1) on the respondents’ Bob Jane Global website from 4 May 2011 to about 10 June 2011;
(2) on invoices issued in respect of the respondents’ Bob Jane Global website, the respondents’ Jane Tyres website and the respondents’ webtyre business from at least 16 May 2011 to a date unknown;
(3) as part of the name of the first respondent from 4 May 2011 to 17 July 2013;
(4) as part of the name of the sixth respondent from 4 May 2011 to present.
89 The Bob Jane Global device and the variations of the device have been used in relation to all of the respondents’ goods and services save that in the case of some of the variations there has been a more restricted use. In the case of the Bob Jane Global device, it has been used in the following media:
(1) on sections of the respondents’ Bob Jane Global website from 4 May 2011 to about 9 May 2011;
(2) in TraderTAG (and possibly other) print material advertisements from 5 May 2011 to 11 May 2011;
(3) on products sold through the respondents’ Bob Jane Global website from 4 May 2011 to about 9 May 2011;
(4) on the respondents’ service vans depicted on the respondents’ Bob Jane Global website from 4 May 2011 to about 9 May 2011.
90 The variation, being the Bob Jane Racing device (see [74]) has been used in relation to accessories for automotive vehicle parts including tyres and wheels and car jacks in particular. It was included on packaging of products sold through the respondents’ trucktyre business and webtyre business from at least 8 August 2012 to a date unknown.
91 The Bob Jane Global Tyre Corporation device has been used in relation to all of the respondents’ goods and services. It was on sections of the Bob Jane Global website from 4 May 2011 to about 9 May 2011.
92 The Bob Jane Online Super Store device has been used in relation to all of the respondents’ goods and services. It was on sections of the respondents’ Bob Jane Global website from about 9 May 2011 to about 10 June 2011.
93 BOB JANE SOUTHERN MOTORS has been used in relation to all of the respondents’ goods and services. It has been used in the following media:
(1) as the name of the second respondent from 2 August 2013 to the present;
(2) as the name of the seventh respondent from 22 December 2011 to 1 August 2013;
(3) on the signage of the respondents’ retail outlet at West Melbourne from 15 April 2013 to the present;
(4) on business cards used by the respondents’ retail outlet at West Melbourne from 15 April 2013 to the present.
94 JANE has been used in relation to all of the respondents’ goods and services. It is a keyword in respect of which the respondents’ acquired sponsored Google advertisements as part of keywords “Jane Fleet” from about 14 May 2011 to at least 25 October 2011.
95 JANE TYRES has been used in relation to all of the respondents’ goods and services. It has been used in the following media:
(1) in the operation of the respondents’ Jane Tyres website from the www.janetyres.com (“Jane Tyres domain name”) home page from around 10 June 2011 to around 8 July 2011;
(2) in sponsored Google advertisements as “Jane Tyres” and by reference to the Jane Tyres domain name from around 14 June 2011 to about 6 July 2011;
(3) for redirecting traffic from the Jane Tyres website to the respondents’ trucktyre business from at least 31 August 2011 to a date unknown;
(4) throughout the respondents’ Jane Tyres website from 10 June 2011 to about 8 July 2011;
(5) as keywords in respect of which the respondents acquired sponsored Google advertisements from about 16 June 2011 to at least 25 October 2011.
96 The Jane Tyres Online Superstore device has been used in relation to all of the respondents’ goods and services. It was included in the respondents’ Bob Jane Global website from about 10 June 2011 to about 8 July 2011.
97 From time to time, the respondents have made a representation about savings which may be achieved by purchasing goods and services from them. On 5 May 2011 the respondents wrote to the applicant’s suppliers and included in the correspondence was the following statement:
Products and prices are some 30% to 50% lower than most competitors; the range is the widest available of any online business in its category and the delivery service is unique.
98 The advertisements on the Google search engine for the respondents’ Bob Jane Global website, the Jane Tyres website and the Webtyre business referred to:
Save 30% to 50% when Buying Online
and on one occasion to the following:
Save 30% to 50% on tyres.
Issues on the application
99 The applicant seeks a declaration in the following terms:
By the respondents making representations in:
(i) an email sent by the fourth respondent to the applicant's suppliers on 5 May 2011;
(ii) advertisements placed on the Google search facility between 8 June 2011 and 25 October 2011,
that the products available from the respondents are “30% to 50% cheaper” than those of the respondents’ competitors, when such representation does not take into account the cost of:
(a) freight;
(b) delivery to store;
(c) removal of the old tyre;
(d) fitting of the new tyre, including a new valve;
(e) wheel balancing;
(f) disposal of the old tyre,
the respondents have engaged in conduct that is misleading or deceptive or likely to mislead or deceive in contravention of s 18 of the Australian Consumer Law.
100 The applicant seeks injunctions and other orders:
(1) The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, selling, supplying, offering for sale or supply, or advertising or promoting for sale or supply, in Australia:
(a) tyres for motor vehicles;
(b) wheels for motor vehicles;
(c) batteries for motor vehicles;
(d) accessories for auto motive vehicle parts (including tyres and wheels);
(e) services relating to the installation and fitting of vehicle wheels, tyres, batteries and other vehicle parts and fittings,
(the “respondents’ goods and services”),
bearing or under or by reference to the following marks (or any of them):
(f) the mark “BOB JANE”;
(g) the mark “BOB JANE GLOBAL”;
(h) the BOB JANE device depicted in Section 1 of Annexure A hereto or any other mark substantially identical with or deceptively similar to the BOB JANE device;
(i) the device depicted in Section 3 of Annexure A hereto,
(the “respondents’ marks”)
or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to either of:
(j) trade mark No. 929097 for the mark “BOB JANE”,
(k) trade mark No. 919561 for the mark “BOB JANE T-MARTS” and device,
(the “applicant’s trade marks”).
(2) The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, selling, supplying or offering for sale or supply or advertising or promoting for sale or supply, in Australia, the respondents’ goods and services, bearing or under or by reference to the following marks (or any of them):
(a) the mark “JANE TYRES”;
(b) a mark that includes the term “JANE TYRES”;
(the “respondents’ JANE marks”),
or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to either of:
(c) trade mark No. 1102780 for the mark “JANE FLEET” and device;
(d) trade mark No. 1124705 for the mark “JANE FLEET” and device,
(the “applicant’s JANE FLEET trade marks”).
(3) The respondents (and each of them) be restrained, whether by themselves or by their servants or agents or howsoever otherwise, from trading as a business under any name that is (or includes) JANE or a name that is substantially identical with or deceptively similar to the respondents’ marks or the respondents’ JANE marks, or under or by reference to any other trade mark that is substantially identical with or deceptively similar to the applicant’s trade marks or the applicant’s JANE FLEET trade marks.
(4) The second respondent and sixth respondent forthwith change its company name to a name that does not include JANE or any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks and which is not substantially identical with or deceptively similar to any of applicant’s trade marks or the applicant’s JANE FLEET trade marks.
(5) The first, fourth and seventh respondents forthwith change the signage of the premises located at 509 King Street, West Melbourne, Victoria so as to cease using as a trade mark any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks, or any mark that is substantially identical with or deceptively similar to any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks.
(6) The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, representing that the products available from the respondents are “30% to 50% cheaper” than those of the respondents’ competitors, when such representation does not take into account the cost of:
(a) freight;
(b) delivery to store;
(c) removal of the old tyre;
(d) fitting of the new tyre, including a new valve;
(e) wheel balancing;
(f) disposal of the old tyre.
(7) The respondents forthwith deliver up on oath to the applicant all of the respondents’ goods and advertising and promotional material bearing the respondents’ marks or the respondents’ JANE marks or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to applicant’s trade marks or the applicant’s JANE FLEET trade marks.
(8) The respondents forthwith transfer to the applicant registration of the:
(a) bobjaneglobal.com domain name; and
(b) janetyres.com domain name,
and any other domain name that is substantially identical with or deceptively similar to the applicant’s trade marks or the applicant’s JANE FLEET trade marks.
(9) The cross-claim commenced by Notice of Cross-Claim dated 2 August 2011 be dismissed.
(10) The respondents pay the applicant’s costs of the proceeding (including reserved costs) on an indemnity basis from 2 February 2012, and otherwise on a party/party basis.
101 Section 1 in Annexure A is the Bob Jane device (at [41]). Section 2 in Annexure A is the Jane Fleet device (at [47]). Section 3 in Annexure A is the Bob Jane Online Super Store device (at [63]).
102 The basis for the orders sought in paragraphs 1, 2, 3, 4, 5, 7 and 8 above is alleged to be the infringement of the applicant’s trade marks, passing off and contraventions of the Australian Consumer Law (ss 18 and 29(1)(g)). I now address the legal principles relevant to those causes of action.
103 I start with the alleged infringements of the applicant’s trade marks.
104 Section 120(1) of the Trade Marks Act 1995 (Cth) provides as follows:
120 When is a registered trade mark infringed?
(1) 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.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
105 Section 17 contains a definition of a trade mark in the following terms:
17 What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
106 Sign is defined in s 6 as follows:
sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
107 Section 10 contains a definition of deceptively similar in the following terms:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
108 In their amended defence the first, second and sixth respondents raise the defence in s 122(1)(a) of the Trade Marks Act 1995 (Cth). That paragraph is in the following terms:
122 When is a trade mark not infringed?
(1) In spite of section 120, a person does not infringe a registered trade mark when:
(a) the person uses in good faith:
(i) the person’s name or the name of the person’s place of business; or
(ii) the name of a predecessor in business of the person or the name of the predecessor’s place of business;
109 Section 120 contains a number of elements.
110 First, there is no infringement of a trade mark unless the signs, that is, the signs identified in paragraph 82 above, were and are used as trade marks. This requirement means that the Court must conclude that the alleged infringer was using or proposing to use the signs for the purpose of indicating, or so as to indicate, a connection in the course of trade between the respondent’s goods and the respondent: The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 425 per Kitto J with whom Dixon CJ, Taylor and Owen JJ agreed. In Coco-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107 at 115 – 116 [19] – [20] the Full Court of this Court said that use as a trade mark is use of a mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applied the mark to the goods. The Full Court rejected the proposition that use as a trade mark meant use so as to indicate a connection between the alleged infringer’s goods and those of the owner of the trade mark. The approach of the Full Court was approved by French CJ, Gummow, Crennan and Bell JJ in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at 163 [43].
111 The following principles in the context of the first element should be also noted. First, insofar as the corporate respondents were using their names, or more accurately, parts of their names, they were doing so as trade marks. Bob Jane named the four relevant corporate respondents after he had left the applicant and in light of the history of the applicant’s business, the use of the names would be understood as connoting a particular trade connection with the applicant. The way the names were used also supports their use as trade marks. The use of BOB JANE at the retail outlet at West Melbourne provides an illustration. The words BOB JANE are in different lettering from SOUTHERN MOTORS AUTO EQUIPMENT and there is a noticeable gap between them.
112 Secondly, the use of the Bob Jane Global domain name and the Jane Tyres domain name to access a website which is an online retail store, particularly when infringing marks appear on the website itself, are uses of marks as trade marks. Similarly, the use of such domain names to redirect potential customers to another website operated by the respondents is a use of marks as trade marks (Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 at 463 [50]; Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544 at 560 [63]).
113 Finally, I am satisfied that the use of marks in advertising on internet search engines will amount to use as a trade mark and that the use of marks on business cards, letterhead, email signatures and invoices can involve use as trade marks (Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 at [49] – [55]).
114 I have no doubt on the evidence in this case that the respondents were using the signs as trade marks. In my opinion they were using them in precisely the same way as the applicant was using its four trade marks and, in fact, the similarity in use is striking.
115 The second element of s 120 is that the mark used by the alleged infringer must be substantially identical with, or deceptively similar to, the registered trade marks.
116 Whether a mark is substantially identical with a registered trade mark is to be determined by a comparison side by side with the similarities and differences noted and the importance of those similarities and differences assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. The Court relies partly on its own judgment and partly on the burden on the evidence placed before it. Whether there is substantial identity is a question of fact: The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited at 414 – 415 per Windeyer J.
117 Whether a sign is deceptively similar to a registered trade mark is not decided by a side by side comparison. The Court must form an estimate of the effect or impression produced on the mind of potential customers by the registered trade mark. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. In Australian Woollen Mills Limited v F S Walton & Company Limited (1937) 58 CLR 641 at 658 Dixon and McTiernan JJ said:
The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.
(See also Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 382 per French J (as his Honour then was).)
118 I am satisfied that the respondents infringed the Bob Jane word mark by using the marks BOB JANE, BOB JANE GLOBAL, BOB JANE GLOBAL TYRE, BOB JANE GLOBAL TYRE CORPORATION, the Bob Jane Global device and the variations thereof, the Bob Jane Global Tyre Corporation device, the Bob Jane Online Super Store and Bob Jane Southern Motors. I am satisfied that the respondents infringed the Bob Jane device by using the marks, the Bob Jane Global device and variations thereof. I am satisfied that the respondents infringed the applicant’s Jane Fleet marks by using the JANE, JANE TYRES and the Jane Tyres Online Superstore device.
119 In the case of the respondents’ use of BOB JANE, infringement occurs because the marks are substantially identical. In all other cases, it occurs because the respondents’ marks are deceptively similar when BOB JANE is used in conjunction with other words, or with other words in a device, and it must be remembered that this is done in a market where the applicant has a well established reputation in the Bob Jane word mark. It is also in a context where the similarity between the Bob Jane device and the Bob Jane Global device (and variations thereof) is striking. There is evidence, which I accept, of actual confusion among customers or potential customers. There is the prominence given to the words BOB JANE compared with the other words in the Bob Jane Global Tyre Corporation device and the Bob Jane Online Super Store device and on the signage of the retail premises at West Melbourne. I agree with the applicant’s submission that on most, if not all, occasions the reasonable consumer would regard the words used with Bob Jane as purely descriptive.
120 In relation to my conclusion concerning the respondents’ infringement of the applicant’s Jane Fleet marks, I note that JANE is the significant word in JANE TYRES and the words Online Superstore are in very small print by comparison. There is a car in the Jane Tyres Online Superstore device and the silhouette of a car in the applicant’s Jane Fleet marks.
121 The third element in s 120(1) is that the alleged infringer uses the sign in relation to goods or services in respect of which the trade mark is registered. That requirement is satisfied in this case.
122 Two points about the defence in s 122(1) of the Trade Marks Act should be noted. First, the defence extends to corporations but, although the corporation may delete abbreviations such as “Pty” or “Ltd”, the whole of the corporation’s name must be used.
123 Secondly, the defence of use in good faith involves a consideration of a person’s subjective belief. In Baume & Co Limited v A H Moore Ltd [1958] Ch 907 the English Court of Appeal considered the exception in the case of a bona fide use of one’s own name in s 8(a) of the Trade Marks Act 1938 (UK). The Court said that the exception or defence required an honest use by a person of his or her own name and that that meant without any intention to deceive anybody and without any intention to make use of the goodwill which has been acquired by another trader. The Court said that the mere fact that the alleged infringer knew of the registered trade marks did not mean that the use was not in good faith provided that he or she honestly thought that no confusion would arise and had no intention to wrongfully divert business to himself or herself by using the name. An alleged infringer was either honest or dishonest in his or her motives and there was no such thing as constructive dishonesty.
124 In Anheuser-Busch Inc v Budejovicky Budvar, Narodni Podnik and Others (2002) 56 IPR 182 Allsop J (as his Honour then was) adopted, subject to one qualification which is not material for present purposes, the test in Baume & Co Limited v A H Moore Ltd (at 234 [216]). His Honour made the point that in the case before him, no witness from the alleged infringer gave evidence that they considered no confusion would arise. In the result, his Honour said that the alleged infringer had not persuaded him that anybody did hold that view.
125 In Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd and Others (2004) 61 IPR 242 Bennett J noted that in the case of a respondent named Pro Bio Living Waters Pty Ltd, it could use that name with or without the “Pty Ltd”. Her Honour noted that the requirement for the use to be in good faith imported an absence of intention to make use of the goodwill which had been acquired by another trader. She noted that the resemblance between the registered trade mark in that case of which the first respondent was aware and the name of the first respondent did not prevent the use being bona fide “provided that there was an honest belief that no confusion would arise and if there was no intention of wrongfully diverting business”. Her Honour also noted that evidence of such an honest belief was necessary to establish “bona fide use”. In the case before her Honour no evidence was led to establish use in good faith, or the belief or intention of the respondents. Her Honour noted that there had been no submission in the case addressed to the defence other than a mere assertion that there was an entitlement to use the name (at 250 [43]). Her Honour said that there was no basis upon which to conclude that the first respondent in that case had used the name in good faith for the purposes of s 122(1)(a)(i) of the Trade Marks Act.
126 In Nature’s Blend Pty Ltd (ACN 126 406 488) v Nestle Australia Ltd (ACN 000 011 316) (2010) 272 ALR 487 the Full Court of this Court made observations which support the conclusion that the matter in s 122(1)(a) is a defence and that the onus of proof lies on the party seeking to rely on the defence (at 497 [51] and [52]).
127 The respondents cannot rely on the defence in s 122(1)(a)(i) in this case. They have not appeared and they have adduced no evidence in support of the defence. In any event, the evidence before me negates such a defence. Bob Jane allowed his name to become part of the trade marks of the applicant and he was aware of the applicant’s use of the trade marks. In late 2010 he approached potential suppliers for the respondents. He and Mr Rigon represented that they were involved in a new tyre enterprise, that the company would be structured as a franchise organisation and the proposed name for the company was “bobjanetyresdirect.com.au pty ltd”. Bob Jane’s conduct after leaving the applicant and prior to the launch of the respondents’ Bob Jane Global Website indicated that he harboured significant animosity towards his son and did not have regard to any restrictions on his behaviour. The names of three of the corporate respondents were chosen at the time of or shortly after Bob Jane had left the applicant. Bob Jane, Mr Rigon and the respondents communicated with representatives of the applicant’s suppliers which misled at least one of those representatives to believe they were dealing with the applicant. The respondents’ marks were used with the intention that consumers would associate the respondents’ business with the applicant. A document appearing to be a draft investor presentation prepared by the respondents showed that the respondents intended to leverage off the reputation of the “Bob Jane T-Marts” business and BOB JANE Marks. The respondents only took steps to disavow their association with the applicant after the interlocutory injunction was put in place. This was in the form of a weak and confusing disclaimer on their website. Following the interlocutory injunction the respondents have continued to use the respondents’ marks in a number of forms and in or around mid-2013 the respondents returned to the use of the BOB JANE word mark in respect of the respondents’ retail outlet at West Melbourne.
128 The various infringements of the applicant’s trade marks have been established and it has also been established that unless restrained they are likely to continue in the future.
129 The applicant’s further claims of passing off and contraventions of the Australian Consumer Law were described by it as subsidiary to, and subsumed by, the trade mark claims. Nevertheless, I will consider them.
130 The applicant alleges that the respondents have passed off their goods as those of the applicant. In order to establish a claim in passing off, the applicant must prove the following:
(1) there is in the mind of the purchasing public a goodwill or reputation attached to the goods and services supplied by the applicant by association with the identifying “get up” under which the applicant’s goods or services are offered to the public such that the conclusion can be drawn that the get up is recognised by the public as distinctive specifically of the applicant’s goods;
(2) the respondents have made a misrepresentation to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by them are the goods or services of the applicant; and
(3) the applicant suffers or, in a quia timet action, is likely to suffer damage by reason of the erroneous belief engendered by the respondents’ misrepresentation that the source of the respondents’ goods or services is the same as the source of those offered by the applicant;
(Reckitt & Colman Products Limited v Borden Inc & Others (No 3) [1990] RPC 341 at 406 per Lord Oliver of Aylmerton.)
131 To my mind, all of these elements are satisfied in this case. I am satisfied that the applicant’s trade marks are part of its get up which is recognised by the public as distinctive specifically of the applicant’s goods and services. I am satisfied that by using the marks they devised, the respondents have represented to the public that the goods and services they offer are those of the applicant. There is direct evidence of this, but in any event, it is an overwhelming inference. Finally, I am satisfied that the applicant has suffered or is likely to suffer loss (i.e., loss of business) as a result of the respondents’ conduct.
132 The relevant sections in the Australian Consumer Law are ss 18 and 29(1)(g). They are in the following terms:
18 Deceptive and misleading conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
29 False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that the goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits;
133 Whether conduct involved a representation is a question of fact to be decided by considering what was said or done against the background of all the surrounding circumstances: Taco Company of Australia Inc v Taco Bell Pty Ltd and Others (1982) 42 ALR 177 at 202 per Deane and Fitzgerald JJ; Campomar Sociedad, Limitada and Another v Nike International Limited and Another (2000) 202 CLR 45 at 84 [100]. There is a difference between a representation made to identified individuals on the one hand and a representation made to the public or a section of the public on the other. In the latter case, the matter is to be approached at a level of abstraction not present in the former case. In the latter case, the Court must identify ordinary or reasonable members of the class of prospective purchasers and in doing this there is an objective attribution of certain characteristics. The Court must identify reasonable members of the class. In the assessment of the reactions or likely reactions of the ordinary or reasonable members of the class of prospective purchasers, the Court may well decline to regard as controlling the application of s 52 those assumptions by persons whose reactions are extreme or fanciful: Campomar Sociedad, Limitada and Another v Nike International Limited and Another at 84 – 87 [101] – [106].
134 Essentially for the same reasons given in relation to the previous causes of action, I think the applicant has established contraventions of ss 18 and 29(1)(g) respectively.
135 The orders sought in paragraphs 1 to 8 inclusive should be made and I note in relation to paragraph 8 that the Court has the power and will, in an appropriate case exercise it, to order the transfer of domain names: Mantra Group Pty Ltd v Tailly Pty Ltd (No 2).
136 I turn now to the declaration and injunction sought in relation to the savings representation.
137 The savings representation was made by the respondents on a number of occasions.
138 I am satisfied based on the evidence of Mr Rodney Jane (affidavit sworn on 31 May 2011 at paragraphs 91 – 93) and Mr Andrew Howard (affidavit sworn on 27 April 2012) that the representation is false because it does not take into account the six matters identified in the proposed declaration.
139 The declaration and injunction relating to the savings representation should be made.
140 I turn to the liability of Bob Jane and Mr Rigon.
141 Bob Jane and Mr Rigon are alleged to be joint tortfeasors with the corporate respondents in the infringements of the applicant’s trade marks. They are also both said to be a “person involved” in the causes of action under the Australian Consumer Law. A person involved in conduct may be liable under the Australian Consumer Law (see ss 237(1), 238(1) and 239(2(a)). The definition of involved is contained in s 2 of the Australian Consumer Law and it mirrors s 75B of the Trade Practices Act 1974 (Cth).
142 In Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 (“Keller”) the Full Court of this Court considered the proper formulation of the appropriate test for liability as a joint tortfeasor. It is fair to say that there were differences in the various formulations. The trial judge had held that two directors were liable as joint tortfeasors in relation to infringements of registered designs. Emmett and Jessup JJ disagreed with the trial judge and allowed the appeals of the respective directors. I disagreed with the trial judge in relation to one director, but agreed with her decision in relation to the other director.
143 Emmett J noted that a company could not act other than through a natural person. In deciding whether a natural person was a joint tortfeasor with a company, it is necessary to show something more than that the company acted through that person. It is necessary to show that the director was doing something more than acting as a director and that that something made the director, in addition to the company, an invader of the victim’s rights. Emmett J said that the mere fact that a company was small and that the director had control over its affairs was not of itself sufficient to make the director a joint tortfeasor with the company. Where a director was making use of a corporation or company as an instrument whereby infringement was perpetrated such that the director could be seen to be hiding behind the corporate veil, it may be concluded that the director was going beyond actions performed merely in the capacity of director. Emmett J said that if a company was merely the alter ego of a director such that there was no real difference between the mind of the officer and the mind of the company, there may well be circumstances where it would be appropriate to conclude that the officer was invading the rights of a victim of the company (at 469 [83] and [84]).
144 I said that in considering a director’s potential liability as a joint tortfeasor it was necessary to consider carefully the director’s involvement in the unlawful or infringing acts and that a close personal involvement in the infringing acts by the director must be shown before he or she will be liable. I concluded that one of the directors was liable because he was aware of the designs and responsible for the design of the various versions of the infringing products. He was directly involved in the manufacturing and sale of the infringing products and he was in effect the driving force behind the acts which gave rise to the infringement of the designs and those acts were carried out at a time when he was aware of the designs (at 512 – 513 [291], [292]).
145 Jessup J said that a director would only be liable as a joint tortfeasor where he had made the tort his or her own. There is a crucial distinction between acts which are done for and in the service of the company and acts which, in addition, are done in the director’s own personal capacity or, as Jessup J described it, a “non company capacity” (at 542 – 543 [405] and [406]).
146 Another matter considered in Keller was the liability of directors under s 75B of the Trade Practices Act. I take the liberty of repeating what I said at 520 [334], [335] and [336]:
In order to establish accessorial liability under s 75B(1)(c), it must be shown that the relevant person had knowledge of the essential elements of the contravention. In Yorke v Lucas, Mason ACJ, Wilson, Deane and Dawson JJ said (at 670):
In our view, the proper construction of par (c) requires a party to a contravention to be an intentional participant, the necessary intent being based upon knowledge of the essential elements of the contravention.
For present purposes, knowledge may be considered to include wilful blindness. However, it does not include recklessness or negligence.
In a case concerning representations, the essential elements of the contravention are the fact that the representation was made and that, in a case such as the present, it was misleading or deceptive, or likely to mislead or deceive (s 52) or was false (s 53(a) and (c)). To establish accessorial liability it must be established that the relevant person knew the representation was made and the facts which made it misleading or deceptive, or likely to mislead or deceive, or false. It need not be shown that the relevant person actually drew the conclusion that the representation was misleading or deceptive, or likely to mislead or deceive, or was false.
147 I do not think there can be any doubt about Bob Jane’s liability as a joint tortfeasor. He set up companies to carry out the same business as the applicant carried out and his Bob Jane Global device was clearly based on the applicant’s Bob Jane device. All the matters referred to earlier (at [7], [10], [38] – [98]) make the conclusion about Bob Jane’s liability quite plain.
148 As far as Mr Rigon is concerned, I think he is also liable as a joint tortfeasor. In the amended defence Mr Rigon admitted that he was the controlling mind of Bob Jane Global, Bob Jane China and Bob Jane Hong Kong. Mr Rigon identified himself as having joined with Bob Jane in his new enterprise in the key position of "Sales Director" in the letter sent to potential suppliers dated 15 December 2010. Prior to the launch of the respondents’ Bob Jane Global Website, Mr Rigon attended at least one meeting with a supplier of the applicant at which the suppliers’ representative formed the mistaken impression that he was dealing with representatives of the applicant. Mr Rigon issued instructions in relation to the critical aspects of the respondents’ operations, including its websites, domain names and search engines. On 2 June 2011 Mr Rigon issued the instruction that the Bob Jane Global domain name be transferred from the third respondent to an overseas entity who was not at that stage a party to this proceeding. On 9 June 2011 Mr Rigon issued the instruction for the establishment of the respondents’ Jane Tyres Website as the new site for the Bob Jane Global domain name. Mr Rigon is listed as the administrative contact in respect of the Bob Jane Global domain name and Jane Tyres domain name. Mr Rigon had oversight of the respondents’ Google AdWords accounts, and dictated the form and content of their sponsored advertisements.
149 These then are the principal orders sought by the applicant. The applicant also sought a number of other orders. I turn to address those other orders.
150 The cross-claim should be dismissed.
151 According to a company search of the first respondent, Mr Rigon ceased to be a director of that company on 27 November 2012. Although he did not appear and defend himself at the hearing, there is an issue as to whether orders should be made against him, and if so, the nature of those orders.
152 Before dealing with that issue, I will address the issue of the costs of the proceeding against the other respondents. The applicant has been successful in obtaining the orders it sought and should have an order for costs. It seeks costs on an indemnity basis from 2 February 2012 which was the date upon which a judge of this Court set aside the final judgment previously entered. The applicant seeks indemnity costs on the basis that since 2 February 2012 the respondents have made no real attempt to defend the proceeding. I agree with that submission.
153 It is a big step to set aside a final judgment of the Court. That was done on the basis that the respondents would defend the proceeding and had arguable grounds to do so. Since 2 February 2012 the respondents have done very little to defend the proceeding. They have purported to comply with discovery obligations and they have been involved in an argument about the taxation of costs. They filed an affidavit of Mr Rigon sworn on 12 June 2012. They did not appear on the directions hearing on 8 August 2013 and, as far as I can see, an earlier directions hearing before another judge of this Court. Significantly, they did not appear at the trial. In the circumstances, I think indemnity costs from 2 February 2012 should be ordered.
154 In my opinion, the orders, including the order as to costs, should be made against Mr Rigon. The mere fact that he ceased to be a director of the first respondent on 27 November 2012 is not sufficient to persuade me otherwise. If Mr Rigon wished to contend that he no longer had any involvement with Bob Jane and orders should not be made against him and that he should not have to pay costs after a certain date, then he could have issued an interlocutory application or appeared at the trial and put evidence forward in support of his contention. He chose not to do that. The fact that he communicated with the applicant’s solicitors in May and July 2013 does not alter my conclusion. Those solicitors told him, correctly in my view, that he remained a respondent in his personal capacity and that he should seek independent legal advice.
155 The applicant seeks three orders which each involve changing the name of a respondent. Those orders should be made.
156 Finally, the applicant seeks leave to proceed against the third respondent which is in liquidation. The liquidators of the third respondent do not oppose leave being granted to proceed against the third respondent. They do not oppose the various injunctions sought against the third respondent and they do not oppose an order for delivery up of the respondents’ goods and advertising and promotional material bearing the respondents’ marks or the respondents’ JANE marks. They do not oppose an order that the third respondent, together with the other respondents, pay the applicant’s costs of the proceeding including reserved costs on an indemnity basis from 2 February 2012, and otherwise on a party/party basis. I think it is appropriate to grant leave. The applicant commenced this proceeding on 19 May 2011 and the third respondent went into liquidation on 26 June 2013. The injunctive orders will not impact upon the dividend available to creditors and the applicant needs an order for costs before it can pursue the company for its costs (see generally Lifeplan Australia Friendly Society Limited v Woff [2013] FCA 1092).
conclusion
157 I will make the orders sought by the applicant.
| I certify that the preceding one hundred and fifty-seven (157) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko. |
Associate:
