FEDERAL COURT OF AUSTRALIA

Bob Jane Corporation Pty Ltd v Bob Jane Global Tyres Corporation (Australia) Pty Ltd (No 2) [2011] FCA 1363

THE COURT ORDERS THAT:

1.    The Amended Application dated 14 July 2011 and the Amended Statement of Claim dated 14 July 2011 be amended so that:

(a)    the name of the First Respondent is replaced with “WEBTYRE.NET PTY LTD”; and

(b)    the name of the Second Respondent is replaced with “WEBTYRE.NET VICTORIA PTY LTD”.

2.    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”).

3.    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”).

4.    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.

5.    The 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.

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, unless the customer has their own installation equipment or avails themselves of a separate mobile fitting service available from the Respondents at an additional cost and available only to residents in Melbourne and Bendigo, Victoria;

(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 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 the Applicant’s trade marks or the Applicant’s JANE FLEET trade marks.

8.    The Respondents 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.    By no later than 1 December 2011, the Respondents publish and distribute a letter:

(a)    to all persons who have supplied any of the Respondents with any goods or services relating to motor vehicles or parts therefor, in the form attached as Annexure B; and

(b)    to all persons to whom the Respondents have supplied goods or services relating to motor vehicles or parts therefor, in the form attached as Annexure C.

10.    Within 14 days of the time for compliance with paragraph 9, the Respondents file and serve an affidavit verifying that they have complied with their obligations in paragraph 9 and annexing:

(a)    a copy of one letter sent to a supplier in the form of Annexure B;

(b)    a copy of one letter sent to a customer in the form of Annexure C; and

(c)    a list of the persons to whom a letter in the form of either Annexure B or Annexure C was sent, including the address to which each letter was sent.

11.    The Cross Claim commenced by Notice of Cross Claim dated 2 August 2011 be dismissed.

12.    The Respondents pay the Applicant’s costs of and incidental to the application filed on 27 October 2011 on an indemnity basis.

13.    The Respondents pay the Applicant’s costs of the proceeding (including reserved costs) on an indemnity basis.

PENALTY NOTICE TO THE FIRST, SECOND, THIRD, FOURTH, FIFTH AND SIXTH RESPONDENTS

(Rule 41.06)

IF YOU:

(A)    NEGLECT OR REFUSE TO DO ANY ACT OR THING WITHIN THE TIME SPECIFIED IN THIS ORDER FOR THE DOING OF THE ACT OR THING; OR

(B)    DISOBEY THIS ORDER BY DOING AN ACT OR THING WHICH THE ORDER REQUIRES YOU NOT TO DO,

YOU WILL BE LIABLE TO IMPRISONMENT, SEQUESTRATION OF PROPERTY OR PUNISHMENT FOR CONTEMPT.

ANNEXURE A

Section 1 – BOB JANE device

Section 2 – JANE FLEET device

Section 3 – the Respondents’ New Logo

ANNEXURE B

(Insert date)

(Insert supplier details)

Dear Sir/Madam

Our records indicate that you have supplied products to one or more of the following companies of which I am a director (collectively, the “Companies”):

•    WEBTYRE.NET PTY LTD (formerly Bob Jane Global Tyre Corporation (Australia) Pty Ltd);

•    WEBTYRE.NET VICTORIA PTY LTD (formerly Bob Jane China Corporation (Australia) Pty Ltd);

•    Calder Park Promotions Pty Ltd; and

•    Bob Jane Global Tyre Corporation (Hong Kong) Limited.

I confirm that:

(a)    none of the Companies have any connection or association with Bob Jane Corporation Pty Ltd or the Bob Jane T-Marts and Jane Fleet businesses; and

(b)    since January 2011 I have not had any involvement in Bob Jane Corporation Pty Ltd or the Bob Jane T-Marts and Jane Fleet businesses.

I apologise for any confusion which may have been caused by the use of the name “Bob Jane” or “Jane Tyres” in connection with the Companies. To the extent necessary the name of each of the Companies has been changed so that it does not include a reference to “Bob Jane” or “Jane Fleet” or any name which is substantially identical with or deceptively similar to the words “Bob Jane” or “Jane Fleet”.

Yours faithfully

....................................................

Robert F Jane WEBTYRE.NET PTY LTD (formerly Bob Jane Global Tyre Corporation (Australia) Pty Ltd) WEBTYRE.NET VICTORIA PTY LTD (formerly Bob Jane China Corporation (Australia) Pty Ltd) Calder Park Promotions Pty Ltd Bob Jane Global Tyre Corporation (Hong Kong) Limited

ANNEXURE C

(Insert date)

(Insert customer details)

Dear Sir/Madam

Our records indicate that you have purchased goods or services from one or more of the following companies of which I am a director (collectively, the “Companies”):

•    WEBTYRE.NET PTY LTD (formerly Bob Jane Global Tyre Corporation (Australia) Pty Ld);

•    WEBTYRE.NET VICTORIA PTY LTD (formerly Bob Jane China Corporation (Australia) Pty Ltd);

•    Calder Park Promotions Pty Ltd; and

•    Bob Jane Global Tyre Corporation (Hong Kong) Limited.

I confirm that:

(a)    none of the Companies have any connection or association with Bob Jane Corporation Pty Ltd or the Bob Jane T-Marts and Jane Fleet businesses; and

(b)    since January 2011 I have not had any involvement in Bob Jane Corporation Pty Ltd or the Bob Jane T-Marts and Jane Fleet businesses.

I apologise for any confusion which may have been caused by the use of the name “Bob Jane” or “Jane Tyres” in connection with the Companies. To the extent necessary the name of each of the Companies has been changed so that it does not include a reference to “Bob Jane” or “Jane Fleet” or any name which is substantially identical with or deceptively similar to the words “Bob Jane” or “Jane Fleet”.

If you experience any problems with the goods or services you have purchased from the Companies, you should contact me at the above address. No warranty is given by Bob Jane Corporation Pty Ltd or the Bob Jane T-Marts and Jane Fleet businesses in relation to any goods or services you have purchased from the Companies.

Yours faithfully

....................................................

Robert F Jane WEBTYRE.NET PTY LTD (formerly Bob Jane Global Tyre Corporation (Australia) Pty Ltd) WEBTYRE.NET VICTORIA PTY LTD (formerly Bob Jane China Corporation (Australia) Pty Ltd) Calder Park Promotions Pty Ltd Bob Jane Global Tyre Corporation (Hong Kong) Limited

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules.

REASONS FOR JUDGMENT

1    Before the Court is an interlocutory application brought by the applicant seeking judgment against the respondents on the application and the cross-claim. It also seeks costs of the proceeding and the cross-claim on an indemnity basis. The nature of the cause of action can be seen in the reasons for judgment published on 9 June 2011, which determined an application for an interlocutory injunction brought by the applicant against the respondents. The applicant relies on r 5.22(b) which provides that a party is in default if the party fails to comply with an order of the Court and r 5.23(2)(c).

2    The default upon which primary reliance is placed is the failure of the respondents to provide an affidavit of documents and inspection in compliance with orders made by the Court. The Court ordered by consent on 12 July 2011 that the parties file and serve affidavits of documents by 7 September 2011, and make available for inspection the documents recorded therein by 14 September 2011. On 13 October 2011, a directions hearing was convened. The respondents did not appear on that occasion. The Court amended the orders made on 12 July 2011, by extending the time for the filing and serving of affidavits of documents to 20 October 2011, and for inspection to 27 October 2011. It appears that the respondents’ solicitors, Raj Lawyers, ceased to act on their behalf on 3 October 2011.

3    The respondents did not comply with the orders requiring the making of a list of documents and inspection by the dates fixed by the order made on 13 October 2011. That default is one of the bases of the application for judgment. Mr Ryan SC, who appeared with Mr Nash, for the applicant, provided to the Court a copy of a letter, dated 2 November 2011, from Robert F Jane, the fourth respondent, which sought from the applicant an adjournment of the application. Attached to that letter was an application to adjourn in the following terms:

1.    Raj Lawyers is no longer representing the Respondents as of Friday 30 September 2011.

2.    Further legal representation has not yet been engaged or appointed.

3.    The matter of representation is yet to be resolved.

4.    The respondents have only recently received affidavits of Kezia Jo O’Donnel (sic), Andrew Gun (sic) and Rodney Bruce Jane, on Friday 28 October 2011, which affidavit requires more time to respond to.

5.    The respondents require time to read and interpret the affidavit of Rodney Bruce Jane and further time to thereafter make an affidavit response.

6.    The matter is one of a claim of $90,000 and as such is only a financial consideration and is not a matter of urgency insofar as the matters of the trademarks are not currently in issue.

4    In the course of the hearing, Mr Ryan SC indicated that he had been instructed that Mr Jane had communicated with my chambers in similar terms, apparently after the hearing had commenced.

5    The judgement, which the applicant seeks, mirrors the claims for relief set out in the application accompanying the statement of claim, save in one respect. The statement of claim was amended on 15 July 2011 to include a claim in relation to the use by the respondents of the mark “Janes Tyres” and a mark that includes the term “Janes Tyres” which is said to infringe two registered trade marks with devices, being trade mark 1102780 and 1124705 (the Jane Fleet cause of action).

6    Judgment is also sought in respect of a misrepresentation that the products available from the respondents are 30 to 50 per cent cheaper than those of the respondents’ competitors. This claim was originally pleaded but was not the subject of any determination in the interlocutory injunction judgment.

7    In order to obtain judgment by default under r 5.23(2)(c), it is necessary for the applicant to establish an entitlement to the relief claimed. Mr Ryan SC contended that the applicant was bound by that rule to show an arguable or prima facie case for such relief. I accept that submission.

8    In relation to the claims originally made for interlocutory injunctions in respect of the use of the name or marks “Bob Jane” and “Bob Jane Global”, the interlocutory injunction judgment accepted that an arguable case for infringement had been made. That is a proper basis for a default judgment for those causes of action.

9    In relation to the Jane Fleet cause of action introduced by amendment, Rodney Bruce Jane has sworn an affidavit on 27 October 2011, substantiating the cause of action relied upon. There was also evidence filed at the interlocutory injunction stage which substantiated the misrepresentation claim. The applicant has, therefore, made good claims for a judgment reflected in the terms of [2], [3], [4] and [6] of the orders to be made.

10    The applicant has established that it is appropriate to the make the additional orders reflected in the terms of [7] and [8] of the orders to be made. The order in [7] was sought in the application and is in the usual form made in cases such as this. Similarly, the claim for the order in [8] which was also sought in the application is appropriate in the circumstances.

11    The applicant has also established that it is appropriate to make orders for corrective advertising or notification in the terms of [9] and then verification in the terms of [10] of the orders to be made. Whilst the form of the corrective advertising was not part of the original application, the form which is proffered is appropriate in the circumstances of the case.

12    It is sufficient, for present purposes, to rely upon the respondents’ default in complying with the orders of the Court for discovery. The applicant, however, relied on a number of other defaults including failure to attend the directions hearing on 13 October 2011 (r 5.22(c)); failure to file a notice of address for service (r 4.05(2)); and the failure to appear today.

13    The correspondence received from the fourth respondent sufficiently demonstrates that he was aware of the hearing of the application today. In any event, the affidavit of service of Andrew Gunn sworn on 27 October 2011, attests to the service of a letter from the solicitors for the applicant dated 13 October 2011, which included the following:

If you do not comply with the Orders made by the Court this morning by filing and serving Affidavits of Documents by 20 October 2011 and making the documents recorded in the Affidavits available to the Applicant for inspection by 27 October 2011, our client will apply to the Court (without giving any further notice to you) for orders that judgment be entered for the Applicant in respect of its claims and that the Cross-Claim be dismissed. At that hearing, we will seek our client’s costs of proceeding on an indemnity basis.

14    A further affidavit of Mr Gunn deposes to an attempt at service of the letter dated 13 October 2011 and the orders of the Court made on 12 July 2011, on the fifth respondent, Mr Rigon. Service was effected on 14 October 2011, by leaving the documents with a person who identified herself as the Personal Assistant for Mr Jane and who agreed to accept service of the documents for Mr Rigon. The notice given by Mr Jane to the solicitors for the applicant purported to apply to all respondents and gave, as an address for service, the place at which Mr Gunn had left the documents for all the respondents.

15    The applicant seeks orders for the costs of the proceeding, including reserved costs, on an indemnity basis.

16    In view of the failure of the respondents to participate in the proceedings, apart from the filing of the defence, since the hearing of the interlocutory injunction, it seems on the material before the Court that they are not serious in seeking to defend the proceeding or advance the cross-claim. The initially agreed time for discovery was extended in the absence of the respondents on 13 October 2011 and significant time has passed since the date for compliance became due. Consequently, a case has been made by the applicant for judgment immediately in the terms of the orders sought.

17    In those circumstances, the respondents should pay the applicant’s costs of and incidental to the present application filed on 27 October 2011 on an indemnity basis. Should the respondents have a serious case to mount in their defence, then they are permitted, under the rules of the Court, to seek to have this judgment set aside, as it has been made in their absence.

18    Finally, there should also be an order amending the statement of claim to replace the name of the first respondent with the name Webtyre.net Proprietary Limited and the second respondent with the name Webtyre.net Victoria Proprietary Limited because there is evidence before the Court that those respondents have, since the commencement of the application, changed their names in those respects.

Associate:

Dated:    29 November 2011