FEDERAL COURT OF AUSTRALIA

Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2015] FCA 743

THE COURT ORDERS THAT:

1.    The Registrar be directed to make application for punishment of continuing contempt, pursuant to rule 42.16 of the Federal Court Rules 2011 (Cth), in respect of:

(a)    the First Respondent’s failure to comply with:

(i)    paragraphs 10 and 24 of the orders made by the Court in this proceeding on 19 June 2014 (2014 orders); and

(ii)    paragraphs 11 and 24 of the 2014 orders in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 orders were made until the filing of the affidavit of Robert Frederick Jane sworn on 18 August 2014 (Jane Affidavit), arising from the continuing failure to comply with paragraph 7 of the orders made by the Court in this proceeding on 26 November 2013 (2013 orders).

(b)    the Second Respondent’s failure to comply with:

(i)    paragraphs 12, 14 and 24 of the 2014 orders; and

(ii)    paragraphs 13 and 24 of the 2014 orders in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 orders were made until the filing of the Jane Affidavit, arising from the continuing failure to comply with paragraph 7 of the 2013 orders.

(c)    the Fourth Respondent’s failure to comply with:

(i)    paragraphs 15, 17 and 24 of the 2014 orders; and

(ii)    paragraphs 16 and 24 of the 2014 orders in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 orders were made until the filing of the Jane Affidavit, arising from the continuing failure to comply with paragraph 7 of the 2013 orders.

(d)    the Sixth Respondent’s failure to comply with:

(i)    paragraphs 18, 20, 21 and 24 of the 2014 orders; and

(ii)    paragraphs 19 and 24 of the 2014 orders in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 orders were made until the filing of the Jane Affidavit, arising from the continuing failure to comply with paragraph 7 of the 2013 orders.

(e)    the Seventh Respondent’s failure to comply with:

(i)    paragraphs 22 and 24 of the orders; and

(ii)    paragraphs 23 and 24 in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 orders were made until the filing of the Jane Affidavit, arising from the continuing failure to comply with paragraph 7 of the 2013 orders.

2.    The First, Second, Fourth, Sixth and Seventh Respondents pay the Applicant’s costs of this application on an indemnity basis.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1    In this proceeding, the applicant claimed relief against the respondents for infringement of its trade marks, passing off and a contravention of s 18 of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth). After a trial, I made various orders against the respondents on 26 November 2013 (“2013 orders”) (Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255). Of present relevance are the following orders:

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.

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.

I will refer to paragraph 4 as the change of company name order, paragraph 7 as the delivery up on oath order, and paragraph 8 as the transfer of domain names order.

2    The applicant claimed that a number of these orders were not complied with, and it brought contempt proceedings against the first, second, fourth, sixth and seventh respondents by an interlocutory application and a statement of charge filed in the Court on 3 February 2014. After a hearing, I made various orders on 19 June 2014 (“2014 orders”) (Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2014] FCA 637).

3    In relation to the first respondent, I found it guilty of contempt in failing to comply with the delivery up on oath order, and I made the following orders:

(10)    The first respondent be fined $2,000 for the contempt referred to in paragraph (1) above.

(11)    The first respondent pay a fine of $66.00 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues.

(24)    The fines referred to in the above orders be paid to the Registrar of this Court within 28 days in the case of the corporate respondents, and within 3 months in the case of the fourth respondent, save and except that the daily fines referred to in paragraphs (11), (13), (16), (19) and (23) above, be paid to the Registrar within forty-eight (48) hours of the fine being incurred.

The first respondent has not paid the fine. The delivery up on oath order was not complied with within the 21 day period, but no daily fine has been paid by the first respondent.

4    In relation to the second respondent, I found it guilty of contempt in failing to comply with the delivery up on oath order, and the change of company name order, and I made the following orders:

(12)    The second respondent be fined $2,000 for the contempt referred to in paragraph (2) above [delivery up on oath order].

(13)    The second respondent pay a fine of $66.00 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues [delivery up on oath order].

(14)    The second respondent be fined $20,000 for the contempt referred to in paragraph (3) above [change of company name order].

(24)    (As above).

The second respondent has not paid the fine. No part of the daily fine has been paid by the second respondent.

5    In relation to the fourth respondent, I found him guilty of contempt in failing to comply with the delivery up on oath order, and in failing to comply with the transfer of the domain names order, and I made the following orders:

(15)    The fourth respondent be fined $15,000 for the contempt referred to in paragraph (4) above [delivery up on oath order].

(16)    The fourth respondent pay a fine of $500 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues [delivery up on oath order].

(17)    The fourth respondent be fined $25,000 for the contempt referred to in paragraph (5) above [transfer of domain names order].

(24)    (As above).

The fourth respondent made one payment of $500 to the Registrar of this Court on 17 March 2015 but otherwise has not paid the fine or any part of the daily fine.

6    In relation to the sixth respondent, I found it guilty of contempt in failing to comply with the delivery up on oath order, the change of company name order, and the transfer of domain names order, and I made the following orders:

(18)    The sixth respondent be fined $2,000 for the contempt referred to in paragraph (6) above [delivery up on oath order].

(19)    The sixth respondent pay a daily fine of $66.00 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues [delivery up on oath order].

(20)    The sixth respondent be fined $20,000 for the contempt referred to in paragraph (7) above [change of company name order].

(21)    The sixth respondent be fined $15,000 for the contempt referred to in paragraph (8) above [transfer of domain names order].

(24)    (As above).

The sixth respondent has failed to pay the fines or any part of the daily fine.

7    In relation to the seventh respondent, I found that it had failed to comply with the delivery up on oath order, and I made the following orders:

(22)    The seventh respondent be fined $2,000 for the contempt referred to in paragraph (9) above.

(23)    The seventh respondent pay a daily fine of $66.00 per day for each day after 21 days from the date of these orders during which the failure to comply with paragraph 7 of the orders made by the Court on 26 November 2013 continues.

(24)    (As above).

The seventh respondent has not paid the fine or any part of the daily fine.

8    The applicant accepts that the respondents complied with paragraph 7 of the 2013 orders when the fourth respondent filed an affidavit sworn on 18 August 2014. That was approximately 37 days after the period specified in paragraphs (11), (13), (16), (19) and (23) of the 2014 orders.

9    By interlocutory application, the applicant now seeks the following orders:

1.    An order directing the Registrar to make application for punishment of continuing contempt, pursuant to rule 42.16 of the Federal Court Rules 2011, in respect of:

(a)    the First Respondent’s failure to comply with:

(i)    paragraphs 10 and 24 of the orders made by the Court in this proceeding on 19 June 2014 (2014 Orders); and

(ii)    paragraphs 11 and 24 of the 2014 Orders in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 Orders were made until the filing of the affidavit of Robert Frederick Jane sworn on 18 August 2014 (Jane Affidavit), arising from the continuing failure to comply with paragraph 7 of the orders made by the Court in this proceeding on 26 November 2013 (2013 Orders).

(b)    the Second Respondent’s failure to comply with:

(i)    paragraphs 12, 14 and 24 of the 2014 Orders; and

(ii)    paragraphs 13 and 24 of the 2014 Orders in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 Orders were made until the filing of the Jane Affidavit, arising from the continuing failure to comply with paragraph 7 of the 2013 Orders.

(c)    the Fourth Respondent’s failure to comply with:

(i)    paragraphs 15, 17 and 24 of the 2014 Orders; and

(ii)    paragraphs 16 and 24 of the 2014 Orders in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 Orders were made until the filing of the Jane Affidavit, arising from the continuing failure to comply with paragraph 7 of the 2013 Orders.

(d)    the Sixth Respondent’s failure to comply with:

(i)    paragraphs 18, 20, 21 and 24 of the 2014 Orders; and

(ii)    paragraphs 19 and 24 of the 2014 Orders in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 Orders were made until the filing of the Jane Affidavit, arising from the continuing failure to comply with paragraph 7 of the 2013 Orders.

(e)    the Seventh Respondent’s failure to comply with:

(i)    paragraphs 22 and 24 of the Orders; and

(ii)    paragraphs 23 and 24 in respect of daily fines payable for the period from the date which was 21 days after the date the 2014 Orders were made until the filing of the Jane Affidavit, arising from the continuing failure to comply with paragraph 7 of the 2013 Orders.

2.    The First, Second, Fourth, Sixth and Seventh Respondents pay the Applicant’s costs of this application on an indemnity basis.

10    Rule 42.16 of the Federal Court Rules 2011 (Cth) is in the following terms:

42.16    Application or proceeding by the Registrar

(1)    If it is alleged that a person is guilty of contempt of the Court, a party may apply to the Court for an order directing the Registrar to make application in the proceeding, or to start a proceeding, for punishment of the contempt.

(2)    Subrule (1) does not affect any right of a person to make application in the proceeding for, or to start a proceeding for, punishment of contempt.

11    The applicant’s application raises four matters. First, it is necessary to consider whether the respondents’ conduct could constitute a contempt of court. Secondly, it is necessary to consider whether there is a more appropriate procedure for enforcing the orders of the Court. Thirdly, it is necessary to consider whether on the material before the Court there is a sufficient case of contempt. Finally, it is necessary to consider whether there are reasons which in the exercise of the Court’s discretion militate against the making of the order sought by the applicant.

12    As to the first matter, the failure to pay a fine may constitute a contempt of court. That proposition is established by authorities of this Court. In Australian Industrial Group v Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union of Australia & Ors [2001] FCA 774, Merkel J said (at [16]):

If a person wilfully disobeys and publicly defies an order to pay a fine imposed for contempt, the disobedience and defiance may constitute a further contempt. Further, conduct calculated to defeat the effect of a court order and treating the order as unworthy of notice may also constitute a contempt: see Seaward v Paterson [1897] 1 Ch 545 at 554-555 per Lord Lindley.

13    In Australian Prudential Regulation Authority v Siminton (No 8) [2007] FCA 1612 Tracey J said (at [28]):

It was not disputed that a failure to comply with an order of the Court to pay a money amount could constitute a contempt (a proposition supported by decisions of the Court in Australian Industry Group v Automotive, Food, Metals, Engineering, Printing and Kindred Industries of Australia (2001) 188 ALR 653 at 658 and World Netsafe at [29]) or that the Court had power to deal with such a contempt under s 31(1) of the Federal Court of Australia Act 1976 (Cth) and s 24 of the Judiciary Act 1903 (Cth) (as to which see Mudginberri Station at 105-6).

14    As to the second matter, there are various procedures for the enforcement of orders made by this Court. For example, s 53 of the Federal Court of Australia Act 1976 (Cth) provides:

53    Enforcement of judgment

(1)    Subject to the Rules of Court, a person in whose favour a judgment of the Court is given is entitled to the same remedies for enforcement of the judgment in a State or Territory, by execution or otherwise, as are allowed in like cases by the laws of that State or Territory to persons in whose favour a judgment of the Supreme Court of that State or Territory is given.

(2)    This section does not affect the operation of any provision made by or under any other Act or by the Rules of Court for the execution and enforcement of judgments of the Court.

15    Rule 41.01 of the Rules provides:

41.01    Application without notice for directions

A party or an interested person may, without notice, apply to the Court for directions about the enforcement or execution of an order.

16    In this case, the most appropriate enforcement procedure is that sought by the applicant. There is clearly a public interest in the enforcement of the orders of this Court. That is particularly so where the orders are fines imposed for contempt of court. The fines will be paid into Consolidated Revenue. The applicant has already brought proceedings for contempt, and there is no good reason why the applicant should be burdened with the costs and expense of a further action.

17    As to the third matter, r 42.16(1) provides that the Court may make an order where it is alleged that a person is guilty of contempt of the Court. On the one hand, the Court is unlikely to make an order where there is an allegation and nothing more. On the other hand, the applicant does not have to prove that there is a contempt before an order is made under r 42.16. That will be the issue on the Registrar’s application: CT Sheet Metal Works Pty Ltd and Another v Hutchinson and Others (2012) 201 FCR 275 (at 281-282, [29]).

18    As to the fourth matter, there are no discretionary reasons for not making an order. In fact, there are good reasons of public policy to make the order in that it is necessary to ensure that the orders of the Court are enforced and seen to be enforced. I mention that counsel for the respondents (other than the sixth respondent) appeared on the hearing of the application. Whether he had the right to do so is perhaps debatable, but he did say that he had no instructions of which he could usefully assist the Court.

19    There is plainly sufficient material in this case to justify the making of the order sought by the applicant.

20    I will make the orders sought by the applicant, including the order that the first, second, fourth, sixth and seventh respondents pay the applicant’s costs of the application on an indemnity basis.

Associate:    

Dated:    23 July 2015