FEDERAL COURT OF AUSTRALIA

Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2015] FCA 1343

THE COURT ORDERS THAT:

1.    The applicant’s interlocutory application dated 23 October 2015 be transferred to another judge of the Court for hearing and determination.

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

REASONS FOR JUDGMENT

1    On 23 October 2015, the applicant in this proceeding issued an interlocutory application against the fourth respondent seeking the following orders:

1.    A declaration that the fourth respondent is guilty of contempt of Court as set out in the accompanying Statement of Charge, for failure to comply with paragraph 3 of the Orders made by the Honourable Justice Besanko on 26 November 2013 (November 2013 Orders).

2.    The fourth respondent be punished for contempt of Court by a fine of an amount to be fixed by the Court and payable to the Registrar of the Court within thirty (30) days of the date of this Order.

3.    The fourth respondent pay the costs of this application on an indemnity basis.

4.    If the fourth respondent fails to comply with paragraph 2 of these Orders requiring that he pay a fine for his contempt of Court, then he be imprisoned for a period to be determined by the Court, or, in the alternative, his property be sequestered.

5.    Such further or other orders, directions, and relief as may be necessary or as the Court deems fit.

A Statement of Charge dated 23 October 2015 was served on the fourth respondent and there is an affidavit of the applicant’s solicitor in support of the application.

2    Paragraph 3 of the orders which I made on 26 November 2013 is in the following terms:

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.

The citation for my reasons for making the orders I did on 26 November 2013 is Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255.

3    The orders made on 26 November 2013 defined the applicant’s trade marks as follows:

(1)    trade mark No. 929097 for the mark “BOB JANE”;

(2)    trade mark No. 919561 for the mark “BOB JANE T-MARTS” and device.

4    In its Statement of Charge, the applicant alleges that the fourth respondent, Mr Bob Jane, knowing of the orders, and in breach of the orders, did the following:

(1)    commenced trading as a business under a name, specifically BOB JANE INTEGRITY INSURANCE, that includes JANE;

(2)    further and alternatively, commenced trading as a business under or by reference to a trade mark, specifically BOB JANE INTEGRITY INSURANCE, that is substantially identical with or deceptively similar to the applicant’s trade mark No. 929097 for the mark “BOB JANE”.

Particulars are given and they involve conduct by the fourth respondent in September and October 2015. The particulars include an allegation that on or before 19 October 2015, the fourth respondent, or someone on his behalf, caused to be registered the following company names and Australian Company Numbers (ACNs) with the Australian Securities and Investments Commission:

(1)    Bob Jane Integrity Insurance Limited (ACN 063 871 057); and

(2)    Bob Jane Integrity Limited (ACN 063 868 506).

5    The applicant also alleges that further and alternatively, knowing of the order, and in breach of the order, the fourth respondent has, whether by himself or by his servants or agents or howsoever otherwise, commenced trading as a business under or by reference to a trade mark, specifically the New Business Logo (a logo which includes the words “BOB JANE”, “INTEGRITY INSURANCE”, and “CHOICE OF REPAIRER”), that is substantially identical with or deceptively similar to the applicant’s trade mark No. 929097 for the mark “BOB JANE”.

6    The applicant alleges that the fourth respondent committed the conduct in wilful and contumacious disregard for the orders.

7    I have considered a number of other applications in this proceeding. On 19 June 2014, I decided that a number of the respondents, including the fourth respondent, had been guilty of contempt of the orders I made on 26 November 2013, and I made declarations and orders imposing fines. The citation for my reasons for making the declarations and orders is Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2014] FCA 637 (“June 2014 reasons”). In the course of my reasons, I said (at [16] and [56]) the following:

16.    Thirdly, as I have already noted, the fourth respondent swore two affidavits which were tendered at the hearing. In addition, he was cross examined by counsel for the applicant. Although by the time all the evidence was in there were not many factual disputes between the parties, I did not find the fourth respondent’s evidence particularly convincing. I say that because in a number of areas I thought I was given only half of the story, and some of the explanations were not wholly convincing. By way of example, I refer to the following. First, there was a suggestion that the respondents decided to comply with the orders once they received legal advice. In a sense, that might well be true, but it is not because they did not previously understand the orders. I think the orders are clear and, to the extent that they may have given rise to the need for legal advice, the fourth respondent had Goldsmiths Lawyers acting for him in other matters. The fourth respondent’s acts and correspondence in January 2014, which are discussed below, suggest that he considered at that time that he was free to ignore the orders made by this Court. It seems to me likely that something happened in February 2014 that caused the fourth respondent to reconsider his position and to appreciate the significance of the contempt charges. Secondly, I found the fourth respondent’s explanation for his failure to take any action to transfer the two domain names – that he thought others were attending to it – unconvincing. It is more likely that he considered that he could ignore the orders or “bluff” his way through by asserting that the matters in this Court were, in some way never explained, now the subject of the Family Court proceedings. Finally, I mention a matter which, on the face of it, appears to be quite a minor matter, but which nevertheless affected my confidence in the reliability of the fourth respondent’s evidence. In his first affidavit sworn on 4 March 2014, the fourth respondent said that he had forwarded the resolution changing the second respondent’s name to the Australian Securities and Investments Commission (“ASIC”), whereas in his second affidavit sworn on 6 March 2014, he said that he did that between swearing his affidavit of 4 March 2014 and his affidavit of 6 March 2014. If in fact that is to be explained by a distinction between the resolution and the Notification of Resolution, then that should have been made clear in the fourth respondent’s affidavit.

56.    Before leaving the findings I have made as to each of the contempts, I should record the fact that I think each breach was wilful and in contumacious disregard for the orders made on 26 November 2013 (see TiVo Inc v Vivo International Corporation Pty Ltd [2013] FCA 1340, at [8] per Pagone J). The fourth respondent was aware of the content of the orders and he made no effort to comply, or cause the other respondents to comply, until shortly prior to the hearing. He sought to deflect responsibility to comply with the orders by suggesting that in some way they fell within proceedings in the Family Court.

8    On 9 January 2015, I made orders relating to taxation of costs in the proceeding. The citation for my reasons for making the orders is Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2014] FCA 1441.

9    On 25 July 2015, I made an order directing the Registrar to make application for punishment of continuing contempt in respect of various respondents, including the fourth respondent. The citation for my reasons for making those orders is Bob Jane Corporation v ACN 149 801 141 Pty Ltd [2015] FCA 743.

10    With respect to the present application, I made an order on 2 November 2015 that the fourth respondent file and serve any affidavits in response to the charge and any applications on or before Monday, 16 November 2015. On 16 November 2015, the fourth respondent filed and served an affidavit he had sworn in response to the charge. He also filed an interlocutory application seeking my disqualification from hearing the applicant’s interlocutory application and an order that it be transferred to another judge. These reasons deal with that application.

11    No question of necessity or waiver arises and the fourth respondent’s application is based on apprehended bias by reference to the June 2014 reasons.

12    I have reached the conclusion that I should disqualify myself and that the applicant’s application should be transferred to another judge for hearing and determination. My reasons are as follows.

13    The relevant general principle is that, in the absence of actual bias, the issue of apprehended bias is determined by asking if a fair-minded lay observer might reasonably apprehend that the judge might not bring an impartial mind to the resolution of the question the judge is required to decide: Ebner v Official Trustee in Bankruptcy (2000) 205 CLR 337 (“Ebner”) at 344 [6] per Gleeson CJ, McHugh, Gummow and Hayne JJ.

14    Ordinarily, a fair-minded lay observer might reasonably apprehend that the judge might not bring an impartial mind to the resolution of the question the judge is required to decide where the judge in a previous case has expressed clear views, either about a question of fact which constitutes a live and significant issue in the subsequent case, or about the credit of a witness whose evidence is of significance on such a question : Livesey v New South Wales Bar Association (1983) 151 CLR 288 at 300. (See also The Queen v Watson; Ex parte Armstrong (1976) 136 CLR 248 at 265-266 per Barwick CJ, Gibbs, Stephen and Mason JJ.)

15    It has been said many times that judges do not choose their cases and they have a duty to sit on the cases which have been assigned or allocated to them. A judge should not accede too readily to applications that he or she disqualify themselves for bias. Having said that, the High Court said there may be cases where the objection is substantial and it may be appropriate for the judge to disqualify himself or herself in a case of real doubt: Re JRL; Ex parte CJL (1986) 161 CLR 342 at 352 per Mason J; Ebner at 348 [19]-[20].

16    There will be cases which are not black and white where a decision-maker has gone some way towards revealing a view about an issue of fact or an issue of credit. That might come about because a decision-maker has made a general statement and is asked to disqualify himself or herself in a subsequent case involving a specific example said to relate to the general statement. It might come about because of a provisional statement or finding in a matter and then an application for disqualification (Johnson v Johnson (2000) 201 CLR 488 at 493 [13] per Gleeson GJ, Gaudron, McHugh, Gummow and Hayne JJ). The question is not whether the decision-maker’s mind is blank, but whether it is open to persuasion: Minister for Immigration and Multicultural Affairs v Jia Legeng (2001) 205 CLR 507 (“Jia”) at 531 [7] per Gleeson CJ and Gummow J.

17    Other than in relation to the previous proposition, I do not find Jia, which was relied on by the applicant, to be of anything other than general assistance. The context of a decision under s 501 of the Migration Act 1958 (Cth) is very different from the context before me (see at 532 [73] per Gleeson CJ and Gummow J; at 551 [141]-[143] per Kirby J; at 562-563 [178]-[181] per Hayne J; at 583-584 [245] per Callinan J).

18    To succeed in establishing the contempt charges, the applicant must prove the elements of the charges beyond reasonable doubt: Witham v Holloway (1995) 183 CLR 525 at 534 per Brennan, Deane, Toohey and Gaudron JJ. Furthermore, the applicant in this case alleges that the fourth respondent committed the conduct alleged in the charge in wilful and contumacious disregard for the November 2013 orders.

19    The fact that the orders of the Court which are said to have been breached were orders I made, and the fact that I have previously found the fourth respondent guilty of contempt in relation to the said orders, are not of themselves sufficient grounds for me to disqualify myself.

20    I have considered, in relation to the observations set out in paragraphs 16 and 56 of the June 2014 reasons, whether I expressed final or merely provisional conclusions. It is to be remembered that I am to answer this question not by what I intended, but by what a fair-minded lay observer would understand the words to mean. I think he or she would consider that I had formed an adverse view of the fourth respondent’s credit and reliability. I do not think it matters how important the observations were in terms of the issues but, in any event, they could not be considered merely peripheral.

21    I have considered whether the fourth respondent’s credit could be in issue on the applicant’s application. I frame the issue in this way because it is always possible that he will not give evidence or the case will be decided on an unrelated ground or matter. I am entitled to be satisfied that there is at least a reasonable possibility the fourth respondent’s credit will be in issue. I am so satisfied having regard to his affidavit and the fact that he is the respondent to the charge. At the same time, I do not think that the fourth respondent must establish as a matter of certainty that his credit and reliability will be in issue.

22    Having regard to the above matters, I am satisfied that I should disqualify myself from hearing this proceeding because I have previously made findings in relation to the fourth respondent’s credibility and there is sufficient prospect that his credibility will be in issue in this proceeding. I will order that the applicant’s application be transferred to another judge for hearing and determination.

Associate:

Dated:    27 November 2015