FEDERAL COURT OF AUSTRALIA Bob Jane Corporation Pty Ltd v Bob Jane Global Tyres Corporation (Australia) Pty Ltd [2011] FCA 739 Citation: Bob Jane Corporation Pty Ltd v Bob Jane Global Tyres Corporation (Australia) Pty Ltd [2011] FCA 739 Parties: BOB JANE CORPORATION PTY LTD (ACN 005 870 431) v BOB JANE GLOBAL TYRES CORPORATION (AUSTRALIA) PTY LTD (ACN 149 801 141), BOB JANE CHINA CORPORATION (AUSTRALIA) PTY LTD (ACN 149 001 383), CALDER PARK PROMOTIONS PTY LTD, ROBERT FREDERICK JANE and DENNIS PETER RIGON File number: VID 418 of 2011 Judge: NORTH J Date of judgment: 9 June 2011 Date of hearing: 9 June 2011 Place: Melbourne Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 26 Counsel for the Applicant: Mr A Ryan SC with Mr A Nash Solicitor for the Applicant: Clayton Utz Counsel for the Respondents: Mr E Heerey Solicitor for the Respondents: Raj Lawyers IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 418 of 2011 BETWEEN: BOB JANE CORPORATION PTY LTD (ACN 005 870 431) Applicant AND: BOB JANE GLOBAL TYRES CORPORATION (AUSTRALIA) PTY LTD (ACN 149 801 141) First Respondent BOB JANE CHINA CORPORATION (AUSTRALIA) PTY LTD (ACN 149 001 383) Second Respondent CALDER PARK PROMOTIONS PTY LTD Third Respondent ROBERT FREDERICK JANE Fourth Respondent DENNIS PETER RIGON Fifth Respondent JUDGE: NORTH J DATE OF ORDER: 9 JUNE 2011 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 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. 2. The respondent pays the applicant's costs of the motion. THE COURT DIRECTS THAT: 3. By 16 June 2011 the respondents file and serve their defences. 4. By 23 June 2011 the applicant files and serves its reply. 5. By 7 July 2011 the parties file and serve affidavits of documents and make available for inspection the documents recordered therein. 6. The directions hearing fixed for 24 June 2011 be vacated. 7. The directions hearing is adjourned to 1 August 2011 before Justice North. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 418 of 2011 BETWEEN: BOB JANE CORPORATION PTY LTD (ACN 005 870 431) Applicant AND: BOB JANE GLOBAL TYRES CORPORATION (AUSTRALIA) PTY LTD (ACN 149 801 141) First Respondent BOB JANE CHINA CORPORATION (AUSTRALIA) PTY LTD (ACN 149 001 383) Second Respondent CALDER PARK PROMOTIONS PTY LTD Third Respondent ROBERT FREDERICK JANE Fourth Respondent DENNIS PETER RIGON Fifth Respondent JUDGE: NORTH J DATE: 9 JUNE 2011 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 Before the Court is an application by Bob Jane Corporation Pty Ltd, the applicant, for interlocutory relief against three companies and two individuals, including Robert Frederick Jane, the fourth respondent. In his professional life as a racing car driver, the fourth respondent has been known as Bob Jane. 2 Mr Jane is a director, and the sole shareholder, of the first, second and third respondents. The fifth respondent, Dennis Peter Rigon, is a director of the first respondent. 3 The applicant conducts a business of selling automotive accessories, principally tyres. The evidence is that the applicant has conducted this business for many years and has built up a substantial reputation as a trader in the area. Until early this year, Mr Jane was a director and shareholder of the applicant. However, as a consequence of disputes which have arisen between Mr Jane and members of his family, he is no longer a director or shareholder of the applicant. 4 Following Mr Jane's departure from the applicant's business, he commenced business in essentially the same area of operation as the applicant. From 4 May 2011, the respondents conducted that business online using a website which prominently displays Mr Jane's name. A masthead of that website bears the name "Bob Jane Online" in prominent letters and the name "Bob Jane Global" appears in the website advertising. It is the use of the name "Bob Jane" in the masthead and reference to "Bob Jane Global" which has attracted the attention of the applicant. 5 The applicant is the owner of the word mark "Bob Jane" which was registered in October 2002. It is also the owner of the word and device mark "Bob Jane T-Marts" which was registered in July 2002 and shows Bob Jane in racing gear. The most recent form of the website developed for Mr Jane's new business has a different logo to the applicant's registered device mark, although it might be that consumers could confuse the present logo with the registered device mark. THE APPLICATION 6 On 19 May 2011, the applicant filed an application and statement of claim pleading three causes of action. A notice of motion seeking interlocutory relief was filed by the applicant on 1 June 2011. The applicant claims that the respondents' website infringes both the word mark and the device mark. It claims that the respondents have engaged in the tort of passing off, and have also acted in breach of ss 18 and 29(1)(g) of the Australian Consumer Law (ACL), as set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth). 7 Section 18 of the ACL provides: (1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. (2) Nothing in Part 3-1 (which is about unfair practices) limits by implication subsection (1). 8 Section 29(1)(g) provides: (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 good or services: (g) make a false or misleading representation that the goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; SUBMISSIONS OF THE PARTIES 9 The applicant contended that it had established a serious issue to be tried. Its strongest case arises from the use of the words "Bob Jane" in the masthead of the website and "Bob Jane Global" in the text of the website advertising. The infringement of the device mark appears to have occurred only over a short period and the infringing logo is now not being used. 10 The applicant contended that the balance of convenience favours the grant of an injunction in the terms sought in their application. It argued that damages would not be an adequate remedy because it would be difficult to calculate the proportion of business which the respondents derived from the wrongful conduct. It also said that it would be difficult to ascertain the damage done to the applicant's business as a result of the respondents' website being confused as a website of the applicant. 11 Mr Ryan SC, who appeared on behalf of the applicant, pointed out that the applicant's case is not that the respondents should have to close down their business. He argued that the respondents are able to continue the same business so long as they do not engage in wrongful conduct. The business of the respondents, as contended by Mr Ryan, could proceed under the name "Global Tyres", for instance. The vice about which complaint is made is the use of the word mark, particularly in the masthead of the website and in the description of the business as "Bob Jane Global". 12 Mr Ryan also contended that the evidence demonstrated that the financial disadvantage of removing reference to the words "Bob Jane" in the masthead and in the body of the website in the way described would be minimal. He referred to an exhibit to the affidavit of Mr Rigon, sworn on 8 June 2011, demonstrating the costs involved in the establishment of the respondents' business. The exhibit provides evidence that whilst the overall set up costs so far have amounted to over a $1 million, the costs relating to the alterations necessary to correct the wrongful impressions amount to some thousands of dollars, an amount which is not significant in the context of the case. 13 The respondents alleged that the applicant delayed significantly in bringing the application for an injunction, and that this was a strong discretionary factor against the granting of an injunction. The respondents, in written submissions, alleged that the applicant had notice of the conduct in which the respondents have engaged as early as 14 January 2011, and they did not take steps to institute proceedings until May. In particular, the respondents relied on a letter dated 14 January 2011 from Mr Jane which made allegations against the applicant and indicated that he intended to commence his own business separate from the applicant. 14 Mr Heerey, who appeared on behalf of the respondents pointed out that the letter from Mr Jane was signed by him as chairman of the first and second respondents. The letter also referred to one of the products as a "Bob Jane Featherlite" tyre. He said that these references clearly indicated to the applicant in January that Mr Jane intended to engage in the behaviour complained of and, despite this indication, the applicant only responded in May. As a secondary submission, Mr Heerey said there was delay in seeking injunctive relief between 19 May 2011, when the statement of claim was filed, and 1 June 2011, when the notice of motion seeking interlocutory relief was filed. 15 Mr Heerey also argued that the case put forward by the applicant was, at best, a weak case. He said it was not misleading for Bob Jane to use his own name. He then drew attention to the differences between the website of the respondents and the website of the applicant. For instance, he noted the difference in colouring and the different logo representing Bob Jane. He said that if there was any significant confusion then that could be addressed best by a disclaimer which could be included on the website of the respondents' business. That disclaimer could indicate that the respondents' business was not associated with the applicant's. 16 The concept of a disclaimer initially had some attraction, particularly if, as raised by the Court, it included not only a reference to the lack of association between the respondents and the applicant's business, but also an explanation of the background which gave rise to that situation, namely a reference to the dispute between Mr Jane and those now controlling the applicant. However, the idea was not embraced by the applicant. Mr Heerey argued that when consumers read the disclaimer they will have already been directed to the respondents' website. Consequently, he said the damage will have been done. 17 Mr Heerey then argued that the trademark cause of action was particularly weak because the respondents were able to rely on the defence in s 122(1)(a)(i) of the Trade Marks Act 1995 (Cth) (the Act), which provides: (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; 18 Mr Heerey referred to the evidence given by Mr Jane that his use of the words "Bob Jane" were seen by him as an entitlement springing from the fact that it was his name and that he had no intention of utilising the name in bad faith to capitalise on the business of the applicant: Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242 at [43]. The evidence of Mr Jane is contained in an affidavit and expressed in a form which largely mirrors the terms of the Act. There is also evidence in the affidavit of Mr Rigon about a discussion with Mr Jane to a similar effect. 19 In response, Mr Ryan asked the Court to draw an inference from the history of Mr Jane's involvement over many years in the applicant's business and that his use of the name was indeed directed to capitalising on the reputation of the applicant. 20 Finally, Mr Heerey addressed the balance of convenience. He said that the respondents would keep an account of the profits made as a result of the operation of their business and that from these accounts it would not be difficult for the Court to calculate any damages payable in the event the respondents were unsuccessful. He relied heavily on the evidence of Mr Jane that were an injunction to be granted it would damage the business irreparably and probably result in its termination in due course. He said that the Court should preserve the status quo, by which he seems to have meant, by allowing the alleged wrongful conduct to continue. He disputed the argument that the business of the respondents could be preserved simply by a change of its trading name in the period pending a trial. CONSIDERATION 21 I am satisfied that there is a serious issue to be tried. The evidence filed on behalf of the applicant demonstrates that the applicant has a very well established reputation in the tyre and motor accessory business. Without particular evidence from consumers, I am able to observe the similarities between the website of the applicant and the website of the respondents. Furthermore, the words "Bob Jane" used in the masthead, in particular, amount to a clear case of infringement of the trademark. By launching the website and continuing its existence from early May, there is a prima facie case established against the respondents of infringement of the word mark and conduct in breach of ss 18 and 29(1)(g) of the ACL. 22 I do not accept that there has been delay by the applicant in commencing proceedings as alleged by Mr Heerey. The letter from Mr Jane on 14 January 2011 was not sufficient to alert the applicant to the conduct about which there is now complaint. It is one thing for Mr Jane to have heralded his general intentions in January. It is quite another for him to have commenced the website on 3 May 2011. Once the website went live, it was a relatively short time before the applicant filed its application and statement of claim, and then the notice of motion seeking interlocutory relief. 23 The respondents' assertion that it was not misleading for Mr Jane to use his own name should also be rejected. It entirely fails to come to grips with the allegation that the misleading conduct resides in the fact that the use of that name will be confused by consumers who are likely to draw the conclusion that the new business is associated with the applicant's business. 24 In relation to the respondents' ability to rely on the defence pursuant to s 122(1)(a)(i) of the Act, there is a serious issue raised that the defence under s 122(1)(a)(i) will not apply in the circumstances of this case. 25 Finally, I am not persuaded that the grant of an injunction would have a terminal effect on the respondents' business, as suggested by the respondents. 26 In the end, the applicant has established a serious issue to be tried and the balance of convenience favours the grant of an injunction in the terms sought in the notice of motion filed by the applicant. The Court will order such an injunction until further order. I certify that the preceding twenty- six (26) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice North. Associate: Dated: 28 June 2011