Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd  FCA 1255 (26 November 2013)
This is the latest judgment relating to the much publicised family dispute involving Bob Jane and his son, Rodney Jane.
Bob Jane was a well known racing car driver who established a very successful tyre and automotive accessories franchise business trading under the name of Bob Jane T-Marts which was owned and operated by Bob Jane Corporation Pty Ltd. Following a family dispute, Bob Jane ceased to be a director and shareholder of this company in January 2011 and set up a directly competing business.
The court had previously granted interlocutory relief on 9 June 2011 in favour of Bob Jane Corporation Pty Ltd restraining Bob Jane and related companies from certain conduct and final judgment was entered on 3 November 2011. In February 2012, Bob Jane was successful in setting aside final judgment and the court essentially reinstated the terms of the interlocutory injunction. The matter came up for final trial in September 2013, but Bob Jane and the other respondents did not appear, so the proceeding was not contested.
Bob Jane Corporation Pty Ltd owned relevant trade mark registrations for the word mark BOB JANE and the device marks shown below:
The judge, Besanko J was also satisfied that by early 2011, Bob Jane Corporation Pty Ltd had generated a substantial reputation and goodwill in Australia through use of these registered trade marks.
Some time before April 2011, Bob Jane and his related companies adopted the following trade mark:
There was also a website at www.bobjaneglobal.com from about 4 May 2011 which disclosed use of the following trade mark:
This website also contained a representation that products and prices were some 30% to 50% lower than most competitors. The contact telephone number was also very similar to that of Bob Jane Corporation Pty Ltd.
Some time between 9 May 2011 and 10 June 2011, the Bob Jane Global and variant trade marks were replaced with the following trade mark:
However the website and invoices still referred to Bob Jane Global.
Following the interlocutory injunction granted on 9 June 2011, Bob Jane and his related companies set up a new website at www.janetyres.com (but access was directed via the bobjane global.com domain name) and adopted the new trade mark shown below:
This website carried a disclaimer to the effect that Bob Jane was not in any way associated with the Bob Jane T-Mart organisation. However, the judge commented that such disclaimer was not relevant to the alleged infringement of Bob Jane Corporation’s trade marks and, in any event, came too late because the searcher is already in the web site and more interested in viewing the advertisements than reading disclaimers.
In June 2011 and July 2011, Bob Jane and his related companies established web sites at www.webtyre.net and www.trucktyre.net with products offered still bearing references to trade marks containing BOB JANE.
From about 15 April 2013, Bob Jane operated a retail outlet in Melbourne under the names Bob Jane, Southern Motors Auto Equipment and King’s Cheapest Tyres, but receipts contained the name Bob Jane Global Tyre.
On the issue of infringement, Besanko J was satisfied that use of the corporate names containing Bob Jane constituted trade mark use. The own name defence could not be established because of failure to establish such use was in good faith. The use of domain names containing Bob Jane Global and Jane Tyres to access those website and redirect to another website was also trade mark use. His Honour found that use of the various trade marks containing Bob Jane infringed the registered BOB JANE word mark and use of Jane Tyres infringed the registered Jane Fleet logo mark.
Besanko J found the conduct of Bob Jane and his related companies also constituted passing off and was misleading or deceptive under the Australian Consumer Law. His Honour went on to find that Bob Jane and Dennis Rigon were liable as joint tortfeasors.
Consequently, Besanko J made all orders requested by Bob Jane Corporation Pty Ltd including an order for indemnity costs from 2 February 2012. His Honour was clearly not impressed by the failure of Bob Jane to defend the proceeding.