Intellectual Property Law Update - Bob Jane Corp Pty Ltd v ACN 149 801 141 Pty Ltd

Background

Bob Jane was a well-known racing car driver who established a successful tyre retailing business.  From 1981, that business was conducted by the applicant (BJC).

BJC is the registered owner of several trade marks including the word mark BOB JANE and the device mark depicted below both of which are registered in relation to various goods and services relating to tyres and their sale.

There was evidence that these trade marks had been extensively used through a variety of media to promote BJC’s business (which included franchised stores) over many years.  The Court accepted that BJC had generated a substantial reputation vesting in the Bob Jane trade marks by 2011.

It was also accepted that BJC had established a substantial reputation in other marks described in the judgment as the “Jane Fleet” marks.

Following a family dispute, Bob Jane ceased to be a director and shareholder of BJC in 2011. He subsequently commenced a new business selling tyres by reference to the name BOB JANE via the respondent corporations.  Some of the corporate respondents included the words BOB JANE in their corporate name.  Others did not.

Some of the respondent corporations used the following device and variations of it in the promotion of car and truck tyres for sale.  The respondents also commenced operation from a website located at http://www.bobjaneglobal.com.

There was evidence of actual confusion: customers had contacted BJC seeking to purchase products they had seen on the respondents’ website.  Sometime later in 2011, the device depicted above was removed from the respondents’ website and replaced with the following:

Following the grant of interlocutory relief, the respondents’ website was moved to a new address at http://www.janetyres.com and a new device was adopted as shown below:

In the “About Us” section of the respondents’ website there was a disclaimer  which stated that

Mr. Bob Jane founder of the ‘Bob Jane T-Marts’ is not in any way associated with the ‘Bob Jane T-Mart’ organization.  Furthermore, ‘janetyres.com’ and Bob jane Tyre Corporation (Australia) Pty Ltd is also not in any way associated with Bob Jane T-Marts or the Bob Jane Corporation Pty Ltd

Despite these changes, the name BOB JANE was still used prominently on the respondents’ website, on its stationery and business paraphernalia and on the products it sold.

BJC alleged trade mark infringement, sought injunctive relief (including interlocutory injunctive relief which was granted) and other remedies including declarations and delivery up.

Use as a trade mark?

In relation to whether the impugned marks had been used “as a trade mark”, the Court found:

1. Insofar as the corporate respondents were using their own names, or parts of their names, they were doing so “as trade marks”;
2. The use of the Bob Jane Global domain name and the Jane Tyres domain name are uses of marks “as trade marks”.
3. The use of marks in advertising on internet search engines can involve use as a trade mark.

The Court applied the usual authorities on the question of whether the impugned marks were substantially identical with or deceptively similar to the registered marks and concluded that each of the marks used by the respondents was at least deceptively similar to one or more of BJC’s registered marks.

The respondents raised, by way of defence, s 122 TMA which relevantly provides:

122 When is a trade mark not infringed?

(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; or

(ii) the name of a predecessor in business of the person or the name of the predecessor’s place of business;…

In relation to this, the Court noted:

1. While the defence extends to corporations, the whole of the corporate name must be used (not just part of it) – though the abbreviations “Pty” and “Ltd” may be omitted;
2. The requirement of good faith involves consideration of the respondent’s subjective belief.  Mere knowledge of the of the registered mark is insufficient to negate good faith but the authorities suggest there must be an honest belief that no confusion would arise and there must be no intention of wrongfully diverting business; and
3. The onus of establishing the defence lies on the respondent.

The respondents did not lead any evidence to support their reliance on s 122 TMA (indeed they did not appear at the trial at all).  The Court accepted BJC’s contention that the “respondents’ marks were used with the intention that consumers would associate the respondents’ business with” BJC.

Accordingly, the s 122 defence was rejected.

Passing off / Australian Consumer Law

The Court also considered BJC’s claims of passing off and contravention of the Australian Consumer Law.  These claims were said by the Applicant to be subsumed within the claim for trade marks infringement but they were nevertheless considered separately by the Court.  They are not separately considered in this case note.  It is sufficient to say that they were successful.

Joint tortfeasorship

The Court also held that Bob Jane and another director of the respondent companies, Mr Rigon, were liable as joint tortfeasors with the corporate respondents.

Costs

In addition to the usual order for costs, BJC also obtained indemnity costs in relation to the proceeding from the date upon which an earlier judgment for final relief had been set aside.  The Court explained that the earlier judgment had been set aside on the basis that the respondents would defend the proceeding and had arguable grounds to do so.  Since that time, however, they had “done very little to defend the proceeding.”

*Ben Gardiner has an online blog, Noth Pole Bananas, in which he discusses recent intellectual property cases in Australia.