The renowned “king of tyres”, Bob Jane, has been restrained by the Federal Court from using his own name to sell tyres, wheels, batteries and other accessories for cars. The former racing identity, who founded the well-known tyre and wheel business Bob Jane T-Marts, has been at the centre of a very public and bitter family dispute. Jane has faced off against his son Rodney Jane, CEO of Bob Jane Corporation Pty Ltd which owns Bob Jane T-Marts, in the much publicised family spat which led to Bob Jane severing ties with the business in early 2011.
Following his acrimonious exit from the family business, Bob Jane set up a rival tyre and wheel business using a variety of company names, domain names and marks containing or consisting of the terms “Bob Jane” or “Jane”. He also approached a number of Bob Jane T-Marts’ franchisees and suppliers about his new venture and when asked to cease this behaviour by Bob Jane Corporation he responded: “Rodney, I will contact who I like, when I like, about what I like. You are a liar and a thief. Sue me. Bob Jane”.
Showing that it might be best to think twice before imploring someone to sue you (especially your son), Bob Jane Corporation brought proceedings against Bob Jane’s newly formed companies for trade mark infringement, passing off, misleading and deceptive conduct and making misleading representations. On 26 November 2013 Besanko J handed down his decision in favour of the applicant on all grounds (see Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255).
Bob Jane – The man, the name, the mark
The primary claim was that of trade mark infringement which centred on numerous trade marks owned by the Bob Jane Corporation containing or consisting of “Bob Jane” or “Jane” said to have been infringed by the respondents’ use of marks which contained or consisted of “Bob Jane” or “Jane”. The respondents’ use of these marks as company names, as domain names, on business stationery and in internet search engine advertising (with Google searches of “Bob Jane” and “Bob Jane T-Marts” resulting in a paid advertisement for Bob Jane’s new companies) were all found to have involved trade mark use and infringement was made out. To give you a feel for the level of similarity between the marks in issue, below are two of Bob Jane Corporation’s device marks and two of the marks said to infringe:
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Bob Jane Corporation’s trade marks |
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Bob Jane’s infringing marks |
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Bob Jane, through the corporate respondents, tried to rely on the legislative defence that he had used his own name in good faith but his Honour was not having a bar of it. Not only had the respondents failed to discharge the onus of proof in relation to this defence, but the evidence before the court strongly contradicted any argument of good faith. Bob Jane had allowed his name to become part of the applicant’s trade marks, was well aware of the applicant’s use of the trade marks and had started using the infringing marks while in the midst of a bitter dispute with the applicant. It was clear, his Honour found, that the respondents had used the marks with the intention that consumers would associate their business with the applicant and to leverage off the applicant’s reputation.
The respondents’ use of the marks was also found to constitute passing off and misleading and deceptive conduct. To make matters worse, the respondents’ representations that consumers buying their products could save “30%-50%” were found to be misleading in that they failed to take into account factors such as the cost of freight, removal of the old tyre and fitting the new tyre. And to top off a really bad day for Bob Jane, he was held liable as a joint tortfeasor for these contraventions, with Besanko J finding that he had set up the respondent companies to carry out the same business as the applicant and the logos he used were clearly based on the applicant’s registered trade marks.
While it might seem a bit rough that Bob Jane has been denied the right to use his own name and image (albeit, a slightly out of date image) in relation to his new business ventures, the circumstances surrounding his exit from the applicant and his establishment of the new companies effectively precluded any other conclusion. At the end of this latest stoush it’s son – 1, dad – 0 and we have a feeling that Bob might now be regretting uttering those two little words, “sue me”.
By Melanie McLean and Philippa Macaskill