Bob Jane Corporation Pty Ltd v Bob Jane Global Tyres Corporation

BETWEEN: BOB JANE CORPORATION PTY LTD (ACN 005 870 431)

AND: BOB JANE GLOBAL TYRES CORPORATION (AUSTRALIA) PTY LTD (ACN 149 801 141)

BOB JANE CHINA CORPORATION (AUSTRALIA) PTY LTD (ACN 149 001 383)

BOB JANE GLOBAL TYRES CORPORATION (HONG KONG) LIMITED

JUDGE: NORTH J DATE: 3 NOVEMBER 2011 PLACE: MELBOURNE

REASONS FOR JUDGMENT 1 Before the Court is an interlocutory application brought by the applicant seeking judgment against the respondents on the application and the cross-claim. It also seeks costs of the proceeding and the cross-claim on an indemnity basis. The nature of the cause of action can be seen in the reasons for judgment published on 9 June 2011, which determined an application for an interlocutory injunction brought by the applicant against the respondents. The applicant relies on r 5.22(b) which provides that a party is in default if the party fails to comply with an order of the Court and r 5.23(2)(c). 2 The default upon which primary reliance is placed is the failure of the respondents to provide an affidavit of documents and inspection in compliance with orders made by the Court. The Court ordered by consent on 12 July 2011 that the parties file and serve affidavits of documents by 7 September 2011, and make available for inspection the documents recorded therein by 14 September 2011. On 13 October 2011, a directions hearing was convened. The respondents did not appear on that occasion. The Court amended the orders made on 12 July 2011, by extending the time for the filing and serving of affidavits of documents to 20 October 2011, and for inspection to 27 October 2011. It appears that the respondents' solicitors, Raj Lawyers, ceased to act on their behalf on 3 October 2011. 3 The respondents did not comply with the orders requiring the making of a list of documents and inspection by the dates fixed by the order made on 13 October 2011. That default is one of the bases of the application for judgment. Mr Ryan SC, who appeared with Mr Nash, for the applicant, provided to the Court a copy of a letter, dated 2 November 2011, from Robert F Jane, the fourth respondent, which sought from the applicant an adjournment of the application. Attached to that letter was an application to adjourn in the following terms: 1. Raj Lawyers is no longer representing the Respondents as of Friday 30 September 2011. 2. Further legal representation has not yet been engaged or appointed. 3. The matter of representation is yet to be resolved. 4. The respondents have only recently received affidavits of Kezia Jo O'Donnel (sic), Andrew Gun (sic) and Rodney Bruce Jane, on Friday 28 October 2011, which affidavit requires more time to respond to. 5. The respondents require time to read and interpret the affidavit of Rodney Bruce Jane and further time to thereafter make an affidavit response. 6. The matter is one of a claim of $90,000 and as such is only a financial consideration and is not a matter of urgency insofar as the matters of the trademarks are not currently in issue. 4 In the course of the hearing, Mr Ryan SC indicated that he had been instructed that Mr Jane had communicated with my chambers in similar terms, apparently after the hearing had commenced. 5 The judgement, which the applicant seeks, mirrors the claims for relief set out in the application accompanying the statement of claim, save in one respect. The statement of claim was amended on 15 July 2011 to include a claim in relation to the use by the respondents of the mark "Janes Tyres" and a mark that includes the term "Janes Tyres" which is said to infringe two registered trade marks with devices, being trade mark 1102780 and 1124705 (the Jane Fleet cause of action). 6 Judgment is also sought in respect of a misrepresentation that the products available from the respondents are 30 to 50 per cent cheaper than those of the respondents' competitors. This claim was originally pleaded but was not the subject of any determination in the interlocutory injunction judgment. 7 In order to obtain judgment by default under r 5.23(2)(c), it is necessary for the applicant to establish an entitlement to the relief claimed. Mr Ryan SC contended that the applicant was bound by that rule to show an arguable or prima facie case for such relief. I accept that submission. 8 In relation to the claims originally made for interlocutory injunctions in respect of the use of the name or marks "Bob Jane" and "Bob Jane Global", the interlocutory injunction judgment accepted that an arguable case for infringement had been made. That is a proper basis for a default judgment for those causes of action. 9 In relation to the Jane Fleet cause of action introduced by amendment, Rodney Bruce Jane has sworn an affidavit on 27 October 2011, substantiating the cause of action relied upon. There was also evidence filed at the interlocutory injunction stage which substantiated the misrepresentation claim. The applicant has, therefore, made good claims for a judgment reflected in the terms of [2], [3], [4] and [6] of the orders to be made. 10 The applicant has established that it is appropriate to the make the additional orders reflected in the terms of [7] and [8] of the orders to be made. The order in [7] was sought in the application and is in the usual form made in cases such as this. Similarly, the claim for the order in [8] which was also sought in the application is appropriate in the circumstances. 11 The applicant has also established that it is appropriate to make orders for corrective advertising or notification in the terms of [9] and then verification in the terms of [10] of the orders to be made. Whilst the form of the corrective advertising was not part of the original application, the form which is proffered is appropriate in the circumstances of the case. 12 It is sufficient, for present purposes, to rely upon the respondents' default in complying with the orders of the Court for discovery. The applicant, however, relied on a number of other defaults including failure to attend the directions hearing on 13 October 2011 (r 5.22(c)); failure to file a notice of address for service (r 4.05(2)); and the failure to appear today. 13 The correspondence received from the fourth respondent sufficiently demonstrates that he was aware of the hearing of the application today. In any event, the affidavit of service of Andrew Gunn sworn on 27 October 2011, attests to the service of a letter from the solicitors for the applicant dated 13 October 2011, which included the following: If you do not comply with the Orders made by the Court this morning by filing and serving Affidavits of Documents by 20 October 2011 and making the documents recorded in the Affidavits available to the Applicant for inspection by 27 October 2011, our client will apply to the Court (without giving any further notice to you) for orders that judgment be entered for the Applicant in respect of its claims and that the Cross-Claim be dismissed. At that hearing, we will seek our client's costs of proceeding on an indemnity basis. 14 A further affidavit of Mr Gunn deposes to an attempt at service of the letter dated 13 October 2011 and the orders of the Court made on 12 July 2011, on the fifth respondent, Mr Rigon. Service was effected on 14 October 2011, by leaving the documents with a person who identified herself as the Personal Assistant for Mr Jane and who agreed to accept service of the documents for Mr Rigon. The notice given by Mr Jane to the solicitors for the applicant purported to apply to all respondents and gave, as an address for service, the place at which Mr Gunn had left the documents for all the respondents. 15 The applicant seeks orders for the costs of the proceeding, including reserved costs, on an indemnity basis. 16 In view of the failure of the respondents to participate in the proceedings, apart from the filing of the defence, since the hearing of the interlocutory injunction, it seems on the material before the Court that they are not serious in seeking to defend the proceeding or advance the cross-claim. The initially agreed time for discovery was extended in the absence of the respondents on 13 October 2011 and significant time has passed since the date for compliance became due. Consequently, a case has been made by the applicant for judgment immediately in the terms of the orders sought. 17 In those circumstances, the respondents should pay the applicant's costs of and incidental to the present application filed on 27 October 2011 on an indemnity basis. Should the respondents have a serious case to mount in their defence, then they are permitted, under the rules of the Court, to seek to have this judgment set aside, as it has been made in their absence. 18 Finally, there should also be an order amending the statement of claim to replace the name of the first respondent with the name Webtyre.net Proprietary Limited and the second respondent with the name Webtyre.net Victoria Proprietary Limited because there is evidence before the Court that those respondents have, since the commencement of the application, changed their names in those respects. I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice North.