What’s in a name.

Bob Jane loses traction in family feud…

Bob Jane, a former racing car legend and renowned businessman, has been embroiled in high profile battle with his son Rodney Jane following Bob’s exit from the company he founded in 1965 (Bob Jane Corporation Pty Ltd). For Bob Jane, this family spat recently ended in defeat in the Federal Court.

Passing off your own name?

The rival venture was set up by Bob following his bitter exit from the family business using company names, domain names and trade marks containing the ‘Bob Jane’ or ‘Jane’ name (such as the company name Bob Jane Global Tyre Corporation Limited and domain names bobjaneglobal.com and janetyres.com). Rodney claimed that his father had infringed several of the trade marks , which are currently owned by the Bob Jane Corporation. Bob Jane failed to satisfy the good faith defence for using his own name and the Court ruled that Bob’s use of his own name resulted in:

  • the tort of passing off;
  • trade mark infringement; and
  • misleading and deceptive conduct.

Word association

Bob had used the words ‘Bob Jane’ and ‘Jane’ in his new business. The Court ruled that customers would associate Bob’s new business with the original Bob Jane Corporation and that Bob was using the reputation of his old business to bolster his new business. Further, Bob’s paid advertising, that customers could save 30 to 50 percent was found to be misleading and deceptive because it did not take into consideration the costs of shipping and labour to remove and fit the new tyres.

Sue me!

When Bob had approached several long standing Bob Jane T-Marts’ franchisees and various suppliers in relation to his new business and was asked to stop this behaviour by his Son , Bob replied by email as follows:

‘Rodney, I will contact who I like, when I like, about what I like. You are a liar and a thief. SUE ME!’

The public dispute between father and son came to a conclusion with the Federal Court restraining Bob Jane from using his own name to sell wheels, tyres and other car related parts. ‘Sue me!’ – words uttered in haste, repented at leisure.


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Ben Krasnostein
Categories:
Intellectual Property
Litigation & Dispute Resolution

Posted on: 23 December 2013