Failures to change corporate names and deliver up infringing material leads to fines for contempt
Peter Heerey AM, QC, Tom Cordiner & Alan Nash
Correspondents for South Australia, Victoria and Western Australia
Note: Where any of the barristers were involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.
Late last year, the Federal Court ordered that the fourth respondent, Bob Jane, and the companies he controlled, be restrained from trading as a business under any name that is or includes the word JANE. The corporate respondents were also ordered to forthwith change their names, transfer certain domain names and deliver up promotional material to Bob Jane Corporation.
Early this year, Bob Jane Corporation brought charges of contempt of court against each of Bob Jane and various of the corporate respondents he controlled for failure to comply with those orders. Bob Jane Corporation sought a declaration of guilt and imposition of a fine in relation to each alleged contempt.
After the orders were made, Bob Jane established “Bob Jane T Marts Pty Ltd” with a view to conducting a business that would, in fact, involve him in a breach of the orders. However, as the company did not in fact enter into any transaction, Besanko J found that the conduct was not in contempt of the orders.
The corporate respondents also failed to change their names or transfer the domain names and deliver up promotional materials “forthwith” as required by the orders. His Honour found that the contempt was wilful and in contumacious disregard for the orders and Besanko J therefore made declarations of guilt,. Bob Jane Corporation sought the imposition of a fine on the contemning parties, to which Besanko J acceded. His Honour also observed that given there was ongoing non-compliance with one of the orders, he would a daily fine (subject to a short delay) until the order was complied with.
Finally, his Honour observed that it is common to award indemnity costs in successful contempt proceedings, though there was no rule to that effect. His Honour felt an award of indemnity costs was warranted given the wilful nature of the contempt, but ordered a discount given that the applicant had failed to establish that the mere incorporation of Bob Jane T Marts Pty Ltd was a contempt.
Peter Heerey QC – CommBar profile
Alan Nash – CommBar profile
Tom Cordiner – CommBar profile