Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Monday, December 16, 2013

'It’s so good, I put my name on it': the unexpected pitfalls of registering a personal name as a trade mark

by Lawyer Tessa Meyrick

When famous boxer-cum-entrepreneur, George Foreman, sold the rights to his name to the makers of the eponymous 'Lean Mean Fat-Reducing Grilling Machine'  in 1999 for upwards of US$110 million, it's safe to assume the heavy-weight could afford to officially hang up his gloves.

A recent Federal Court judgment reminds us, however, that if you hope to rely on your name to put food on your plate in retirement, you're best to think carefully before prematurely giving away your right to use it.

'Tyre King' Bob Jane (the artist formerly known as founder and proprietor of the Bob Jane T-Mart franchise) has been ordered by the Federal Court to stop selling, supplying or promoting the sale of tyres or wheels by reference to his own name. The name, it turns out, is registered as a trade mark, and forms part of the suite of branding assets Bob Jane relinquished when he left the Bob Jane Corporation Pty Ltd in 2011 following an acrimonious split with his son, Rodney.

In a deal struck in 2002, Rodney is reported to have been promised the struggling Bob Jane T-Mart business, owned by Bob Jane Corporation, if he was able to deliver a $10 million profit in one year. In 2006, he did just that, bringing the company out of what appears to have been a pretty serious debt problem.

But while the business recovered, the relationship between father and son turned sour. In January 2011 Bob Jane sent an email to all Bob Jane T-Mart franchisees to advise them that he had resigned as chairman, shareholder and owner of Bob Jane Corporation, and that he had been the victim of major fraud perpetrated on him by, among others, Rodney.

Within months of his departure, Bob Jane had established several new companies incorporating or making use of the 'Bob Jane' name. These included the Bob Jane Global Tyre Corporation, operated from '' and marketed by reference to this device:

Tyre-savvy readers may detect a more than passing resemblance to this device (registered, along with the word mark 'BOB JANE', to Bob Jane Corporation):

Bob Jane ignored all demands that he cease making use of the marks and Bob Jane Corporation ultimately sued for trade mark infringement.

This particular dispute between Jane Snr and Jnr – and there are a few – has a long and messy history. Final orders in favour of Team Rodney were in fact made in November 2011, but were later set aside on the basis that Bob Jane had been 'under the influence of a persuasive charlatan' who had advised him not to show up to the trial, and that his 'capacity to choose an independent course was restricted by his age and medical conditions'. It transpired that 83-year-old Bob Jane, still recovering from a stroke, had sought legal counsel from a man who, while an avid fan of the 'fractal mathematics of genetic codes', had, strictly speaking, no legal qualification whatsoever.

When Bob Jane failed to make an appearance at the second proceeding, however, the gig was up. Left to consider the matter without any help from the respondent parties, and in the face of clear and wide-spread use of Bob Jane's name in connection with his new tyre businesses, Justice Besanko found that the BOB JANE trade marks had been infringed.

Where the strength of a brand is drawn heavily from the reputation or celebrity of the person behind it (think: Marc Jacobs, Christian Dior, Paul Smith etc.), there are compelling reasons to register that person's name as a trade mark. Under Australian law, there is no unqualified right to use your personal name in the course of trade, so a registered trade mark provides the owner with a valuable, transferable and licensable right to use that name in relation to specified goods and services, to the exclusion of all others.

But, there lies the rub. Once a name is registered as a trade mark, any unauthorised use of it in connection to the goods and services listed on the registration will generally be an infringement unless the respondent can establish that the name was used in good faith. That defence requires an honest use by a person of his or her name, without any intention to deceive anybody and without any intention to make use of the good will acquired by another trader. (Since the evidence fairly convincingly demonstrated that Bob Jane had deliberately tried to leverage off the 'BOB JANE' trade marks and had 'no regard to any restrictions on his behaviour', it's no surprise that Justice Besanko didn't consider the 'good faith' defence to be available in this case.)

The Bob Jane case is one of a number of Australian examples (Alana Hill and Peter Morrisey are others) which highlight that, for all the protection trade mark registration can offer, it can also have some unexpected pitfalls if you don't plan adequately for what happens if the bearer of the name and the owner of the mark part ways. Even where the separation is amicable, disputes can erupt down the line if the parties aren't absolutely clear about who has the right to use the name and in what context. Ideally, parties should plan for a range a scenarios and agree before the trade mark application is filed on the ownership and use of the trade mark in the event that any or all of those scenarios eventuate. Attempting to resolve these issues during or – just as common – years after a split, adds needless complication and costs for both parties.

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