Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for Thornleigh Trading Trust) (in liq)

[2022] NSWSC 83

Supreme Court

New South Wales

• Amendment notes

Medium Neutral Citation:

Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for Thornleigh Trading Trust) (in liq) [2022] NSWSC 83

Hearing dates:

22 – 25 November 2021

Date of orders:

8 February 2022

Decision date:

08 February 2022

Jurisdiction:

Common Law

Before:

Schmidt AJ

Decision:

For the reasons given I now order that judgment be entered for Ford.

The parties should confer about the final orders which reflect the conclusions which I have reached, which should be filed within 14 days. If there is any dispute, including as to costs, the parties should approach within that time and also file the orders they propose, together with a short outline of their submissions.

Catchwords:

EVIDENCE — business record — advice about trade mark application — relevance — part of surrounding circumstances in which litigation settled by deed — whether advice fell within s69(3) Evidence Act 1995 (NSW) exception as having been prepared “in connection with” or “in contemplation of” legal proceedings — exception did not apply — advice admissible

— business record — memoranda of legal fees and disbursements — whether memoranda fell within s 69(3)(a) Evidence Act exception — purpose for which documents created — exception applied — memoranda not admissible

— published decision of a delegate under the Trade Marks Act 1995 (Cth) — whether s91 Evidence Act excludes decision — decision admitted 

— without prejudice communications and draft pleadings — whether admissible under s131 Evidence Act — admissible under s131(2)(g)

CIVIL PROCEDURE — admissions — withdrawal — application unsupported by evidence — claimed representative error— no sufficient or just basis to grant leave under Uniform Civil Procedure Rules, r 17.2(2) — withdrawal refused

— pleadings — reply — whether necessary — effect of Uniform Civil Procedure Rules, 14.27 — whether issue adequately joined over reasonableness of restraint — effect of r 14.14 — need to plead specifically any matter that if not pleaded specifically may take the opposite party by surprise — no unfair surprise as the result of absence of reply — effect of r 14.2 — proceedings may be tried without further pleadings — restraint issue adequately defined by pleadings supported by evidence and parties’ agreed issues and facts — no unfair surprise from absence of reply

COMMERCE — restraint of trade — where restraints agreed in settlement of disputed use of trade marks passing off and other common law and statutory claims — agreement to cease use of trade marks and claiming commercial connection which did not exist — whether the restraint of trade doctrine applies to deed settling actual and foreshadowed litigation — where parties legally represented and settlement partly affected by Court order — public interest in upholding genuine and proper compromises of litigation, which result in restraints agreed by commercial parties — public interest in finality of agreements settling litigation — doctrine does not apply

COMMERCE — whether restraints unlawful — validity and reasonableness — public policy — whether restraints against the public interest — Restraints of Trade Act 1976 (NSW), s4 — restraints valid

CONTRACTS — construction — principles — whether various aspects of deed ambiguous — no ambiguity — whether restraints breached — breaches established — whether discretion to make orders should be exercised — orders made

Legislation Cited:

Civil Procedure Act2005 (NSW) ss 56-58, 98(4)(c)

Competition and Consumer Act2010 (Cth)

Contracts Review Act 1980 (NSW)

Corporations Act2001 (Cth)

Crimes Act1900 (NSW)

Evidence Act 1995 (NSW) ss 59, 60, 69, 91, 131, 136

Fair Trading Act 1987 (NSW)

Legal Profession Uniform Law (NSW) 2014 ss 172, 173

Motor Dealers Act 1974 (NSW) (repealed)

Restraints of Trade Act 1976 (NSW) s 4

Sale of Goods Act1923 (NSW) s 17

The Australian Consumer Law (Schedule 2 to the Competition and Consumer Act2010 (Cth)

Trade Marks Act 1995 (Cth) ss 8, 26, 120, 122

Uniform Civil Procedure Rules 2005 (NSW) rr 14.2, 14.14, 14.27, 17.2(2)

Cases Cited:

Amoco Australia Pty Ltd v Rocca Bros Motor Engineering Co Pty Ltd (1973) 133 CLR 288; [1973] HCA 40

Andar Transport Pty Ltd v Brambles Ltd (2004) 217 CLR 424; [2004] HCA 28

Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Noack (2004) 71 NSWLR 212; [2004] NSWSC 347

Averkin v Insurance Australia Ltd (2016) 92 NSWLR 68; [2016] NSWCA 122

Baltic Shipping Company v Dillon (1991) 22 NSWLR 1; [1991] NSWCA 19

BB Australia Pty Ltd v Danset Pty Ltd [2018] NSWCA 101

Belflora Pty Ltd v Vinflora Pty Ltd [2021] NSWCA 178

Buckley v Tutty (1971) 125 CLR 353; [1971] HCA 71

Dalgety Wine Estates Pty Ltd v Rizzon (1979) 141 CLR 552; [1979] HCA 41

Electricity Generation Corporation t/as Verve Energy v Woodside Energy Ltd (2014) 251 CLR 640; [2014] HCA 7

Esso Petroleum Co Ltd v Harper's Garage (Stourport) Ltd [1968] AC 269

Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for the Thornleigh Trading Trust) [2017] NSWSC 1703

Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as Trustee for the Thornleigh Trading Trust) [2019] NSWSC 1914

Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for the Thornleigh Trading Trust) [2018] NSWSC 136

Ford Motor Company of Australia Ltd v Tallevine Pty Ltd (In Liq) [2021] NSWSC 1192

FPM Constructions v Council of the City of Blue Mountains [2005] NSWCA 340

Hadley v Baxendale (Court of Exchequer (UK), 23 February 1854, unrep)

Hammond & Co v Bussey (1887) 20 QBD 79

Henry Leetham & Sons Ltd v Johnstone-White [1907] 1 Ch 322

Herbert Morris Ltd v Saxelby [1916] 1 AC 688

Idameneo (No 123) Pty Ltd v Dr Teresa Angel-Honnibal [2002] NSWSC 1214

Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406

Isaac v Dargan Financial Pty Ltd ATF The Dargan Financial Discretionary Trust (ABN 68 702 047 521) (trading under the name of Home Loan Experts) (2018) 98 NSWLR 343; [2018] NSWCA 163

King v Muriniti (2018) 97 NSWLR 991; [2018] NSWCA 98

Knight v FP Special Assets Ltd (1992) 174 CLR 178; [1992] HCA 28

Koops Martin v Dean Reeves [2006] NSWSC 449

Lodestar Anstalt v Campari America LLC [2016] FCAFC 92

Maile v Rafiq [2005] NSWCA 410

McCarthy v Camil Holdings [2016] VSCA 235

McGuigan Investments Pty Ltd v Dalwood Vineyards Pty Ltd [1970] 1 NSWR 686

Metcash Limited & Anor v Joao Louis Jardim (aka Louis Jardin) & Anor (No 3) 73 ALR 407; [2010] NSWSC 1096

Orton v Melman [1981] 1 NSWLR 583

Panayiotou v Sony Music Entertainment (UK) Ltd (High Court (UK), Parker J, 21 June 1994, unrep)

Peters (WA) Ltd v Petersville Ltd (2001) 205 CLR 126; [2001] HCA 45

Properties Northside Pty Ltd t/as Raine & Horne Manly/Freshwater v Pickering [2015] NSWSC 310

Provident Capital Ltd v Papa (No 2) [2013] NSWCA 156

Re JJT; Ex parte Victoria Legal Aid (1998) 195 CLR 184; [1998] HCA 44

Stenhouse Australia Ltd v Phillips [1973] 2 NSWLR 691

Thomas v State of New South Wales (2008) 74 NSWLR 34; [2008] NSWCA 316

Toll (FGCT) Pty Ltd v Alphapharm Pty Ltd (2004) 219 CLR 165; [2004] HCA 52

Traderight (NSW) Pty Ltd (ACN 108 880 968) & Ors v Bank of Queensland Limited (No 10) and 15 related matters [2012] NSWSC 1181

Tresedar Pty Ltd v Property Builders (Constructions) Pty Ltd (In Liquidation) [2014] NSWSC 382

Trident Seafoods Corporation v Trident Foods Pty Limited [2019] FCAFC 100

Vitali v Stachnik [2001] NSWSC 303

Woolworths v Olson [2004] NSWCA 372

Category:

Principal judgment

Parties:

Ford Motor Company of Australia Limited (Plaintiff)
The Trustee for Thornleigh Trading Trust (in liq) (First Defendant)
Ian David Charles Creak (Second Defendant)

Representation:

Counsel:
R Glasson (Plaintiff)
T Brennan SC with M Darian-Smith (Second Defendant)
Solicitors:
Landers and Rogers (Plaintiff)
Adrian Holmes Law Services (Second Defendant)

File Number(s):

2019/163053

Index

Conclusion - paragraph 7

Agreed facts, issues and evidentiary rulings - paragraph 19

Agreed facts - paragraph 20

Disputed facts - paragraph 22

Issues - paragraph 23

Parts of the defence abandoned - paragraph 25

Evidentiary Rulings

The evidence admitted provisionally is admissible - paragraph 30

The trademark advice - paragraph 31

Without prejudice communications - paragraph 42

The delegate’s decision - paragraph 52

Can the application to withdraw admissions be granted? - paragraph 55

The fee memoranda - paragraph 62

Does the restraint doctrine apply to the deed? - paragraph 80

Was the restraint issue adequately pleaded? - paragraph 105

What is the proper construction of the deed? - paragraph 123

The parties’ cases - paragraph 125

How the construction of the deed must be approached - paragraph 131

The surrounding circumstances - paragraph 135

The dealer agreement - paragraph 136

Mr Creak’s concessions as to Ford’s market and brand reputation in Australia - paragraph 149

Tallevine’s financial position and the trademark application - paragraph 160

Negotiations - paragraph 164

The terms of the deed - paragraph 170

What was a related entity? - paragraph 176

What was the effect of cl 2.2(a)? - paragraph 194

The parties’ cases - paragraph 195

Mr Creak’s construction cannot be accepted - paragraph 206

How is clause 10 of the minutes and the order to be construed? - paragraph 213

The parties’ cases - paragraph 219

Clause 10 is not ambiguous - paragraph 224

Is cl 2.2(a) of the deed invalid because it involves an unlawful restraint of trade? - paragraph 244

Onus on the restraint issue - paragraph 254

The restraints were reasonable - paragraph 259

The restraints were not contrary to the public interest. - paragraph 283

The consent orders and the obligations and restraints imposed by the deed were breached - paragraph 291

Were any of the restraints which Mr Creak breached contrary to public policy? - paragraph 302

Relief

Orders sought - paragraph 313

Damages - paragraph 314

Indemnity - paragraph 347

The parties’ cases - paragraph 348

The terms of the deed - paragraph 351

Conclusion - paragraph 357

Further restraints must be ordered - paragraph 365

Form of these orders - paragraph 373

Costs and interest - paragraph 391

Final orders - paragraph 393

Judgment

1. Ford seeks injunctive relief and damages against Mr Creak for breach of a settlement of proceedings it had brought against Tallevine in 2014 in the County Court of Victoria, which was encapsulated in a deed executed by the two companies and Mr Creak on 16 September 2015. The recitals to the deed explain the circumstances in which it came to be entered, agreement having been reached about claims and counterclaims made by Ford and Tallevine in the County Court and other foreshadowed proceedings.

2. The deed required that separate proceedings be commenced in this Court, in which orders would be made binding Tallevine, in similar terms to restraints which bound it and Mr Creak under the deed. Those orders were later made by consent in proceedings to which Mr Creak was not a party.

3. Before commencing these proceedings Ford brought contempt proceedings against Tallevine, relying on conduct which it also relies on in these proceedings to establish Mr Creak’s alleged breach of the deed. Tallevine had brought a cross-claim in the contempt proceedings but they are no longer pursued, Tallevine having been liquidated after a $150,000 security for costs order was made against it by Harrison J: Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for the Thornleigh Trading Trust) [2017] NSWSC 1703.

4. Harrison J and Campbell J dealt with other interlocutory matters, including Ford’s application to have Mr Creak joined as a party to the contempt proceedings, which was refused: Ford [2017] NSWSC 1703; Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as Trustee for the Thornleigh Trading Trust) [2019] NSWSC 1914.

5. Orders have been made by Fagan J in favour of Ford for some of the costs of the contempt proceedings, they not having been resisted by the liquidator and Mr Creak not having sought to be heard, even though the two proceedings were to have been heard together: Ford Motor Company of Australia Ltd v Tallevine Pty Ltd (In Liq) [2021] NSWSC 1192. There Fagan J found that most of the legal costs Ford had incurred were attributable to its defence of the crossclaim, $347,575.10 inclusive of disbursements: at [12]-[13].

6. His Honour also concluded that while the contempt proceedings were relatively simple, the cross-claim was factually complex and involved strongly contested allegations of misrepresentation and reliance. His Honour assessed the costs of the cross-claim at $295,000, having considered two affidavits which provided an analysis of the work which had been undertaken. He thus ordered payment of the $150,000 Tallevine had given for security for costs to Ford. In these proceedings it pursues the balance of the costs.

Conclusion

7. For reasons which I will explain, I am satisfied that judgment must be entered for Ford, which has proven its case.

8. This conclusion rests on the agreed facts supported as they were by the evidence of Mr French, Ford’s director of programs for the Asia Pacific region; Ms Freeman, its legal counsel; and that of the other witnesses who gave largely undisputed affidavit evidence about Ford’s operations; its relationship and dealings with Tallevine and Mr Creak; the conduct which they and later Fleet Serv Pty Ltd, to which Tallevine’s business was sold, had pursued; and Ford’s objections, eventually pursued in the County Court and later in this Court. Their evidence was supported in relevant respects by evidence given by Mr Creek, particularly in cross examination.

9. This evidence established that what has brought the parties repeatedly to court was what Mr Creak first identified while Tallevine was still an authorised Ford dealer to be a gap in the market which he believed was available to be exploited, without Ford’s consent and later, despite its objections. Ford disagreed and in these proceedings has established not only that in 2015 both Tallevine and Mr Creak accepted that they would cease pursuing what it then and still continues to object to, but that Tallevine and Mr Creak did not adhere to what was then agreed and by which they were bound, given the terms of the deed and the orders which this Court later made by consent, as a result of the 2015 settlement. Those orders bound Tallevine, but it did not adhere to them, nor did Mr Creak adhere to what the deed imposed upon him.

10. In summary, I am satisfied that the evidence established that:

1. It was without Ford’s authority that Tallevine first began manufacturing and selling a range of “Raptor” branded accessories and parts for Ford vehicles in 2012, while it was an authorised Ford dealer. It then also began offering for sale Ford vehicles which it had fitted with “Raptor” enhancements. Those vehicles bore the trademarked Ford name and badge and in the case of Ranger vehicles, the trademarked Ranger name, as well as the Raptor name which Tallevine affixed. That name was styled in a way which Ford complained was deceptively similar to the name affixed to Ford Raptor vehicles on manufacture by its related companies overseas.

2. Much of the parties’ resulting dispute concerned Tallevine’s continued “raptorising” of both Ford F series trucks, which Ford did not import into Australia, and of Ford Ranger vehicles, which it did. That continued even after the termination of Tallevine’s dealership, the parties’ 2015 settlement and the eventual sale of the business to Fleet Serv Pty Ltd.

3. Ford terminated Tallevine’s dealership agreement after Mr Creak was convicted in the NSW Local Court of offences under the Motor Dealers Act 1974 (NSW) (repealed), The Australian Consumer Law (Schedule 2 to the Competition and Consumer Act2010 (Cth)), the Fair Trading Act 1987 (NSW), and the Crimes Act1900 (NSW), which included odometer tampering. Some of those convictions were later overturned and the other charges were then withdrawn.

4. Despite this, Ford was not prepared to enter another dealership agreement with Tallevine or with other companies with which Mr Creak was involved, including Maximotion Pty Ltd, now known as Fleet Serv Pty Ltd. The result was a dispute which was resolved without litigation in October 2013, when Ford and Tallevine entered their first settlement agreement. This was how Tallevine ceased being an authorised Ford dealer.

5. The first agreement did not resolve the ongoing dispute about Tallevine continuing to “raptorise” Ford vehicles, accessories and parts. The result was the County Court proceedings which Ford brought. They were settled in mediation in 2015 by a second settlement agreement, reflected in the deed and the consent orders later made by this Court, breach of which are in issue in these proceedings.

6. Ford was still then not prepared to enter into another dealership agreement with Tallevine, or with other companies in which Mr Creak was involved.

7. The background to the 2015 settlement and Ford’s attitude included that:

1. Ford did not manufacture vehicles in Australia but imported those manufactured by Ford Motor Company (USA) and other Ford companies overseas, which it sold by wholesale to its authorised dealers.

2. Ford had dealership agreements of the kind it once had with Tallevine with those dealers. They sold those new vehicles by retail under that agreement. They and other dealers, including Tallevine could also sell used Fords, as well as Ford vehicles imported by third party importers.

3. That was because Ford did not import all Ford vehicles manufactured overseas, including Raptor versions of Ford F series trucks. Such trucks were then, however, imported by third party importers and sold here by various Australian dealers, including Tallevine.

4. At that time no Raptor versions of Ford Rangers were being manufactured, but Ford did import Ranger vehicles which its dealers sold.

5. On Mr Creak’s evidence there was a market for Raptor Ford vehicles here. Raptor Fords were advertised in magazines and on websites which he described monitoring in order to observe this market and to ascertain what price and style of vehicles were being offered for sale by other dealers.

6. On Mr Creak’s evidence the Raptor version of the F series trucks attracted a luxury car tax on import, with the result that Tallevine did not tend to purchase them from third party importers. Instead, it bought F series trucks from those dealers which it then “raptorised” itself and offered for sale. It also “raptorised” Ford Ranger vehicles which, after the termination of its dealership agreement, it had to purchase from other Ford authorised dealers, rather than direct from Ford. It then sold such vehicles as new despite Ford’s objections, with the result that it took steps under its dealership agreements, to stop other dealers providing Rangers to Tallevine to sell as new.

7. Despite Ford’s objections, even after the termination of its dealership agreement, Tallevine continued to suggest in various ways that it had a continuing connection with Ford and to sell “raptorised” parts, accessories and Ford F series trucks, and Rangers.

8. The 2015 settlement ought to have settled the parties’ dispute over what Tallevine was so doing, because it agreed to cease. But even afterwards it and later Fleet Serv not only continued to suggest a connection with Ford, but also to sell “raptorised” Ford F series trucks, Rangers, parts and accessories, in breach of the terms of the deed and the orders and despite Ford’s ongoing objections. At the relevant times Mr Creak was the sole director and shareholder of both companies and bound by the deed, which should have precluded this.

9. Underlying Ford’s ongoing objections was that when manufactured all Ford vehicles, including Ford Raptor vehicles, bear both the trademarked “Ford” name and blue oval device containing that name, which Mr Creak called its “badge” and which was also referred to as a “rondelle”. When manufactured Ford Rangers also bear the trademarked “Ranger” name and Ford Raptors, the trademarked “Raptor” name. Those names are each styled in a particular way.

8. Ford’s objections to Tallevine’s use of the trademarked names and badge rested in part on provisions of the Trade Marks Act 1995 (Cth) which regulated use of trade marks, as well as use by an "authorised user”, which Tallevine claimed to be: s 8. Section 26 permits authorised users to use trade marks and bring proceedings for their infringement. Tallevine had no such rights, as the 2015 deed acknowledged.

9. Ford USA and Ford Canada, another subsidiary, owned the various marks and the Ford badge in issue, but Tallevine was only ever authorised to use them under the dealership agreement. A third party, a Japanese company Hino then held the Raptor SVT trademark in Australia. Other vehicle manufacturers also produced Raptor vehicles.

10. It was in 2015 that Ford USA lodged an application for Australian registration of the marks “Ford Ranger Raptor” and “Ranger Raptor”. Tallevine also lodged an application for registration of the “RAPTOR” name just before the 2015 settlement, but it was not obtained. Tallevine had earlier sought authorisation to use the Raptor name from Hino, but that had also not been obtained. Tallevine allowed its 2015 trademark application to lapse after the settlement. It later unsuccessfully sought to pursue its application, that being opposed by Ford and Hino.

11. In 2018 Ford announced that it was going to import a range of Ford Ranger Raptor trucks, which Ford USA had commenced producing. In these proceedings Mr Creak complained that thereby Ford had sought to sell the very product he had developed.

12. Ford did license other third parties, under an established protocol, to produce accessories and other products for Ford vehicles, including grills which bore Ford trademarks, but neither Tallevine, Mr Creak nor Fleet Serv were so licensed. Mr Creak’s only conceivable authority to use the marks arose under the deed, which envisaged limited use by Fleet Serv.

13. Ford considered that accessories and grills which used Ford trademarks, including the Raptor mark, which were not manufactured by agreement under its protocol to be counterfeit and took steps to protect its brand against such misuse. They included the proceedings Ford brought against Tallevine in the County Court, for contempt in this Court and these proceedings.

14. In the County Court, Ford had pursued its objection to Tallevine’s use of Ford trademarks; of its continuing use of the “Ford” and “Raptor” names after the dealership was terminated to suggest an ongoing connection with Ford; as well as to it offering the Ford vehicles it had “raptorised” for sale as new. It considered that Tallevine was not only misusing intellectual property, but involved in passing off and breach of the dealership agreement, relevant terms of which survived its termination, as well as breach of various statutes.

15. The 2015 settlement accepted that Ford had a basis for its objections to what Tallevine had been doing, which Tallevine and Mr Creak agreed would cease. Despite this, after the settlement Tallevine and later Fleet Serv, after it acquired Tallevine’s business in 2017, continued the “raptorising” which Ford considered breached both the orders in Tallevine’s case and the deed in Mr Creak’s. It was in 2017 that Ford thus brought contempt proceedings in this Court against Tallevine and in 2019, these proceedings against Mr Creak.

11. Despite admitting some breaches of the deed and the orders which bound Tallevine, Mr Creak’s case in these proceedings was that both Tallevine and Fleet Serve were entitled to produce and supply “his Raptor range of vehicles” as they did. He insisted on the existence of a gap in the market which they were entitled to exploit as they did, despite what had been agreed in the 2015 settlement and the orders which bound Tallevine.

12. I am satisfied that Mr Creak was wrong in perceiving there to be a gap in the market which Tallevine and Fleet Serv were free to pursue as they did. Fairly read, that was what both he and Tallevine plainly accepted when the 2015 settlement was given effect by execution of the deed and the making of the orders which bound Tallevine.

13. Mr Creak’s case was that none of the conduct about which Ford complained involved a breach of the deed on his part, given its proper construction. Further, despite how it had been negotiated and agreed, it was a deed which involved an unlawful restraint of trade and was, accordingly, wholly unenforceable. In addition, given Ford’s pleadings, it was not entitled to advance a case that the restraints agreed were reasonable, with the result that evidence on which it sought to rely was not admissible and its claims had to be dismissed in their entirety.

14. I am satisfied that this cannot be accepted.

15. Mr Creak was wrong in his construction of the deed, which was not invalid. Nor was it unlawful. In failing to adhere to its terms, as he did, while bound by the obligations which he thereby accepted and by which he remained bound even after Tallevine’s business was sold to Fleet Serv, Ford has been able to meet the onus which fell upon it, to establish a basis for the case which it advanced on the evidence.

16. Ford thereby established that it was as a result of Mr Creak’s actions that Tallevine failed to adhere to this Court’s orders and that Fleet Serv also then pursued the same conduct, which Mr Creak had agreed by the deed would not so be pursued by either of them.

17. Mr Creak’s case, finally, that Tallevine and Fleet Serv had a right to “raptorise” parts, accessories and Ford vehicles as they did, in order to market “his Raptor range of vehicles”, despite what had been agreed and ordered in 2015, cannot succeed.

18. Judgment must thus be entered for Ford.

Agreed facts, issues and evidentiary rulings

19. The parties identified what facts were agreed and those in dispute as well as, largely, the issues lying between them, before trial. Issues about the admissibility of various evidence also arose, which I will deal with before turning to the agreed issues and others which arose at the hearing.

Agreed facts

20. The circumstances are complex and so it is necessary to begin with the agreed facts. They were:

“B.   AGREED FACTS

General

1   On 4 April 2011, Tallevine was appointed an Authorised Dealer by Ford, with Mr Creak as Dealer Principal.

2   On 19 February 2014, Tallevine ceased to be an Authorised Dealer after its Dealer Agreement automatically terminated pursuant to an agreement dated 21 October 2013.

3   On 20 May 2014, Ford commenced proceedings against Tallevine in the County Court of Victoria, proceedings Cl-14-02474 (County Court proceedings).

4   On 8 August 2014, Tallevine received advice from FB Rice with respect to the proposed registration of RAPTOR as a trade mark.

5   On 6 March 2015, Ford filed an Amended Statement of Claim in the County Court proceedings.

6   On 16 April 2015, Tallevine filed an Amended Defence and Counterclaim in the County Court proceedings.

7   On 7 September 2015, Tallevine's trade mark application no. 1719737 was lodged.

8   On 8 and 10 September 2015, Ford, Tallevine and Mr Creak participated in mediation.

9   On 16 September 2015, Ford, Tallevine and Mr Creak executed the Deed.

10   On 28 October 2015, the Orders were entered by the Supreme Court of NSW in proceedings 2015/280964. Orders 1, 4, 5, 6, 7 11 and 12 were to be complied with immediately, and with Orders 2, 3, 8 and 9 were to be complied with by 17 September 2016.

11   On or about 31 January 2016, Ford paid the sum of $100,000 to Tallevine pursuant to clause 2.3(b) of the Deed.

12   Mr Creak has been the sole director and secretary of Fleet Serv since 10 October 2016, and sole shareholder since 31 October 2016.

13   At all material times up to on or about 30 June 2017, Mr Creak was the sole director, secretary and shareholder of Tallevine.

14   Fleet Serv is a Related Entity of Mr Creak.

15   On or about 30 June 2017, Tallevine sold its business to Fleet Serv.

Businesses of Tallevine and Fleet Serv

16   Tallevine carried on business as a motor dealer from premises located at 242 and 252 Pennant Hills Road, Thornleigh NSW 2120 up to a date no earlier than on or about 30 June 2017.

17   Tallevine has the following registered business names:

(a)   RAPTOR SVT - from 17 February 2015;

(b)   RAPTOR 4x4 - from 4 March 2014;

(c)   Pennant Hills Auto Traders - for the period 16 December 2015 to 28 July 2017.

18   Tallevine carried on business using the domain names and websites " and " up to on or about 30 June 2017.

19   Fleet Serv carries on business as a motor dealer from premises located at 242 and 252 Pennant Hills Road, Thornleigh NSW 2120.

20   Fleet Serv has the following registered business names:

(a)   C.A.R.S AUTOHAUS - from 30 June 2017;

(b)   PENNANT HILLS AUTO TRADERS - from 30 June 2017;

(c)   Fleet Serv - from 15 October 2015.

21   Fleet Serv carried on business using the domain name and website " from on or about 30 June 2017 to no earlier than 11 May 2019.

22   Fleet Serv has, since on or about 30 June 2017, carried on and is continuing to carry on business using the domain name and website " Serv is carrying on business using the domain name and website " names

24   Tallevine and Mr Creak did not instruct their IT service provider, Printwell, to transfer the domain names "phford.com.au", "pennanthillsford.com.au", "raptor4x4.com.au", "rangerraptor.com.au" and "raptorsvt.com.au" to Ford until April 2017.

25   The domain names were not transferred to Ford until 11 December 2017.

26   On or about 28 June 2017, Mr Creak procured the registration of the domain name raptor4wd.com in the name of Gavin Cox.

27   Gavin Cox has at all material times been an employee of AdTorque Edge.

28   AdTorque Edge has at all material times been the IT Service provider for Tallevine and Fleet Serv.

Trade Mark application no. 1719737

29   On 6 April 2017, Trade Mark application no. 1719737 lapsed.

30   On 17 January 2018, Tallevine and Mr Creak procured the lodgement of an application with IP Australia to extend time in respect of, and thereby revive, Trade Mark application no. 1719737.

31   On 27 April 2018, Tallevine and Mr Creak procured the lodgement of a further application with IP Australia to extend time in respect of, and thereby revive, Trade Mark application no. 1719737.

32   The applications lodged on 17 January 2018 and 27 April 2018 were a step in the application to register Trade Mark application no. 1719737.

Vehicles advertised for sale and sold by Tallevine and Fleet Serv

33   From 28 October 2015 to 30 June 2017, Tallevine offered for sale or sold motor vehicles under or by reference to the word FORD and using brochures created by Ford, via the website " 28 October 2015 to on or about 9 January 2017, Tallevine used the Blue Oval Device to advertise its 'Fleet and Government Sales' via the website " 28 October 2015, to on or about 30 June 2017, Tallevine advertised, offered for sale and/or sold motor vehicles with grilles bearing Ford Signs or Ford Raptor Signs that were not manufactured by or with the authority of Ford or its related bodies corporate, including being the motor vehicles particularised in paragraph [37] of the SOC.

36   From 17 September 2016 to on or about 30 June 2017, Tallevine advertised and offered for sale motor vehicles under or by reference to the Ford Raptor Signs, including via the websites " and " on or about 30 June 2017, Fleet Serv has advertised, offered for sale and/or sold motor vehicles with grilles bearing Ford Signs or Ford Raptor Signs that were not manufactured by or with the authority of Ford or its related bodies corporate, including being the motor vehicles particularised in paragraph [52] of the SOC.

38   Since on or about 30 June 2017, Fleet Serv has advertised and offered for sale motor vehicles under or by reference to the Ford Raptor Signs, including via the " and " content

39   From 17 September 2016 to 30 June 2017, the domain name "raptor.4x4.com.au" contained the word "RAPTOR".

40   From 17 September 2016 to 30 June 2017, the website "www. raptor.4x4.com.au" contained:

(a)   the word "RAPTOR" in the URL;

(b)   the statement "Raptor is the special vehicle division of Pennant Hill Auto Traders".

41   From 17 September 2016 to on or about 9 January 2017, the website " contained the name "Pennant Hills Raptor" and a logo which incorporated the word "Raptor".

42   Between 28 October 2015 and 30 June 2017, the website " did not contain either of the statements in Order 1(e)(i) and (ii).

43   From 28 October 2015 to 30 June 2017, the website " contained the statements pleaded in paragraphs [24] and [43] of the SOC.

44   From on or about 30 June 2017 to at least 11 May 2019, the website " contained the statements pleaded in paragraphs [58], [60] and [62] of the SOC.

45   From on or about August 2020, the website " has contained the statements pleaded in paragraphs [58], [60] and [62] of the SOC, or statements to similar effect.

46   Fleet Serv is publishing the statements pleaded in paragraphs [58], [60] and [62] of the SOC on the website " start="21">

There was no issue that Mr Creak was Tallevine and Fleet Serv’s sole director and shareholder at relevant times. The evidence, as well as the case which Mr Creak advanced, leaves no doubt that he was also their controlling mind. By his defence, to which I will return, Mr Creak also admitted that Tallevine and Fleet Serv were also his related entities under the deed. At the hearing he sought to withdraw his admission in relation to Tallevine, to which I will also return.

Disputed facts

22. The facts identified to be in issue were:

“C.   DISPUTED FACTS

47   On 3 September 2015, Tallevine served Ford with a draft Statement of Claim (Federal Court of Australia).

48   Until 30 August 2018, neither Tallevine nor Mr Creak disclosed to Ford that Tallevine had sold its business to Fleet Serv.

49   Until 6 December 2018, neither Tallevine nor Mr Creak disclosed to the Court that Tallevine had sold its business to Fleet Serv.

50   Tallevine was a Related Entity of Mr Creak at all material times up to and including 26 October 2020.

51   Tallevine and Fleet Serv were at all material times under the exclusive control and direction of Mr Creak.

52   Fleet Serv is continuing to engage in the conduct referred to in paragraphs 37 and 38 above.

53   For a period from no later than June 2020, Fleet Serv:

(a)   advertised for sale motor vehicles, motor vehicle parts or accessories, or other goods or services; and

(b)   carried on business,

under or by reference to the Blue Oval Device, which was displayed at its premises and on the YouTube website at ' a period from no later than June 2020, Fleet Serv:

(a)   advertised for sale motor vehicles, motor vehicle parts or accessories, or other goods or services; and

(b)   carried on business,

under or by reference to a banner with the words ‘GO FURTHER’, which was displayed at its premises.

55   For a period from no later than June 2020, Fleet Serv:

(a)   advertised for sale motor vehicles, motor vehicle parts or accessories, or other goods or services; and

(b)   carried on business,

under or by reference to a sign displayed at its premises which read ‘Ford Service & Parts’, and under or by reference to the words ‘Ford Service Centre’ on its Facebook page at ‘http.//

56   Ford incurred total costs of $524,775.71 in the Contempt Proceedings.”

Issues

23. The other issues identified were largely agreed. In the case of disagreement those with text highlighted yellow reflecting Ford’s position and those highlighted green reflecting Mr Creak’s position. To replicate this Ford’s position has been identified below by bold text and Mr Creak’s by italicised text:

24. The identified issues were:

“A.   ISSUES FOR DETERMINATION

CLAUSE 2.2(a) OF THE DEED

Proper construction

1   Whether, properly construed, clause 2.2(a) of the Settlement Deed between Ford, Tallevine and Mr Creak dated 16 September 2015 (Deed) obliged Mr Creak not to engage in any conduct of the kind the subject of the Orders, and to procure that any Related Entity of his (as defined in the Deed), including Tallevine and Fleet Serv Pty Ltd (Fleet Serv), not engage in any conduct the subject of the Orders, or instead, was a mere warranty by Mr Creak that he and any Related Entity of his would not engage in any such conduct; (Statement of Claim filed on 24 May 2019 (SOC) [9]; Defence filed on 2 November 2020 (Defence) [9])

2   Whether, properly construed, clause 2.2(a) of the Deed operates by reference to any conduct referred to in either of Orders 1 or 3? (Defence [9])

Restraint of trade

3   Whether clause 2.2(a) of the Deed:

(a)   properly construed, is a restraint of trade;

(b)   is invalid as regards its application to Mr Creak and his Related Entities, by reason of section 4(1) of the Restraints of Trade Act 1976 (NSW) (Restraint Act); and

(a)   properly construed, is a restraint of trade within the meaning of section 4(1) of the Restraints of Trade Act 1976 (NSW) (Restraint Act)

(c) as regards its application to Mr Creak and his Related Entities and having regard to the circumstances in which it was created, is against public policy so as to be invalid to any extent by reason of section 4(3) of the Restraint Act;

(Defence [17(c)], [51(b)], [53(b)], [55(b)], [57(b)], [59(b)], [61(b)], [63(b)], [64(b)])

Cartel provision

4   Whether clause 2.2(a) of the Deed is a “cartel provision” for the purposes of sections 45AD and 45AJ of the Competition and Consumer Act 2010 (Cth) (Competition Act) so as to be severed in accordance with s 4L of the Competition Act, in particular whether:

(a)   the Retail Market and/or Wholesale Market pleaded in Defence [70(a)] – [70(e)] exist in New South Wales, alternatively Sydney;

(b)   Ford supplied an “economically significant proportion” of the Wholesale Market; (Defence [70(f)])

(c)   the business operated by Tallevine, and later Fleet Serv:

(i)   supplied an “economically significant proportion” of the Retail Market as pleaded in Defence [70(h)(i)];

(ii)   supplied new vehicles manufactured or imported by Ford’s competitors in the Wholesale Market; (Defence [70(h)(ii)])

(iii)   acquired to resupply, and supplied, used vehicles including vehicles manufactured or imported by Ford with fittings and accessories fitted to those vehicles at the time of acquisition for resupply; (Defence [70(h)(iii)])

(iv)   had an established reputation for the supply of vehicles with after sales modifications and used vehicles identified by the word “Raptor”; (Defence [70(h)(iv)])

(d)   supply by Tallevine and/or Fleet Serv of vehicles as alleged in Defence [70(h)(i)-(iii)] was substitutable for supply of new vehicles in the Wholesale Market; Defence [70(i)]

(e)   Ford competed with Tallevine and/or Fleet Serv to supply high performance light trucks in NSW and/or Australia for the purpose of section 45AD(4)(h) of the Competition Act; and (Defence [70(j)])

(f)   clause 2.2(a) of the Deed had the purpose a substantial purpose of preventing, limiting or restricting the supply or likely supply of goods by Mr Creak or any of his Related Entities, including Tallevine and Fleet Serv, within the meaning of section 45AD(3)(a)(iii) of the Competition Act. (Defence [71])

BREACHES

Breaches of Orders by Tallevine

5   Whether Tallevine breached:

(a)   Order 1(d) by failing to do all things necessary to transfer to Ford the internet domain names " and " immediately and from 28 October 2015 until 11 December 2017 (SOC [19] – [20]);

(b)   Order 1(e)(i) by failing, for all of the period from 28 October 2015 to 30 June 2017, to amend the content of its website "raptor4x4.com.au" to include prominent statements to the effect that its business was not an authorised Ford dealer; (SOC [22])

(c)   Order 1(e)(ii) by failing, for all of the period from 28 October 2015 to 30 June 2017, to amend the content of its website raptor4x4.com.au to include a prominent statement to the effect that there was no warranty provided by Ford or Ford US for Raptor and F Series vehicles in Australia; (SOC [23])

(d)   Orders 1(e)(iii), 12(a) and 12(d), by failing to remove and publishing, in the period from 28 October 2015 to 30 June 2017, the statements referred to in SOC [24];

(e)   Order 3(b) by using the word RAPTOR, in the domain name and content of the website raptor4x4.com.au, in the period from 17 September 2016 to 30 June 2017 and not in good faith to describe motor vehicles being sold by Tallevine; (SOC [26](b))

(f)   Order 3(d) by failing, by 17 September 2016 and until 11 December 2017, to do all things necessary to transfer to Ford Australia the Internet domain names pleaded in SOC [28] (SOC [28-29]);

(g)   Order 4(a) by, from 28 October 2015 to 30 June 2017, offering for sale or selling motor vehicles, motor vehicle parts or accessories or other goods or services under or by reference to the word FORD and/or the Blue Oval Device and, if so, whether any such use was not in good faith to describe the vehicles that Tallevine was offering for sale or selling in that period (SOC [31] – [33]);

(h)   Order 6 by reason of Tallevine’s conduct concerning and following the lodgement of the trade mark application by Tallevine on about 7 September 2015 pleaded in SOC [35];

(i)   Order 7(b) by, from 28 October 2015 to 30 June 2017, offering for sale and/or selling motor vehicles fitted with grilles bearing Ford Signs or Ford Raptor Signs that were not manufactured by, or with the authority of, Ford or its related bodies corporate (SOC [37]);

(j)   Order 8 by, from 17 September 2016 at least until 30 June 2017, advertising and offering for sale motor vehicles under or by reference to: the word RAPTOR; and/or a word and device that was substantially identical to or deceptively similar to the Raptor SVT device (SOC [39]);

(k)   Order 9 by, from 17 September 2016 until 30 June 2017, continuing to carry on business under or by reference to any of the Ford Raptor Signs, or any sign which is substantially identical or deceptively similar to them, including the business names "RAPTOR SVT" and "RAPTOR 4X4” (SOC [41]);

(l)   Orders 11(a), 11(b) and 11(c), by making the representations pleaded in SOC [43];

Breaches of Deed by Mr Creak: Tallevine

6   If, and to the extent that, Tallevine engaged in any conduct which breached any of the Orders referred to in paragraphs 4(a) – 4(l) above, whether:

(a)   any such conduct of Tallevine was taken or done by it under the direction and control of Mr Creak and was procured by him; and (SOC [15(a)]: Defence [15(a)])

(b)   it was a breach of the Deed by Mr Creak; (SOC [17(a)]: Defence [17])

Conduct of Fleet Serv

7   Whether Mr Creak and/or Fleet Serv procured the registration of the domain name "raptor4wd.com" on or about 28 June 2017; (SOC [50])

8   Whether, since on or about 30 June 2017:

(a)   Fleet Serv has and is continuing to offer for sale or is selling motor vehicles fitted with motor vehicle parts or accessories bearing Ford Signs or Ford Raptor Signs that are not manufactured by Ford or its related bodies corporate (SOC [52]);

(b)   Fleet Serv has and is continuing to advertise, distribute, supply, offer for sale and/or sold motor vehicles by reference to the word RAPTOR and, if so, whether it has done so in good faith to describe the vehicles that it has offered or is offering for sale (SOC [54]);

(c)   Fleet Serv has and is continuing to advertise, distribute, supply, offer for sale and/or sold motor vehicles by reference to a word and device that was substantially identical to or deceptively similar to the Raptor SVT device (SOC[54]);

(d)   Fleet Serv has been carrying on business under, or by reference to, one or more Ford Raptor Signs or signs which are substantially identical or deceptively similar to any of the Ford Raptor Signs and, if so, whether any such use to the extent that it involved the word RAPTOR (but not the Raptor SVT device) is in good faith to describe the vehicles that it has offered and is offering for sale (SOC [56]);

(a)   Fleet Serv has and is continuing to offer for sale or is selling motor vehicles fitted with motor vehicle parts or accessories bearing Ford Signs or Ford Raptor Signs that are not manufactured by Ford or its related bodies corporate (SOC [52] and if so whether by that conduct Fleet Serv describes vehicles it has or is offering for sale;

(b)   Fleet Serv has and is continuing to advertise, distribute, supply, offer for sale and/or sold motor vehicles by reference to the word RAPTOR and, and if so whether by that conduct Fleet Serv describes vehicles it has offered or is offering for sale; (SOC [54]);

(c)   Fleet Serv has and is continuing to advertise, distribute, supply, offer for sale and/or sold motor vehicles by reference to a word and device that was substantially identical to or deceptively similar to the Raptor SVT device: and if so whether by that conduct Fleet Serv describes vehicles it has offered or is offering for sale by use of the word RAPTOR (SOC [54]);

(d)   Fleet Serv has been carrying on business under, or by reference to, one or more Ford Raptor Signs or signs which are substantially identical or deceptively similar to any of the Ford Raptor Signs and, if so, by that conduct Fleet Serv describes vehicles it has offered or is offering for sale by use of the words FORD RANGER or RAPTOR (SOC [56]);

(e)   Fleet Serv has made, and continues to make, representations as pleaded in SOC [58] which suggest that it or its business is sponsored, approved by or affiliated with Ford or its related companies; and

(f)   Fleet Serv has made, and continues to make, representations as pleaded in SOC [60] which suggest that it or its business is sponsored, approved by or affiliated with Ford or its related companies

Breaches of Deed by Mr Creak: Fleet Serv

9   Whether the offering by Fleet Serv for sale and sale of motor vehicles fitted with motor vehicle parts or accessories bearing Ford Signs or Ford Raptor Signs that are not manufactured by, or with the authority of, Ford or its related bodies corporate as pleaded in SOC [52] was conduct which Tallevine was restrained from engaging in under Order 7(b) (SOC [53(a)]).

10   Whether the publication by Fleet Serv of the statements pleaded in SOC [62] was conduct which Tallevine was restrained from engaging in under Order 12 (SOC [63(a)]).

11   If, and to the extent that, after 10 October 2016 Fleet Serv engaged in any of the conduct referred to in paragraphs 7 - 10 above, whether:

(a)   any such conduct of Fleet Serv was taken or done by it under the direction and control of Mr Creak and was procured by him; and (SOC [15(b)]: Defence [15(b)])

(b)   any such conduct was conduct the subject of and proscribed by the Orders for the purpose of clause 2.2(a) of the Deed and was thus a breach of the Deed by Mr Creak; (SOC [17(b)], [51(a)], [53(a)], [55(a)], [57(a)], [59(a)], [61(a), and [63(a)]: Defence [17(b)]).

RELIEF

Damages

12   Whether Ford is entitled to claim its costs of the proceedings (2017/00075192) (Contempt Proceedings), to the extent that they currently remain unrecovered, as damages in these proceedings and, if so, in what amount; (SOC [65], [67] – [68] and Relief [1]: Defence [65], [68])

Indemnity

13   Whether the filing of the Cross-Claim by Tallevine on 7 August 2017 in the Contempt Proceedings, or any part of it including any claim made in it, was:

(a)   a 'Claim' from which Tallevine and/or Mr Creak released Ford for the purpose of clause 3.1 of the Deed; and

(b)   if so, a breach of clause 4.1 of the Deed by Tallevine and/or Mr Creak; (SOC [10] – [12], [47]: Defence [10] – [12], [47])

14   Whether, if Tallevine and/or Mr Creak were in breach of clauses 3.1 and/or 4.1 of the Deed, Mr Creak is liable pursuant to clause 5.1 of the Deed to indemnify Ford for any loss or liability arising from or connected with those breaches; (SOC [10] – [12], [47]: Defence [10] – [12], [47])

Permanent restraints

15   Whether the permanent restraints sought by Ford against Mr Creak, personally and in his capacity as sole director of Fleet Serv, should be granted. (SOC Relief [4] – [12]: Defence [68]).”

Parts of the defence abandoned

25. When the hearing commenced, however, it was announced for Mr Creak that the cartel case advanced by his defence and written submissions was abandoned. He then accepted that if he lost on what was in issue in relation to the restraint case he advanced, he could not succeed on his cartel case.

26. Mr Creak’s defence was thus advanced on the proper construction of the deed; the contention that Ford was not, in any event, entitled to advance a case that the restraints agreed in the 2015 deed were lawful, not having provided a reply to his defence, as it needed to; and that, in any event, it could not meet the onus which fell upon it to establish the reasonableness or lawfulness of the restraints, given the state of the pleadings.

27. Ford contended that issue had adequately been joined about the restraints, despite the absence of a reply to Mr Creak’s defence, given the proper operation of the Uniform Civil Procedure Rules 2005 (NSW). Further, that the onus fell on Mr Creak to establish that the restraints were unreasonable. That was also disputed.

28. The pleading issue was relevant to objections taken to the tender of certain evidence on the basis of relevance. I admitted that evidence provisionally and now give reasons for my conclusion that it was admissible, issue having been joined as it was by the pleadings about the restraints.

29. On the second day of the hearing, reliance having been placed by Ford on what had been pleaded in cl 17(c)(ii) of the defence, when other documents were tendered to which objection was also taken on the basis of relevance, Mr Creak then abandoned that clause of his defence. That alteration in Mr Creak’s case did not alter the conclusions which I have reached about the adequacy of Ford’s pleadings and the admissibility of the evidence admitted provisionally.

Evidentiary Rulings

The evidence admitted provisionally is admissible

30. It follows from the conclusions which I have reached, explained below, that the dictates of justice require that the evidence admitted provisionally while the arguments about pleading deficiency were considered, was relevant and accordingly has to be admitted.

The trademark advice

31. Objection was taken to advice Tallevine obtained from FB Rice in August 2014 about making a trademark application, as inadmissible hearsay. I am satisfied that may not be accepted.

32. The advice concerned Tallevine’s unlikely prospects of registering its own Raptor trademark, given others’ common law and statutory rights, including those of Ford.

33. On the evidence, having received the advice Tallevine acquiesced in some of Ford’s demands to stop using the Raptor mark, having used that word in a device which Ford considered to be deceptively similar to the Ford Raptor device. Despite this, later, just before the 2015 settlement, indeed the day before the deed was entered, Tallevine made its trade mark application. Despite this application, the settlement arrived at dealt both with the use of that name and the device which Tallevine had been using. It then allowed the application to lapse.

34. The advice was later disclosed to Ford and privilege in it waived by Tallevine, Mr Creak having annexed part of it to an affidavit on which it had relied: Ford Motor Company of Australia Limited v Tallevine Pty Ltd (as trustee for the Thornleigh Trading Trust) [2018] NSWSC 136. The contempt proceedings were to have been heard together with these proceedings, but were finally not pursued when Tallevine was liquidated. Still its tender was objected to when these proceedings were heard, Mr Creak also putting in issue its relevance and admissibility as a business record.

35. The advice was not relied on by Ford to prove the existence of the facts it dealt with, which would not have been permitted by s 59 of the Evidence Act 1995 (NSW), but rather to establish part of the circumstances in which the 2015 deed was entered. Ford’s case was that the advice was thus relevant and also admissible as a business record under s 69 of the Evidence Act.

36. I am satisfied that the evidence does establish that the advice was relevant, forming part as it did of the surrounding circumstances in which the parties settled their dispute on the terms agreed in the 2015 deed. As did the making of the trademark application only the day before the deed was executed, despite the advice, about which Mr Creak was cross examined.

37. The evidence did not establish that the advice fell within the exception in s 69(3)(a), which is concerned with representations “prepared or obtained for the purpose of conducting, or for or in contemplation of or in connection with, an Australian or overseas proceeding”, even though it was obtained after the County Court proceedings were commenced.

38. In issue in the County Court was the use which Tallevine was making of Ford’s brand, reputation and the trademarks it was authorised to use, given its relationship to the companies which owned the trademarks, rights which it claimed Tallevine did not have. Those proceedings were not concerned with Tallevine making a trademark application, or its prospects of success if made. That was what the advice was concerned with. The advice was also not concerned with what Ford was pursuing in the County Court, which it was noted Tallevine was obtaining legal advice about.

39. It follows that the evidence does not establish that the representations made in the advice were “prepared or obtained for the purpose of conducting, or for or in contemplation of or in connection with” any Australian proceedings: s. 69(3)(a).

40. Nor does it appear that the advice was disclosed as part of any of the settlement negotiations, which would have attracted s 131 of the Evidence Act. It was rather disclosed for Tallevine’s purposes, as well as those of Mr Creak, given that the proceedings brought against them were to be heard together.

41. In the result the advice was admissible as a business record and ought not to be the subject of any limitation under s 136, which may be imposed if there is a danger that a particular use of the evidence might be unfairly prejudicial or misleading or confusing. No such danger was established.

Without prejudice communications

42. There was also an objection to a without prejudice email communication of 8 October 2014 attaching a draft settlement deed and a spreadsheet which Ford’s senior legal counsel, Mr Sullivan, had sent to Tallevine’s solicitor, Mr Russo. It later became the subject of an application for discovery sought by Tallevine and had actually been produced. It was also annexed to Mr Sullivan’s affidavit, ex 7, with the result on Ford’s case, that it had waived the privilege it had claimed in the email and that it was not excluded under s 131 of the Evidence Act, which excludes evidence of settlement negotiations, with limited exceptions.

43. There were other draft deeds, as well as draft pleadings, to which reference was made in the 2015 deed, to which objection was also taken under s 131.

44. These documents were relevant to the restraint issue and in the case of the draft pleadings, also potentially to the construction of the deed. But the documents were excluded by s 131, unless one of the provisions of s 131(2) applied.

45. Mr Creak’s case was that as all parties were not consenting to the documents being adduced, despite waiver of privilege, s 131(2)(a) did not apply.

46. It seems to me, however, that the necessary consent in the case of the draft pleadings was expressly given by the deed itself, referring as it did in Recital D not only to those claims, but the agreement to settle them, as well as the County Court proceedings. That was achieved by the releases which Tallevine and Mr Creak gave in cl 3.1 of the deed, especially (d) which released:

“any other Claim which is or could reasonably have been known to a party as at the date of this Deed, whether or not the Claim is known to a party, and whether or not the Claim arises from or is connected with the Dealer Agreement.”

47. The exclusion in s 131(2)(f) also applied to the documents, if these proceedings are “a proceeding to enforce an agreement between the persons in dispute to settle the dispute, or a proceeding in which the making of such an agreement is in issue”. In McCarthy v Camil HoldingsPty Ltd [2016] VSCA 235 it was held, however, at [43] that “the words ‘the dispute’ are intended to refer to the same dispute in both s 131(1)(a) and s 131(2)(f). This is in accordance with the presumption that when the same words are used in legislation the words should be construed as far as possible so as to give the same meaning, most particularly within the same section of an Act.”

48. Ford accepted that it followed that s 131(2)(f) was concerned with enforcement of a settlement of the same proceedings, not enforcement of a settlement in earlier proceedings, in this case the 2015 proceedings.

49. But s 131(2)(g) was also relevant, permitting as it did the tender of these documents if “evidence that has been adduced in the proceeding, or an inference from evidence that has been adduced in the proceeding, is likely to mislead the court unless evidence of the communication or document is adduced to contradict or to qualify that evidence”.

50. Despite the announcement that part of Mr Creak’s pleaded defence would no longer be relied on, given the evidence he led to support the remainder of his case I was satisfied that the disputed documents were admissible. Without them, it had to be accepted that there was a real risk that other evidence received about the surrounding circumstances to the deed might mislead.

51. In the result s 131(2)(g) was engaged and the documents had to be admitted.

The delegate’s decision

52. I also said that I would give reasons for rejecting an objection to the tender of a published decision of a delegate under the Trade Marks Act, refusing Tallevine’s appeal from a refusal of its application for an extension of time of the period for acceptance of its trademark application: s 224.

53. The objection under s 91 of the Evidence Act, which excludes evidence of a decision or of a finding of fact in an Australian or overseas proceeding, to prove the existence of a fact that was in issue in that proceeding, could not be accepted. That was because the decision was not being tendered to establish the existence of any fact in issue in that proceeding, but rather Tallevine’s unsuccessful pursuit of its attempt to revive its lapsed application: King v Muriniti (2018) 97 NSWLR 991; [2018] NSWCA 98 at [14].

54. The hearsay objection taken by Mr Creak could also not be accepted. The decision was not tendered to prove the existence of any fact that it can reasonably be supposed that the decisionmaker intended to assert by representations made in the decision. But rather to establish that Tallevine’s revival application had been made, pursued and refused: s 60 Evidence Act.

Can the application to withdraw admissions be granted?

55. In opening Ford relied on admissions made in the defence that Tallevine and Fleet Serv were Mr Creak’s related entities under the deed. The case he had advanced in written submissions and which he sought to advance at the hearing in relation to Tallevine, however, was to the contrary. When attention was drawn to the admissions an application for leave to withdraw them was made, unsupported by any evidence. It was finally submitted that the admissions had involved representative error.

56. This application was opposed and, I am satisfied, must be refused.

57. The Court has power to grant the leave sought: r 17.2(2) of the Uniform Civil Procedure Rules. That power must be exercised in accordance with the requirements of ss 56-58 of the Civil Procedure Act2005 (NSW) which require the Court to give effect to the overriding purpose specified in s 56(1), in short the just, quick and cheap resolution of the real issues in the proceedings and to give effect to what justice requires in the circumstances.

55. It was for Mr Creak to establish proper grounds for the withdrawal. That would usually be done by affidavit, but that was not attempted. There was no explanation of the circumstances in which the admission was made, or what justified its withdrawal. Ordinarily, the Court requires a sensible explanation for the making of the admission, “based on evidence of a solid and substantial character” to be given: Maile v Rafiq [2005] NSWCA 410 at [76]. That was not attempted.

56. Further, admissions made with deliberateness and formality, in this case in the defence, are not ordinarily permitted to be withdrawn unless they are shown to be contrary to the actual facts: Maile at [77].

57. All that was here pointed to, to support the application was the argument advanced about the proper construction of the deed and representative error. But such error cannot justly be inferred from what was advanced. There must be an evidentiary basis established for the application to be granted. It was not.

58. In all those circumstances I was not persuaded that a sufficient or just basis to grant the leave sought had been established. Even if I am wrong in that conclusion, I will explain why I would have concluded, in any event, that Tallevine was Mr Creak’s related entity.

The fee memoranda

62. In these proceedings the Court ordered that evidence be served in February 2021. In August Ford served an affidavit which referred to a confidential exhibit of memoranda of fees and disbursements in the contempt proceedings, which were not served. When the court books were being prepared Mr Creak sought an unredacted copy of the memoranda, some of which were only provided the week before the hearing. When advised that there were objections to the affidavit of its solicitor, who was required for cross examination, Ford advised that he would not be called. Still it sought to rely on the memoranda.

63. Mr Creak objected to their tender as hearsay and on fairness grounds. The parties also joined issue over whether they were admissible as business records under s 69 of the Evidence Act.

64. Despite Ford’s stance, I was satisfied that they were not admissible as business records, falling as they did within the exception in s 69(3)(a). They plainly having been prepared either “in connection with” or “in contemplation of” the contempt proceedings, given that some of them related to work undertaken before the proceedings were commenced.

65. These are words of wide meaning which depend on their context and the purpose of the statute in which they are used: Thomas v State of New South Wales (2008) 74 NSWLR 34; [2008] NSWCA 316 at [18]-[21]. Section 69(3) regulates use of records which may have a risk of unreliability: at [27]. The s 69(3) carve-out reflects a concern that the relaxation of the hearsay rule for business records might lead to the admission of self-serving documents: Averkin v Insurance Australia Ltd (2016) 92 NSWLR 68; [2016] NSWCA 122 at [114].

66. The section is thus concerned not only with business records, but also the purpose for which they are created. Ford’s case that the memoranda were internal records of the lawyers, prepared for their internal business purposes, with which s 69(3) is not concerned, cannot be accepted, given the purpose of the memoranda.

67. They no doubt reflect both internal records kept by Ford’s solicitors about work they performed, as well as other business records, such as counsel’s fees and other disbursements incurred. But their purpose was not internal to Ford’s solicitors. To the contrary, they were created in order to charge Ford for the work which had been undertaken either in contemplation of, or in or in connection with the contempt proceedings.

68. But for the threatened proceedings which Ford finally pursued, the work with which these fee memoranda were concerned is likely not to have been performed; the fees would not have been incurred; the memoranda not brought into existence; and they would not have become the subject of the claims for costs in the contempt proceedings and finally, damages and indemnity advanced by Ford in these proceedings. This all brought the memoranda within the class of documents discussed by Barrett J in in Vitali v Stachnik [2001] NSWSC 303 at [12], referred to in Averkin at [114]:

“The purpose of the exclusion is, as I see it, to prevent the introduction through this exception to the hearsay rule of hearsay material which is prepared in an atmosphere or context which may cause it to be self-serving in the sense of possibly being prepared to assist the proof of something known or at least apprehended to be relevant to the outcome of identifiable legal proceedings.”

69. Here the fee memoranda must have been known, at the time they were created, to be relevant to the claims to be advanced by Ford in the proceedings.

70. I was thus not satisfied that the case it advanced, that s 69(3) should be read as not being intended to apply to such fee memoranda, could be accepted. That such memoranda could not be self-serving may not be accepted. That was certainly not the view taken by Ball J in Tresedar Pty Ltd v Property Builders (Constructions) Pty Ltd (In Liquidation) [2014] NSWSC 382 at [141]. Indeed, his Honour found that what there arose to be considered was “not a genuine invoice for work done”: at [148].

71. There was no evidence about how these memoranda were produced. But one might sensibly infer it was as the result of, or by reference to some method of time recording, likely to have been computerised. That information may well have been kept for internal purposes. But the creation of the memoranda by the legal practitioners involved in performing the work, of a description of the work on which that time was spent, in order that the client could be charged fees, was for a different purpose and not only an internal one.

72. In my view it is possible that such memoranda could contain self-serving statements of the kind with which the s 69(3) exclusion is concerned. That possibility, after all, is also a matter with which the costs assessment regime established by the Legal Profession Uniform Law 2014 (NSW) is also concerned.

73. It requires, for example in s 172, not only that costs must be no more than fair and reasonable in all the circumstances, but that they are proportionately and reasonably incurred and in amount. In s 173 it is provided that “a law practice must not act in a way that unnecessarily results in increased legal costs payable by a client”. The statutory assessment process when issues arise about compliance with such requirements involves an examination of the costs, to establish that what was charged was fair and reasonable for the work actually performed. That process will also necessarily consider whether statements which may be made in fee memoranda are self-serving.

74. It follows that the s 69(3) exception to the hearsay rule did not apply to these memoranda.

75. There was also finally an application by Ford for leave to call the solicitor whose affidavit had not been relied on, which I refused, given the belated stage at which it was made; the late service of the unredacted memoranda, contrary to the Court’s orders for service of evidence; the absence of a satisfactory explanation of the forensic decisions which had resulted in the course Ford had pursued in relation to this evidence; and the unfairness which would have resulted for Mr Creak, in so having to meet this aspect of Ford’s case, which I accepted could not have adequately been dealt with by a costs order.

76. I was satisfied that the provisions of s 56 of the Civil Procedure Act and the surrounding provisions, which require consideration to be given to the overriding purpose, the just, quick and cheap resolution of the real issues and to what the dictates of justice required in the circumstances, as s 58 required, did not permit the course which Ford belatedly sought to pursue.

77. Ford had decided not to serve the evidence on which this aspect of its case was advanced, its solicitor’s affidavit and the unredacted memoranda, as the Court had ordered, so that Mr Creak would have a fair opportunity to meet this aspect of its case. It did so only belatedly and even then decided not to call the solicitor at all, when he was required for cross examination. Ford did not advance any adequate explanation for the unfair course which it had so taken.

78. I considered that it could thus not justly be permitted to call the solicitor, when the admissibility of these late served documents was successfully challenged at the hearing. That was the risk which it took, by the forensic decisions which it made.

79. In the result the leave sought was refused.

Does the restraint doctrine apply to the deed?

80. Given the cases which the parties advanced the question of whether the restraint doctrine applied to the deed arises to be considered, Ford finally submitting that the doctrine did not apply to the deed, which properly understood did not in any event unlawfully restrain trade.

81. Mr Creak relied on Amoco Australia Pty Ltd v Rocca Bros Motor Engineering Co Pty Ltd (1973) 133 CLR 288; [1973] HCA 40 to submit that this case fell within the class of cases there considered, in which the restraint doctrine is most likely needed. There the restraint imposed by a lease was concerned with Rocca’s purchase from Amoco of petrol and oil for sale at its service station and a requirement that it would not, except in special circumstances, sell the products of other oil companies.

82. That is a very different situation to that which here arises for consideration, where commercial parties bound by continuing obligations imposed by an agreement which had come to an end, settled both ongoing and foreshadowed litigation over a range of matters lying in dispute between them in relation to those obligations, as well as common law and statutory rights in relation to use of trade marks and other matters such as claimed passing off.

83. It is settled that there is a real public interest in people being held to the bargains which they freely enter, as these parties undoubtedly did in 2015 in respect of the settlement of their wide-ranging dispute. The general policy of the law being that people should honour their contracts, that forming "part of our idea of what is just": Baltic Shipping Company v Dillon (1991) 22 NSWLR 1; [1991] NSWCA 19 at [9] (Gleeson CJ).

84. It is also pertinent that the 2015 settlement was the result of negotiations in which the parties were legally represented and that it was implemented in part by proceedings in which this Court made consent orders. What was so agreed was not only restraints which bound Tallevine and Mr Creak, but obligations which bound Ford, one of which required it to pay Tallevine $100,000 in specified circumstances.

85. What was so arrived at was undoubtedly intended lawfully to bind each of the parties to the settlement and not to involve any unlawful restraint on any party.

86. Still, as in this case, parties can differ about the meaning of contracts which they enter, with the result that courts may be called upon to construe them, including in cases when restraints agreed in settlement of litigation are being sought to be enforced: Metcash Limited & Anor v Joao Louis Jardim (aka Louis Jardin) & Anor (No 3) 73 ALR 407; [2010] NSWSC 1096.

87. Mr Creak relied on what Ball J there observed at [42] as to the question of whether the restraint of trade doctrine applied at all:

“42 ... In Peters (WA) Ltd v Petersville Ltd (2001) 205 CLR 126 at 136 [19], the High Court, referring to Panayiotou v Sony Music Entertainment (UK) Ltd [1994] Trading Law Reports 532, left open the question whether a restraint of trade which was the result of a “genuine and proper” resolution of a dispute concerning a restraint of trade clause could itself be made the subject of the restraint of trade doctrine. Here, however, the dispute did not concern the enforceability of a restraint of trade clause that was compromised by agreement to an alternative restraint. The dispute concerned termination of the contract. It was resolved by an agreement that that contract continue for a period of time. There was no compromise reached in relation to the restraint. There is no reason why the restraint of trade doctrine should not apply in those circumstances.”

88. This is a different case.

89. In Peters (WA) Ltd v Petersville Ltd (2001) 205 CLR 126; [2001] HCA 45 it was explained that there are some species of restraint of trade which do not attract the operation of the common law doctrine: at [15]. It was observed at [19] that:

“We were referred to the decision of Parker J in the Chancery Division of the English High Court in Panayiotou v Sony Music Entertainment (UK) Ltd[14]. That decision may suggest that what Parker J called the ‘clear public interest in upholding genuine and proper compromises’ applies to a ‘genuine and proper’ compromise of a dispute respecting an alleged restraint of trade with the result that a later claim that the compromise itself is in restraint of trade falls outside the scope of the restraint of trade doctrine. The result would be that the subsequent restraint did not require justification under the common law doctrine [15]. It is unnecessary on this appeal to express any conclusion upon that matter.”

90. The question of whether the restraint of trade doctrine applies to the settlement of the County Court and other foreshadowed proceedings, reflected as that was in both the deed and the orders made by this Court, thus arises to be considered.

91. In Panayiotou v Sony Music Entertainment (UK) Ltd (High Court (UK), Parker J, 21 June 1994, unrep) at [345], Parker J held that public policy prevented the applicant from asserting that the restraint doctrine applied, there being a public interest in upholding “genuine and proper” compromises. That compromise was found to have been entirely genuine and bona fide, with all parties having had their own interests to pursue and being separately advised, with the result that no party was under any improper pressure to accept its terms, there having been no concealment of essential information or any undue advantage taken of any party: at [345].

92. If he was wrong in that conclusion, Parker J considered that in those circumstances, there being legitimate commercial interests to protect, the restraint agreed was reasonable.

93. On the evidence this is a similar case.

94. Here, on both sides there were also legitimate interests to protect. All the parties were legally represented and there is no suggestion of any improper pressure brought to bear on any of them. Those parties would no doubt not have set out to achieve an unlawful restraint of trade, but rather a genuine and proper settlement of their claims and counterclaims, as well as the County Court and further proceedings which the deed also dealt with.

95. Panayiotou was followed in Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Noack (2004) 71 NSWLR 212; [2004] NSWSC 347 at [57]. Nicholas J considered that a genuine and bona fide settlement that had been entered into freely by parties who were legally represented to be one of the types of contract referred in Esso Petroleum Co Ltd v Harper's Garage (Stourport) Ltd [1968] AC 269 at [332], "which the law should be prepared to say with some confidence …do not enter into the field of restraint of trade at all."

96. Ball J followed Nicholas J in Properties Northside Pty Ltd t/as Raine & Horne Manly/Freshwater v Pickering [2015] NSWSC 310: at [46]-[49]. There his Honour observed at [47] that "public policy has two aspects. One involves balancing the competing interests of the parties to the restraint. In that sense, it is a balance between an individual liberty and a right to protect by contract the legitimate interests of the person seeking to impose the restraint. …[t]he other involves balancing the public interest ‘in every person's carrying on his trade freely’ (to use the words of Lord McNaughten in Nordenfelt at [565] against the legitimate interests of the person seeking to impose the restraint."

97. Ball J thus concluded that if the parties "reach a genuine compromise concerning what is reasonable as between them, it seems to me contrary to the public policy in favour of the finality of litigation to permit the party on whom the restraint is imposed to seek to argue that the compromise involves the imposition of an unreasonable restraint on that party's liberty. The public policy that underlies the restraint of trade doctrine is largely satisfied by the compromise. On the other hand, the public policy that encourages parties to settle their disputes would be completely undermined if the party the subject of the restraint were free to re-agitate its reasonableness": at [48].

98. I agree.

99. Here there was no suggestion that the restraint doctrine applied to the Court’s orders which bound Tallevine. To the contrary, it was accepted that if Mr Creak had also been a party to the Supreme Court proceedings and bound by the orders which had been agreed in the deed this Court would make, the reasonableness of the restraints imposed upon him would not arise. It is the result of him not having been made a party to those proceedings which Mr Creak relied on as leaving open the possibility that he could attack the 2015 deed as being unlawfully in restraint of trade.

100. That, it seems to me however, supports the conclusion which I have reached, that the doctrine does not apply to the deed.

101. There is a real public interest in upholding genuine and proper compromises of litigation, including those which result in restraints to which commercial parties such as Ford, Tallevine and Mr Creak agree, as the evidence showed that they each did when they negotiated their settlement, with the assistance of their lawyers. There is also an important public interest in the finality of agreements which resolve such litigation and result in the making of court orders, even though in this case the orders made only bound Tallevine.

102. Given that Mr Creak was Tallevine’s controlling mind, that he also being bound by the orders would have made any difference to the course it pursued in breach of those orders, is not apparent. But that would have made him a proper party to the contempt proceedings, with the result that Ford would not also have been required to bring these proceedings, to enforce the deed.

103. Nevertheless, it follows in my view of the authorities that in this case the deed, as well as the orders made as a result of what was there agreed, do not leave available Mr Creak’s later claim in these proceedings that the deed involved an unlawful restraint of trade, so far as he was concerned.

104. Despite this, the cases which the parties otherwise advanced should be considered, in case I am wrong in that conclusion

Was the restraint issue adequately pleaded?

105. Paragraph 17 of the statement of claim pleaded that given what had been agreed in cl 2.2(a) of the deed, that Tallevine and Fleet Serve were related entities of Mr Creak and under his direction and control and that Tallevine was bound by the Court’s orders made in compliance with cl 2.1 of the deed, with the result that:

“a. Any conduct engaged by Tallevine in breach of the Orders is a breach of the Deed by Mr Creak;

b. Any conduct engaged in by Fleet Serv after 10 October 2016 which the Orders restrained Tallevine from doing is a breach of the Deed by Mr Creak.”

106. The defence pleaded:

“17.   The Defendants

a. deny paragraph 17(a) of the SOC;

b. deny paragraph 17(b) of the SOC; and

c. in the alternative say that, if the Deed has the effect alleged in paragraph 17(b) of the SOC:

i. it is in restraint of trade within the meaning of s. 4(1) of the Restraints of Trade Act 1976 (NSW); and

ii. Further that Ford Australia manifestly failed to attempt to make that restraint of trade reasonable within the meaning of s. 4(3) of the Restraints of Trade Act 1976(NSW) when it procured and executed the Deed.”

314. That contempt proceedings for inter partes injunctions are rarely brought and within the control of the instigating parties, even if accepted, leads to no different conclusion. That reflects that parties usually honour Court orders as well as deeds by which they agree to be bound and when they don’t, that steps may have to be taken to enforce them, as they have been. In all of the circumstances how else were the orders and the restraints to be enforced but by the bringing of the two sets of proceedings?

315. The terms of the deed and the orders made as a result thus lead to the inevitable conclusion that the consequences of Tallevine’s breach of those orders, a matter within Mr Creak’s control, Ford incurring costs in pursuing the contempt and breaches involved, was within the parties’ contemplation when they entered the deed. So, too, were the further costs it would incur if Tallevine was to defend itself by pursuit of a cross-claim, also a matter within Mr Creak’s control.

316. That Ford finally could not pursue those proceedings because Tallevine was liquidated as it was before they could be heard and determined, cannot lead to a different outcome.

317. To resist this Mr Creak relied on FPM Constructions v Council of the City of Blue Mountains [2005] NSWCA 340, where reference was made to Knight v FP Special Assets Ltd (1992) 174 CLR 178; [1992] HCA 28 and Re JJT; Ex parte Victoria Legal Aid (1998) 195 CLR 184; [1998] HCA 44.

318. In Knight the category of cases in which an order for costs may be made against a non-party arose to be considered. That is, in circumstances “where the party to the litigation is an insolvent person or man of straw, where the non-party has played an active part in the conduct of the litigation and where the non-party, or some person on whose behalf he or she is acting or by whom he or she has been appointed, has an interest in the subject of the litigation. Where the circumstances of a case fall within that category, an order for costs should be made against the non-party if the interests of justice require that it be made”: at [193].

319. It was also Mr Creak’s case that Tallevine was the trustee of a trading trust, that being the capacity in which it had sued and there was no evidence as to the financial circumstances of the trust, or that he was its sole beneficiary. Accordingly, there was no discretion to make a personal costs order against Mr Creak, in the circumstances.

320. But that was not what was here sought. Rather, Ford sought to recover the costs it had incurred in the contempt proceedings as damages. I am satisfied that in the circumstances I have discussed, they may be ordered.

321. It was on 31 May 2021 that the cross-claim in the contempt proceedings was dismissed and Tallevine ordered to pay Ford’s costs of that claim: Ford [2021] NSWSC 1192 at [9]. Ford asked that a lump-sum assessment of those costs be made under s 98(4)(c) of the Civil Procedure Act: at [11]. Tallevine’s liquidator did not put the costs Ford pursued in issue, they not being provable in the winding up: at [11]. Nor did Mr Creak then seek to be heard on Ford’s costs. That was a matter for him.

322. The costs were proven by two affidavits which analysed the work undertaken, but they are not in evidence in these proceedings. Still, Fagan J’s judgment is not inadmissible under s 91 of the Evidence Act, to prove those costs, they not finally having been in issue in those proceedings: s 91(1).

323. Fagan J found that the majority of Ford’s legal costs were attributable to its defence of the cross-claim because “[i]n factual, legal and procedural terms that was a relatively simple proceeding” while the cross-claim was factually complex, concerning “communications over several years” and involving “strongly contested allegations of misrepresentation and reliance”: at [12]. The costs of defending the cross-claim, a total of $347,575, comprised $198,903 solicitors’ costs and $ 148,672.10 disbursements, mainly counsel’s fees: at [14].

324. Those costs and disbursements were assessed at $295,000: at [16]. Ford has recovered $150,000, as the result of the orders made, leaving a balance of $145,000 unrecovered in respect of those costs.

325. But his Honour was not called on to deal with the costs of Ford’s pursuit of the alleged contempt, which has not been assessed. Because of the forensic course which Ford pursued, which I have explained, the evidence does not establish those costs or the basis on which they were incurred.

326. The result is thus that while Ford has undoubtedly suffered further damage as the result of the contempt proceedings it had to bring to enforce the orders which bound Tallevine, than that dealt with by Fagan J, there is no evidence on which any order for those additional damages can be made.

327. Ford’s case was that in those circumstances an order of the kind made in Provident Capital (No 2) should be made. Namely, that if the parties are able to agree as to the amount of those costs, that they be directed to file a form of consent. If they are unable to do so, to direct that the matter be listed for the purpose of directions being made as to the filing of evidence of relevant costs and expenses incurred by Ford and the determination of the resulting damages that should be awarded against Mr Creak.

328. On Mr Creak’s case there could be no such order. Ford had already had an opportunity to establish an evidentiary basis for the order it seeks in respect of damages it claimed it had suffered and failed to take advantage of it, other than in relation to the costs Fagan J has dealt with.

329. In Provident Capital (No 2) Mrs Papa’s case that her costs of defending the claim and advancing her claim for relief under the Contracts Review Act 1980 (NSW) were recoverable by her from her former solicitor by way of damages for his breach of the contract for the provision of legal advice, was accepted: at [13]. It was there concluded that those costs may “fairly and reasonably be considered to have arisen naturally, "i.e., according to the usual course of things", from his breach of contract: at [16].

330. Thus, orders were made for assessment of those damages, calculated on a solicitor/client basis. That was the exercise Fagan J has already undertaken in relation to the costs of the cross-claim. That provides a proper basis for an order of $145,000 damages in favour of Ford, given what remains outstanding as to those costs.

331. But there is no evidentiary basis for such an exercise being undertaken in relation to the remaining costs of the contempt proceedings.

332. Had evidence been led in this case, as the Court ordered and as it was before Fagan J in the contempt proceedings, Ford’s solicitor could have been cross-examined on his affidavit and the unredacted fee memoranda on which the rest of its damages claim depends.

333. The result of the course which Ford inexplicably pursued is that neither the affidavit nor the fee memoranda are in evidence. There is thus no evidence on which the remaining damages can now be determined. Nor is there in the circumstances any fair basis for what would be required to give Ford another opportunity to put on such evidence.

334. Ford has already had a fair opportunity to put on this aspect of its evidentiary case, as it did in respect of its other claims. Failing to take advantage of that opportunity for reasons which were not explained, does not now provide a just basis for it to be given another opportunity to do so.

335. Ford finally relied on BB Australia Pty Ltd v Danset Pty Ltd [2018] NSWCA 101 at [24]-[25] to submit that even though there might be difficulties of quantification, the Court had to do its best to assess the remaining damages which it pursued. But there it was concluded at [41] that it was still for BBA to prove its loss. It failed to prove that the “fair market value” there in issue differed from the consideration and accordingly its appeal against the refusal to order the damages claimed failed.

336. Despite not being able to come to any findings in relation to the balance of the damages claim, I am satisfied that the unpaid costs dealt with by Fagan J can be recovered as damages in these proceedings, even though Mr Creak was then not heard on them. The contempt proceedings were to be heard together with this matter and he was on notice that Ford would seek to recover those costs from him, but still he did not seek to be heard and so they were dealt with in his absence. That assessment cannot now be challenged in these proceedings.

337. In those circumstances I am satisfied that Ford has met the onus falling upon it to establish this aspect of its damages case, on the basis Ford pressed.

Indemnity

347. Ford also claimed indemnification for its costs of defending the cross-claim in the contempt proceedings under cl 5.1 of the deed.

The parties’ cases

348. Ford’s case was that the losses which had resulted from Mr Creak or Tallevine’s breach of the deed, as well as any claims they made in respect of any matter which was the subject of the release given under cl 3.1 were covered by cl 5.1. That captured Tallevine’s amended cross-claim in the contempt proceedings, raising as it did matters in issue in the County Court proceedings as well as those foreshadowed, which were also the subject of the settlement encompassed by the deed.

349. Mr Creak’s case was that Tallevine’s counterclaim in the County Court and its counterclaim in the contempt proceedings concerned different subject matters and only overlapped to a minor and incidental extent, with the result that the costs Ford pursued were not covered by the indemnity he gave by the deed.

350. The cross-claim in the contempt proceedings was rather concerned with the deed and consent orders, with the result that it involved no breach of what was constrained by the deed and not the subject of the indemnity. The relief there claimed in relation to the dealer agreement and first settlement agreement were only advanced for the purpose of setting the factual context of the principal relief sought in the cross-claim and thus not the subject of the indemnity.

The terms of the deed

351. Clause 5.1 of the deed required Tallevine and Mr Creak to indemnify Ford against “any loss or liability arising from or connected with:

(a) a breach by Tallevine or Creak of clause 4.1; and

(b) a Claim brought by a Related Entity of Tallevine or Creak against Ford or one of Ford's Related Entities in respect of any matter which is the subject of a release under clause 3.1”.

352. As I have explained, Tallevine was one of Mr Creak’s related entities. Clause 3.1 provided:

“3.1 Release by Tallevine and Creak

Tallevine and Creak hereby release Ford and each of Ford’s Related Entities from any Claim arising from or connected with:

(a) the Dispute or any part of it; and

(b) the circumstances or allegations giving rise to or referred in the Dispute or any part of it; and

(c) all Claims in respect of amounts alleged to be owing by Ford to Tallevine under or in connection with the Dealer Agreement; and

(d) any other Claim which is or could reasonably have been known to a party as at the date of this Deed, whether or not the Claim is known to a party, and whether or not the claim arises from or is connected with the Dealer Agreement.”

353. Clause 3.1 was expressed in wide terms, “Claim” being defined in cl 1.1 to include “any claim or liability of any kind (including one which is prospective or contingent and one the amount of which is not ascertained) and costs (whether or not the subject of a court order).” The Recitals shed light on what claims and liability were caught by the definition.

354. “Dispute” was defined in Cl 1.1 to mean “the dispute between Ford and Tallevine the subject of the Proceedings, including the counterclaim brought by Tallevine.

355. Recital A of the deed defined “Proceeding” to mean the County Court proceedings, with Recitals A and B identifying Ford’s various claims and Recital C Tallevine’s defence and counterclaims. Recital D recorded that the parties had also foreshadowed expanding the proceedings to encompass further allegations by Ford and Tallevine and that they had agreed to resolve their differences in relation to both the allegations made in the proceedings and those foreshadowed in the expanded proceedings, on the terms of the Deed.

356. Clause 4.1 provided:

“Covenant by Tallevine

Tallevine and Creak will not bring or pursue, or procure that a third party bring or pursue, a Claim against Ford or any of Ford's Related Entities in respect of any matter which is the subject of a release under clause 3.1.”

Conclusion

357. It follows from cl 3.1 that all that was in issue in the County Court on the parties’ pleaded cases, as well as what was raised by their foreshadowed claims and any other claim which could have been reasonably known to them at the time, was encompassed by the indemnity given by cl 5.1. As was any breach of the covenant given by cl 4.1.

358. The indemnity must be read strictly and any ambiguity must be construed in Mr Creak’s favour: Andar Transport Pty Ltd v Brambles Ltd (2004) 217 CLR 424; [2004] HCA 28 at [20]-[23]. Here there is no ambiguity.

359. What was so indemnified was not solicitor/client costs incurred in resisting any claim brought in breach of the deed, but “any loss or liability arising from or connected with” the specified breach or claims.

360. In the County Court Ford was pursuing breaches of the dealership agreement, including obligations it continued to impose on Tallevine after termination in respect of the use of trademarks and of the earlier 2013 settlement deed, as well as passing off and misleading and deceptive conduct. While the counterclaim dealt with steps taken to remedy the breach of the agreement after Mr Creak’s convictions were overturned, the illegitimate economic pressure he alleged Ford brought to bear in respect of the first settlement, its wrongful refusal to withdraw the termination notice and unreasonable failure to extend the first settlement agreement. Other claims had been foreshadowed, including in draft pleadings served by Tallevine.

361. A fair comparison between all that was so claimed with Tallevine’s amended cross-claim in the contempt proceedings, must lead to the acceptance that the contempt cross-claim was brought contrary to cl 4.1 of the deed.

362. Many of the positive claims advanced were substantially similar to those Tallevine pursued in its cross-claim in the earlier proceedings and further claims it had foreshadowed, in relation to the dealers agreement, its termination, the first settlement agreement, alleged economic duress, as well as breach of the first agreement and various legislation. Other claims advanced in the contempt proceedings were or ought also to have been known at the time the deed was executed. For example, claims made in respect of Ford’s conduct in relation to the deed, representations alleged to have been made and terms it was claimed were implied in the deed.

363. Later alleged breaches of the deed could not have been known at the time it was entered, but that was but a very small aspect of Tallevine’s counter claim in the contempt proceedings. Relying as its other claims did on prior and contemporaneous matters, there can be no other conclusion than that the vast majority of what was raised by that counterclaim was the subject of the indemnity.

364. It follows that Ford’s case that its resulting losses and liabilities were the subject of cl 5.1 must be accepted. It is concerned with losses or liabilities which Ford incurred, not any assessment of party: party costs. In the result I accept that order 2 should be made.

Further restraints must be ordered

365. I am also satisfied that Ford has established a basis for the imposition of restraints on Mr Creak by the making of orders which are grounded, as they must be, in its existing legal rights under the deed. As I have explained, contrary to his case, the restraints to which he so agreed were not unenforceable as being unlawfully in restraint of trade.

366. It was accepted by Mr Creak that if breach of the deed was proven, a discretion to make the orders sought arose to be exercised, if utility in making those orders was also demonstrated on the evidence: Dalgety Wine Estates Pty Ltd v Rizzon (1979) 141 CLR 552; [1979] HCA 41.

367. Thus if it was found that what Fleet Serv and possibly Tallevine had done established a breach of the restraints which bound Mr Creak, that what he was thereby bound to do was reasonably necessary and it was thought that there was utility in making such orders, there was power to make orders which would bind Mr Creak.

368. But still there were issues as to the form which the orders would take, in the proper exercise of the Court’s discretion.

369. I am satisfied on the evidence I have discussed that the necessary breaches have been established; that what it was agreed Mr Creak would do was reasonably necessary, given that otherwise he was likely to have continued the course he had pursued through Tallevine or some other entity which he controlled. Later, despite what he agreed by the deed, he continued that course, eventually using Fleet Serv as the corporate vehicle by which he pursued his ends. That there is real utility in now making orders which will also bind Mr Creak has thus also been established.

370. Thereby the still ongoing dispute between he and Ford, which the deed was intended to bring to an end, but which instead has grown also to encompass Fleet Serv’s activities, ought finally to be resolved

371. The evidence well establishes the conduct which Ford relied on as part of the ongoing course which Mr Creak pursued through his control of Tallevine and Fleet Serv, contrary to the restraints by which he was bound, even after the contempt proceedings were commenced. That unbeknownst to Ford, Tallevine sold its business to Fleet Serv, it may be inferred from the evidence, was in order that Mr Creak could thereby continue “raptorising” Ford vehicles parts and accessories, despite the orders which bound Tallevine, the deed by which it and he were bound and Ford’s ongoing objections.

372. In the circumstance’s justice requires that this must be brought to an end by the making of orders which bind Mr Creak.

Form of these orders

373. There was an issue as to the basis of order 3, given that Mr Creak was not bound to transfer the domain names there dealt with.

374. I am satisfied that cl 6 of the minutes, which bound Mr Creak, provides a just basis for the Court’s exercise of the power to make that order, given the evidence which establishes the need to expressly require him by order to take the specified steps, if the orders made are to be effective in bringing this dispute to an end.

375. Clause 6 of the minutes should have prevented Mr Creak from having Fleet Serv apply to have the “raptor 4wd.com” domain name registered. It was made in 2017 with Fleet Serv then carrying on business using that domain name and website. The order thus has utility, even though it appears that Fleet Serv’s use of that name ceased in May 2021. It should prevent its further use.

376. There was also an issue as to order 4. It is supported by the restraints imposed by cll 11 and 12 of the minutes, which should have precluded the specified statements and representations being made.

377. The evidence establishes that having procured registration of another domain name “ and by use of its website “phauto.com.au”, Fleet Serv made statements which Tallevine was restrained from making: agreed facts [45]-[46]. They were statements which Mr Creak should have ensured Fleet Serv did not make, given the restraints by which he was also bound. I am satisfied that the evidence thus establishes a just basis for making those orders, which are also reasonably necessary and have utility.

378. This and the other orders should ensure that Ford will not have to pursue even further litigation against Mr Creak or his related entities. This litigation would not have been necessary, had Mr Creak abided by the restraints he agreed, as he ought to have. That necessitates the making of orders which will now bind him.

373. There was also an issue as to order 5, which does not refer to the provisions of cl 10 of the minutes, as cl 4 of the minutes on which it rests does. The evidence establishes, however, Fleet Serv’s use of the Ford badge, including in 2020, inconsistently with what cl 4 and 10 would permit. As was Ford’s case, without the proposed order, on the evidence that cessation may prove to be temporary.

374. But in my view, I think the form of this order should reflect the terms of the deed, to which I will return.

375. Order 6 rests on cl 5 of the minutes, which should have precluded Fleet Serv carrying on business under or by reference to the Ford Signs, which has also been established. Including, for example, by its unauthorised use of the words “FORD SERVICE & PARTS” at its premises, the use of the word FORD outside and the use of “Ford Service centre” on its website.

376. Contrary to Mr Creak’s case this established much more than an isolated sign left on a wall by “enthusiasts”. It follows that this order is also reasonably necessary and has utility

377. Order 7 rested on cl 6 of the minutes, which restrained Tallevine and Mr Creak from applying to register any business name, company name, domain name or trade mark containing the Ford Signs or Ford Raptor Signs. Given all of the evidence I have discussed about these matters, I am also satisfied that this order is reasonably necessary and that there is utility in making it.

378. Order 8 rests on cll 7 and 10 of the minutes, which I have also already discussed. The evidence establishes that Fleet Serv has continued to sell vehicle parts and accessories bearing the Ford and Ford Raptor signs, not manufactured with Ford’s authority, contrary to what the deed required of Mr Creak. In the result, it too is reasonably necessary and there is real utility in making it.

379. Order 9 and 10 rest on cl 8 and 9 of the minutes, breach of which has also been established, given Fleet Serv’s use of the word “Raptor” in domain names and websites which it operates, as well as the use there of the deceptively similar raptor device Tallevine had formerly used. This order is thus also reasonably necessary and there is real utility in making it.

380. Orders 11 and 12 rest on admissions and agreed facts, which also establish breaches of the corresponding provisions of the deed, with the result, again, the conclusions that these orders are thus also reasonably necessary and there is real utility in making them.

381. That leaves order 10A, which takes a different form to cl 10 of the minutes on which it rests. Further the reference to cl 10 in cll 4 and 8 of the minutes, is not replicated by reference to cl 10A in the corresponding proposed orders. These changes are intended by Ford better to reflect the construction of the orders for which it contended. Thus, the chapeau refers to an excuse to avoid liability for breach of other orders. Further, while cl 10(b) of the minutes permitted use of the words “FORD, RANGER and RAPTOR in good faith to describe the vehicles that the defendant is offering for sale, order 10A(b) permits use of those words “to describe only the make of the vehicles that they are offering for sale.”

382. The addition of the words “only the make of” was objected to on the basis that their intent can only be to limit the use which could be made of the words FORD, RANGER and RAPTOR by cl 10(b) of the minutes. On Mr Creak’s case that would have the result of a cutting back of the commercial operation permitted by the deed, also not encompassed by the orders which bound Tallevine. That was not in conformity with the parties’ existing legal rights and should thus not be imposed by the Court’s order.

383. It is difficult to see that the words objected to would have the result for which Mr Creak contended. Use of the words to describe the make of the vehicle would also describe the vehicle, after all. But still I accept that the orders should be couched in terms of those which bound Tallevine, as well as the restraints by which Mr Creak remains bound, their meaning now having been construed as they have been in these proceedings.

384. This means that the current reference to cl 10 in the minutes in other clauses, should be replicated in the orders which are now to be made.

Costs and interest

391. The usual order under the Uniform Civil Procedure Rules is that costs follow the event. In this case that is an order that Mr Creak bear Ford’s costs, as agreed or assessed.

392. There was no issue about an order for interest, which should also be made.

Final orders

393. For the reasons given I now order that judgment be entered for Ford.

394. The parties should confer about the final orders which reflect the conclusions which I have reached, which should be filed within 14 days. If there is any dispute, including as to costs, the parties should approach within that time and also file the orders they propose, together with a short outline of their submissions.

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Amendments

08 February 2022 - Formatting change to Index Headings

Decision last updated: 08 February 2022