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

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 Act 2005 (NSW) ss 56-58, 98(4)(c) Competition and Consumer Act 2010 (Cth) Contracts Review Act 1980 (NSW) Corporations Act 2001 (Cth) Crimes Act 1900 (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 Act 1923 (NSW) s 17 The Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (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