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

1. [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. [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. [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. [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. [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. [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

1. [7]

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

2. [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.

3. [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.

4. [10]

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

   1. (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. (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. (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 Act 2010 (Cth)), the Fair Trading Act 1987 (NSW), and the Crimes Act 1900 (NSW), which included odometer tampering. Some of those convictions were later overturned and the other charges were then withdrawn.

   4. (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. (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. (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. (7)

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

   8. (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. (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.

   10. (10)

       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.

   11. (11)

       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.

   12. (12)

       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.

   13. (13)

       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.

   14. (14)

       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.

   15. (15)

       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.

   16. (16)

       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.

   17. (17)

       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.

5. [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.

6. [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.

7. [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.

8. [14]

   I am satisfied that this cannot be accepted.

9. [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.

10. [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.

11. [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.

12. [18]

    Judgment must thus be entered for Ford.

Agreed facts, issues and evidentiary rulings

1. [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.

2. [20]

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

3. [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.

4. [22]

   The facts identified to be in issue were:

5. [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:

6. [24]

   The identified issues were:

7. [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.

8. [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.

9. [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.

10. [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.

11. [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.

12. [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.

13. [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.

14. [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.

15. [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.

16. [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.

17. [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.

18. [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.

19. [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.

20. [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.

21. [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).

22. [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.

23. [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.

24. [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.

25. [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.

26. [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.

27. [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.

28. [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:

29. [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 Holdings Pty 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.”

30. [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.

31. [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”.

32. [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.

33. [51]

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

34. [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.

35. [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].

36. [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.

37. [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.

38. [56]

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

39. [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 Act 2005 (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.

40. [58]

    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.

41. [59]

    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].

42. [60]

    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.

43. [61]

    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.

44. [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.

45. [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.

46. [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.

47. [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].

48. [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.

49. [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.

50. [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]:

51. [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.

52. [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].

53. [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.

54. [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.

55. [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.

56. [74]

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

57. [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.

58. [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.

59. [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.

60. [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.

61. [79]

    In the result the leave sought was refused.

Does the restraint doctrine apply to the deed?

1. [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.

2. [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.

3. [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.

4. [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).

5. [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.

6. [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.

7. [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.

8. [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:

9. [88]

   This is a different case.

10. [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:

11. [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.

12. [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].

13. [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.

14. [93]

    On the evidence this is a similar case.

15. [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.

16. [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."

17. [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."

18. [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].

19. [98]

    I agree.

20. [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.

21. [100]

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

22. [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.

23. [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.

24. [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.

25. [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?

1. [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:

2. [106]

   The defence pleaded:

3. [107]

   As I explained cl 17.c.ii of the defence was finally abandoned, but the defence clearly raised the provisions of s 4 of the Restraints of Trade Act 1976 (NSW) which relevantly provides:

4. [108]

   There was no reply to his defence, as Mr Creak contended there needed to be, given what he had pleaded.

5. [109]

   I am satisfied this may not be accepted. The effect of r 14.27 of the Uniform Civil Procedure Rules being that because Ford did not file a reply by which it expressly joined issue with what Mr Creak had pleaded in cl 17 of his defence, there was an implied joinder of issue on all that he there pleaded. That operated as a denial of those allegations.

6. [110]

   Rule 14.14 does require that in a defence or subsequent pleading, a party must plead specifically any matter that if not pleaded specifically, may take the opposite party by surprise. Thus, Mr Creak also contended, Ford was required to serve a properly particularised reply to his defence, to which he could then have filed a rejoinder.

7. [111]

   Ford disputed this and I am satisfied that also cannot be accepted.

8. [112]

   It is relevant that despite all of the interlocutory matters which the parties pursued, up until the hearing there had been no complaint about improper surprise resulting from Ford’s failure to file a reply. Nor any suggestion that the hearing on the restraint issue could not fairly proceed without one. It was open to Mr Creak to seek particulars of what Ford relied on to defend the matters he had raised by cl 17 of the defence, about which issue had been joined as the result of the operation of the Rules, if there was any concern about potential prejudice. But that had also not been pursued.

9. [113]

   Section 56 of the Civil Procedure Act was thus again relevant, imposing as it does obligations on the Court, the parties and their representatives in relation to the overriding purpose there specified, the just, quick and cheap resolution of the real issues in the proceedings.

10. [114]

    There is no question that there is a real issue lying between the parties about the reasonableness of the restraints agreed by the deed raised by the pleadings and operation of the Rules. If it was considered that a reply needed to be filed, so that Mr Creak could properly understand Ford’s case on that issue, he ought to have raised that before the hearing. The legislative scheme does not permit any party to conduct the litigation by ambush or surprise, including as to a pleading issue such as this.

11. [115]

    It is also relevant that r 14.2 permits the proceedings to be tried without further pleadings, if the Court is of the opinion that the issues between the parties can be defined without them. That the restraint issue had already adequately defined was supported by the evidence served and the issues and facts which the parties agreed before the hearing.

12. [116]

    Mr Creak also complained that because Ford had not pleaded reasonableness, he had not investigated whether it had an interest in protecting or advancing the brands in issue. Nor had he led evidence about the operation of the restraint on the broad class of those defined to be “related entities”. He contended that there could thus not be a fair trial on the question of reasonableness.

13. [117]

    I am satisfied that this cannot be accepted.

14. [118]

    Not only was there no pleading deficiency, Mr Creak’s forensic decisions have to be understood in a context where the dealership agreement by which Tallevine was bound when he identified and it began pursuing the Raptor gap he perceived in the market, dealt expressly with trademarks belonging to Ford and its related companies and their use, including after termination of the agreement. That these parties had already litigated and resolved Tallevine’s use of the brands in issue in the County Court, must also not be overlooked.

15. [119]

    That whether the restraints agreed by the 2015 deed achieved what Ford contended it intended, to ensure both that after Tallevine was bound to cease using the marks the settlement dealt with, as the result of the deed and the orders made by this Court and that Mr Creak would not be left free to pursue that use through some other related entity or person, was a matter of construction of the deed, over which issue had been joined. If was only if it did achieve that result, that the question of reasonableness of those restraints also arose to be considered on the case he advanced.

16. [120]

    In the result in these proceedings Mr Creak had a fair opportunity to pursue discovery or interrogatories about the question of reasonableness, if he considered that to be necessary and also to put on evidence as to those matters, if he wished.

17. [121]

    As Ball J discussed in Traderight (NSW) Pty Ltd (ACN 108 880 968) & Ors v Bank of Queensland Limited (CAN 009 656 740) (No 10) and 15 related matters [2012] NSWSC 1181, r 14.14 is a rule which is concerned with the way in which trials must be conducted. It prevents a party from raising at trial matters which would genuinely catch the other party by surprise “if it is clear from other matters that a party intends to raise an issue, then the surprise rule is not normally interpreted as requiring that the matter also be pleaded before it can be raised”: at [40].

18. [122]

    In this case I am satisfied that the parties’ ongoing dispute, resolved as it was by the 2015 settlement; the pleaded cases; the operation of the Rules; and the evidence which the parties had each served about the circumstances in which the deed came to be entered and what had led to the restraints being agreed as they were, established that Mr Creak was not unfairly surprised by Ford’s failure to serve a reply which particularised the basis on which it said that the agreed restraints were reasonable. Nor did the case it advanced genuinely catch Mr Creak by surprise.

What is the proper construction of the deed?

1. [123]

   The proper construction of the deed arises for determination whether or not the restraint doctrine applies.

2. [124]

   That must also be determined before consideration is given to the practical working of the restraints, if the doctrine does apply: Belflora Pty Ltd v Vinflora Pty Ltd [2021] NSWCA 178 at [20]. It is the reasonableness of how the restraints worked at the time that the deed was entered, which must then be assessed: Woolworths v Olson [2004] NSWCA 372.

3. [125]

   Ford’s pleaded case was that cl 2.2(a) of the deed required Mr Creak both to ensure that Tallevine complied with the consent orders, including the mandatory steps it was required to take and that his other related entities, particularly Fleet Serv, also complied with what he was bound by the minutes to the deed to ensure.

4. [126]

   Ford thus contended that the deed required Tallevine to take certain specified steps, as well as ceasing to sell both counterfeit grills and accessories and “raptorising” Ford vehicles which it offered for sale. In final oral submissions it was accepted that cl 2.2(a) did not require Mr Creak to ensure compliance with the mandatory steps Tallevine was ordered to take. But his failure to do so involved on Ford’s case, in any event, a breach of the restraints by which he was bound, given that it was a related entity.

5. [127]

   Uncontentiously Mr Creak’s case was that the deed had to be construed in accordance with the ordinary and natural meaning of the words used, with cl 2.2 (a) read in context of the deed as a whole. And that any ambiguity had to lead to a narrower, rather than wider meaning.

6. [128]

   He also contended that the clause only made him liable in damages for the consequences of his related entities not complying with what the minutes restrained. Further, that he was not liable for ensuring that Tallevine complied with the orders or liable for damages if it did not do so, because it was not a related entity under the deed. That was in issue.

7. [129]

   In any event, each of the negative covenants in the minutes to the deed, by which cl 2.2(a) bound him, were expressly made subject to cl 10 of the minutes, which had to be given concrete operation. The result was that it precluded the orders Ford sought being made.

8. [130]

   It followed that unless cl 10, when read with cl 2.2 (a) of the deed was construed as not extending to “any activity honestly engaged in directed to selling motor vehicles without abuse” of Ford’s marks in Australia, the effect of cl 2.2(a) was uncertain and therefore unreasonable. Under s 4(3) of the Restraints of Trade Act it could thus not be given an effect more expansive than that.

9. [131]

   In Electricity Generation Corporation t/as Verve Energy v Woodside Energy Ltd (2014) 251 CLR 640; [2014] HCA 7, it was observed that "[t]he meaning of the terms of a commercial contract is to be determined by what a reasonable businessperson would have understood those terms to mean" in context: at [35]. Further, that "it will require consideration of the language used by the parties, the surrounding circumstances known to them and the commercial purpose or objects to be secured by the contract at [35]."

10. [132]

    The objects of the deed were apparent from its terms. To regulate how, in future, the parties were to conduct aspects of their respective commercial operations. It was arrived at in the context of the dealership agreement and their respective rights and obligations after it was terminated; the conduct about which Ford complained; and the parties’ respective rights and interests in the trademarks in issue between them. Its objects included that Tallevine’s sale of unauthorised accessories, parts and its “raptorised” Ford vehicles would cease.

11. [133]

    The commercial purpose of the deed was also apparent. Not to preclude Tallevine continuing to sell all Ford vehicles in its dealership, even though it was no longer an authorised Ford dealer and not entitled to hold itself out as having an ongoing relationship with Ford.

12. [134]

    Rather, in summary, to ensure that Tallevine no longer held itself out as having an ongoing connection with Ford and that it, Mr Creak and entities associated with them ceased utilising to their advantage brands and trademarks owned by Ford’s related companies, which they were not authorised to use. Further, that they ceased availing themselves of the reputation which Ford had in the Australian market, including for Raptor versions of Ford vehicles, by pursuing the gap Mr Creak had perceived existed and Tallevine had exploited, by selling the counterfeit grills and accessories which it had manufactured and the Ford vehicles it had “raptorised”, despite Ford’s objections, which it and Mr Creak agreed would cease.

13. [135]

    I have already discussed some of the surrounding circumstances known to the parties. They also include the terms of the dealer agreement which regulated the use which dealers such as Tallevine could make of various intellectual property. Tallevine was bound by this agreement not only when it first began producing Raptor products and “raptorising” Ford vehicles, but as to relevant matters, even after the agreement was terminated.

14. [136]

    The agreement appointed Tallevine as an authorised dealer for the sale, marketing and service of Ford products. Relevant definitions appeared in cl 1. Products were there defined to include both vehicles and parts.

15. [137]

    Vehicles were defined to mean “Ford Marketed Vehicles (including the applicable Factory Fitted Options) designated from time to time by Ford to the Dealer” or as otherwise designated by Ford. Options were defined to include accessories and other equipment not included in standard specifications but made available as factory fitted accessories.

16. [138]

    Parts were defined to mean “Ford Marketed Parts or as otherwise designated by Ford”. Those parts included accessories and other equipment marketed in Australia under a Trade Mark by Ford. The agreement also provided for the sale of Ford vehicles and parts to Tallevine, which was also free to purchase parts from other suppliers: cl 2.3.

17. [139]

    “Trade Mark” was defined to mean “any trade or service mark, or trade or business name used, claimed, registered or owned by Ford or any Related Body Corporate, or any coined word or combination of words containing all or part of a Trade Mark.”

18. [140]

    There was no issue that Ford USA and Ford Canada were both such related body corporates or that Ford marketed parts, accessories and vehicles under trade marks and names which they owned.

19. [141]

    Tallevine had obligations to maintain stocks of products, to promote their sale and to give preference to the sale and installation of genuine and approved parts. There was also a prohibition on it knowingly selling or procuring the sale of new or unused vehicles to unauthorised dealers: cl 4.1. It appears that Ford may have used this provision after the termination of Tallevine’s dealership to prevent its authorised dealers from selling such vehicles to Tallevine.

20. [142]

    If accessories were fitted Tallevine was obliged to specify in the purchase documents if the addition was not factory fitted and marketed by Ford and not included in the vehicle warranty: cl 4.10

21. [143]

    Tallevine was also precluded from importing Ford Products for resale without its prior approval: cl 4.16. Ford products were defined to mean “any passenger, commercial, recreational, or other vehicle or any engine, part, component, assembly, accessory or other equipment marketed in Australia or elsewhere under a Trade Mark by Ford or any Related Body Corporate”. Ford also reserved the right to add to its range of Ford Marketed Products without notice: cl 5.3. There were also warranty, service and maintenance provisions.

22. [144]

    The agreement also regulated representations which Tallevine could make, as well as its use of Trade Marks, permitted uses being dealt with. Clauses 11.2(d) and 14.3 relevantly provided that:

23. [145]

    Cl 20.3 regulated Tallevine’s obligations after termination, including to stop indicating that it was an authorised dealer. It provided:

24. [146]

    It follows, the definition of “Trade Mark” including as it did those of other Ford companies, that the dealer’s agreement contemplated Ford’s own use in Australia of the trademark which Ford USA held in the Raptor name, whenever it chose to do so. The agreement also entitled Ford to require Tallevine to cease using that trademarked name, as it did.

25. [147]

    Despite Ford’s demands it did not do so, with the result the County Court proceedings, the 2015 settlement and the resulting orders made by this Court, which reflected the minutes of the deed, which regulated Tallevine and Mr Creak’s future use of that name.

26. [148]

    Consistent with the dealer agreement, as well as the deed, since 2018 Ford has sold Raptor versions of its vehicles in Australia. There is no suggestion that Mr Creak, Tallevine or Fleet Serv has ever sought to restrain Ford from so using the Raptor name, or that they have any legitimate basis for doing so. The deed reflects, on the other hand, that the dealer agreement did not contemplate the use which Mr Creak, Tallevine and Fleet Serv made of the Raptor name, despite Ford’s objections.

27. [149]

    It is in that context that Mr Creak’s concessions arise to be considered. As I have already explained, in cross examination Mr Creak made a number of concessions about the surrounding circumstances, Ford’s brand and market reputation in Australia, including for its Raptor vehicles.

28. [150]

    On the evidence even while Tallevine was an authorised dealer, although Ford did not import Raptor vehicles, information about Ford Raptor vehicles was easily accessible in Australia. Ford’s website address was the same as that of Ford USA, except for the addition of the “.au” at the end. Search for information about Ford Raptors could thus bring up the Ford USA site, as would mistakenly leaving off the ‘.au’ in the web address, when a search was made for Ford’s Australian site.

29. [151]

    Mr Creak’s oral evidence was that Ford was a known brand in Australia; that there was a market here for its Ford 150 trucks, including the Raptor version, even though they were not imported by Ford; that there was also a market here for a Raptor version of the Ford Ranger vehicles which Ford did import, even though it did not manufacture a Raptor version of those vehicles. He described the market for Raptor enhanced Rangers to be more “boutique”.

30. [152]

    This evidence led, in final submissions, to the concession that the evidence established:

31. [153]

    This reflects that goodwill is a protectable interest: Belflora at [29], [46]-[48]. Mr Creak’s evidence and concession thus established Ford’s legitimate interest in its brand reputation in Australia. On the evidence I am satisfied that encompassed not only its trademarked name and blue Ford badge, but also the Raptor name under which Ford Raptor vehicles were manufactured by other Ford companies, including those which Ford did not import here, but for which there was a market here.

32. [154]

    The proper inference from Mr Creak’s evidence was that it was that brand reputation and the goodwill which attached to it which he sought to avail Tallevine of, when it began producing its own Raptor products and “raptorising” Fords which it sold, without having sought or obtained Ford’s authority. It did not even have the authority of Hino, which then held the mark in that name in Australia and even when that was eventually sought, it was not obtained.

33. [155]

    That is why Tallevine styled the word Raptor as it did, on the evidence in a way which provided Ford with a fair basis for complaint that the name Tallevine was using looked deceptively like the Raptor name affixed to Ford Raptor vehicles on manufacture overseas. That is also why Tallevine affixed the word Raptor, so styled, to accessories and parts, as well as to the Ford F series trucks and Ford Rangers which also carried the trademarked Ford name and badge.

34. [156]

    Had Mr Creak not been concerned for Tallevine so to take advantage of Ford’s brand reputation and the good will which attached to it in the Australian market which he described, Tallevine would not have used the word Raptor styled as it was, either on the accessories and parts it produced, or on the Ford vehicles it “raptorised”. In the case of the Ford Rangers, for example, fitting them with a grille which emulated that which Ford manufactured for its F150 Raptor trucks.

35. [157]

    Had Mr Creak not wished to take such advantage, Tallevine would also not have continued to use the Ford and Raptor names as it variously did, even after its dealership was terminated. Thereby it suggested that it had an ongoing relationship with Ford which did not exist and it continued to do so even after it entered the deed and later, when bound by this Court’s orders.

36. [158]

    That, however, was all part of what Tallevine and Mr Creak agreed they would cease doing, when they entered the 2015 settlement.

37. [159]

    What Tallevine and eventually Fleet Serv thereafter continued to do despite that settlement was not accepted by Ford, which persisted in its efforts to bring this abuse of its reputation and goodwill to a halt. Finally, by initiating the contempt proceedings and then also these proceedings, after its application to have Mr Creak joined as a party to the contempt proceedings failed.

38. [160]

    The surrounding circumstances also included the financial return which Tallevine had undoubtedly been making from its “raptorisation” of Ford vehicles, which Mr Creak explained.

39. [161]

    In cross examination Mr Creak said that he had first sold a Ford in 1985, but Tallevine had been an authorized dealer only for about 3 years, he having applied for the dealership in about 2010 or 2011. In an affidavit he said that while an authorised dealer, Tallevine had sold 268 new cars in 2012, 421 in 2013 and 195 in 2014, 95% of those sales being made in NSW. Afterwards this fell to 60 in 2015 and 18 in 2016. Mr Creak also said that in 2014 he had sold four F150 trucks which he had purchased from a third-party importer, but he had never sold a new F150 Raptor.

40. [162]

    Financial advantage helps explain both why Tallevine continued offering for sale Ford vehicles it had “raptorised” as new, despite Ford’s objections after the termination of the dealership agreement and why, just before the settlement was agreed on 7 September 2015, it made the application for registration of the trademark “Raptor4x4.com.au”, not having obtained Hino’s consent to use the Raptor name.

41. [163]

    On this evidence entering the deed was to Tallevine and Mr Creak’s financial disadvantage. That helps explains why, despite the advice it had received about the problems which faced such an application succeeding, given Ford’s interests, even though it did not own the trademark in the word Raptor in Australia, Tallevine sought to pursue that application, having breached the deed and orders by which it was bound.

42. [164]

    The evidence about how the deed, particularly cl 2.2(a) came to be negotiated, showed that Mr Creek sought amendments to which Ford did not agree, which would have relieved him of some of the obligations by which he finally agreed to be bound.

43. [165]

    It is not necessary to explain all of the detail.

44. [166]

    But it is pertinent that there was an initial mediation in May 2015 when Tallevine’s desire to have the dealer agreement reinstated and its continued use of the word Raptor in connection with its business were not agreed. A draft deed and consent orders were later prepared and changes were proposed and considered by the parties.

45. [167]

    There were ongoing issues between them about the continued use of the Raptor name and device, Ford not being prepared to enter another dealer’s agreement with Tallevine.

46. [168]

    Eventually Tallevine retained new solicitors and the mediation resumed in September 2015, after further exchanges about the drafts. The dispute did not settle then, but revised drafts were discussed. Finally, the mediation resumed with the result the final execution of the deed on 17 September.

47. [169]

    Afterwards, Ford not being prepared to enter a dealer’s agreement with other companies with which Mr Creak was involved, the final result under the deed was the $100,000 payment to Tallevine.

48. [170]

    The Deed provided in the recitals that:

49. [171]

    Clause 2.2(a) of the Deed was finally in simple terms, providing:

50. [172]

    “Related Entity” was defined to in cl 1.1 of the deed. Its meaning was in issue.

51. [173]

    The minutes to the deed which bound Tallevine, which were reflected in the orders later made, parts of which Mr Creak agreed by cl 2.2(a) also to be bound by, provided:

52. [174]

    The orders which bound Tallevine and became the subject of the contempt proceedings reflected these minutes, albeit before Campbell J difficulties with the form of the orders, because JusticeLink could not replicate the trademarks which they incorporated, were raised and unsuccessfully relied on by Tallevine: Ford [2019] NSWSC 1914.

53. [175]

    At the hearing Ford accepted that cl 2.2(a) did not bind Mr Creak in relation to the positive obligations imposed by cll 1-3 of the minutes and the orders. But on its case Tallevine’s breach of those provisions nevertheless resulted in Mr Creak’s breach of the deed, given other provisions of the minutes by which he was bound.

54. [176]

    I am satisfied that despite the provisions of the deed on which Mr Creak relied under the deed, properly construed, Tallevine was his “Related Entity”.

55. [177]

    The term was defined to mean, so far as Mr Creak, a natural person was concerned:

56. [178]

    On Ford’s case this pivotal definition, read in accordance with the ordinary and natural meaning of the words used, meant that both Tallevine and Fleet Serv, of which Mr Creak was sole director, were his related entities, as had properly been admitted. Despite those words and the admissions by which he was bound, Mr Creak’s case was that this was not intended and that other provisions of the deed preluded this conclusion.

57. [179]

    In coming to a conclusion, the definition of “Related Entity” in its entirety must be born in mind. So far as the corporate parties were concerned, it was defined in cl 1.1 to mean:

58. [180]

    There was thus no issue that Ford USA and Ford Canada were a related entity of Ford. They were “related body corporates”, a term which was defined in the deed by reference to the meaning given to that term in the Corporations Act 2001 (Cth), even though not parties to the deed.

59. [181]

    In Tallevine’s case Mr Creak, however, was not a related entity, he being a party to the deed and thus expressly excluded by this definition. It is thus important to this construction issue to take into account that there was not a similar exclusion of Tallevine as a related entity in Mr Creak’s case, in the definition.

60. [182]

    To the contrary, in Mr Creak’s case the definition expressly included Tallevine, because it was a body corporate of which he was then a director. In my view that structure precludes the construction for which he contended, despite the other provisions of the deed, which on his case, evidenced that this had not been intended.

61. [183]

    Contrary to his case, on the deed read as a whole as it must be, it is apparent that it was intended that each party would be bound by the undertakings given. In Mr Creak’s case, those which he gave by cl 2.2(a) in respect of not only Tallevine, of which he was the controlling mind through his directorship, but of any of his other related entities, who he agreed would also not engage in the conduct restrained by the minutes.

62. [184]

    True it is that the definition in Mr Creak’s case encompassed not only Tallevine and other companies of which he was a director, but also a wide class of other people and entities who the parties intended the restraints would extend to. They included some who he undoubtedly could not control. That might, in an appropriate case, permit the definition to be read down, but not in the case of Tallevine, which he did control.

63. [185]

    Clause 3.2 of the deed dealt with the release Ford gave Tallevine, Mr Creak and each of their Related Entities and in cl 5.2 Ford indemnified Tallevine, Mr Creak and each of their Related Entities against its breach of cl 4.2, by which Ford also gave certain covenants. Ford, Tallevine and Mr Creak were parties to the deed entitled to enforce its provisions, but related entities were not. But that does not preclude Tallevine being both a party and Mr Creak’s related entity. To the contrary, given his control of Tallevine, there was an obvious purpose in him agreeing to restraints which bound him also to ensure its compliance with the obligations which they imposed.

64. [186]

    Clause 6 of the deed is also relevant, providing:

65. [187]

    Consistent with this, Ford, Tallevine and Mr Creak all executed the agreement as parties. That also does not preclude Tallevine also being a related entity of Mr Creak, as the definition clearly intended, given that it was not expressly excluded, as Mr Creak was.

66. [188]

    Had it not been intended that Tallevine would be a related entity of Mr Creak, that could easily have been achieved by excluding it from the definition, as Mr Creak was in Tallevine’s case. But it was not. That is consistent with the deliberate choice of drafting which would have the effect which the plain words of the definition achieved.

67. [189]

    In coming to a conclusion about the proper construction of the deed it is also pertinent to take account of the consequences of the reading down of the definition for which Mr Creak contended.

68. [190]

    That must occur in a context where despite the restraints agreed, the deed also acknowledged that Tallevine could continue to sell Fords and use its name and badge as well as the Raptor name, in ways specified in the minutes, to which it will be necessary to return.

69. [191]

    If Mr Creak’s construction were correct, the deed would appear to have a very significant omission, one which was clearly not intended, given what cl 2.2(a) provided and the restraints by which Mr Creak thereby also agreed to be bound, as did Tallevine.

70. [192]

    The deed thus recognised when it made Tallevine his related entity, that Mr Creak was its controlling mind and that it was he who would control both whether he and it adhered to the settlement by which they had agreed they would be bound. That was an obvious reason why Tallevine was not excluded from the definition of related entity as Mr Creak was in its case. It could not control him.

71. [193]

    I am thus satisfied that the definition of “Related Entity” not excluding Tallevine, as it could have easily done, precludes Mr Creak’s construction being accepted.

72. [194]

    It will be remembered that cl 2.2(a) provided that Mr Creak “undertakes to Ford that he and any Related Entity of him will not engage in any of the conduct the subject of the attached Minutes”.

73. [195]

    Ford relied on cl 2.2(a) appearing as part of the “Parties settlement obligations” part of the deed, to contend that it was a contractual promise or obligation that Mr Creek, as well as Tallevine and Fleet Serv, his related entities, would not engage in the restrained conduct.

74. [196]

    On Mr Creak’s case, despite its simplicity, the clause was ambiguous. That was also in issue.

75. [197]

    Ford relied on what was agreed in the deed in relation to the steps to be pursued to have the consent orders made and the agreement that neither the deed nor consent orders would cause Tallevine to be an authorised user of Ford’s Trademarks under s 26 of the Trade Marks Act, to support its construction of cl.2.2(a): cl 2.1.

76. [198]

    Section 26 regulates the use which an authorised user of a trade mark may make, subject to any agreement with its registered owner, which includes bringing an action for infringement of the trade mark. “Authorised user” is defined in s 8 to mean a user of the trade mark “in relation to goods or services under the control of the owner of the trade mark”. There is no suggestion that Mr Creak, Tallevine or Fleet Serv were an authorised user of any of the marks in issue.

77. [199]

    Whether Ford was an authorised user of those marks, on which the dealer’s agreement was plainly premised, arose for determination in the County Court proceedings, which the parties settled. That definition was considered in Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 at [97]-[98] and raises questions of control and unity of purpose: Trident Seafoods Corporation v Trident Foods Pty Limited [2019] FCAFC 100 at [45]-[46]. Given the settlement by which the parties remain bound, what is here in issue does not depend on whether Ford was an authorised user, although on the evidence it seems that it was.

78. [200]

    It was also pertinent, on Ford’s approach, that in the defence Mr Creak had also admitted that by cl 2.2(a) he undertook that he and his related entities would not engage in any of the conduct the subject of the minutes. On its case that was an admission of a commitment to perform an action, the clause not providing a warranty, which was by way of comparison a statement of the truth of a present fact, so as to give rise to a liability, if not correct.

79. [201]

    Mr Creak’s case was that despite the use of the word “undertakes”, cl 2.2(a) was a bare “warranty” or representation as to a future fact, rather than a contractual promise or obligation, the clause not promising that he would cause his related entities to do or not do anything. To advance this submission reliance was placed on s 17 Implied undertaking as to title etc of the Sale of Goods Act 1923 (NSW), as well as the definition of the word.

80. [202]

    Section 17 deals with conditions and warranties implied, “unless the circumstances of the contract are such as to show a different intention”. The Macquarie Dictionary definition of the word “undertake” is:

81. [203]

    In opening written submissions, it was also submitted that because cl 2.2(a) was ambiguous, it was impossible for Ford to prove that it was reasonable. Because the clause was entirely dependent on cl 10 of the minutes and the orders, to which I will return, which Mr Creak contended was “opaque”, that also followed.

82. [204]

    Further, unless cl 10 was construed to mean that what was prohibited “did not extend to any activity honestly engaged in directed to selling motor vehicles without abuse of Ford’s marks in Australia”, the effect of cl 2.2(a) was uncertain.

83. [205]

    On Mr Creak’s approach it was also relevant that no reasonable person could think that he could control the full class of those who fell into the definition of “Related Entity” in perpetuity. Accordingly, cl 2.2(a) could only be a warranty as to a future fact, its construction approached as discussed in Toll (FGCT) Pty Ltd v Alphapharm Pty Ltd (2004) 219 CLR 165; [2004] HCA 52 at [40].

84. [206]

    In Toll it was observed at [40]:

85. [207]

    So approaching cl 2.2(a), I am satisfied, reading the clause in the context of the deed as a whole and giving it its ordinary and natural meaning, agreed as it was in the circumstances which I have discussed, that a reasonable person would have understood that what was thereby being given by Mr Creak was a simple promise. Namely, that neither he nor his related entities, including Tallevine would engage in the conduct he and Tallevine agreed was to be restrained by the minutes and the orders.

86. [208]

    True it is that so far as Mr Creak was concerned his promise was given in relation to a wide class of entities and conduct. But despite this, I consider that this is what a reasonable person would have understood the parties had intended.

87. [209]

    Fairly read it is not open to conclude that a reasonable person would have understood that by cl 2.2(a) Mr Creak was only accepting the economic risk that in future Tallevine or others which were his related entities, would not do the things which it was agreed would be restrained. Rather, Mr Creak, was promising that they would not do so.

88. [210]

    Neither the definition of the words, nor s 17 of the Sale of Goods Act lead to the construction for which Mr Creak contended. The word must be understood in the context in which it is used. Section 17 is concerned with implied conditions and warranties which are displaced by circumstances showing a different intention. The intention of cl 2.2(a) in my view is clear and not that for which Mr Creak contended.

89. [211]

    It is the words which the parties actually used in the deed, not only in order to settle their dispute and the County Court proceedings which Ford had initiated, but also the other litigation they had foreshadowed, which leads to that conclusion. What was intended by this part of the settlement of that entire dispute, was agreed restraints which would constrain aspects of the future commercial conduct of Mr Creak and his related entities.

90. [212]

    The words used in s 2.2(a) must be understood as part of the deed as a whole, it being structured as it is and the words being considered as they must be in the context of the surrounding circumstances known to the parties, as well as the purpose and object of the settlement. They would thus lead a reasonable person to believe that what was intended was to ensure that Mr Creak would in future neither himself, nor through Tallevine or some other corporate or other vehicle or person, which fell within the definition of related entity, pursue what the restraints precluded, with the specified exceptions provided in cl 10 of the minutes.

91. [213]

    Whether cl 10 of the minutes was ambiguous was also in issue.

92. [214]

    To understand the case he advanced, it is important to bear Mr Creak’s evidence in mind. In his affidavit Mr Creak explained his view that despite the 2015 settlement there “remained a fair degree of confusion around the interpretation” of the Court’s order, “particularly in regard to order 10 and its applicability”. He also said that his view was that the “fundamental bargain” upon which Tallevine had agreed to the deed and orders were representations which he claimed Ford had breached. The deed, however, expressly precluded reliance on such representations: cl 9.

93. [215]

    That explains why the parts of Mr Creak’s affidavit which explained those representations were not read and thus do not arise to be considered. Also not read, but tendered by Ford, was Mr Creak’s affidavit evidence that:

94. [216]

    Consistent with this, Mr Creak also said in his affidavit, that Tallevine took a number of steps in compliance with the orders. In his mind their “central objective” required its compliance to “ensure that the general public and in particular potential customers wishing to buy Ford motor vehicles were not in any doubt” that the dealership was not an authorised Ford dealer and that it was not passing itself off to be one. But still he conceded that it did not take all of the steps ordered and that it also continued to pursue steps which they and the deed precluded.

95. [217]

    Consistent with Mr Creak’s attitude to the deed, that it involved only an “uneasy truce”, after the 2015 settlement, he also considered that Tallevine was entitled to revive its trademark application, to which both Ford and Hino objected and which failed. Its business was eventually sold to Fleet Serv, which also continued pursuing the sale of the counterfeit accessories and “raptorised” Ford vehicles, to which Ford also objected.

96. [218]

    Mr Creak’s evidence helped establish the pursuit of the commercial exploitation of the words and trademarks which the deed and orders dealt with, to the benefit of Tallevine and Fleet Serv, contrary to the restraints by which he was bound. This explains the case he advanced, but does not help establish the claimed ambiguity of cl 10.

97. [219]

    Ford contended that cl 10 of the minutes preserved the good faith use of trademarks permitted by s 122 of the Trade Marks Act, which deals with use of a registered trademark which does not infringe the mark, including when “good faith” use of it is made. That is a term also not there defined. It requires an honest belief that no confusion would arise from reference to the trademark’s reputation and the absence of an intention to take advantage of that reputation: Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406 at [97].

98. [220]

    On Ford’s case cl 10 of the minutes reflecting s 122 as it did, it was not a “gateway” to the other restraints agreed, as Mr Creak contended. Rather, it provided an excuse for good faith use, consistent with ss 120 and 122 of the Trade Marks Act, for what would otherwise involve a breach of the restraints imposed by the other orders and clauses of the minutes to the deed.

99. [221]

    Mr Creak’s case was that cl 10 had been hard fought over and negotiated because it was of crucial importance, but still it was ambiguous. Properly construed it was a “carve out” from the other clauses. On his approach all of the other restraints agreed thus had to be read down in light of that carve out. The consequence of the breadth of the chapeau to cl 10 being that the conduct which the various restraints precluded, on which Ford relied, involved no breach of either the deed or the orders.

100. [222]

     This rested in part on Mr Creak’s case that the term “good faith” was also ambiguous. He submitted that Ford had changed its position as to the meaning of that term some six times on the case it had advanced. But unless the term was construed to mean that the other restraints provided in the orders and minutes did not extend to “any activity honestly engaged in directed to selling motor vehicles without abuse of the plaintiff’s marks in Australia”, cl 2.2(a) of the deed was also uncertain and unreasonable.

101. [223]

     Further, that the chapeau to cl 10 thus entitled Tallevine and later Fleet Serv to sell Ford vehicles which bore the Ford Ranger and Raptor names, including in the case of the Raptor name, in the disputed device which they affixed to Ford vehicles, despite the restraint imposed by cl 8.

102. [224]

     I am satisfied, however, that the clause is not ambiguous and that it cannot be construed in the way for which Mr Creak contended.

103. [225]

     It is pertinent here to refer again to what cll 4 and 10 of the minutes actually provided:

104. [226]

     Clause 8, which dealt with the Raptor signs, was similarly structured.

105. [227]

     One of the problems with reading the clause in the way for which Mr Creak contended is that the agreement which the parties freely reached, having been legally advised as they were, is that such a construction would not accord with either the obvious commercial purpose of the deed, or its express provisions. To the contrary, it is reading the clause in the way Mr Creak suggests which raises the possibility of ambiguity, not the words which the parties actually used, they permitting as they do limited use of the words dealt with in in cll 4 and 8, in good faith.

106. [228]

     That term is not an ambiguous one, given the dispute which the deed settled, which included claimed breaches of the Trade Marks Act. That statutory context must not be overlooked, given the reference which the deed itself makes to that Act.

107. [229]

     It is apparent from the deed itself that what was agreed by cl 10 was not the “uneasy truce” which Mr Creak described. Rather, it was an important part of the final settlement of not only the litigation which Ford had commenced in relation to the disputed use of the words and trademarks with which the deed dealt, but also that which the parties had respectively foreshadowed. Cll 4,8 and 10 thus reflected that the Trade Marks Act permitted good faith use of the marks they dealt with. The deed thus gave practical flesh to this aspect of the statutory scheme, in the parties’ particular circumstances.

108. [230]

     Mr Creak’s construction thus also does not pay necessary regard to what lay in issue on the cases which the parties were respectively advancing in the County Court and the foreshadowed proceedings, which the settlement resolved, which is part of the context of the surrounding circumstances known to the parties. Nor does it take account of the purpose and object of the settlement, which also have to be considered in arriving at a conclusion as to what the words used would lead a reasonable person to believe.

109. [231]

     Accordingly, I am satisfied that it cannot be accepted that any reasonable person would have understood the deed in the way for which Mr Creak contended. The words which the parties used in cl 10 and their ordinary and natural meaning, read in the context of the deed as a whole, simply do not permit the conclusion for which he urged.

110. [232]

     Clause 10 provided that nothing in the orders, prevented Tallevine firstly, from describing its business as "Pennant Hills Auto Traders", described as "Specialising in importing Raptor and F Series vehicles from the United States", provided that the words RAPTOR and F SERIES are in the same size and style of font as the rest of the description. Second, using the words FORD, RANGER and RAPTOR in good faith, to describe the vehicles it offers for sale was also not prevented.

111. [233]

     This recognised Tallevine’s undoubted right to sell used Fords and those it purchased from third party importers. That explains the references in cl 4 to cl 10 when it dealt with the words FORD and RANGER, thus providing an exception to the restraint otherwise agreed in cl 4. Likewise, the references to cl 10 in cl 8.

112. [234]

     The term “in good faith” was not defined in the deed and thus, like any other undefined term, takes its ordinary meaning, understood in the contractual context in which the parties used it. That also does not make the term, nor cl 10 ambiguous.

113. [235]

     The use of that term must be understood in light of cl 2.1 of the deed, which dealt with the consent orders. There the parties also agreed that “nothing in this Deed or the Consent Orders will cause Tallevine to be an authorised user of any of Ford’s trademarks for the purpose of section 26 of the Trade Marks Act 1995 (Cth)”. That the undefined term “good faith” is also used in that legislative scheme, is thus pertinent.

114. [236]

     Clause 4 restrained “advertising, distributing, supplying, offering for sale and selling motor vehicles, motor vehicle parts or accessories or any other goods or services under or by reference to” the listed Ford Signs, “or any sign which is substantially identical to or deceptively similar to any of the Ford Signs”, with the specified exceptions. Clause 8 imposed a similar restraint in relation to the specified Raptor signs.

115. [237]

     Clauses 4 and 8 were thus concerned to restrain the use which Tallevine had been making of those Ford and Raptor signs, which it agreed it would refrain from in future. They were not concerned with it selling Ford manufactured vehicles, which bore the Ford or Raptor names and the Ford badge, which Tallevine was free to do under cl 10. Further, when offering such vehicles for sale it was thus also agreed in cl 10 that Tallevine was permitted to use the words FORD, RANGER and RAPTOR, in good faith, to describe those Ford vehicles, in the manner there agreed.

116. [238]

     It is the use of the term “good faith” in that contractual context, referring as it did to the Trade Marks Act, which arises to be considered. The use of that term in the context of this deed, read as a whole, is thus not opaque. It rather accords with the scheme of the Trade Marks Act, as Ford submitted. It follows that the reference in cl 4(a) and (c) to using the specified words in the way permitted by cl 10, thus indicates that use of those words to describe the vehicles being offered for sale involved a good faith use of those words, as s 122(1)(b)(i) also permitted.

117. [239]

     It is relevant to this conclusion that Tallevine and Mr Creak also agreed in the deed that it would not offer parts or accessories bearing Ford or Raptor signs which were not manufactured with Ford’s authority, or that of its related bodies corporates and that it would not fit vehicles which such parts: cl 7. That also supports the rejection of the approach for which Mr Creak contended.

118. [240]

     It follows that cl 10 does not require “fine judgements” to be made, so as to give rise to ambiguity, as to what is and is not permitted by the deed, as was also submitted for Mr Creak.

119. [241]

     Continuing to “raptorise” Ford vehicles as Tallevine had before the settlement was reached, which it agreed it would refrain from, did not involve the agreed good faith use of the word “Raptor”, which cl 10 permitted. Nor did offering for sale vehicles or parts or accessories which Tallevine manufactured without authority, using the Raptor name.

120. [242]

     By way of contrast, selling a Ford vehicle manufactured by Ford USA as a Raptor, which bore the Ford name and badge as well as the Ranger and Raptor signs affixed on manufacture and describing them as such, as cl 10 permitted, plainly would involve a good faith use.

121. [243]

     Those conclusions all follow naturally from what a reasonable person reading the words used would believe, in the surrounding circumstances I have discussed.

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

1. [244]

   I am also not satisfied that the deed, so construed, involves any unlawful restraint of trade, assessing that as at the time that the deed was entered.

2. [245]

   Mr Creak’s submission that at that time Ford had no interest in Ford F150 trucks, the Raptor brand or “raptorising of Rangers” cannot be accepted on the evidence I have discussed.

3. [246]

   The deed itself evidenced Tallevine and Mr Creak’s then acceptance of its interest. It also evidenced no impermissible confusion between the interests of Ford, Ford USA or other related Ford companies. Rather, it accepted that Ford had legitimate interests to protect by the restraints which were agreed, reflective of its brand reputation in Australia which Mr Creak accepted in his evidence, as provisions of the dealer agreement by which Tallevine remained bound also accepted. They were interests which were also regulated in part by the various statutes and the common law, which were put in issue by the cases which the parties advanced in the County Court and raised by their foreshadowed further litigation.

4. [247]

   All aspects of that wide-ranging dispute were resolved by the settlement, which the parties were entitled to arrive at as they did.

5. [248]

   At common law a restraint of trade is contrary to public policy and void unless justified by the special circumstances of the particular case. But a restraint can be enforced if it is reasonably necessary for the protection of the parties concerned and reasonable in the interests of the public: Buckley v Tutty (1971) 125 CLR 353; [1971] HCA 71 at [376], [379]-[380]; and Belflora at [26] and [44].

6. [249]

   In this case the deed itself evidences that at the time it was agreed, the parties accepted that the restraints were both justified and reasonably necessary to protect Ford’s interests. Settlement of litigation of the kind which Ford had pursued and which the parties had foreshadowed, was also plainly in the interests of the public.

7. [250]

   In this State enforcement of a restraint also requires consideration of s 4(1) of the Restraints of Trade Act. It first requires consideration of whether Mr Creak’s alleged breaches of the deed infringed the terms of the restraint, properly construed, independent of public policy considerations. If any of them did, the Court must then determine whether the restraint, so far as it applies to that breach, is contrary to public policy. If it is not, then the restraint is valid, unless the Court makes any order under s 4(3): Belfora at [44] and Orton v Melman [1981] 1 NSWLR 583 at [587].

8. [251]

   The result is that what must be determined is whether the deed, insofar as it purported to preclude Mr Creak and his associated entities from pursuing the conduct which it restrained, is void as an unreasonable restraint of trade, assuming that the doctrine applies: Belfora at [44]. In resolving this the fundamental principle that “a restraint of trade is not contrary to public policy if it is reasonable as between the parties, and not unreasonable in the public interest, so that while affording adequate protection to the party in whose favour it is imposed, it is not injurious to the public”, must be born in mind: Belfora at [45].

9. [252]

   Ford’s case was that s 4(3) of the Restraints of Trade Act clearly contemplates an application to the Court for an order. None having been sought by Mr Creak, that was the end of the matter. That approach should not be accepted. While Mr Creak sought no order under s 4(3), what was in issue turns on the requirements of s 4(1).

10. [253]

    But on the evidence I cannot see that any of the restraints agreed by the deed were injurious to the public, let alone that as between these parties they were unreasonable. Nor does the evidence establish that the protection which they afforded Ford was more than adequate, given the parties’ respective rights and interests and the settlement of the litigation on foot and foreshadowed, which the deed and orders achieved.

11. [254]

    I am also satisfied that while the onus of establishing that the restraints were reasonable fell on Ford, that the deed was contrary to public policy was for Mr Creak to establish.

12. [255]

    In 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 whether the onus of proof under s 4(1) changed the onus of unreasonableness at common law was considered, although the section had not been referred to at first instance or in written submissions on appeal. Supplementary submissions were there provided by leave.

13. [256]

    Reference was there made to earlier decisions of Palmer J, Young JA, Hammerschlag and Black J, who had considered this question. In Idameneo (No 123) Pty Ltd v Dr Teresa Angel-Honnibal [2002] NSWSC 1214 Palmer J considered that there was no reason to be found in s 4(1) for any departure from the onus of proof arising at common law in relation to restraints. Namely, “that the onus of establishing that the restraint is reasonable as between the parties lies on the person seeking to enforce the restraint, while the onus of establishing that the restraint is contrary to the public interest lies on the person seeking to invalidate the restraint”: at [45] citing Herbert Morris Ltd v Saxelby [1916] 1 AC 688.

14. [257]

    Palmer J’s reasoning was considered in Isaac to have much attraction, but it was not considered necessary to determine this question for the disposition of that appeal: at [78]. I, also, accept the force of his Honour’s reasoning. In the result, it is for Ford, relying as it does on the reasonableness of the restraints, over which the parties joined issue, to establish that they were reasonable, which it did.

15. [258]

    But Mr Creak did not establish that what had been agreed was contrary to the public interest.

16. [259]

    The evidence establishes that what was agreed was reasonably necessary in the circumstances, as well as reasonable in the interests of the public, given the actual and foreshadowed litigation which it resolved.

17. [260]

    Contrary to Mr Creak’s case, even though there were continuing obligations under the dealer agreement which Ford could enforce, as well as its common law and statutory rights, the restraints agreed were necessary, given Tallevine’s continuing breaches of that agreement and Ford’s other accepted rights, which had necessitated its pursuit of the County Court proceedings.

18. [261]

    Mr Creak relied on what the Chief Justice discussed in Belfora in the context of a restraint directed to preserving or maintaining a personal or corporate relationship with a supplier, which may be reasonable in the interests of the parties: at [29]. In that context his Honour discussed the absence of evidence of any particular relationship with a supplier which might have permitted protection from importation from a subcontinent, considering such protection from competition went well beyond any legitimate interest it would be entitled to protect: at [30]. His Honour also observed at [31]:

19. [262]

    This is an entirely different case, however, concerned as it is not with mutual restraints freely agreed in an ongoing commercial relationship, but with the settlement of litigation about all of the matters over which the parties had joined issue in the County Court and had further foreshadowed. It involved the agreed cessation of conduct pursued by one party, after the parties’ relationship came to an end, conduct implicitly accepted to have been in breach of the various existing rights which the other was pursuing in the litigation.

20. [263]

    It is in that context that the submission that the deed having been negotiated and agreed by Tallevine cannot be given any weight, may not be accepted. That is supported by Brereton J’s observation in Belflora at [52] that “courts have not been favourably disposed to permitting a trader, who has voluntarily entered into a restrictive arrangement with other traders, to escape from the obligation by pleading that it has imposed an unreasonable burden on itself, [17] adopting the view that the parties themselves are the best judges of what is reasonable in their own interest.”

21. [264]

    That observation has particular resonance in this case, contrary to Mr Creak’s submission, given that the restraints which arise to be considered were agreed by commercial parties, including the mind which controlled Tallevine, in the settlement of litigation over breach of their respective claimed contractual, common law and statutory rights.

22. [265]

    Mr Creak’s case in opening written submissions was that reasonableness did not emerge from the evidence Ford had led, the question being whether the restraints were reasonably necessary to protect Ford’s interest as they existed at the time they were agreed and the only purpose of the restraints then being to prevent the sale in Australia of Mr Creak’s “raptorised” Ford Rangers, in which Ford had no interest. On his case at that time Ford had no interest in Ford F150 trucks, the Raptor brand or the “raptorising” of Ford Rangers. If anyone had an interest, it could only have been Ford USA or Ford Canada, which neither imported nor sold vehicles here.

23. [266]

    As was later conceded, however, the evidence established that Ford did have a legitimate interest in Tallevine’s sale of the parts, accessories and Ford vehicles it was “raptorising”, the protection of the Ford brand and goodwill it had in the Australian market. Its legitimate interests were wider than he acknowledged, including the Ford, Ranger and Raptor marks which both the dealership agreement and the deed dealt with. That was why Mr Creak and Tallevine agreed as they did by the deed to stop “raptorising” vehicles and producing unauthorised accessories and brands using the Raptor name, deceptively styled as it was.

24. [267]

    On the evidence in so arriving at that agreement there was no impermissible confusion between Ford’s interests and those of its related companies.

25. [268]

    In closing submissions, it was also argued for Mr Creak in respect of s 4(1) of the Restraints of Trade Act, that where the legitimate interests in question are interests enforceable at general law, there will generally never be any necessity for a contractual restraint. Thus while it was accepted that Ford had a legitimate interest in its brand reputation, the Ford badge and in preventing anyone passing off their business as Ford’s business or being a business which it authorised, in respect of which it had rights of action in passing off and under consumer law, the result was argued to be that it did not need a contractual restraint to protect its badge from being misused by passing off. In the result, any settlement of proceedings brought to enforce those rights which included restraints of the kind agreed in the deed, would be unenforceable.

26. [269]

    This submission can also not be accepted. Rather, it points to the conclusion that the restraint doctrine also does not apply to the deed by which Ford and Mr Creak settled the County Court proceedings.

27. [270]

    The evidence explained the course which Ford had pursued before the County Court proceedings were brought and settled in mediation. That well-established Ford’s continued opposition to what Tallevine and later Fleet Serv did, finally despite the terms of the deed and the orders.

28. [271]

    Contrary to Mr Creak’s initially pleaded case, what it so did was consistent with Ford seeking to arrive at a settlement which was not unlawful in restraint of trade, given its legitimate interests. Given the terms of the deed, reflected as they were in the orders to which Tallevine consented, the deed accepted that the interests which Ford had sought to protect by bringing the proceedings were legitimate ones.

29. [272]

    This began in 2013 while Tallevine was still an authorised dealer, when Ford suggested that Mr Creak seek legal advice about Tallevine’s use of the Raptor mark, advising that an alternative name should be used. After the dealership was terminated, Ford demanded in July 2014 that Tallevine cease suggesting that it was an authorised Ford dealer and cease using the Ford marks, including the Raptor mark, deceptively styled as it was.

30. [273]

    Tallevine took advice and then its solicitor advised Ford that steps were being taken to remove Raptor banners from the dealership and the use of Raptor on its website, but it did not cease producing and selling “raptorised” accessories, parts and vehicles.

31. [274]

    That the restraints finally agreed in 2015 were reasonably necessary in the circumstances to protect Ford’s legitimate interests was established they being, in summary, to restrain:

32. [275]

    The evidence established the restraints so agreed were reasonable, given not only Ford’s accepted legitimate interests, but also what it was agreed would not be affected by those restraints. Namely, Tallevine’s right to continue selling Ford vehicles and describing them as such, including Ford Raptors and Rangers, as cl 10 of the minutes permitted. The practical position on the evidence was that because it was no longer an authorised dealer, Tallevine could not sell new Fords. But cl 10 recognised that it could sell used Fords, as well as Ford vehicles which Ford did not import, but which were available to it to purchase from third party importers. Thus, it acknowledged Tallevine’s right, when advertising Ford vehicles it was entitled to offer for sale, to use the words FORD, RANGER and RAPTOR to describe those vehicles, in the ways specified.

33. [276]

    But as I have explained cl 10 did not to permit Tallevine to continue “raptorising” Ford vehicles, accessories and parts, that being precluded by the other agreed restraints which recognised that Ford was legitimately entitled to protect its interests in respect of what Tallevine was not entitled so to do.

34. [277]

    Also I have explained, while “good faith” was not defined, given all that was agreed by these parties in the deed, Tallevine using the specified words when it offered for sale Ford vehicles which it had itself “raptorised”, was not a good faith use of those words, nor permitted by cl 10. Rather, that involved a breach of the agreed restraints.

35. [278]

    It follows that those restraints were reasonable, given Ford’s legitimate interests, which the deed accepted and protected in the ways the parties had agreed.

36. [279]

    Even if it were accepted that the class of those who fell within the definition of “Related Entity” was impermissibly wide, because Mr Creak could not conceivably control all those who fell within the class, the result would not be the conclusion that the restraints agreed were unreasonable and thus entirely unlawful. Rather, aspects of the definition would have to be read down, in order to confine the definition to those who he could control.

37. [280]

    That, however, would not lead to the result that what had been agreed in respect of Tallevine and Fleet Serv, of whom Mr Creak was sole director and shareholder and thus did control, being read down as involving any unreasonable or unlawful restraint. Restraining Mr Creak and such companies from breaching Ford’s contractual, common law and statutory rights in the ways agreed, involved no unreasonable restraint.

38. [281]

    It follows that if I were wrong in my conclusion that the restraints agreed were not unreasonable, given the breadth of those to whom they applied in Mr Creak’s case, while the definition would have to be read down, it would not be read down so as to exclude either Tallevine or Fleet Serv.

39. [282]

    In the result, it would still be concluded that the restraints were not unreasonable.

40. [283]

    The restraints were also not contrary to the public interest.

41. [284]

    That if the deed had not been entered Ford would still have had rights to protect its interests which it could have exercised, does not lead to the conclusion that what was agreed in settlement of the County Court and foreshadowed proceedings was unlawful. What was so resolved was certainly not contrary to public policy, bringing to an end as the settlement did not only that litigation, but thereby removing the need for further litigation about the same issues in future.

42. [285]

    To advance his case Mr Creak also relied on Henry Leetham & Sons Ltd v Johnstone-White [1907] 1 Ch 322, considered in Stenhouse Australia Ltd v Phillips [1973] 2 NSWLR 691. In Henry Leetham what had to be considered was a restraint agreed in an employment contract which extended beyond the business of a subsidiary, to that of the whole group, in which each company had its own trading area, conducting its own business. It was followed in Koops Martin v Dean Reeves [2006] NSWSC 449, Brereton J there considering a restraint imposed on a financial adviser in respect of members of a group of companies.

43. [286]

    I consider that these authorities do not lead to the conclusion urged, the circumstances which here arise not being analogous, concerned as they are with the settlement of the litigation in the County Court, as well as that foreshadowed, in the circumstances I have discussed.

44. [287]

    McGuigan Investments Pty Ltd v Dalwood Vineyards Pty Ltd [1970] 1 NSWR 686 was also relied on. It was concerned with the sale of a winery, which restricted use of the word Dalwood in circumstances where the vendor did not sell wine under that label. It was concluded that those restraints could not be justified. Those circumstances are thus also not analogous, given the terms of the dealership agreement, Tallevine’s disputed right to use the marks in issue as it did and how by their settlement of the ongoing and foreshadowed litigation the parties agreed in future to conduct themselves in specified ways, by the agreed restraints, in relation to the dispute which the deed resolved.

45. [288]

    It is relevant that what was so settled was both the actual litigation which Ford was pursuing over the gap in the market which Mr Creak perceived, his right and that of Tallevine to do so there being in issue, as well as the other litigation which the parties had each also foreshadowed. The deed thus dealt with how these commercial parties would each conduct themselves in future in relation to a range of matters, which rested on their respective rights to use the marks in issue, as well as the terms of the dealer’s agreement.

46. [289]

    Accordingly, there were positive steps Ford and Tallevine agreed they would each take, as well as restraints accepted by Tallevine and Mr Creak, in his case also in respect of his related entities’ future use of those marks. It should also not be overlooked that what was so agreed included Ford making a payment of $100,000 to Tallevine in the event that an agreement with a third party in relation to operating a Ford dealership out of Tallevine’s business premises, was not entered.

47. [290]

    In the result I accept that the authorities Mr Creak relied on cannot sensibly be applied in this commercial context. Contrary to his case, the evidence does establish that Ford’s interests were affected by the conduct from which Tallevine and Mr Creak refused to desist until the settlement was arrived at. The deed itself evidenced that interest. What was so agreed to settle the resulting and foreshadowed litigation, was accordingly not contrary to the public interest.

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

1. [291]

   As I have explained it is the practical working of the restraints imposed by the deed and their reasonableness, given how they worked at the time that the deed was entered, which must be assessed when breach arises to be considered. While the restraint doctrine does not apply to the orders which bound Tallevine, still consideration must be given to their alleged breach given the terms of the restraints by which Mr Creak was bound by the deed.

2. [292]

   It is relevant that orders 1, 4, 5, 6, 7 11 and 12 were immediately to be complied with by Tallevine and orders 2, 3, 8 and 9 by 17 September 2016, Tallevine thereby having been given an agreed period before it had to comply with some of what it was agreed it would and would not do.

3. [293]

   While Ford accepted that Mr Creak did not undertake by cl 2.2(a) to ensure that Tallevine complied with the positive steps it was obliged to take, on Ford’s approach its failure to do so evidenced his breach of the restraints which bound him. Thus, for example, Tallevine’s failure to transfer domain names by specified dates involved a breach of cl 2.2(a) because order 4, by which he was similarly bound given cl 4 of the minutes, also restrained such use of those names.

4. [294]

   On the evidence I will discuss I am satisfied that this must be accepted. As must Ford’s case that the use Fleet Serv later made of the various names in issue also evidenced Mr Creak’s breach of cl 2.2(a) of the deed.

5. [295]

   Ford monitored Tallevine’s compliance with the orders and identified what it considered to have been breaches from November 2015. By that time Tallevine had failed to transfer domain names as required by the orders and statements were still made on its website about it having an ongoing connection with Ford and its continued sale of “raptorised” Fords, contrary to the orders. Fleet Serv later also made such claims, despite the restraints by which Mr Creak was bound.

6. [296]

   Ford pursued these and other breaches of the orders and the deed, its lawyers demanding compliance and threatening Tallevine with contempt proceedings. They were commenced in March 2017, with the result that some steps were then taken by Tallevine, which Ford did not accept remedied all its breaches or those of Mr Creak, nor resulted in proper compliance with the orders or the deed.

7. [297]

   Accordingly, in these proceedings Ford pleaded various breaches of the restraints by which Mr Creak was bound. Many of the relevant facts were admitted or agreed. Some were disputed, but the evidence well established that even after the business was sold to Fleet Serv, Mr Creak still did not ensure that he complied with the restraints, as he had undertaken he would.

8. [298]

   Thereby Mr Creak’s breach of his obligations under cl 2.2(a) of the deed was also established. In summary:

   1. (1)

      This order required Tallevine to immediately “do all things necessary to transfer to the plaintiff the internet domain names www.phford.com.au, www.pennanthillsford.com.au, www.fordrangerraptor.com.au and any other internet domain name registered in its name or that of any related entity that contains any of the words FORD or RANGER”.

   2. (2)

      The defence denied this breach, pleading that Tallevine had taken “all reasonable steps to comply with the order”, its IT provider Printwell Pty Ltd having been instructed in July 2015 to transfer the names and later, when it discovered that they had not been transferred, requesting the IT provider to “facilitate such transfer”.

   3. (3)

      It was an agreed fact, nevertheless, that the names were not transferred to Ford until April 2017 Tallevine and Mr Creak not instructing 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: agreed facts [24]. Further, that the domain names were not transferred to Ford until 11 December 2017: agreed facts [25].

   4. (4)

      Ms Freeman’s evidence also established that searches undertaken of the AUSRegistry website in August 2016 had revealed that these names were still registered in Tallevine’s name and that the process specified for transfer of their registration to Ford had not been undertaken. Further searches in January and March 2017 showed that they had been transferred to Printwell.

   5. (5)

      Aspects of Mr Creak’s affidavit which dealt with compliance with the Court’s orders were not relied on. What was read included that in September 2017 he had made a Google search for the phrase “ford raptor” which resulted in an Australian website which indicated that Ford intended to “market its own version of a Ford Ranger Raptor”. The evidence did not suggest or establish that Ford had no right to do so. That could not have involved any breach of the deed on Ford’s part, or relieved Tallevine of the obligation to comply with this order.

   6. (6)

      Accordingly, this breach of the order was established. Order 5 and clause 5 of the minutes also immediately restrained Tallevine from carrying on any business under or by reference to any of the Ford Signs or any substantially identical to or deceptively similar sign. It follows that Tallevine’s breach of order 1 (d) also established Mr Creak’s breach of this restraint.

   7. (7)

      This order required Tallevine, by 17 September 2016, to “do all things necessary to transfer to the plaintiff the internet domain name raptor4x4.com.au and any other internet domain name registered in its name or that of any related entity that contains the word RAPTOR”.

   8. (8)

      The alleged breaches were either not admitted or denied in the defence. But on the facts agreed the names “raptor4x4.com.au", "rangerraptor.com.au" and "raptorsvt.com.au" were not transferred to Ford until April 2017. Further, that on or about 28 June 2017, Mr Creak procured the registration of the domain name raptor4wd.com in the name of Gavin Cox, who was at all material times an employee of AdTorque Edge, which was also an IT service provider of both Tallevine and Fleet Serv: agreed facts [26]-[28].

   9. (9)

      It was also agreed that Fleet Serv carried on the business using the domain name and website "www.raptor4wd.com" from about 30 June 2017, to no earlier than 11 May 2019: agreed facts [21]. This was also evidenced by Ms Freeman’s evidence, which was supported by that of Ms Ilardo.

   10. (10)

       The evidence also established the ongoing use made by both Tallevine and Fleet Serv of the Raptor name, as well as statements made by Fleet Serv about how the Ford Rangers and F series trucks it had “raptorised” could be serviced throughout Ford’s dealer network; and how Ford then pursued its view that Mr Creak was in breach of his obligations under the deed, which he did not accept, not even responding to its correspondence about Ford’s objections.

   11. (11)

       Order 8 and cl 8 of the minutes also restrained advertising, distributing, supplying, offering for sale and selling motor vehicles, motor vehicle parts or accessories or any other goods or services under or by reference to the Ford Raptor Signs or any substantially identical or deceptively similar sign.

   12. (12)

       It follows that Tallevine’s breach of this order was established, as well as Mr Creak’s breach of the restraints which bound hm.

   13. (13)

       This order required Tallevine immediately to amend the content of its website raptor4x4.com.au to:

   14. (14)

       Order 12 restrained Tallevine from “publishing any of the following statements or statements to the same or similar effect:

   15. (15)

       Some of the alleged breaches of this order were denied and some admitted. But on the agreed facts there was no issue that until 30 June 2017 the www.raptor 4x4.com.au site contained the statements pleaded at paragraph 24 of in the statement of claim: [43] agreed facts. Those admitted statements unarguably breached order 1(e), being:

   16. (16)

       This established Tallevine’s breach of order 1(e), as well as the restraints discussed, which bound Mr Creak.

   17. (17)

       This order required Tallevine by 17 September 2016, to amend the domain name and content of its website raptor4x4.com.au to remove all RAPTOR words and devices, subject to what cl 10 permitted.

   18. (18)

       The statement of claim pleaded that it had not amended the name or content of the site and inconsistently with order 10, continued to use the word Raptor in specified ways. That the name and content of the site had not been amended was admitted, but that the continued use of the Raptor name breached this order was denied.

   19. (19)

       It was an agreed fact, however, that to 30 June 2017, the domain name "raptor.4x4.com.au" contained the word "RAPTOR" and the website "www.raptor.4x4.com.au" contained the word "RAPTOR" in the URL. Further, that the statement "Raptor is the special vehicle division of Pennant Hill Auto Traders and the name "Pennant Hills Raptor" and a logo which incorporated the word "Raptor" were used: [39]-[41] agreed facts.

   20. (20)

       As I have already explained, that did not involve the use of the Raptor name in the way which order 10 permitted and thus established the breach of this order and Mr Creak’s breach, given what the restraints required of him.

   21. (21)

       Order 4 has already been discussed. It restrained Tallevine’s use of the Ford signs, namely the word Ford, subject to the uses permitted by order 10 and the Ford badge, which was not permitted. Order 5 restrained it from carrying on business under or by reference to the Ford Signs or any sign substantially identical to or deceptively similar to any of the Ford Signs.

   22. (22)

       The statement of claim pleaded that to 30 June 2017 Tallevine was offering or selling parts, accessories and vehicles by or under the word Ford, including by a drop box which provided website links to vehicles and brochures created by Ford and images of new Fords available for sale. This was denied, the defence pleading that the use made of the word Ford was to describe vehicles it was then selling.

   23. (23)

       On the evidence, after the deed was entered Tallevine was not selling new Fords. It was an agreed fact that until 30 June 2017 by its website Tallevine offered for sale or sold motor vehicles under or by reference to the word FORD, using brochures created by Ford: [33] agreed facts. It also 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: agreed fact [35].

   24. (24)

       The statement of claim also pleaded that until at least 9 January 2017 Tallevine continued using the Ford badge to advertise its fleet and government sales offerings. The defence admitted use of the badge on its website. The agreed facts also admitted use of the Ford badge to advertise “Fleet and Government Sales” on the www.phauto.com.au website: agreed fact [34].

   25. (25)

       Other breaches were dealt with in correspondence. Some were admitted, for example, in a letter of 10 June 2020, although it was then contended that the deed was an unlawful restraint of trade and unenforceable. There was a question as to when photographs relied on were taken, but on the evidence I am satisfied that what was then being pursued and dealt with by the parties was use of the word Ford and the Ford badge after the deed was executed to suggest an ongoing connection with Ford, which was not permitted by the deed.

   26. (26)

       There was also evidence that after 20 June 2020, Fleet Serv also advertised vehicles, parts and other goods and services by or under the word Ford and the badge, including by use of the words “Ford Service & Parts” and “Ford Service Centre”.

   27. (27)

       Accordingly, the evidence established both the breach of this order and Mr Creak’s breaches of the restraints by which he was bound.

   28. (28)

       This order has also already been discussed. It restrained Tallevine’s use of the specified Ford Raptor signs, namely, the word RAPTOR the use of which was subject to order 10 and the Raptor device, which was not. It was order 10(b) which permitted Tallevine’s good faith use of the words FORD, RANGER and RAPTOR to describe vehicles that it offered for sale.

   29. (29)

       The statement of claim pleaded that Tallevine had not only used the word Raptor when offering vehicles for sale on identified websites, but also the Raptor device which was substantially identical to or deceptively similar to the Ford Raptor device.

   30. (30)

       Use of the Raptor name was admitted in the defence, but its use and that of the Ford Raptor device were claimed to have been permitted. Ford’s claim was otherwise denied.

   31. (31)

       It was an agreed fact, however, that to 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 the motor vehicles particularised in paragraph [37] of the statement of claim: agreed facts [35].

   32. (32)

       It was also agreed that after about 30 June 2017, Fleet Serv continued to advertise, offer for sale and/or sell motor vehicles with such grilles, including the motor vehicles particularised in paragraph [52] of the statement of claim: agreed facts [37].

   33. (33)

       The evidence thus also established both Tallevine’s breach of order 8 and Mr Creak’s breach of the restraints by which he was bound.

   34. (34)

       This order restrained Tallevine from applying to register any business name, company name, domain name or trade mark containing the Ford Signs or Ford Raptor Signs or any sign substantially identical to or deceptively similar to those signs, including the name PENNANT HILLS FORD and PENNANT HILLS RAPTOR, or authorising or procuring or inducing any person to do so.

   35. (35)

       I have already discussed the trademark application made the day before the deed was executed, which Tallevine then allowed to lapse but later unsuccessfully sought to revive, which was also dealt with in the agreed facts at [29]-[32].

   36. (36)

       The statement of claim pleaded that the failed attempt to revive the lapsed application, despite Ford’s demands that it be withdrawn breached order 6. That was denied in the defence, which pleaded that the order did not compel Tallevine to withdraw the application, which predated the deed.

   37. (37)

       On Ford’s case the making of the application during the negotiations, very shortly before the deed was executed, was in bad faith, but it accepted that the deed did not expressly require its withdrawal. On its case despite this, the order properly construed, this order required that no further steps be taken to pursue it.

   38. (38)

       I do not accept that submission. Had Ford been aware of the application, the deed would no doubt have dealt with this. But it was not and so order 6 simply does not deal with the application which had already been made. What was otherwise agreed by the deed, however, would clearly have made pursuit of the claim difficult, as eventually proved to be the case.

   39. (39)

       This order also, however, restrained applications for registration of specified domain names. It was agreed that in 2017 Mr Creak procured the registration of the domain name raptor4wd.com in the name of Gavin Cox: agreed fact [26]. Fleet Serv also obtained and used that and other names which Tallevine should have transferred to Ford.

   40. (40)

       Accordingly, the evidence does establish both Mr Creak’s breach of the restraint by which he was bound.

   41. (41)

       This order restrained Tallevine from advertising, distributing, supplying, offering for sale or selling motor vehicles fitted with any motor vehicle parts or accessories bearing any of the Ford Signs or Ford Raptor Signs that are not manufactured by or with the authority of Ford or its related bodies corporate.

   42. (42)

       The statement of claim particularised at [37] the various ways in which this order had been breached by what was offered for sale at Tallevine’s principal place of business and by websites such as www.gumtree.com.au and www.tradeuniquecars.com.au, as well as www.raptor4x4.com.au, vehicles which were fitted with grilles which Ford and its related companies had not authorised.

   43. (43)

       The defence admitted the sale of second hand Ford vehicles bearing such signs but pleaded that order 7 did not prevent Tallevine from so using the words Ford, Ranger and Raptor. That, however, cannot be accepted, given what orders 4, 7, 8 and 10, which I have already discussed provided.

   44. (44)

       The statement of claim also dealt with Fleet Serv continuing to offer such vehicles for sale, which was also admitted and established on the evidence.

   45. (45)

       The breach of this order and Mr Creak’s breach of restraints by which he was bound are thus also established.

   46. (46)

       This order restrained Tallevine from carrying on business under or by reference to Ford Raptor signs or any sign substantially identical to or deceptively similar to those Signs, including the names RAPTOR 4X4 and PENNANT HILLS RAPTOR, or authorising or procuring or inducing any person to do so.

   47. (47)

       The statement of claim pleaded that until 30 June 2017 it continued to carry on business by reference to the business names “Raptor SVT” and “Raptor 4x4”. This was denied, but it was an agreed fact that it owned those business names: agreed fact [17].

   48. (48)

       I have also already discussed the ongoing use made of the internet domain names in issue, including “raptor4x4.com.au” which, it must be accepted, used the business name.

   49. (49)

       The evidence thus also established Tallevine’s breach of order 9, as well as Mr Creak’s breach of the restraints which bound him.

   50. (50)

       This order restrained, in summary, Tallevine from making any representations about a connection by way of trade between it, Ford and any of its related companies; that its business was sponsored, approved by, or affiliated with them; that its goods or services were those of Ford or any of its related companies or are approved or endorsed by them, including, by advertising Ford branded vehicles as "new" motor vehicles, when the vehicle had previously been registered; offering finance services under the name “my Ford Finance”; using or displaying photographs of the premises when it was an authorised Ford dealership in any manner in connection with the supply and service of motor vehicles or describing itself as a "Ford car dealer".

   51. (51)

       The statement of claim pleaded that until June 2017 Tallevine made various representations on websites that it had a franchise showroom; F series trucks could be ordered direct from the factory in the US for customisation or conversion; that it could receive Australian delivered vehicles from the dealer network; it offered Ford trained master technicians; it had a Raptor special vehicle division; and it used Ford Raptor signs in a logo.

   52. (52)

       Some of these allegations were admitted and others were denied, but on Ford’s case the clear impression conveyed by the website was of a connection between it and Tallevine which it was restrained from conveying.

   53. (53)

       Given what was admitted and the various agreed facts I have already discussed, that must be accepted. The evidence also establishes that Fleet Serv also later similarly conveyed such an impression.

   54. (54)

       Tallevine’s breach of this order as well as Mr Creak’s breach of the restraints by which he was bound is also thereby established.

9. [299]

   Mr Creak was the controlling mind of both Tallevine and Fleet Serve. By cl 2.2(a) of the deed he undertook that they would not engage in any of the restrained conduct. Tallevine was also itself bound by the deed, as well as by the orders which imposed upon it both positive obligations and restraints.

10. [300]

    While he had not undertaken to ensure its compliance with Tallevine’s positive obligations, it was only Mr Creak who could ensure that they and the restraints were met. As I have explained, they were not.

11. [301]

    On the evidence I am thus well satisfied that Mr Creak breached his obligations under cl 2.2(a) in respect of restraints which he undertook both Tallevine and Fleet Serv would observe.

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

1. [302]

   In NSW, as Brereton J observed in Koops at [27], a restraint is not prima facie void, but valid to the extent to which it is not against public policy, even if not in severable terms. On his Honour’s approach it is relevant that what arises here to be considered are not covenants in restraint of trade between an employer and employee, in respect of which a stricter and less favourable view is taken than of restraints in commercial agreements: at [28].

2. [303]

   On the evidence I have discussed I am satisfied that the restraints which Mr Creak breached were not contrary to public policy, reasonable as they were as between these commercial parties and the settlement being in the public interest as it was.

3. [304]

   The question of breach of public policy in respect of the particular restraints breached, also arises to be considered in light of the settlement of the litigation on foot and foreshadowed, as well as protection of Ford’s accepted rights in the future. That is, restraints intended to prevent Mr Creak pursuing the conduct Tallevine had agreed would cease, through it or some other entity or person he controlled. That the effect of what was so agreed thus had, or should have had an impact on Fleet Serv, which ought as a result of Mr Creak’s observance of the restraints not to have infringed Ford’s rights, leads to no different conclusion.

4. [305]

   The restraints which were breached all have to be assessed in the context of the dispute which had been ongoing between Ford, Mr Creak and Tallevine since 2012 about his view that Tallevine was entitled to pursue the gap he perceived in the market, by “raptorising” parts, accessories and Ford vehicles as it did without Ford’s consent and despite its continuing objections.

5. [306]

   Given the terms of the dealership agreement, its termination and later, the obligations and restraints which the parties agreed in settlement not only of the County Court proceedings, but the other proceedings which they had foreshadowed, none of the restraints which Mr Creak breached were contrary to public policy. They each accepted Ford’s undoubted interest in its brand and the Ford and Raptor names and marks, which neither Tallevine nor Fleet Serv had the right to use as they did, including by suggesting an ongoing relationship with Ford which did not exist.

6. [307]

   As I have explained, there is a real public interest in such actual and foreshadowed litigation being resolved on terms which such commercial parties agree as to how they will conduct themselves in future, as well as in the parties adhering to such agreements. The restraints Mr Creak breached had necessary regard to Ford’s legitimate interests and did not impose more than was reasonable, in order to protect them, given Tallevine and Mr Creak’s rights interests and those of entities associated with him. Mr Creak’s own evidence supports that conclusion.

7. [308]

   That if the 2015 settlement had not been arrived at, Ford could still have pursued the rights which it considered that it had against Fleet Serv, leads to no different conclusion despite what was submitted for Mr Creak.

8. [309]

   To the contrary, it was entirely desirable for Mr Creak to join in the settlement of the dispute on the terms which the parties agreed with the assistance of their lawyers, to bring all that litigation to an end as they did and then to abide by each of the restraints by which he was bound, to preclude the necessity for such further litigation. The parties being bound to adhere to what they had so agreed was also consistent with public policy.

9. [310]

   As I have explained cl 10 of the minutes recognised Tallevine’s ongoing right, as well as those of an entity such as Fleet Serv or Mr Creak himself, to sell used Fords and Ford vehicles which they purchased from third party importers and to describe such vehicles in the ways there agreed.

10. [311]

    That is relevant because it achieved a reasonable balancing of the parties’ respective rights and interests. Tallevine and Mr Creak were not authorised Ford dealers entitled to sell new Ford vehicles to the public and Ford was not prepared to enter into another such dealership with entities with which Mr Creak was associated, the evidence well establishing why it had that attitude. But the restraints recognised the Ford vehicles they could sell, as well as the good faith use which they could then make of the Ford and Raptor signs.

11. [312]

    It follows that the evidence does not establish that any of the restraints breached were contrary to public policy.

Relief

1. [313]

   The orders finally pressed were:

2. [314]

   Ford seeks an order for damages for the loss it claims it suffered as the result of Mr Creak’s breaches of the deed, $362,500 unrecovered costs of bringing the contempt proceedings, including its defence of Tallevine’s cross-claim. That is calculated by reference to total claimed costs of $512,500, less $150,000 recovered as the result of orders made by Fagan J: Ford [2021] NSWSC 1192.

3. [315]

   I am satisfied that Mr Creak’s case that such costs cannot be recovered as damages in these proceedings, even if Tallevine’s breach of the orders which bound it was established, because the contempt proceedings will never be heard or determined on their merits and the damages sought to be recovered were too remote, cannot be accepted.

4. [316]

   True it is that Ford’s application to join Mr Creak as a party to the proceedings failed: Ford [2019] NSWSC 1914. But understandably the two matters were to be heard together and so he was served with the motion by which Ford sought to recover the costs it had incurred in defending the cross-claim from Tallevine.

5. [317]

   It was Mr Creak’s case that he did not appear because he had no interest in that claim. Given that those costs were sought to be recovered from him as damages in these proceedings, that is not apparent.

6. [318]

   The costs Ford incurred in the contempt proceedings were sought to be recovered in these proceedings, they being the obvious result of both Tallevine’s breach of the orders which bound it and Mr Creak’s breach of cl 2.2(a) of the deed. That the contempt could not be pursued because Tallevine went into liquidation after security for costs orders were made against it and its business was sold to Fleet Serv, does not alter this.

7. [319]

   Mr Creak also argued that Ford could not establish that bringing and prosecuting the contempt charges and these proceedings was the inevitable result of non-compliance of the deed by Mr Creak and Fleet Serv.

8. [320]

   That the business was sold to Fleet Serv, also a related entity of Mr Creak did not have to be disclosed to Ford. It was what Mr Creak then did in further breach of the agreed restraints, contrary to cl 2.2(a) of the deed, after what Tallevine had already done in breach of the orders, which also involved breaches of cl 2.2(a), was inevitably pursued after it came to light, given what the parties had there agreed in relation to Mr Creak’s realted entities.

9. [321]

   On the evidence it follows that this is one of those cases where it must be accepted that when they settled their dispute in 2015 the parties did contemplate, “according to a reasonable business view of the reasonably probable course of business”, that the inevitable or highly probable result of Tallevine and Mr Creak breaching the orders and restraints by which they agreed to be bound, would be the pursuit of proceedings to enforce the orders against Tallevine and the deed against Mr Creak.

10. [322]

    Further, that Ford would thereby be damaged, it necessarily incurring costs in such proceedings, which they would lose: Hadley v Baxendale (Court of Exchequer (UK), 23 February 1854, unrep) discussed in Hammond & Co v Bussey (1887) 20 QBD 79 at [93] and applied in Provident Capital Ltd v Papa (No 2) [2013] NSWCA 156 at [13]-[14].

11. [323]

    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?

12. [324]

    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.

13. [325]

    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.

14. [326]

    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.

15. [327]

    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].

16. [328]

    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.

17. [329]

    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.

18. [330]

    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.

19. [331]

    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).

20. [332]

    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].

21. [333]

    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.

22. [334]

    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.

23. [335]

    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.

24. [336]

    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.

25. [337]

    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.

26. [338]

    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].

27. [339]

    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.

28. [340]

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

29. [341]

    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.

30. [342]

    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.

31. [343]

    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.

32. [344]

    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.

33. [345]

    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.

34. [346]

    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.

35. [347]

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

36. [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.

37. [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.

38. [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.

39. [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:

40. [352]

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

41. [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.

42. [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.

43. [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.

44. [356]

    Clause 4.1 provided:

45. [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.

46. [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.

47. [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.

48. [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.

49. [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.

50. [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.

51. [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.

52. [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.

53. [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.

54. [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.

55. [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.

56. [368]

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

57. [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.

58. [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

59. [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.

60. [372]

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

61. [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.

62. [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.

63. [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.

64. [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.

65. [377]

    The evidence establishes that having procured registration of another domain name “www.dieslauto.com.au” 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.

66. [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.

67. [379]

    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.

68. [380]

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

69. [381]

    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.

70. [382]

    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

71. [383]

    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.

72. [384]

    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.

73. [385]

    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.

74. [386]

    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.

75. [387]

    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.”

76. [388]

    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.

77. [389]

    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.

78. [390]

    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

1. [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.

2. [392]

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

Final orders

1. [393]

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

2. [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.