GM Global Technology Operations LLC v S.S.S. Auto Parts Pty Ltd

5.1 The GMH vehicles 105 GM designs and sells for distribution various models of the well-known Holden Commodore vehicle in Australia. These included the VE Commodore model, which was sold from 2006 - 2013 in various styles and at various levels of specification, including; a base model; entry level V6 sports package "SV-6" models; standard and upgraded V8 sports package "SS" and "SS-V" models; a luxury "Berlina" model; and a luxury sports "Calais" model. Three of the registered designs in suit owned by GMGTO are embodied in parts used in the VE series sports variants and related special editions of the VE Commodores, being design numbers 2, 3 and 4 (see Table 1 above). I refer to the relevant parts covered by these designs as the VE parts. GMGTO's claim for design infringement relates to the impugned VE parts identified in paragraph [27] above. 106 Since 1987, GM has produced high performance HSV vehicles modified from the Holden Commodore. GM supplies Premoso with Holden vehicles to be modified using HSV parts. The HSV model based on the VE Commodore donor vehicle has been marketed by Premoso as the "E series" since August 2006. This series includes the vehicles marketed as; the Clubsport R8, a sports sedan built using a VE Calais as its donor vehicle; the Clubsport R8 Tourer, a sports wagon built using a VE Calais Wagon; the Maloo R8, a sports utility vehicle built using a VE SS-V Ute; the GTS, a high performance sports sedan, built using a VE Calais-V; the Senator Signature, a luxury sports sedan built using a VE Calais; the Grange, a luxury larger size sedan built using a Holden WM Caprice (a longer wheel-base vehicle similar to the VE Commodore); and the W427, HSV's limited edition flagship high performance sports sedan. 107 Design numbers 1, 8, 9, 11 and 13 embody parts on the front end of the E2 and E3 Series HSV Clubsport R8 (sedan), Clubsport R8 Tourer (wagon), Maloo (ute) and GTS (sedan). I refer below to these models as HSV vehicles and the relevant parts covered by the designs as HSV parts. GMH's claim for design infringement relates to SSS' impugned HSV parts defined in paragraph [27] above. 108 The evidence indicates that there exists a niche market for the acquisition of parts by owners of lower specification Holden vehicles who wish to customise or enhance the appearance of their vehicles using HSV parts or VE parts. Mr Finn refers in evidence to one kind of upgrade being for vehicle owners to install what he calls "bodykits", which he says can consist of any combination of front bumpers, rear bumpers, side skirts and front or rear spoilers. However, there was a divergence of view among the witnesses as to whether other parts such as side wings may be included. 109 Mr Finn states that the business of HSV is built around offering niche performance oriented cars that are of a unique and distinctive appearance. He gives evidence that there is a "significant demand" amongst car enthusiasts to fit HSV parts to lower-specification vehicles. There is some controversy about what amounts to a significant demand and, more particularly in the context of the repair purpose, whether individuals within SSS were aware of the size or scope of that demand. I address this in the context of Knowledge Factors (1)-(3) below. 110 In order to protect the HSV brand, GMH takes steps to ensure that HSV parts are not sold for purposes "other than replacement on genuine HSV Vehicles". These steps involve what Mr Finn terms the "HSV Captive Parts Policy". This policy requires HSV dealers and HSV distributors to ensure that such parts are only supplied to a verified owner of a HSV vehicle and for replacement purposes only. In cross-examination Mr Finn accepted that the Captive Parts Policy applies, regardless of whether or not the replacement parts are the subject of a registered design. This policy is enforced by requiring the distributors and vendors of HSV parts to refuse to sell such parts unless the customer has supplied to the seller the HSV build number, the VIN and the HSV part number, to ensure that the customer requires the part for replacement purposes only. If not so satisfied, the vendor may refuse supply. The Captive Parts Policy generally ceases when a model is superseded by at least two subsequent HSV models. 111 Part of the Captive Parts Policy involves a requirement that HSV dealers obtain from customers a matching HSV build and VIN number. All road vehicles built or sold in Australia since 1989 must carry a VIN, which follows an internationally standardised format set by the International Standards Organisation. It consists of a structured 17 alphanumeric character string using standardised coding to signify various aspects relevant to the vehicle. Mr Wakeman gives evidence that the National Exchange of Vehicle and Driver Information System (NEVDIS) maintains a database that registers every vehicle's VIN, which enables vehicle manufacturers who are members of the Federal Chamber of Automotive Industries' Code of Practice for the Conduct of an Automotive Safety Recall to obtain consumer contact details for the purpose of carrying out safety recalls.

5.2.1 General 112 SSS Melbourne commenced business in around October 1987, SSS Sydney in around January 1995 and SSS Queensland in around June 2001. Mr Ung is the sole director and ultimate shareholder of each. They are referred to internally as "branches", and SSS Melbourne is referred to as "head office", but each operates as a separate business. SSS Adelaide and Kenji Auto Pty Ltd (SSS Perth) also use the 'SSS' trading name and have access to SSS support such as the IT system, but SSS Perth is not owned or operated by Mr Ung. 113 As at 30 June 2017, there were 95 employees overall, with 37 in Melbourne, 28 in Sydney, 22 in Queensland and 8 in Adelaide. 114 Mr Ung is the ultimate head of the companies and Ms Neoh and Ms Dorothy Jackson (who is responsible for all IT and finance aspects of the SSS business) are at the next level of management. Ms Neoh is responsible for supply chains, warehouse distribution, sales and to a lesser extent marketing. The next in the hierarchy are the National IT Manager, Mr Neoh, the National Product Development Manager, Mr Chuah, and the State Branch Managers (being Mr Chai Lim (Melbourne), Mr Lee (Brisbane), Mr Jet Ooi (Adelaide) and Ms Neoh also in that role in Sydney), who report either to Ms Neoh or Mr Ung, with the exception of Mr Neoh, who reports to Ms Jackson. 115 Each branch has a large warehouse, a sales team, a sales manager, an operations team, and a Branch Manager who also acts as managing buyer for that branch. Each branch makes its own purchasing decisions, based on the needs of its customers. Each branch generally imports its own containers of stock. The customer base is generally State-based and so one branch will have different customers to another. There is no requirement for each branch to report to SSS Melbourne and they do not, although each reports in a general way to Mr Ung, who gave evidence that he has been "basically semi-retired" since 2012. 116 There is a single information technology system for the branches, which is based in Melbourne. This ensures a degree of uniformity between the branches in that staff order products using the preferred suppliers listed in the system. There is also uniformity of branding, training and procedures. 117 Mr Chuah has oversight over inventory and buying parts from overseas. 118 The focus of the SSS business is the sale of body parts for crash repair. It carries car body parts for most major brands and models. Mr Ung estimates, and I accept, that as at around 30 June 2017, the SSS business had on their books over 206,000 items across more than 32,000 product lines, and 14,000 listed customers. From 1 July 2016 until 30 June 2017 it sold 470,000 items in transactions involving over 213,000 invoices and generating approximately $40,000,000 in revenue. 119 Mr Ung gives evidence that the customer base and market of SSS is the wholesale mass market repair industry and that it does not sell parts designed to customise cars, such as mag or alloy wheels, skirts and spoilers. He says that the entire business focus of SSS has always been directed to crash repair customers such as insurers, wreckers and panel beaters. He observed that with the rise of the internet for commerce many sellers, including wreckers, have in the last 10 to 15 years conducted their sales on eBay. He has observed a change in his clients in that originally panel beaters would source their spare parts from wreckers and SSS would supply parts to wreckers. Now, wreckers' businesses are dying out and panel beaters go directly to SSS for the parts that they need. Today, the main customers of SSS are panel beaters, but it also sells to parts retailers, car dealers, wreckers and direct to the public. 120 In response to the evidence of Mr McDonald, Mr Ung agrees that the people most likely to "hot up" or enhance their cars are young men. Mr Ung considers that they generally do not have very much money and are often "P-Platers". He contends that such people are not the target market of SSS. This evidence reflects an area of contention between the parties, to which I return below, however, the relative insignificance of the impugned parts to the overall business of SSS is not in dispute. The total sales that are presently in dispute as set out in the schedule to the reply particulars amount to 4,509 impugned HSV parts which were sold by SSS for a total of $122,250 and 665 VE Commodore impugned parts sold by SSS for a total of $33,859. Together, these represent 0.9% of all units sold in the SSS business in the FY 16-17; and 0.10% of total revenue of the SSS business in the FY 16-17, across the SSS branches (including SSS Adelaide).

5.2.2 Marketing 121 There was some controversy about the extent of marketing undertaken by SSS. I am satisfied that SSS does not undertake traditional forms of promotion by print media, television, radio or posters. The business relies primarily on word of mouth and also has a website. It has sent corporate introduction packs to potential new customers, but has only created two of these since 2010, one in 2012 and another in 2016. Both were tendered in evidence. The introductory language in each states that SSS is a leader in "quality replacement automotive parts in Australia". The 2012 edition goes on to emphasise that it is a major supplier of "crash replacement parts". The 2016 edition does not have these words. GMH in its submissions, and during cross-examination, suggested that the word "replacement" also encompasses parts for the enhancement of vehicles. However, whilst the word "replacement" is broad enough to cover the acquisition of parts for that purpose, I do not consider that this usage is particularly helpful to GMH in establishing a non-repair purpose in respect of the impugned parts. "Replacement" is certainly a term apposite to be used if an original has been damaged in a crash or deteriorated over time. As I note above in [110], in his affidavit Mr Finn uses the word "replacement" to convey that a part is purchased in compliance with the Captive Parts Policy, that is, for a suitable repair purpose. Mr Ung gave evidence that he understood it in that sense. The context of use in the 2012 brochure makes plain that this is so, and I would not read the 2016 brochure (which was in any event produced after most of the alleged acts of infringement in the present case) differently. 122 Mr Ung gave evidence in cross-examination that SSS did not take active steps to promote SSS products. If a customer wants a part, they can telephone and ask if it is available. In more recent times, they can register online and check what is available. 123 The evidence of the Sales and Branch Manager for SSS Melbourne, Mr Wills, is that his business development role involves collecting information about panel beaters and wreckers that have recently opened up in the area and contacting them, updating customer lists and visiting some customers at their businesses. A similar approach is taken by the Sales Manager of SSS Sydney, Mr Nikic. The Sales Manager of SSS Queensland, Mr King, is less proactive in researching new opportunities, but may be informed by sales staff when they learn of new customers and then conduct research about them. This may include locating a telephone number to enable Mr King or one of the sales team to telephone the new customer by way of introduction (however, new businesses generally contact SSS Queensland first). Mr King gives evidence that with thousands of customers to service, he is too busy to conduct investigations for more. 124 The typical customers of the various branches include; panel beating businesses; wrecking yards; tyre shops; mechanical repairers; parts reseller businesses which sell directly to the public such as "Super-Cheap Auto"; taxi based repairers; auto electrics businesses; and radiator/cooling specialist businesses. The evidence indicates that panel beating businesses are the best customers for SSS. For example, for SSS Queensland they account for over 50% of sales. The evidence indicates that wrecking yards are the next best customer, at least for SSS Queensland (which account for approximately 32% of their sales) and SSS Sydney. 125 Sales volumes per month per customer vary. For SSS Melbourne and SSS Sydney, sales of over $10,000 per month would be for an excellent customer; $6,000 - $9,000 for a very good customer; $4,000 - $5,000 per month for a good customer; $1,000 to $3,000 for an average customer; and below $1,000 for an occasional customer. For SSS Queensland, sales of over $10,000 would be for an excellent customer; $5,000 - $10,000 for a very good customer; $3,000 - $5,000 for a good customer; $1,000 - $3,000 for an average customer; and below $1,000 for an occasional customer. 126 Sales orders may be placed in several ways. This includes sales conducted by; telephone; email and fax; the SSS online portal for trade sales; the "Parts Check" system; and walk-ins to the warehouses. For example, in SSS Melbourne sales conducted by telephone account for 70% of its sales and are particularly encouraged because sales staff can establish a relationship with the customer. In SSS Queensland many enquiries, quotes and sales are initiated by customers through the "Parts Check" system, which is an estimating software tool that enables a repairer to send vehicle descriptions and images to multiple suppliers at the same time in order to receive a quote. SSS Queensland receives an estimated 400 - 500 enquiries via this system each day along with telephone enquiries, which are then divided between sales staff, filtered for orders that SSS is not interested in (because it does not stock the part, or does not deal with the customer and so on) and then a quote is provided. 127 The evidence suggests, and I find, that there is a high level of activity in the offices of the SSS branches, with the phone ringing constantly and sales staff dealing with many enquiries a day from various sources. 128 Having regard to the whole of the evidence, I accept that the primary means of promotion by SSS is via word of mouth, usually over the telephone. In this regard I note that the customer base of the business consists to a large degree of specialist customers who are in the automobile industry, being panel beaters (or smash repairers), wrecking yards, mechanical repairers and the like. These are businesses that can be expected to have a good knowledge of the vehicles for which they require parts. 129 I accept that, after many years of selling a high volume of spare parts into this industry, many customers know to go to SSS if they want a spare part. It is not necessary for the customer to have seen the part promoted for an enquiry to be made as to whether or not SSS has one available. Rather, the customer's assumption will be that SSS, as a high volume supplier, would have the part that the customer wants and so a phone call is warranted to make an enquiry and obtain a quote for the part. The evidence given by the sales managers for each of the SSS parties tends to support this view. An analogy may be where a fisherperson goes into a large fishing tackle shop, on the assumption that the shop is likely to stock the hook or sinker that she or he wants. I accept that this is the approach taken by customers of SSS and that it engages in minimal promotional activity for that reason. The correspondence from SSS customers to GMH in response to the demands the subject of the cross-claim supports this conclusion. 130 It is further supported by the evidence given by Mr King of the "Parts Check" system, which enables repairers to send out blanket requests for quotes for parts to suppliers, including SSS Queensland and SSS Sydney, in the expectation that the supplier has and will supply the parts in respect of which a quote is sought. 131 GMH submits that there is a conspicuous absence of evidence about how SSS customers ever found out about the impugned parts. It submits that this reflects as a "dominant theme" of lack of candour in the evidence on the subject. It submits that the evidence given by various witnesses to the effect that customers knew about SSS and would call up and ask for a part if they wanted it should be rejected as not credible. For the reasons that I have given, I reject that submission. In fact there was consistency amongst the seven witnesses called by SSS as to the nature of its business activities, which indicates to me that the evidence given in this respect is to be accepted.

5.2.3 The "focus" of the SSS businesses 132 GMH submits that the evidence suggesting that the focus of the SSS business was to supply parts for repair should be rejected in light of the absence of evidence of promotional efforts to that end (which I address above) and four aspects of the evidence as follows. 133 The first aspect is the reference in the 2012 and 2016 corporate brochures to the word "replacement" rather than repair. It is the 2012 brochure that is more relevant to the consideration of the non-repair purpose, given that only it pre-dates most of the impugned uses by the SSS parties. I have addressed its relevance above. 134 The second aspect is that the SSS business sold and promoted some non-GMH parts, being "Altezza lights" and Chevrolet "bowtie" grilles that are used for the customisation of vehicles as opposed to repair. There is no doubt that such parts were sold and promoted for sale by SSS and that in cross-examination each of Mr Ung, Ms Neoh, Mr Nikic and Mr Wills accepted that they were not used by customers for repair purposes. However, some caution must be exercised in considering the conclusion that might be drawn from this evidence. It is perhaps worth observing that despite conducting a very thorough analysis of the business of SSS, it is only these examples to which GMH was able to emphasise. They represent a minute fraction of the 32,000 products made available by SSS and none of them is apparently the subject of any design registration. The highest this evidence goes is to indicate that senior management within the SSS parties knew that those products would not be used for the repair purpose. I am not prepared to find, on the basis of these limited examples, that this reflected a general view on the part of SSS that its business was not for the supply of parts for repair. 135 The third aspect is that Mr Nikic, on 31 January 2013, provided to Penrith Auto Recyclers an email with a "performance list" attached to it of over 350 parts carried within SSS' inventory, including Chevrolet grilles for a VE Commodore. Mr Nikic accepted that the items in the performance list would be described as "customisation items" and agreed that the items listed - some 350 - were offered for that purpose. GMH does not as assert that any of these products are covered by its registered designs. Rather, it asserts that this is evidence that Mr Nikic actively promoted sales for non-replacement purposes. I accept that this is to be taken into account, particularly given that this was after the implementation of the first repair only notice, but in my view Mr Nikic in this context is to be regarded as an outlier. There is no evidence that any member of senior management was aware of or condoned his activity, particularly having regard to the repair only policies implemented by SSS, to which I refer below. My observations made in the previous paragraph also apply. 136 The fourth aspect is evidence that a SSS Melbourne salesperson, Laura Hill, in 2011 emailed a customer a list of prices for head lamps and tail lights for VE Commodores with the notations that those parts can also fit other, lower specification vehicles. A single example, in 2011, of conduct by a person in a junior role within SSS Melbourne provides little assistance in considering the "focus" of the company as a whole. There is no evidence that Mr Ung or Ms Neoh were aware of this sale or that they, as the senior executives responsible for policy, endorsed this approach to sales. The document was not put to any of the SSS witnesses in the case. 137 In view of my findings above, I accept the evidence that the business model of SSS has at all material times been to sell aftermarket parts for use in the repair of motor vehicles.

5.2.4 Obtaining parts from suppliers 138 SSS buys parts direct from factories and trading houses overseas, usually without formal contracts. Mr Chuah manages the overall inventory and is the contact point for most suppliers. His approach is to consult with the Branch Managers to reach agreement on the allocated quantity of a product before placing an order. It was Mr Chuah who identified the opportunity to import aftermarket HSV parts into Australia, which was then approved by Mr Ung. Aftermarket parts are parts that have been manufactured by someone other than the original manufacturer, in this case someone other than GMH. They are in contrast to parallel import parts, which are parts made by the original manufacturer, imported from overseas. 139 Mr Chuah gives evidence that in sourcing aftermarket and parallel imported parts, he gathers information about future demand by visiting factories and trade shows, regularly speaking and meeting with overseas trade representatives, receiving online updates from manufacturers about new products that are available, reading automotive magazines and conducting online research. In relation to aftermarket parts, he also undertakes searches of the Designs Register. He determines on this basis which parts to source. Having decided on a suitable part to import, Mr Chuah will try to source it as a parallel import. 140 After importing the products for the SSS branches, Mr Chuah also monitors the overall inventory of SSS and tracks parts as they are sold by the branches to ensure that parts are purchased in an efficient manner (e.g. by filling a single container imported into Australia rather than small quantities in multiple containers). In this regard, he does no analysis of the inventory in the sense of understanding whether more of one particular type of part is sold by SSS businesses, nor does he track the activity of particular customers. Rather, the extent to which he tracks sales is generally limited to looking at the sales history for a particular part to see whether it is moving well. If it is not, he will decide whether SSS should discount it as a "special". 141 GMH submits that it should be found that Mr Chuah had an appreciation, before taking steps to order the impugned HSV parts for importation, that there would be a low demand for them for the purpose of repairs but a relatively high level of demand for them for the purpose of vehicle enhancement. However, I accept Mr Chuah's denial of that proposition. In my view, SSS' process in ordering parts was more rustic and less sophisticated than GMH submits. I return to this point in the context of importation.

5.3 Chronology of relevant events 142 In order to impart an understanding of the events to which the parties have referred in their submissions, it is necessary to set out a fairly detailed chronology of events. These include references to letters of demand sent by GMH to SSS and also to third party customers of SSS as well as to stages in the conduct of the proceedings. 143 On 14 July 2010, GM and GMGTO commenced proceedings against SSS Melbourne and some unrelated parties for alleged design infringement under the Designs Act 1906. This litigation was ultimately settled in February 2011. Mr Ung and Ms Neoh give evidence that this was the first time that the practical relevance of designs law came to their attention and that it alerted them to design infringement issues. 144 On 17 January 2011, Mr Chuah created a spreadsheet relating to certain HSV parts that he wished to have manufactured. The spreadsheet set out "PART REQUIRE" [sic] identifying each of the HSV unique parts making up the front external assembly of the cars. The spreadsheet compared the genuine Holden/HSV prices of the parts against Mr Chuah's estimated SSS pricing for those parts for the Clubsport and gave an estimated total pricing for each of the SSS HSV Parts. 145 In May 2011, SSS Melbourne received 10 of the SSS 540NBB parts from supplier 1 (the suppliers' names are confidential), SSS Sydney received 20 of the parts and SSS Queensland (in June 2011) received 15 of the parts. Also in May 2011, SSS sold 540NBB parts to Holmart Pty Ltd (Holmart), a company that is one of the parts suppliers identified in the cross-claim. 146 On 22 December 2011, supplier 4 emailed Mr Chuah asking for details of the LED bumper lamp that Mr Chuah wished it to manufacture for SSS. Supplier 4 was responsible for manufacturing the HSV left and right hand daytime running lamps (DRL) to which design number 8 applies. 147 On 5 January 2012, Mr Chuah supplied photographs of the DRL to supplier 4 because it was necessary for tools to be made for the production of those lamps. 148 In March 2012, Mr Chuah conducted searches of the Australian Designs Register to see if the impugned HSV parts were the subject of registered designs. 149 Around this time, Mr Chuah also raised for the first time the importation of the HSV parts with Mr Ung, who remarked that there would be a design infringement risk if that were to occur and that the lawyers should be consulted. GMH contests that this accurately reflects the timing of the conversation, a matter to which I return below. 150 On 29 March 2012, Ms Neoh sent an email to Mr Rickards, a solicitor who provided regular legal advice to the SSS companies, informing him about SSS' plans to import HSV parts, which were the subject of registered designs, and saying that SSS will "hold on the importation". The evidence indicates that Mr Ung, Ms Neoh and others in senior management, which include the State Branch Managers and Mr Chuah, relied heavily on Mr Rickards for advice. 151 Mr Rickards responded to Ms Neoh's request, on 27 April 2012, with a copy of an advice that he prepared when the Designs Act came into force in 2004. That advice relevantly states: To ensure effective competition in the spare parts market, the Government is excluding spare parts from design protection. The Act will still allow registration of designs of component parts of complex products, but this will be subject to a 'right of repair' exemption that provides a complete defence against infringement when design registered parts are used (including manufacture and supply) for repair purposes. …it will provide protection for original equipment use by allowing new and distinctive designs of component parts of complex products to be registrable. However, where design registered component parts are used as spare parts for repair or replacement purposes there would not be an infringement. 152 In April or May 2012, Mr Chuah provided original HSV parts to supplier 3 as samples for the reverse engineering of the following impugned parts; 540NAA (front bumper); 560NAA (lower grille); 500NAL (upper grille left); 500NAR (upper grille, right); 500NEL (fog lamp cover, left); and 500NER (fog lamp cover right). He also subsequently sent supplier 3 original HSV parts as samples for the reverse engineering of the following impugned parts; 560NBH (bonnet moulding in satin black); and 560NCC (bonnet moulding in chrome). 153 In May 2012, supplier 3 informed Mr Chuah that they would produce aftermarket parts for the HSV bumper bars. 154 In mid-2012, Mr Chuah was informed by supplier 2 that aftermarket VE Commodore series II SS front and rear bumper bars were available for sale. These ultimately became impugned parts 545NBB and 540NBB. 155 Some time in 2012, the State Managers for each of the SSS companies, other than SSS Adelaide who did not have a representative at that time, agreed to the acquisition of the proposed HSV parts that Mr Chuah was investigating. After this time, Mr Chuah tested the parts before making a final commitment to purchase them from the relevant suppliers. 156 On 2 July 2012, Mr Chuah committed to purchasing 600 units of each of impugned parts 540NAA, 560NAA, 500NAL, 500NAR, 500NEL, 500NER from supplier 3, provided they were of a satisfactory standard. The supplier was to start development of part 540NAA first, with development of the remaining parts to start 3-4 months later. Mr Chuah provided supplier 3 with final confirmation of the quantities of these impugned parts on 22 April 2013, after successfully testing them in March 2013. 157 In early- to mid-2012, SSS was considering measures that it could take to ensure customers were aware that the impugned parts were to be used only for repair. This included putting notices on invoices and products. On 17 July 2012, Mr Rickards sent an email to Ms Neoh setting out his advice concerning s 72 of the Designs Act. In it he stated: To confirm, s 72 of the Designs Act 2003 says that selling a product (ie a part) the same as a product subject to a registered design will not infringe the design if it is used to repair a bigger product (ie a car) to restore its overall appearance. … We discussed this some time ago with Tim and we agreed it would be a good idea to specify that products we sold relying on this provision carried a notice to the effect that the part was sold for repairs only. That notice should be as follows: "Sold only for use in repairs. Other use may infringe registered Design rights" It should be printed clearly visible on the container that the part comes in. I would like to see an example of it. But I've noticed another clause - (2) If: (a) a person uses or authorises another person to use a product: (i) in relation to which a design is registered; and (ii) which embodies a design that is identical to, or substantially similar in overall impression to, the registered design: and (b) the person asserts in infringement proceedings that, because of the operation of subsection (1), the use or authorisation did not infringe the registered design; the registered owner of the design bears the burden of proving that the person knew, or ought reasonably to have known, that the use or authorisation was not for the purpose mentioned in paragraph (l)(c). This means that if you sold a part and the registered design owner (RDO) sued you for breach and, if you claimed you sold it for repair, the RDO would have to prove you know or should have known it was not for repair. And, if they could prove that, then, the fact it had a notice on it wouldn't make any difference. I'm raising this because it may be that, in real life, the risk of the RDO proving you knew or should have known a part you sold was not for repair is so small as not to justify the trouble of printing the notice. 158 On 25 July 2012, Ms Neoh sent an email to Mr Ung and Mr Chuah (copied to Mr Rickards) saying that, after meeting with Mr Rickards, a decision had been made only to print the notice on invoices, that notice being (first repair only notice): All parts authorised only for use in repairs 159 There is no suggestion by SSS that this notice, or the subsequent repair only notices identified below, have any contractual force. 160 On 31 July 2012, Mr Rickards sent an email to Ms Neoh, Mr Ung and Mr Chuah recording their agreement that the first repair only notice would be included on all invoices and other documents setting out or evidencing terms of trade. The email also suggests that sales staff have some training to reiterate that parts can only be used for repairs, even when the fittings are the same. In his affidavit Mr Ung gives evidence that at around that time there was some initial informal training given, although no evidence indicates what training was given or to whom. 161 From 1 August 2012, SSS implemented a system whereby the first repair only notice was printed on all invoices. There were some exceptions because of a glitch in the software that was repaired in late February 2013. 162 On 30 October 2012, SSS Queensland received the first invoice from supplier 2 for the impugned 545NBB and 540 NBB parts. 163 In December 2012 and January 2013, the impugned parts 545NBB and 540NBB were first imported; 40 and 30 units respectively to SSS Queensland; 50 and 30 units respectively to SSS Melbourne; and 60 and 100 units respectively to SSS Sydney. Invoices to SSS Sydney and SSS Melbourne followed shortly thereafter. 164 On 19 April 2013, Mr Chuah sent an email to SSS Sydney, SSS Queensland and SSS Perth informing them that SSS had committed to the acquisition of 600 parts in the first batch production for the HSV products and that he had allocated the branch quantities. The email says (as written): …Also, please host a sales meeting about the patent issue, our HSV parts are for repiars purpose only, customer are not allow install in other car (we all know it will fit on commodore), but just incase HSV/HOLDEN people call us ask if your parts fit for commdore or not… 165 On 22 April 2013, Mr Chuah instructed supplier 3 to ship a first order of 600 units of each of the 540NAA, 560NAA, 500NAL, 500 NAR, 500NEL and 500NER parts, with a total of 200 units each to go to SSS Melbourne and SSS Sydney and a total of 100 units to each of SSS Queensland and SSS Perth. 166 On 30 July 2013, the first sale of HSV parts is made to Sydney Special Vehicles (SSV) being 10 units each of 6 impugned parts. 167 On 31 July 2013, impugned HSV parts numbered; 540NAA, 560NAA, 500NAL, 500NAR, 500NEL and 500NER parts are first imported from supplier 3 (the 31 July 2013 parts). 168 On 19 September 2013, an SSS Melbourne invoice records a sale of 2 units of 6 SSS Parts and 1 unit of another SSS Part to JHP Vehicle Enhancement (JHP) in Victoria. The salesperson is noted as Mr Chuah. 169 On 2 October 2013, Mr Chuah was contacted by a representative of JHP in relation to a notice issued by eBay that a product listing by his company on eBay of a VE Commodore HSV bumper bar acquired from SSS had been withdrawn (an eBay "takedown notice"). 170 On 3 October 2013, Ms Neoh informed Mr Rickards of the JHP eBay takedown notice and asked for his advice. 171 On 7 October 2013, Mr Chuah circulates an email stating that he has put a "D flag" on the HSV parts in the system to cease their sale until "we come out with a better solution to sell it". Mr Ung's evidence is that this notice meant that the items were removed from the electronic SSS parts list and therefore could not be sold. 172 On 17 December 2013, Ms Neoh, Mr Chuah and Mr Lee are informed by a staff member that GMH has sent a letter of demand to Holmart. 173 In January 2014, Mr Chuah placed an order for 1,200 (total) left and right DRLs (impugned parts 500NJL and 500NJR) from supplier 4, which were to be distributed to the SSS parties. 174 On 3 February 2014, Mr Nikic received an enquiry from SSV as to when DRLs would be available, which Mr Nikic forwarded to Ms Neoh. 175 On 3 March 2014, SSS implemented a requirement that the outer packaging of all restricted parts (including all of the impugned parts) be labelled with a sticker stating (second repair only notice): Authorised for use only in repairs 176 In approximately April - May 2014, SSS Queensland and SSS Melbourne received their first imported DRLs from supplier 4. 177 On 14 April 2014, SSS Queensland sold 10 units of VE series 2 SS front bumper (part 540NBB) to BKWT. 178 On 15 May 2014, Ms Neoh received an email from Mr Nikic entitled "HSV Call Ups" that states "still a few customers to follow up on however DRL moved the most as they were new. Will continue monthly and looking for another online guys we can target". 179 In August 2014, the SSS parties each received the first imports of HSV bonnet moulds (part 560 NCC). 180 On 29 August 2014, Mr Ung notified Ms Neoh, Mr Chuah and others at SSS that GMH had sent a letter of demand to Westside Imports, a customer of SSS Perth. Mr Ung stated "I think this is something we have to be very careful of how we sell and procedures in place to double confirmed we didn't do any wrong thing". 181 On 1 September 2014, Ms Neoh informed Mr Rickards that a customer of SSS Sydney, Hunter Projects Pty Ltd (trading as "Carparts2U"), had been served with a letter of demand by GMH. 182 On 3 September 2014, Ms Neoh received an email from Mr Chuah advising that a customer of SSS Melbourne, Torq parts, had received a letter of demand from GMH. 183 On 3 September 2014, SSS altered its website to add, in its aftermarket parts section and online portal, a notice in red saying "SSS is not an official parts distributor of any vehicle manufacturer. All SSS Genuine Factory Parts are parallel import. All parts authorised only for use in repairs" (the portal notice). On the same day Mr Ung asked for a reference to Altezza lights to be removed from the website. 184 On 7 September 2014, Ms Neoh instructed the SSS IT manager (Ms Jackson) to urgently amend the software that prints the standard labels for SSS stock to ensure that, for all aftermarket parts, the label includes the following notice in red letters (third repair only notice): All Parts Authorised ONLY for use in Repairs This change was implemented on 14 September 2014. 185 On 11 September 2014, SSS sent letters to the recipients of the GMH letters of demand, including Westside Imports, Torq Parts, AP International (QLD) Pty Ltd, trading as Panel House and Carparts. The letter includes an advice prepared by SSS' solicitor that includes reference to the s 72 defence and the repair purpose. It states that "repair would not extend to "customisation". It seems that customisation may be what GMH is concerned about". 186 On 15 October 2014, HP Wrecking notified Mr Chuah and Mr Wills of an eBay takedown notice. 187 On 10 December 2014, SSS received a letter of demand in the present proceedings. 188 From some time prior to January 2015 (Ms Neoh cannot recall when), the sales software operated by SSS was changed such that a preface of "99" or "999" was added to the price of HSV parts indicating a clearly incorrect price that required a Branch Manager or Sales Manager to approve the sale (999 prefix requirement). 189 On 15 January 2015, Ms Neoh sent an email to all SSS Branch Managers confirming the "repair only policy" (which is quoted in paragraph [190] below in the repair only directive). In a further email sent on the same day to Mr Rickards, Ms Neoh said that she thought that the email was not strong enough reinforcement and that an acknowledgement letter, which required the sales staff to date and sign the letter, was more appropriate. In cross-examination, Ms Neoh gave evidence that there had been a lot of discussion about the sale of the impugned parts and that she did not want to get into trouble with GMH. She said that she was scared of GMH and, as a "procedure person" she wanted to document the procedure. 190 By 21 January 2015, acknowledgements were signed and dated by each of the sales staff employed by SSS (the repair only directive) that took the following form (as written): DIRECTIVE COMMODORE AND FALCON SPARE PARTS TO ALL SALES STAFF URGENT IMMEDIATE EFFECT This confirms that, as you know, all SSS spare parts for COMMODORE and FALCON vehicles are sold ONLY for the purpose of replacing parts in the repair of DAMAGED vehicles. SSS DOES NOT sell parts for the purpose of upgrading or enhancing vehicles. Our website and supply paperwork makes this clear to customers. You may receive enquiries by phone or in person along the following lines - "I'm customising my car and need a xxxsx". Any enquiry which suggest that the enquirer may be using the part OTHER THAN FOR REPAIR should get the following response - "I'm sorry. SSS only supplies parts for the purpose of replacing parts in the repair of DAMAGED vehicles. We cannot help you. If the enquirer then says anything along the lines of - "In that case I'm repairing my car. The response should be made - "I'm sorry, I cannot help you with that part." SSS is committed to its policy of supplying parts ONLY for the purpose of replacing parts in the repair of DAMAGED vehicles and takes all steps it can to prevent sale for any other purpose. ACKNOWLEDGEMENT I have read and I understand the directive above and I will comply with it. 191 GMH contends that the repair only directive concerned only Falcon and Commodore vehicles, which were identified in the heading and first sentence of the introductory paragraph. However, in my view, the balance of the directive makes clear that a reasonable salesperson would take it as an instruction that applied more generally. 192 On 6 March 2015, SSS placed point of sale signs in all of its warehouses saying (point of sales notice): All Parts Authorised ONLY for use in repairs 193 On 28 July 2015, GMH commenced these proceedings. 194 On 31 July 2015, Mr Ung, in consultation with Mr Chuah and Ms Neoh, resolved that SSS should stop all sales of the impugned parts until further notice by placing a D flag on them. 195 On 10 August 2015, an email was sent to SSS Branch Managers advising them of the D flag. However, later on the same day, Ms Neoh noticed that SSS Queensland was still selling the impugned parts and sent an email to Mr Lee asking him to give effect to the email. On the same day, Mr Searle of BKWT was notified by Mr Darren Drury, Marketing Manager for SSS Queensland, that SSS would no longer be supplying HSV parts and was advised to place his final order. The next day, BKWT placed an order of impugned parts. 196 On 9 September 2015, an order was placed with SSS Melbourne by Motor Sport Corporation for multiple impugned parts across 2 invoices. The salesperson is identified on the invoice as "M-Laura Hi". 197 On 18 September 2015, in response to an email from Mr Chuah, Mr Lee sent an email to three SSS Queensland sales staff stating "HSV off the market again! not selling further notice!". 198 Mr Chuah gives evidence that, since the proceedings were commenced against SSS, when he had noticed or it was brought to his attention that a customer was not complying with the repair only policy for restricted parts, he has taken some action, such as writing to the customer or directing SSS staff to follow it up. He gives as an example an email he sent on 22 September 2015 to the Branch Managers and Mr Ung stating that he had informed 6 listed customers that they should remove listings of SSV series 1 and 2 headlights from eBay. Mr Ung responds, also to the Branch Managers, asking them to explain to all customers that all "design pattern items" are for repair only and that it is illegal to advertise or sell them for upgrade or modification. 199 In January 2016, Mr Ung resolved to start selling the HSV parts again with additional procedures. On 28 January 2016, Mr Wills sent an email to SSS Melbourne sales staff informing them that, after speaking with management, he had been advised that the impugned HSV parts were available to sell but only if they obtained a photo of the damaged car showing what needed to be repaired. Staff were informed that they may not sell a HSV part if there was any mention of upgrading the look of the car. There were also to be no bulk sales. 200 On 5 February 2016, Mr Ung approved additional procedures with the intention of having the 'repair only' message reinforced at every stage of any transaction. These were: (1) prompt cards on the monitors of each sales representative saying: "HSV/SS Parts authorised only for use in repair - DO NOT sell for upgrade or modifications" (computer monitor notice); (2) a requirement that customers provide the VIN number of the car sought to be repaired (VIN system); (3) cessation of sales in bulk to on-sellers because they could not supply VINs for each part; and (4) recording of all enquiries that sales staff had rejected in accordance with the procedures. 201 Whilst Ms Neoh gives evidence that the VIN system was implemented in January 2015, in my view she was mistaken in this regard and the VIN system commenced in around January or February 2016. Ms Neoh describes in her affidavit that the VIN system was developed from an awareness of its adoption as part of GMH's Captive Parts Policy, which I describe in paragraphs [110] and [111] above. Initially a manual VIN checking system was put in place where Sales Managers and trained staff requested and checked VINs. Subsequently, Ms Neoh developed a formal VIN system that formed part of the SSS computer system, which is discussed further in paragraph [205] below. 202 On 9 February 2016, Mr Nikic informed SSS Sydney staff that if a customer called asking for VE or HSV parts to upgrade their standard vehicle, sales staff were not to sell the part and advise the customer accordingly. He also advised that if a customer called for a HSV part in particular, a VIN or images were required where possible, with details to be recorded on the quote / invoice. 203 On 21 April 2016, SSS introduced a further policy across all branches of SSS which required the provision of registration numbers as well as VINs . 204 On 27 April 2016, Ms Neoh followed up with Mr Nikic on the progress of training, sending him an email asking him to check his emails to see how often he had reminded sales staff in SSS Sydney of their obligations regarding HSV. He responded on the same day indicating that, inter alia, in February 2016 he had confirmed by email to staff that VINs were required; on 7 March 2016, he had asked sales staff to advise of any rejected sales and to capture calls; and on 21 April 2016, he had sent a "how to sell" confirmation email and added the additional requirement that registration numbers were also required. 205 On 1 July 2016, a formal computer based accounting system with an automated VIN process replaced the manual VIN checking system. The sales managers of the SSS branches were notified of its implementation. Ms Neoh gives evidence that the system was implemented so that if a salesperson typed in a number that is not a VIN (for example, by making a typographical error), the system would not permit the process to proceed. She notes, however, that the system would not be effective if the customer wanted to try to cheat it - for example if the customer provided the same VIN on multiple occasions.

5.4 Summary of the "repair only" policies implemented by SSS 206 The following steps identified in the chronology are relied upon by SSS as reflecting an intention on the part of SSS to ensure that the parts that it sells are used for repair only (collectively the SSS repair only policies): (1) On 25 July 2012, SSS implemented the first repair only notice requirement (see paragraph [158] above). At that stage none of the impugned HSV products had been sold; (2) In October 2013, there was a temporary D flag put in place whilst SSS sought "a solution" to the sales of impugned HSV parts (see paragraph [171] above. This was lifted by 14 April 2014 at the latest; (3) On 3 March 2014, SSS implemented the second repair only notice requirement (see paragraph [175] above); (4) On 3 September 2014, SSS implemented the portal notice (see paragraph [183] above); (5) On 7 September 2014, SSS amended its labels to include the third repair only notice (see paragraph [184] above); (6) Prior to January 2015, all HSV parts enquiries were referred to sales managers and specially trained staff and SSS implemented the 999 prefix requirement (see paragraph [188] above); (7) By 21 January 2015, all sales staff had signed the repair only directive (see paragraph [190] above); (8) On 6 March 2015, the point of sales notice was placed in all SSS warehouses (see paragraph [192] above); (9) On 31 July 2015, Mr Ung resolved that SSS should stop all sales of the impugned parts until further notice and placed a D flag on them (see paragraph [194] above); (10) In February 2016, the computer monitor notice was implemented and the manual VIN system was introduced, which required a VIN to be provided for all sales. Bulk sales of the impugned parts ceased. Sales staff were also directed to keep records of all enquiries rejected in accordance with the procedures (see paragraphs [200]-[202] above); (11) On 21 April 2016, a further policy of asking for registration numbers as well as VINs for the sale of the impugned parts was introduced (see paragraph [203] above); and (12) On 1 July 2016, a computer system with the automated VIN process replaced the manual VIN checking system (see paragraph [205] above). 207 In addition, SSS places significant reliance on the contention that its business model was always to supply spare parts for repairs. It is in that context that Mr Ung, Ms Neoh and other senior personnel considered that there would be no hardship or change in direction for SSS to implement the SSS repair only policies. 208 There was some debate between the parties as to the relevance of these steps. GMH submits that they amount to no more than window dressing in order to reduce the legal exposure that SSS had for importing the impugned parts. In my view, the effect of these policies must be considered in the context of each particular infringement alleged. Accordingly, I address this point below in relation to each of the alleged infringing uses. However, I reject the submission as a general proposition. The objective materials and evidence of the witnesses supports the proposition that each of the SSS parties, led by Mr Ung and Ms Neoh, had an earnest desire to ensure that the SSS repair only policies were enforced. 209 The role of the SSS repair only policies must be understood in the context of the s 72 defence. SSS contends that the policies provide good evidence that SSS' purpose, both internally and also in terms of its statements to its customers and the outside world, was to sell the impugned parts for repair only. There is much to be said for this submission. In the context of the operation of s 72, the policies implemented reflect the steps that the owner and director of each of the SSS parties required to be taken in order to ensure that sales were made in what was considered to be the correct manner. In my view, a most powerful aspect of the policies is the signed sales directive, which was an internal document executed by each member of the sales staff. In the absence of evidence to indicate that this was not a reflection of the wishes of senior management from the highest level, it is difficult to imagine a more explicit indication of the purpose of each SSS party. No employee could be in any reasonable doubt that by being given the sales declaration and being required to sign it, SSS intended that each employee should adhere to its terms. The fact that 47 such declarations were executed, all within a matter of days, speaks strongly in favour of the seriousness with which both SSS and its employees took the directive. 210 GMH submits that the SSS repair only policies support its case. It submits that the taking of the steps reflects an awareness on the part of SSS that the impugned parts would be used for the purpose of vehicle enhancement. GMH submits that the steps themselves were in essence "defensive" and are not indicative of the relevant purpose "having regard to the effectively uncontrolled selling which in fact occurred". GMH tracks each successive step in the SSS policies to an instance where GMH had threatened a customer of SSS with an infringement suit or taken a step against SSS, such as commencing the present proceedings. It then submits that one or other of the policies was not effective to prevent sales to customers that it has identified as using the impugned parts for enhancing vehicles. I do not accept these submissions. In my view the policies, taken individually and collectively, represented an honest attempt by Mr Ung and senior management to ensure that the parts were sold for repair only and to ensure that SSS staff were aware of this fact. The submissions advanced by GMH assume that a failure of the policy to stop every potentially impugned transaction reflects a desire on the part of SSS to thwart GMH. Implicit in this, and a further submission to the effect that SSS sales staff engaged in a "don't ask, don't tell" selling program, is that the SSS repair only policies were indeed a sham. I reject that submission. Indeed, it was never squarely put to any of the relevant SSS witnesses.

6.1 The allegedly infringing acts 211 GMH pleads that Mr Ung, Mr Chuah and Mr Lee, being managers of the SSS companies responsible for importing the impugned parts into Australia for sale, acting within the scope of their actual or apparent authority, had actual knowledge that such importation was not for the purpose of repair. It also pleads in the reply particulars that Mr Ung had constructive knowledge that the importation was not for a repair purpose, by reason of the Knowledge Factors. In addition, GMH pleads that the knowledge of the same managers is to be inferred from the continued importation for sale of the impugned parts following the receipt by SSS of the first letter of demand from GMH on 10 December 2014. 212 The evidence discloses that the relevant acts of importation are as follows: (1) HSV parts; 500NEL (left fog lamp cover); 500NER (right fog lamp cover); 540NAA (front bumper); 560NAA (lower grille) 500NAL (left upper grille); and 500NAR (right upper grille) from supplier 3 on 31 July 2013 (the 31 July 2013 parts); (2) HSV parts; 500NJL (left DRL); and 500NJR (right DRL) from supplier 4 on 14 May 2014; (3) HSV parts; 560NBH (bonnet moulding in satin black); and 560NCC (bonnet moulding in chrome) from supplier 3 on 12 September 2014; (4) SS part 540NBB (VE Series 1 front bumper) from supplier 1 on 4 May 2011; and (5) SS parts; 545NBB (VE Series 1 & 2 Sedan rear bumper); and 540NBB (VE Series 2 front bumper) from supplier 2 on 1 December 2012. 213 The parts referred to in (1) and (2) are impugned VE parts and those in (3) - (5) are impugned HSV parts. Below I first deal with the importations of the impugned HSV parts, before considering the importations of the VE parts. 214 In its closing submissions, GMH narrows its case to contend that Mr Ung had actual knowledge on behalf of each of the SSS companies that the importation was not for the repair purpose, and that he had constructive knowledge on behalf of the SSS companies on the basis of Knowledge Factors (1) - (3). It also contends that Mr Chuah had actual knowledge of a non-repair purpose. In its written submissions, GMH also argued that Mr Chuah had constructive knowledge, but it accepts that it cannot rely on this contention because it has not been pleaded. 215 GMH in its closing submissions also contended that Mr Chuah acted as the agent for each of the separate SSS companies in procuring the impugned products for them. That case was also not pleaded and objection was taken to it. The allegation of agency arose from the late production by SSS of documents some two days prior to trial. Those documents revealed that each of the SSS Sydney and SSS Queensland accepted parts imported at the request of SSS Melbourne via Mr Chuah. Only days prior to that had SSS, for the first time, accepted that SSS Sydney and SSS Queensland had engaged in the act of importation. Prior to then, SSS' case was that it was SSS Melbourne alone that had imported the parts (Ex 14, 15). In these circumstances, I am satisfied that it is appropriate to permit GMH to advance a case that Mr Chuah acted as the agent for each of SSS Sydney and SSS Queensland, as well as SSS Melbourne, for the purpose of considering the importation case.

6.2 The arguments 216 GMH contends that Mr Ung approved the importation of the impugned HSV parts because he knew that the SSS companies would have exclusivity as the sole aftermarket suppliers and because he believed that he could make a good profit margin. It submits that his evidence to the effect that he gave his approval to import the parts in the context of a discussion about repairs should be rejected as implausible. In the alternative, GMH submits that whatever evidence given by Mr Ung as to his purpose should be set to one side because the "actual" decision to import the impugned HSV parts was made by Mr Chuah, who was responsible for making the decision on behalf of the SSS companies. 217 GMH submits the relevant non-repair purpose is to be ascertained having regard primarily to the knowledge of Mr Chuah because Mr Ung left the issue of placing the orders and the numbers and types of parts to import to him. It contends that the crucial time for establishing Mr Chuah's state of mind is July 2012, when he gave the 'green light' to supplier 3 to engage in manufacturing activity for the 31 July 2013 parts and made a commitment to purchase 600 units of the front bumper and associated products, subject to them being of satisfactory quality. It alleges that Mr Chuah's decision was made without regard to any repair requirement or expectation, relying on his evidence that he "had no information or knowledge of who would buy [the parts] from SSS or what purpose any customer who bought them from SSS would have in buying them"; the fact that he ordered an identical number of each component in large quantities (600 units); and the spreadsheet referred to in paragraph [144] above. Whilst the parts were not actually imported until about a year later and subsequent parts were imported in 2013 and 2014, GMH contends that nothing happened to change the proper understanding of his overriding purpose, which was not for the purpose of repair. GMH contends that the only purpose evinced on the part of Mr Chuah was that of making profit in the course of sales. Mr Chuah was making a bulk purchase which had nothing to do with the assessment of the market for repair and was done with the knowledge that it was not for the purpose of repair. 218 SSS contends that the decision maker on the question of whether or not to import the impugned HSV parts was Mr Ung, and that the whole tenor of his sworn evidence was that he had no actual knowledge that the importation was not for the repair purpose and that indeed his whole endeavour was to ensure as best he could that there was no use other than for repair. SSS submits that the relevant time to assess the purpose of Mr Ung was the time of the importation and that whilst aspects of the quantity and precise types of parts to be imported were left to Mr Chuah, Mr Ung was the relevant decision maker. Further, SSS submits that the only case advanced against Mr Chuah is that he had actual knowledge that the importation was not for the repair purpose. He gave sworn evidence to the contrary and this was not dislodged in cross-examination.

6.3.1 The impugned HSV parts Introduction 219 Section 72(2) of the Designs Act requires GMH to establish that for each of the alleged infringing acts, the relevant SSS party knew or ought reasonably to have known that such use was not for the purpose of repair. The relevant areas of inquiry are accordingly: (1) What is the act of infringement in respect of which the purpose must be established? In the case of importation, the acts are identified in section 6.1 above. (2) Who, within the corporate entity, has the relevant actual or constructive knowledge? (3) What is the actual or constructive knowledge of that person or persons? What is the relevant act of infringement? 220 GMH alleges that each of the SSS companies imported the impugned parts. Each is a separate legal entity, and the relevant non-repair purpose must be established by GMH in relation to each. The evidence indicates that, at least in relation to the sourcing and importation of parts, the companies operate as a group. The evidence indicates that the process of identifying products for importation and sale was organised centrally within SSS by senior management, in particular Ms Neoh, Mr Ung and Mr Chuah, who each had a role across all of the SSS companies insofar as it concerned importation. Accordingly, for present purposes, it is appropriate to consider the importation for all SSS companies on the basis of the knowledge of these individuals. Whose state of mind is relevant? 221 Mr Ung is the ultimate shareholder and sole director of each company. He is at the top of the corporate hierarchy. Even though he describes his position as semi-retired, it is apparent from the evidence that he took an active interest in the approach that SSS should take to the impugned parts, and in particular to the impugned HSV parts. Mr Ung delegates responsibilities to various employees. Mr Chuah has the responsibility of determining whether to source a particular part and the quantities to buy but he reports to Ms Neoh and, in the case of the importation of the impugned HSV parts, he reported to Mr Ung. Mr Chuah specifically sought Mr Ung's approval prior to the first importation of the impugned HSV parts. 222 The impugned HSV parts were regarded by Mr Ung to be in a special category. SSS Melbourne had, in 2010, been sued for design infringement by GMH and SSS Melbourne had contested the case. It was settled in February 2011. I accept the evidence that those proceedings taught Mr Ung to be careful when dealing with registered designs, a caution that was shared by Ms Neoh and Mr Chuah. It is in this context, that the first conversation between Mr Ung and Mr Chuah in early 2012 concerning the importation of the impugned HSV parts must be considered. 223 Mr Ung's written evidence is that, in about 2012, Mr Chuah approached him with a proposal that SSS import and sell aftermarket HSV parts. According to Mr Ung, Mr Chuah told him that he thought SSS should try to source the front bumper bar to go with the bonnet for repairing HSVs damaged from front-on collisions, as the original car manufacturer parts were a very high price. Mr Ung says that he thought that it was a profitable opportunity, not only because of the high margin on the original car manufacturer parts, but also because he understood that SSS would effectively be an exclusive supplier of these aftermarket parts. He understood that a supplier might be able to develop the tooling to make the parts and that there may be a delay before they became available. Mr Ung also states that Mr Chuah informed him that the parts were the subject of registered designs, and that based on his previous experience with GMH he knew that there was a risk of legal complaint. He wanted to know whether it was legal for SSS to sell them, for example, under the right of repair. This led him to seek legal advice. 224 Mr Ung was taxed on this evidence in cross-examination. In closing submissions, GMH submits that his reference to repairing HSVs damaged by front-on collisions and registered designs was self-serving evidence and should be rejected because: (1) Mr Chuah did not give evidence of such a conversation; (2) Mr Chuah gave evidence that he had no knowledge of who would buy the HSV parts or the purpose that such a person would have when buying them; (3) Mr Chuah said the conversation with Mr Ung was about "patent design" (being registered designs) and concerned the legal risk, but he could not remember anything else being discussed; and (4) The discussion led to seeking legal advice about managing the problem of potential infringement of the registered designs, which GMH submits means it is less likely that the repair issue was raised at the meeting between Mr Ung and Mr Chuah. 225 None of the matters cause me to doubt the thrust of Mr Ung's written evidence. By early 2012, Mr Ung had already grappled with GMH in relation to a previous design infringement case, and I accept as cogent that he was sensitised to issues arising from registered design rights as a result of those proceedings. Furthermore, I have concluded above in section 5.2.3 that the business of SSS was concerned with the supply of parts for the purpose of making repairs. 226 In my view, it is credible that Mr Ung would, at an early stage, be thinking of the dangers of infringement but at the same time consider that his business is one directed to selling spare parts for repairs. I accept that Mr Ung recalled for the purpose of his written evidence, when Mr Chuah did not, that during their conversation the use of the front bumper and bonnet for repair of front-on collisions for HSV vehicles arose. Mr Ung's account is also supported by Ms Neoh's written evidence, which also refers to being informed of the proposal to import the impugned HSV parts, probably by Mr Chuah in early 2012, after which she sent an email to Mr Rickards on 29 March 2012 (I discuss this further below). Mr Chuah's written evidence is that he told Ms Neoh about the proposal to import the HSV parts, but he could not remember whether he informed Mr Ung or not. However, during cross-examination he gave evidence of the Ung conversation. From that evidence, it is apparent that Mr Chuah did recall a first conversation with Mr Ung. He did not remember all of it, although he did remember that it concerned sourcing HSV parts from supplier 3, and that they were protected by "patent designs" (a term used within SSS erroneously to mean registered designs) that he had searched for and found prior to his conversation with Mr Ung. 227 These matters lead me to the view that the conversation to which Mr Ung referred did take place in early 2012 and that it was then that Mr Ung first signalled his approval of the importation of the impugned HSV parts. It is my view that thereafter Mr Ung maintained supervision of the approach that the SSS parties would take to the sale of these parts and the impugned VE parts, and the general policy that SSS maintained and developed in relation to sales. His role and involvement in the decision-making in relation to the importation of those parts indicates that he was relevantly the directing mind and will of the SSS parties; Krakowski at 582-3; Kojic at [96]. Whilst Mr Ung did delegate the nuts and bolts of the task to Mr Chuah, it was Mr Ung who first gave approval for the importation and then directed his subordinates in the implementation of the repair only policies in the context of ensuring to the best it could that sales were made for the repair purpose. 228 In relation to his more general supervisory role, in his affidavit evidence Mr Ung states that he took steps to direct and authorise SSS to establish the various repair only policies that the SSS companies implemented, as set out in the chronology. Mr Ung's evidence in this regard was not challenged and I accept that they reflect his views as to appropriate steps to take. 229 As the sole owner and director of the SSS Parties, Mr Ung was plainly in a position to make such decisions. In my view, he was the relevant decision maker in relation to importation of the HSV parts and it is his knowledge that is relevant for the purpose of s 72. 230 I am reinforced in my view that the relevant corporate knowledge is to be considered by reference to Mr Ung by the evidence of Ms Neoh. Once the proposal to import the impugned HSV parts was passed on to her, she emailed Mr Rickards on 29 March 2012 and sought his advice. On 27 April 2012, he provided her with an advice he had written in 2004, when the Designs Act came into force, concerning s 72. On 17 July 2012, he responded substantively to her request and, on 25 July 2012, Ms Neoh copied Mr Ung into that advice. Mr Ung, Ms Neoh, Mr Chuah and Mr Rickards then met and Mr Ung decided that the first repair notice should be applied to all invoices. 231 It is not necessary for me to finally determine whether Mr Chuah's knowledge regarding the importations should also be attributed to SSS or should be attributed to SSS in lieu of Mr Ung's knowledge because, for the reasons stated below, even if this were the case I would not find that Mr Chuah had actual knowledge that each of the importations was not for the repair purpose and constructive knowledge on the part of Mr Chuah was not pleaded by GMH. 232 There is some suggestion in GMH's closing submissions that the knowledge and purpose of Mr Chuah may be combined with that of Mr Ung for the purpose of divining the purpose of SSS. I also reject that suggestion. I have rejected the proposition that aggregation of knowledge is available in the context of s 72 of the Designs Act. In any event, such an allegation is not pleaded. Nor has any pleading suggested that there was a duty or obligation on the part of Mr Chuah to communicate such information to Mr Ung (cf Kojic per Allsop CJ at [66]). What is the relevant time for considering purpose? 233 The correct time for assessing the relevant purpose is the date on which each act of importation took place. It is artificial and in my view incorrect to view the question of purpose at the earlier date of 2 July 2012, when Mr Chuah informed supplier 3 that it could start to develop the bumper and it responded that it would start 'very soon'. The first actual importation of the impugned HSV parts was on 31 July 2013. Ms Neoh had indicated, on 29 March 2012, that the importation was subject to the provision of legal advice. Mr Ung gave evidence that he wished for procedures to be put into place to ensure that the repair only purpose was given effect. The advice given and the steps taken after 2 July 2012 have been summarised in the chronology. 234 To say, as GMH urges, that the statutory question of purpose under s 72 is to be determined only at the time when the commitment to import the fascia parts was made, and that subsequent events "did not alter or displace this purpose" does not address the reality of the situation. The purpose of SSS is to be considered at the time of importation, having regard to all of the relevant surrounding circumstances leading to that point. What was Mr Ung's actual knowledge? 235 I do not consider that GMH has established that Mr Ung had actual knowledge that the impugned HSV parts would not be used for the repair purpose. 236 As I have noted, the focus of SSS' business is generally to sell spare parts for the repair of damaged motor vehicles. I accept the evidence of Mr Ung that this is how he understood and intended the business of SSS to operate. I accept that Mr Ung decided that SSS could sell the impugned parts because they fell within with the ordinary business model of SSS, but that because of his sensitisation to issues of design infringement he considered it prudent and appropriate to make the purpose of SSS' business explicit and communicate that to its customers and staff. This was, he said, both to help reduce its "legal risk" and to put customers on notice of the repair requirement. The first measure that he implemented, after discussion with Ms Neoh, Mr Chuah and the solicitor, Mr Rickards, was to introduce the first repair only notice to be placed on all invoices. That took place from 25 July 2012, well before the first act of importation. As I explain further below, I accept that the repair notice reflected the intention of Mr Ung and each of the SSS parties insofar as it concerned the parts proposed to be imported. It is true that this notice carried with it a recognition that customers of SSS may otherwise use the parts that they buy for non-repair purposes, but the statutory test requires the focus to be on the importer's purpose not that of its customers. Section 72(2) of the Designs Act provides that the onus is placed on the owner of the registered design to prove that parts were being (in this instance) imported for non-repair purposes. It is not the legislative intention to focus attention on what purchasers actually do with the parts once sold, but rather to focus on the knowledge of the importer. Further, the question is not what might happen to the parts once they are sold, but whether SSS knew that the importation was not for that purpose. In my view, GMH has not established that Mr Ung had that knowledge. 237 I consider that the evidence of the procedures implemented by Mr Ung prior to 31 July 2012 supports that conclusion. Mr Rickards states in his email of 31 July 2012 that the intention of the first repair notice is to state that all parts sold by SSS are for use only in repairing vehicles. He says "This is, in fact, no more than formalizing what is already the reality of our business". GMH contends that the first repair only notice was "window dressing" and that SSS was not concerned with whether in fact imported parts would be used for repair purposes. It submits that Mr Ung understood that he was being told by Mr Rickards to claim that sales were for repair purely for legal defensive reasons. However, having regard to his oral and written evidence, that is not how I understood Mr Ung's evidence. 238 GMH refers to a number of matters that it submits were known to various employees of SSS, including Mr Chuah and most particularly Mr Nikic, in the context of sales that took place to purchasers who it contends were not offering the parts for the repair purpose but rather for vehicle enhancement. However, GMH does not advance a case that the knowledge of Mr Nikic is relevant to the acts of importation alleged. Nor has it established that Mr Ung had relevantly the same knowledge as Mr Nikic or Mr Chuah. I address the relevance of the knowledge of Mr Chuah in more detail below. 239 In its reply particulars GMH contends that the actual knowledge of Mr Ung (and Mr Chuah) that the imported parts were not for a repair purpose is to be inferred from the continued importation of those parts after receipt of the letter of demand from GMH on 10 December 2014. However, all of the alleged acts of importation had been concluded by the time that the letter was sent. It is accordingly irrelevant to the importation case.

6.3.2 Inferred actual knowledge or constructive knowledge of SSS; reliance on Knowledge Factors (1)-(3) 240 In the alternative to the arguments considered above, GMH contends that the actual knowledge of the SSS companies (via Mr Ung) is to be inferred from Knowledge Factors (1)-(3), namely; (1) the consumer demand for the SSS parts to be used for the purposes of enhancement amongst owners of Holden vehicles; (2) the limited consumer demand for the impugned parts to be used for the purpose of repairing original vehicles; and, in light of these factors, (3) the fact that the number of the impugned parts that were imported and supplied by SSS were higher than the numbers that SSS could reasonably expect would be used solely for the purpose of repair. I refer to this below as the limited consumer demand submission. Alternatively, GMH contends that Mr Ung ought reasonably to have known that the importation of the impugned parts was not for the purpose of repair by reason of Knowledge Factors (1)-(3) above. GMH has not pleaded, and cannot rely on the constructive knowledge of Mr Chuah in this regard. 241 In relation to Knowledge Factor (1) - the consumer demand for the SSS parts to be used for the purposes of enhancement amongst owners of Holden vehicles - there is no dispute that some people might wish to enhance the appearance of their lower specification vehicles with VE or HSV parts. The evidence of Mr Finn and Mr McDonald establishes that there is a niche market for that purpose. However, Mr Finn, by virtue of his role in Premoso, is in a unique position to know of the demand. By no means could it be said that his knowledge of the market for such products was general knowledge, or even knowledge that could be assumed in the car industry. Indeed, figures of the number of HSV and upmarket Commodores that have been sold remained confidential throughout the proceedings until closing submissions, when confidentiality was waived. At best, Mr Ung was aware that the market for HSV parts was a "niche" one. 242 The evidence given by Mr Ung in cross-examination indicates that he had a general awareness of customers sometimes modifying the looks of their vehicles (in the context of Altezza lights and Chevrolet grilles - neither of which were protected by registered designs), but GMH was unable in closing submissions to point to any evidence of his knowledge of the practice in relation to Holden vehicles or provide a cogent basis upon which it might be imputed to him. 243 In relation to Knowledge Factor (2) - the limited consumer demand for the impugned parts to be used for the purpose of repairing original vehicles - the evidence again comes from Mr Finn and Mr McDonald. Mr Finn gives evidence of the small number of HSV vehicles sold and on the road (about 9,000) in comparison to the number of VE Series I and Series II Commodore Sports models (about 150,000) by 31 July 2013. Mr McDonald gives evidence that most of these are likely to be comprehensively insured, and that many insurance companies would not authorise the use of parallel imported spare parts acquired from SSS for use in repairs made to those vehicles. He says that, in his experience, repairers rarely keep stock of replacement parts and that where a car is insured, the vehicle owner plays no part in ordering parts on an insurance claim. In his experience, genuine original equipment manufacturer replacement parts would tend to be used for replacement parts for insured cars that are less than 5 years old. Drawing the threads of these matters together, GMH submits that SSS knew or ought reasonably to have known that "any readily available consideration of the likely market for the use of SSS parts for the repair of HSV vehicles was likely to be very small". 244 The difficulty with this submission is, again, that the knowledge of Mr Finn was specialised and for the most part was confidential to GMH until the closing submissions when confidentiality maintained in the data up to that point was waived. Plainly enough the details of the relevant number of HSV and Commodore cars on the road, let alone their age or the number of parts for repair that they are likely to need to use, could not be known to Mr Ung. Nor would I consider that Mr Ung knew of details of the practices of insurance companies in the manner described by Mr McDonald, who is an expert in such things. It is not the knowledge of Mr Finn or Mr McDonald that is relevant here, but that of SSS (here, via Mr Ung). The evidence was that SSS did not conduct any assessment, prior to ordering the impugned parts, of the likely market for use of the parts. 245 Accordingly, the third aspect of GMH's case in relation to inferred actual knowledge or constructive knowledge based on Knowledge Factor (3) - that by reason of Knowledge Factors (1) and (2), the fact that the number of the impugned parts that were imported and supplied by SSS were higher than the numbers that SSS could reasonably expect would be used solely for the purpose of repair - cannot be established. I would not infer or find that Mr Ung knew of or ought reasonably to have known of these matters.

6.3.3 The actual knowledge of Mr Chuah 246 In the event that Mr Chuah's knowledge of the importations of the impugned HSV parts were to be attributable to SSS, I would nevertheless find that GMH has not established that the importations were not for a repair purpose. 247 GMH submits that Mr Ung left the issue of the number of the impugned HSV parts to import to Mr Chuah and that Mr Chuah decided to import 600 units per part with no knowledge or information of who would buy them or what purpose a purchaser would have. It contends that Mr Chuah developed his proposal to import the HSV parts as a "package" so that they could be sold as a kit for the purpose of enhancement. It submits that Mr Chuah was aware that SSS had obtained legal advice concerning s 72, but his regard for the repair issue arose entirely in the context of "insulating" the SSS companies against likely infringement and had nothing to do with his judgments about the importation regarding the numbers of parts to be imported, types of parts to be imported or their likely use. GMH submits that the likelihood of a non-repair use occurring could only have increased in Mr Chuah's mind over time as notice of non-repair usage accumulated. GMH submits that, as a matter of law, knowledge that the importation of parts for sale might be used for repair is not sufficient to engage the operation of s 72 of the Designs Act. It submits that Mr Chuah was clearly on notice that if SSS were to import the "copy HSV parts", the parts would also be able to be used to customise or enhance the appearance of base model Commodores and there would be a substantial demand for such. GMH relies on several matters that Mr Chuah knew, including specific sales to vendors engaged in vehicle enhancement. 248 I reject these submissions. The choice to import 600 units per part arose because it was the minimum quantity supplier 3 was prepared to accept to develop and sell the parts. That was how the products were to be acquired from the supplier. The evidence does not support the submission that that was how SSS planned to sell them. The evidence indicates that Mr Chuah took an approximation based approach to obtaining product for SSS to sell. He acquired parts and tracked movement of inventory to see if more were required, or if they were selling slowly and would have to be discounted. It was not particularly scientific, but nor is it indicative of a non-repair purpose. Furthermore, the decision of Mr Chuah to import 1,200 DRLs from supplier 4 and HSV bonnet moulds from supplier 3 in May and September 2014 tends to suggest that the argument based on kit sales is misconceived. By those dates, many of the 31 July 2013 parts had been sold. Further, I reject the proposition that Mr Chuah regarded the advice concerning s 72 and the first repair notice to be "window dressing". Whilst the language of his 19 April 2013 email to sales managers (discussed at paragraph [164] above) could have been better worded, the request that they host a sales meeting to reinforce that "our HSV parts are for repairs only" indicates his understanding of the SSS policy and, for the reasons discussed above, I accept that SSS' business was that of supplying parts for the purpose of repair. Finally, I reject the submission that the likelihood of a non-repair use occurring could only have increased in Mr Chuah's mind over time as notice of non-repair usage accumulated is a decisive factor in favour of GMH. As an employee of SSS, Mr Chuah saw as time went on that SSS was increasingly adamant that its sales should not be for a purpose other than repair, and he went out of its way to inform customers and staff of that fact. No evidence indicates that his purpose was other than to adopt the policies of SSS.

6.3.4 Importation of the impugned VE parts 249 The position in relation to the importation of the impugned VE parts is somewhat different. The relevant acts of importation took place on 4 May 2011 (with SSS Sydney and SSS Queensland receiving shipments on 19 May 2011 and 16 June 2011 respectively) and 1 December 2012. The evidence indicates that Mr Chuah was responsible for deciding to import these parts. Mr Ung gives no evidence of any involvement in the decision to do so. Accordingly, I find that Mr Chuah is a relevant person whose state of knowledge represents knowledge of each of the SSS companies in relation to the impugned VE parts. 250 I have earlier referred to the 2010 design infringement proceedings between GM Holden and GMGTO on the one hand and SSS Melbourne on the other. Those proceedings were settled on 24 May 2011. GMH submits that it would have been apparent from that dispute that GMGTO held registered designs for certain parts of its Holden vehicles. It submits that in cross-examination Mr Chuah gave evidence that he decided to make the parts available for sale in Australia for "any purpose" and that nowhere did he have in mind the purpose of repair when importing these parts. 251 However, I am not satisfied that GMH has discharged the burden of establishing that the importation was not for the repair purpose. I have above found that the business model of SSS has at all material times since before the first impugned importation been to sell aftermarket parts for use in the repair of motor vehicles. There is no evidence to suggest that the importation of these parts was not arranged in the ordinary course of that business. Further, Mr Chuah gave evidence in chief that the importation was in accordance with this business model and that he was involved in and participated in the implementation of the repair only policies. That evidence was not dislodged in cross-examination. I do not consider that Mr Chuah knew or that Mr Chuah, or a person in his position, ought reasonably to have known that it was not for that purpose.

6.4 Conclusion in relation to importation 252 GMH has not established that SSS knew or ought reasonably to have known that the importation of either the impugned HSV products or the impugned VE parts was not for the repair purpose.

7. KEEPING 253 GMH submits that there is little practical distinction to be drawn in the analysis between alleged infringement by importation for sale and keeping parts for the purpose of sale, and relies on substantially the same matters in support of this aspect of the case. It follows, for the reasons that I have set out in the preceding section, that GMH has not established that SSS knew or ought reasonably to have known that the keeping of the impugned products for the purpose of sale was not for the repair purpose.

8. OFFERING FOR SALE 254 GMH contends that there is very little evidence as to how the impugned parts were promoted or offered for sale. It relies on two documents in support of its contention that SSS offered the impugned parts for sale in circumstances where it knew or ought reasonably to have known that the parts were not offered for the repair purpose. 255 The first is an email sent by Mr Nikic, the SSS Sydney Sales Manager, to Ms Neoh on 14 May 2014 entitled "HSV Call Up". The email says: Teng no massive sales this month. Still a few customers to follow up on however DRL moved the most as they were new. Will continue monthly and looking for an[y] other online guys we can target. 256 Attached to the email is a list of SSS Sydney customers and telephone numbers with handwritten comments on it. The handwriting was, in cross-examination, tentatively identified by Mr Nikic to be of "Brendan" for some 21 of the entries and "Kevin Woolfe" for the balance, who are the SSS Sydney salesmen responsible for making the call ups to these customers. Judging from their names, the customers listed were, in the main, wreckers and spare parts or accessory vendors. It was not suggested that Mr Nikic was aware of the content of the conversations to which the handwriting referred. 257 In cross-examination, Mr Nikic interpreted some of the handwritten comments made, and accepted that 4 of the some 42 notes referred to the sale of DRLs, in two instances as 1 or 4 pairs, and in two others as 10 pairs and 25 pairs. The customers to which sales were made were Commodore Shop Cardiff, Oz Car Parts, Sydney Special Vehicles and Just Car Parts, the last three of which GMH identifies as "online sellers". 258 GMH submits that by targeting online sellers and by selling multiple pairs of DRLs, Mr Nikic (and accordingly SSS) cannot be considered to have offered these parts for the repair purpose. It submits that the promotion is not in the nature of an offer for sale that could be for the purpose of repair, because SSS could not know that a customer such as a panel beater might need to repair a vehicle by using a HSV part at the time. Implicit in this submission is that SSS cannot, in conformity with the repair purpose, sell or offer for sale parts in multiple numbers, because to do so indicates a stockpiling of parts by a customer, which is antithetical to the repair purpose. 259 I do not accept GMH's submissions. By 14 May 2014, the first repair notice and the second repair only notice had been applied by SSS. Mr Nikic was aware of the repair only policy and, in my view, it was plain to all sales people (who were responsible for creating invoices on which the repair only notice appeared) that SSS supplied parts for repair only. No evidence identifies what Brendan or Kevin Woolfe actually said to the sellers and I would not infer from the fact of the offer for sale of HSV parts or the fact that multiples of the same parts were sold that SSS knew or ought reasonably to have known that its offer was not for the repair purpose. In any event, the case on offering to sell as pleaded by GMH and argued in closing submissions does not rely on the actual or constructive knowledge of Brendan or Kevin, but on the knowledge of Mr Nikic. There is no intrinsic reason why wreckers and resellers of parts may not wish to acquire multiple parts for later use in the repair of vehicles. SSS is not required by s 72 to track inventory. It is sufficient that SSS have the requisite purpose and that the circumstances be that there is no reason why SSS ought reasonably to have known that the parts were not for the repair purpose. The sale to a customer for the apparent purpose of maintaining stock is not, of itself, a sufficient reason. 260 GMH submits that an inference of the kind made in Jones v Dunkel [1959] HCA 8; 101 CLR 298 should be drawn by the failure of SSS to call Kevin Woolfe to give evidence. This was one of a number of submissions made by GMH as to inferences. I address them in more detail in paragraph [306] below. It is sufficient to record that, even taking the inference at its highest, there is no evidence to suggest that Mr Woolfe did have knowledge that indicated that his offers were not for the repair purpose. I am not prepared to draw the inference sought. 261 The second document relied upon by GMH is the "F8 Specials list" dated 6 March 2013, which is a list of over 40 parts (including impugned VE parts) that SSS would sell for a discount if purchased in quantities of 3 or greater. GMH submits that the "business environment" of SSS was such that the primary motivation was to ensure that sales were maximised and that parts were "upsold". It offered bulk discounts for the sale of multiple parts. In these circumstances GMH submits that the offer of sale of parts to customers who did not first make a request for them intrinsically indicates that there was no repair purpose behind the sale. 262 I also reject this argument. As stated, the sale of multiple parts to one customer does not intrinsically indicate that the sale is not for a repair purpose. The fact that the F8 specials list includes impugned VE parts, with the consequence that those parts may be offered at a discount for the purchase of 3 or more units at a time, does not convey that SSS knew or ought reasonably to have known that, contrary to its own purpose, the parts would not be used for the repair purpose. I further note that in respect of this allegation GMH does not identify a particular actor within SSS who is said to have had the non-repair purpose. For that reason also, this aspect of the GMH case must fail.

9.1 Introduction 263 GMH advances its selling infringement case having regard to the 26 representative transactions identified below. The structure of GMH's closing submissions was first to make lengthy general comments about the manner in which SSS conducted its business, before making its submissions in relation to each of the representative transactions. The general comments were, in my respectful view, in many respects lacking in a disciplined focus on the nature of the pleaded case, the requirements of the s 72 defence and the evidence adduced. Regrettably, this resulted in a fairly diffuse exposition of the issues. Before addressing the particular transactions, I first turn to consider some of the general submissions, noting all the while that whatever role the considerations advanced amongst them may have, each representative transaction is to be considered in the context of the particular alleged act of infringement.

9.2 The case as pleaded and summarised in GMH's closing submissions 264 In closing submissions, GMH refers to the aspects of the reply particulars set out below which it asserts are the basis upon which the SSS companies knew or ought reasonably to have known that their sale of the impugned parts was not for the repair purpose. In each case, an individual is identified as the person to whom the relevant knowledge is attributed. Generally, for SSS Melbourne it is Mr Wills, for SSS Sydney it is Mr Nikic and in some instances Mr Woolfe (which is controversial, as I explain later) and for SSS Queensland it is Mr King (and possibly Mr Drury in the case of the sales to BKWT). In addition, the particulars identify Mr Ung and Ms Neoh, although in its closing submissions GMH does not rely on the knowledge of Ms Neoh. 265 In closing submissions, GMH addressed each of the Knowledge Factors relied upon both individually and in a general sense, concluding that each alone would lead to the conclusion that the sale in issue was for a non-repair purpose. Often, when it comes to the individual transactions, it has been difficult to evaluate which of the general submissions GMH relies upon. Even so, I commence by addressing the general points put, before turning to each of the example transactions.

9.2.1 The limited customer demand submission (Knowledge Factors (1)-(3)) 266 Knowledge Factors (1)-(3) relate to the limited consumer demand submission that I have addressed in the context of importation in section 6.3.2 above. I consider that the same reasoning applies in relation to the selling case and therefore reject this submission.

9.2.2 The name, nature or conduct of customer submission (Knowledge Factor (4)) 267 Knowledge Factor (4) is that the nature or name of the businesses to which SSS sold the impugned parts was indicative that the customer had not used and would not in the future use all or some of the impugned parts for the repair purpose (the name, nature or conduct submission). In its closing submissions, a central aspect of the case focuses attention on what GMH describes as "online sellers". It submits that the evidence of the SSS witnesses indicates that the main categories of customers of SSS are panel beaters and smash repairers who do not buy stock online. Online sellers are different. It submits that the evidence shows "overwhelmingly" that such online sellers are directed to the upgrade or customisation of cars and that it is "inconceivable" that SSS sales managers were unaware of this fact. As a consequence, it submits that SSS must have known or ought reasonably to have known that customers who operate online, or eBay parts stores, were not likely to be supplying the impugned parts to those in the smash repair industry. 268 Relying on the evidence of Mr McDonald, GMH contends that whilst repairers or wreckers would not be likely to acquire stock through an intermediary such as an online seller, when they could go direct to SSS, a domestic end user would do so for convenience, despite paying a mark-up on SSS' prices to do so. That is the type of person engaged in customisation. GMH submits that, since SSS knew at all relevant times that their panel beater and smash repairer customers did not generally order online, they also must have known or ought reasonably to have known that parts supplied to customers who operate online or sell parts via eBay were not likely to be supplying the impugned parts to those in the smash repair industry. 269 Furthermore, GMH submits that where the name of the customer describes the nature of the customer's business, this is a "giveaway". Every salesperson at SSS had to identify the customer before entering the order into the SSS IT system, and where it includes reference to enhancement or customisation (such as "Instinct Vehicle Enhancements") it is reasonable to assume that the focus of the purchaser's business is vehicle enhancement. Further, GMH submits that SSS sales staff were very well versed in the nature of the businesses conducted by two of the customers involved in the example transactions, namely SSV and Panel House, and also points to email footers that it says left little to the imagination concerning the likely use of the parts sold thereto. GMH contends that, even where the SSS Companies did not know from the name, nature or conduct of a customer's business that the sale of SSS Parts was not for the purpose of repair, at the very least SSS was on notice that a sale could be for a non-repair purpose and "in the face of such a possibility the SSS companies, acting reasonably and prudently, should have made further enquiries". 270 Whether or not the relevant SSS party had the requisite knowledge depends on the circumstances applicable to each example transaction. This will include taking into account the name and nature of the business to whom the part is sold. However, as a general proposition, I do not accept the submission that a sale to what GMH characterises as an online seller will per se confer knowledge of the fact that a sale is for a non-repair purpose or that an individual necessarily ought reasonably to have known that fact. The evidence of Mr Nikic is that such sellers are "volume" buyers, not just in relation to VE or HSV parts, but generally and that there is lots of sales activity to these customers. Although such sellers may be a source for the sale of parts for customisation, Mr Nikic also considered that repairers (at least those that did not deal with SSS directly) would also buy from online sellers. Mr Nikic considered that online sellers were targeted by SSS because they were the customers likely to take SSS inventory in quantity and "do a deal" (that is, purchase larger quantities in exchange for discounts) and purchase parts for resale. Furthermore, the evidence of Mr Wills indicates that many businesses, including panel beaters, acquire parts online. I accept that evidence as persuasive. Although wrecker and panel beating businesses may, as Mr Ung said, be more traditional in their approach, I see no reason why they would not acquire and sell parts online also. I accept that the name and the nature and/or conduct of a customer may be factors to consider in the balance, but much will depend on how much information as to the nature of the customer's business is known by the relevant person. I address this in the context of each particular transaction in more detail below.

9.2.3 The bulk sales and frequency of sales submission (Knowledge Factors (5) & (6)) 271 GMH submits that where the impugned parts were sold by SSS to a customer in "bulk", either by number of parts or frequency of orders, the Court should infer that the relevant SSS party knew or ought reasonably to have known that the sale was not for the purpose of repair. GMH makes this submission based on the contention that the SSS parties knew or ought reasonably to have known through Mr Chuah and Mr Ung (a) that there was a lack of demand for aftermarket HSV and VE Commodore Sports parts for repairing original vehicles; (b) that there was a demand for the impugned parts for the purpose of customisation; and (c) that as a consequence orders placed for the impugned parts in multiple quantities from a single customer were indicative of non-repair use. This was particularly apposite for HSV parts, given the scarcity of the vehicles. Given these matters, GMH submits that supplying in 'bulk' could not be for a repair purpose and that as a consequence the size of an order for the impugned HSV or impugned VE parts would inform SSS personnel that the sale was not for the repair purpose. 272 There are several difficulties with this submission. First, for the reasons set out section 6.3.2 above, I do not accept that Mr Ung and Mr Chuah were aware of the number of HSV and VE Commodore sports vehicles or the level of demand for the relevant parts for the purpose of repair. Further, it was not suggested that other pleaded individuals (such as Mr Nikic, Mr King or Mr Wills) would have such knowledge. Secondly, the loose description of SSS sales as "bulk" is not of assistance. The customer base and market of SSS is the wholesale mass market repair industry. Mr Nikic gives evidence that a quantity of 10 units per part is a wholesale order, which is a typical order for SSS generally. Purchasers often place orders in bulk in order to obtain volume discounts. The evidence of Mr Nikic, Mr Wills and Mr King is that orders of multiple units of up to 10 (or, in the case of Mr Wills, 3) were normal, and were not indicative of vehicle enhancement. None of those represent a bulk sale in the sense that it was of a size that would alert those individuals to an abnormally sized transaction. 273 I also reject the submission by GMH that SSS' decision to abolish bulk sales indicates a recognition by SSS that these sales were not for the repair purpose. I accept the evidence of Mr Nikic, Mr Wills and Mr Ung that bulk sales were ceased because of the introduction of the VIN system, which was a measure of enforcement taken to minimise the prospect that despite the SSS policies up to that point, a customer might nevertheless attempt to acquire a part for a purpose of which SSS did not approve. 274 Ultimately, GMH puts its submissions on this point too high and with too much generality. Whilst the size of a particular sale may, together with other factors in some circumstances, lead to an inference of actual knowledge, or to a conclusion that the relevant SSS entity (via a human actor) ought reasonably to have known that a sale is not for the repair purpose, the sale of multiple units in the order of 10 units or so nor frequent sales of the kind made on the evidence, is not, of itself, likely to do so.

9.2.4 The sale of kits and pairs submission (Knowledge Factor (7)) 275 In Knowledge Factor (7), GMH contends that the combination, number and relationship of the parts to the overall appearance of the vehicle sold by SSS were such that it was unlikely that some or all of the sales of the impugned parts were being used for the repair purpose. GMH submits that when one or more sets of corresponding left and right pairs of the impugned HSV parts are sold by SSS to a customer over one or more contemporaneous orders, this is strongly indicative of an upgrade and not a repair use. GMH also submits that in minor collisions or everyday car park scrapes a vehicle is more likely to sustain damage on its plastic bumper than to individual components that are set within the bumper and which are accordingly shielded from impact. More parts are likely to be damaged as the severity of the impact increases. Relying on evidence of Mr McDonald, GMH submits that the purchase in one order of a bumper, grilles, spoiler and DRLs would not be typical of an order of parts for repair. In his view, these parts would be typically ordered all at once to upgrade a standard Commodore to give it a HSV 'look'. In particular, GMH relies on Mr McDonald's evidence that it was particularly difficult to imagine a scenario where left and right sides of a vehicle were damaged simultaneously together with the front or back unless there was a major collision, which would probably also involve structural damage and damage to other parts of the car. 276 Further, GMH submits that a collision with such severity would also require other components to be replaced, such as undertrays and plastic liners, at least some of which were offered by SSS but were generally not purchased together with sets of the impugned HSV parts. However, the suggestion made by GMH that the sale of all of the "kit" parts in one lot necessarily connotes that the parts are to be used for the purpose of enhancement is not supported. Whilst Mr McDonald identifies the parts that he opines could be sold as a "kit" for that purpose, the evidence indicates that frequently customers contact SSS asking for all of the parts for the front of a vehicle because the front has been damaged and requires repair. Mr Nikic, who has over 10 years' experience in the business, gave evidence that he received such requests daily. Similarly, Mr Wills gives evidence that the sale of a front bumper bar assembly would be consistent with a sale for repair because, for example, either the vehicle concerned had a front end collision and all of the parts needed replacement, or the car had been hit on one side, which can push the front grille of the car off line, causing damage to the entire front end. Whilst GMH submitted that this evidence was speculative and inherently implausible, neither witness was challenged on the point and, in any event, I regard it as neither. I accept the evidence of Mr Nikic and Mr Wills, although this does not address the scenario of front and rear parts being damaged. In my view, each of these points is answered by the matters to which I refer below in paragraph [279]. 277 Moreover, I do not accept that the term "kits" referred to by GMH has a clear meaning, or that SSS has sold parts as "kits" in conformity with the meaning ascribed to it by GMH in its submissions. The evidence indicates that Mr Hughes regards a kit to involve front and rear bumpers, the side skirts (running below the doors) and sometimes a wing added to the deck lid at the back. To Mr Searle, what amounts to a "kit" has changed over time from including the front bumper, side skirts, the rear bumper and rear spoiler, to including the front bumper, rear bumper (with an addition to the bottom), a rear wing and sometimes side skirts. There is no evidence that SSS marketed the sale of a collection of parts or that SSS somehow packaged (physically or otherwise) parts as a "kit" of any description. 278 GMH further submits that there are examples of SSS customers purchasing only a subset of a 'complete set' of HSV parts, such as pairs of grilles, fog lamp covers and/or DRLs, but not the bumper cover or other components (an example given is Transactions 10 and 14, which I discuss in more detail below). It submits that it is impossible to imagine a scenario where each of these components is damaged to the point of requiring repair, but the bumper cover is not, because the bumper would be the first point of impact in a collision. Accordingly, it submits that an order absent the bumper in such circumstances should be considered to be anomalous and indicative of a non-repair purpose. 279 In my view, the submissions made by GMH wrongly assume that relevant individuals within SSS have (or are expected to have) an extensive knowledge of its inventory, and track its sales closely with reference to the nature of the parts that it sells and the relationship between several parts sold at the same time. No evidence suggests that this reflects SSS' practice. In general terms, the evidence of the way in which SSS conducts sales is that it receives orders for parts from customers over the telephone. One salesperson is likely to receive over 100 sales calls a day in the normal course of business for something within the range of 32,000 parts that SSS offers for sale. The evidence does not support an inference that SSS sales people or sales managers correlated parts sold with their potential use, collectively or individually. In that context, the allegation that a customer ordering a particular set or sub-set of parts would signify, without more, a non-repair purpose cannot be accepted. Further, the evidence indicates that "genuine" HSV and VE parts have been acquired direct from Holden resellers as well as from SSS. A customer of SSS may source some parts from one and some from the other, meaning that the acquisition of some parts relevant to a potential repair job, but not all, does not mean that the order is not for the purpose of repair.

9.2.5 VINs (Knowledge Factor (8)) 280 In its reply particulars, GMH contends that the conduct of the customer when required to supply VINs or otherwise to authenticate that a sale is for repair was such that it was likely that some or all of the impugned parts were not being used for a repair purpose (for example, in cases where the customer supplied an incorrect VIN, incorrect registration number or abused the SSS staff when asked to supply such details). I address this factor specifically in the context of the transactions where it arises.

9.2.6 The relevance of the repair only policies (Knowledge Factor (9)) 281 In its reply particulars, GMH also contends that having imported, offered to sell and sold the impugned parts since May 2011, SSS later implemented various measures to restrict the use of those parts for purposes other than repair, such as using disclaimers on invoices or packaging and requiring the provision of VINs (i.e. the repair only policies). These measures are said by GMH to indicate a recognition on the part of SSS that sales of the impugned parts were or might not be for the purpose of repair. I have rejected this submission for the reasons discussed above, in particular, in section 5.4 and at paragraph [236].

9.3 Some further general points 282 Before addressing specific examples, the following general findings and observations are apposite. 283 GMH makes a number of further submissions that are not directed to any impugned example transactions, but are said to provide a sweeping basis upon which SSS knew or ought reasonably to have known that sales of the impugned parts in general would not be likely to be for the repair purpose. I set out a few examples below. Again, one must be cautious not to confuse the nature of the case as alleged. The reply particulars identify particular individuals within SSS who are alleged by GMH to have known that particular identified transactions were not for the repair purpose. If factors relevant to the imputation of such knowledge arise, they must be made good in relation to those individuals at the time of the transaction. 284 One example is where GMH makes some 'general observations' about the nature of the sales of the impugned HSV parts and compares this with Premoso's sales of genuine parts. It submits that sales numbers for SSS parts show similar numbers of individual bumper components have been sold by SSS, in particular grilles and fog lamp covers, suggesting that they are sold as complete sets or kits. Further, internal sales figures of SSS examined by GMH show that, over time, similar numbers of right and left hand matching components have been sold, suggesting (GMH submits) that they have been sold in pairs. By contrast, sales by Premoso of genuine HSV components for equivalent parts indicate that front bumpers outsell individual insert parts (grilles and lamps) by a ratio of 3:1 and there is a measurable disparity between right and left hand individual components, with left hand parts being sold in greater quantities because, as Mr Finn puts it, that is the side more often damaged. This reflects what GMH considers to be a "legitimate repair scenario". However, this form of analysis assumes that an individual within SSS to whom the requisite knowledge is to be imputed ought reasonably to have adopted the same forensic analysis. It also assumes that such a person; first, has knowledge of the actual sales of the impugned parts; secondly, can discern from that analysis what a "kit" amounts to; thirdly, knows what parts in a 'genuine repair scenario' are likely to be sold (a fact that appears to be based on knowledge of Premoso's sales figures, which are confidential, or at least based on knowledge of a market equivalent to that of Mr Finn, whose career has been directed substantially to the sale of HSV parts); and fourthly, is able to put these factors together on a running basis during the period of impugned sales to form the conclusion that sales were unlikely to be for repair purposes. GMH did not in its submissions concerning individual transactions identify such a paragon. I regard this submission to be of little assistance. 285 Another example involves a similarly flawed analysis of total sales. GMH submits that, before 31 August 2014 (when SSS implemented additional measures to restrict sales of parts), SSS sold similar numbers of impugned HSV parts as Premoso did, if not more, and for the entire sales period they have sold about as many fog lamp covers and upper grilles as Premoso (with sales of the other impugned HSV parts dropping below after 31 August 2014). It submits that given that two large insurance companies, IAG and Suncorp would not approve the use of SSS parts for the repair of HSV vehicles comprehensively insured by them, it is inherently unlikely that SSS would achieve such sales numbers unless sales were for purposes other than repair. This submission must also be rejected given the generality with which it is expressed. It is not legitimate in the present case to approach the knowledge of SSS on a global basis, and then assume very specific facts on the part of a notional, but unidentified individual whose knowledge is deemed to be that of a particular SSS party. 286 It is appropriate to address two further matters that were raised by GMH in the context of these Knowledge Factors. It submits that because certain facts were known to Mr Chuah, his knowledge of those facts may be imputed to all of the SSS companies. The reasoning advanced by GMH is as follows. It submits that the impugned HSV parts make up the majority of the components comprising the unique front end of the E2/E3 HSV Clubsport, Maloo and Tourer models. These parts can be fitted to VE Commodore based vehicles with no modification, and have been designed to do so. However, when fitted to any model of Commodore (that is, not a HSV vehicle), they will result in that vehicle being materially different from its overall original appearance. Further, although some of the HSV parts also suit a GTS (being the bonnet, DRLs and grilles), the fog lamp covers and bonnet moulds differ. If Clubsport/Maloo/Tourer fog lamp covers (that is SSS parts 500NEL and 500 NER) or bonnet moulds (560NBH) are fitted to a HSV GTS, this would result in a materially different overall original appearance of the HSV vehicle. GMH contends that the differences between the appearance of the front end of the GTS and the Clubsport/Maloo/Tourer were known to Mr Chuah, and that "accordingly, his knowledge of these differences may be imputed to all of the SSS Companies". In the context of the case concerning the knowledge of each SSS company, this appears to be a submission in support of the aggregation of knowledge of Mr Chuah with one or other of the persons alleged in the particulars to have actual or constructive knowledge that there was no repair purpose. For the reasons stated earlier, that approach is impermissible. It is also not pleaded. I do not regard it as relevant to the assessment of knowledge of a particular individual. 287 A further example of an impermissible generalisation, is where GMH submits that it is apparent from the description on the SSS invoices and on product labelling of particular parts which vehicles the impugned HSV parts were suited for. For instance, GMH submits that all HSV part descriptions include "10-ON" which, it submits, means that the part is for 2010 models onwards. That observation was unsupported by any evidence. It was however, used to form the basis for a submission that, by reason of each of the SSS parties' knowledge of the parts to which each of the impugned HSV parts was suited, the SSS company "must be taken to have known, or ought reasonably to have known, that the parts were not sold for the purpose of repair" and that "by reason of each of the SSS companies' knowledge of the parts which each of the impugned HSV Parts was suited (through Mr Chuah's personal knowledge), the SSS Company must be taken to have known, or ought reasonably to have known, that the parts were not sold for the purpose of repair". That rolled up submission does not address the specifics of any transaction and I reject it.

9.4 SSS Sydney sales to Instinct Vehicle Enhancement

9.4.1 Transaction 1 288 Transaction 1 is reflected in 2 invoices rendered by SSS Sydney on 23 January 2015 to Instinct Vehicle Enhancements (Instinct). The first is for various quantities of 13 different parts. Eight are the subject of registered designs, being; 13 x left and right fog lamp covers; 13 x left and right DRLs; 13 x HSV front bumpers; 13 x left and right upper grilles; and 13 x lower grilles. Five are not, being; 1 x VE Bonnet; 13 x left and right fog lamps; and 13 x left and right DRL brackets. The second was for 13 x left upper grilles only, which are the subject of a registered design. The total value of the invoices is about $15,000. The salesperson is named as Ms Lyndall Curtis. In its closing submissions GMH nominates Mr Nikic, the SSS Sydney Sales Manager, as the person whose knowledge is to be attributed to SSS Sydney. In the alternative, it asserts that Ms Curtis' knowledge should be imputed to Mr Nikic. The arguments 289 GMH submits that Mr Nikic was personally involved in the transaction 1 sales. Emails tendered in evidence indicate that this was the first and a big order from Instinct, and that Mr Nikic wanted the customer to be satisfied. It submits that Mr Nikic assumed from the name of the company that it was engaged in the business of selling parts for customisation. He also knew it was an online reseller. It submits that Mr Nikic should reasonably have assumed that the transaction was for enhancement purposes and that he was, at best, wilfully blind to the purpose of the sale and at worst "in denial". Furthermore, GMH submits that it is to be assumed that Mr Nikic looked up the Instinct website because he generally does so when there is a new customer, as Instinct then was. Had he done so, he would have seen that it promotes itself as providing custom vehicle enhancement. In addition, GMH submits that at the time of the transaction there was no requirement within SSS' systems for the provision of VINs from the customer. It also notes that 2 days earlier, on 21 January 2015, Ms Curtis and Mr Nikic had signed the repair only directive and were therefore, it submits, aware of the potential or demand for SSS HSV parts being used for upgrading or enhancing vehicles. 290 GMH submits, in the alternative, that to the extent Mr Nikic did not know the specifics of the transaction, Ms Curtis knew or should be inferred to have known that the request was not for a repair purpose. It submits that she had a duty to inform Mr Nikic and had the opportunity to do so. It submits that her knowledge should be imputed to Mr Nikic. I should record at this point that I reject this alternative submission. Ms Curtis is not a person whose knowledge should be imputed to SSS Sydney and, for the reasons given, the unpleaded assertion of aggregation should not be accepted. 291 SSS submits in response that, by the time of transaction 1 on 23 January 2015, SSS had 7 measures in place to ensure that parts were sold only for repair (see chronology). It emphasises that Ms Curtis had signed the directive only days before the sale and that Instinct described its online business activities as including "wholesaler", which was entirely permissible. Furthermore, it submits that a business name is not to be assumed to be indicative of a customer's business activities. Consideration of transaction 1 292 Mr Nikic is the sales manager for SSS Sydney and was personally involved in the sale. When it came to transaction 1, Mr Nikic accepted that it was the first and a big order as far as he was concerned and that SSS received a $10,000 upfront payment from the customer because it was new to SSS Sydney. He was aware that, by virtue of its name including the word "enhancement", Instinct engaged in the customisation of vehicles. However, he did not accept that it was acquiring the goods the subject of the transaction for the purpose of enhancement. His evidence was that SSS is in the business of wholesaling parts and he considered that the name chosen did not necessarily reflect the purpose to which the goods were to be put and, in particular, that a business did not do repairs. Further, he said that he was aware that, by the date of transaction 1, SSS Sydney had implemented a number of policies to ensure that the sale of the HSV parts was for the purposes of repair only and he assumed that his sales staff had applied the policies. At one point, he suggested in cross-examination that SSS Sydney sales staff were required to proactively tell a customer that parts were for use in repairs only. However, that statement is not supported by any document created at the time and is not mentioned in either Mr Nikic's or Ms Neoh's affidavit material, both of which addressed the systems in place in SSS Sydney. Whilst I generally find that Mr Nikic was an honest witness who endeavoured to give frank answers to questions asked of him, in this instance I think it most likely that he was mistaken in his recollection. Mr Nikic's error on this point, however, is not decisive. 293 For the reasons set out below, having regard to the whole of the evidence, in my view GMH has established that SSS had the relevant knowledge that transaction 1 was not for a repair purpose. 294 First, the email evidence indicates that Mr Nikic was personally involved in the sale and might be regarded as having chaperoned it to completion. Further, by this time, the 999 prefix requirement was in place and he was obliged personally to approve the sale. Mr Nikic exchanged emails with SSS Sydney sales staff congratulating them on obtaining the order and took steps to ensure that the order was prepared so that delivery could take place with the invoice. He was, at that time, familiar with the use of certain parts for the enhancement of vehicles and the acquisition by end-users of parts for that purpose. 295 Secondly, the name of the business ought to have alerted Mr Nikic to the possibility that the purpose was not to sell or offer the parts for sale for the repair purpose. The sale to Instinct took place a matter of days after Mr Nikic and Ms Curtis had signed the sales declaration and as discussed in paragraph [135] above, by this time Mr Nikic knew that at least some of SSS' parts could be described as "customisation items" and had been offered by him for that purpose. The name of Instinct indicated that it was possible that the impugned HSV parts sold could be used for a non-repair purpose. 296 Thirdly, whilst he could not recall whether he did have regard to the Instinct website, I find that he did so, in conformity with his normal practice to consider whether they are part of the automotive trade. Having done so, I find that Mr Nikic did, and furthermore that a person in the position of Mr Nikic ought reasonably to have seen the "about us page", which states that "Instinct Vehicle Enhancements (IVE) is an Australian based leading importer and wholesaler of Automotive Aftermarket Accessories. IVE has distributors in Sydney, Melbourne and Brisbane serving motor dealers, retail outlets and the trade alike with quality service, price and technical support." On the lower reach of the "about us" page on the website it says quite plainly that it offers (emphasis added): a complete end to end service… from purchasing high performance vehicles on your behalf, to a complete transformation, [Including] supercharging, interior upgrades, sat nav, rear cameras, DVD systems, custom paint work, wheels, exhaust systems, dyno tuning, cold air induction systems. Please contact us to further discuss your customization requirements. 297 There is no mention of panel repair or any other repair activity. 298 Fourthly, the number of HSV parts ordered was significant. As explained in section 9.2.3 above, whilst this alone is not determinative, taken with the other factors outlined above, I find it to be a relevant factor in this transaction.

9.5.1 Transaction 2 299 Transaction 2 is reflected in an invoice rendered to Oz Car Parts Pty Ltd (Oz Car Parts) on 6 May 2014 for 5 different parts, 2 of which are the subject of registered designs (10 x HSV left and right DRLs) and 3 of which are not (10 x HSV left and right DRL brackets; and 1 x VE bonnet). The salesperson is identified as "Kevin", who is Mr Kevin Woolfe. The arguments 300 GMH relies in its submissions first, on the knowledge of Mr Nikic; secondly, in the alternative, on the knowledge of Mr Woolfe; and thirdly, on the knowledge of Mr Nikic aggregated with the knowledge of Mr Woolfe. For the reasons given, I reject the third of these. Aggregation of knowledge is not in my view available and in any event has not been sufficiently pleaded. 301 In relation to the knowledge of Mr Nikic, GMH relies on the following points: (1) Mr Nikic knew that Oz Car Parts was an online seller; (2) Oz Car Parts was one of the online seller customers identified in the "HSV Call Up" document, which I discuss in section 8 above in the context of offering to sell. Mr Nikic acknowledged that online sellers were "one of" the sources for the sale of parts for customisation and that online sellers were targeted by sales representatives because they were the most likely customers that would take SSS' inventory in quantity and "do a deal" and purchase parts for resale; and (3) Subsequent to transaction 2, on 29 August 2014, Oz Car Parts placed an eBay advertisement for parts indicating that it was offering the DRLs for sale for the purpose of vehicle customisation. GMH does not submit that Mr Nikic knew of this prior to the sale, but submits that a "cursory investigation of Oz Car Parts" would reveal that it did not have a repair purpose with respect to the parts. 302 In relation to Mr Woolfe, GMH submits that Mr Woolfe had sufficient responsibility to fill in for Mr Nikic when he was not available and therefore, in his own right, had the relevant state of mind of the business. GMH notes that Mr Woolfe remains an employee of SSS Sydney and could have been called to give evidence. It submits that an inference consistent with the principles in Jones v Dunkel should be drawn against SSS arising from the fact that he was not called to explain the "implicatory sales" that he made. 303 SSS objects to reliance on Mr Woolfe. It contends that mention of him in the reply particulars should be disregarded because the particulars supplied on 8 August 2017 by GMH did not clearly identify him (they mentioned the "sales manager" for the SSS sales people identified in the invoices being "Kevin" for NSW) and it was not until during the course of the hearing, on 25 October 2017, that GMH proposed to change the particulars to include Mr Woolfe's surname. The amended particulars still mistakenly identified him as a sales manager. However, GMH tendered in evidence an email dated 6 September 2017 from GMH's solicitors that identifies Mr Woolfe as the Sales Supervisor and identifies both Mr Woolfe and Mr Nikic each as employees in a position of seniority and both as being personally involved in the transactions. On this basis, I consider that Mr Woolfe was sufficiently identified as a person about whom submissions in relation to knowledge would be made. Consideration of transaction 2 304 I am not satisfied that the factors raised by GMH are sufficient to demonstrate that Mr Nikic had actual or constructive knowledge that transaction 2 was not for the repair purpose. 305 First, the evidence indicates that the sale on 6 May 2014 took place at a time when the first and second repair only notices were in place. Mr Nikic was aware of them and understood that the business of SSS was directed to achieving sales for that purpose. Secondly, Mr Nikic gives evidence that he had no knowledge that any of the example transactions, including that to Oz Car Parts, was for a purpose other than for repair. Thirdly, whilst Mr Nikic was aware that Oz Car Parts was an online seller, he rejected the proposition that customers who engaged in online selling were solely directed to customisation. He regarded online seller customers as resellers who had a tendency to buy in volume, not only in relation to the impugned parts, but in general so that they could benefit from volume discounts. This was no different to many other customers of SSS. The mere fact that online sellers were also "one of" the sources for parts for customisation is not determinative. Fourthly, Mr Nikic understood that Oz Car Parts operated as a wrecker, as well as an online reseller. Fifthly, the encouragement of salesmen to sell the impugned parts by telephoning online sellers does not, of itself, indicate knowledge of the purpose for which those parts may be used. Mr Nikic could not specifically recall transaction 2, but accepted that he sent the HSV Call Ups document. No evidence indicates that Mr Nikic had actual knowledge of the transaction prior to the issue of the invoice. Sixthly, whilst GMH submits that "cursory" enquiries might have been made, it points to no material evidence that suggests a reason why Mr Nikic would make such an enquiry or to any material that would indicate, had an enquiry been made, what it would have revealed prior to transaction 2. Evidence of the eBay listings after the event does not establish that a cursory investigation before transaction 2 into Oz Car Parts' business would have revealed that Oz Car Parts did not have a repair purpose with respect to those parts. Seventhly, I do not accept that the sale of 10 x left and right DRLs and brackets, in and of itself, would serve as such notice. A customer of SSS could quite legitimately order in stock for use immediately in repairs, or to keep for that purpose, having achieved a benefit (namely, a discount) from buying such stock in bulk. Maintenance of inventory of well-priced products would not reasonably be regarded as a signal to SSS Sydney that Oz Car Parts had a non-repair purpose. Whilst I have found in paragraph [135] above that Mr Nikic knew that at least some of SSS' parts could be described as "customisation items" and had been offered by him for that purpose, the evidence does not support a finding that he did so in this case. As stated, no evidence indicates that Mr Nikic had actual knowledge of the transaction prior to the issue of the invoice. 306 Similarly, none of the evidence before me demonstrates that Mr Woolfe's state of knowledge (actual or constructive) was likely to be materially different to that of Mr Nikic. Further, the case on the failure of SSS Sydney to call Mr Woolfe is, in my respectful view, misconceived. The rule in Jones v Dunkel provides that an unexplained failure by a party to inter alia call witnesses may (not must) in appropriate circumstances lead to an inference that the uncalled evidence or missing material would not have assisted that party's case; JD Heydon and R Cross, Cross on Evidence, 7 ed, LexisNexis Butterworths, NSW, 2004 at [1215]; Fabre v Arenales (1992) 27 NSWLR 437. The rule cannot be employed to fill gaps in the evidence or to convert conjecture and suspicion into inference; Cross on Evidence at [1215]; Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2009] FCA 1495; (2009) 84 IPR 222 at [250]-[259]. That is what GMH seeks to do. The rule cannot be elevated to the level which GMH seeks. I do not consider that the absence of evidence from Mr Woolfe in the circumstances of transaction 2 gives rise to a proper basis for the drawing of the inferences sought, namely that he knew (or ought reasonably to have known) that a sale by SSS Sydney to Oz Car Parts would be for a non-repair purpose. 307 Accordingly, I find that the s 72 defence is made out in respect of transaction 2.

9.6 SSS Sydney sales to Sydney Special Vehicles Introduction 308 GMH relies on 6 transactions involving the sale of impugned parts by SSS Sydney to SSV on 19 July 2011, 18 December 2012, 30 July 2013, 27 May 2014, 5 and 7 April 2016. Each sale requires separate attention in order to ascertain whether GMH has discharged its onus concerning the knowledge of SSS. For the purpose of these transactions, GMH identifies Mr Nikic and Mr Woolfe as the individuals whose knowledge represents that of SSS. 309 GMH in its submissions draws attention to each of the following aspects of the dealings between SSS and SSV (SSV factors), which I accept are factually accurate: (1) SSV was a major customer of SSS Sydney, and one of the main customers for HSV and VE parts. Mr Nikic was acquainted with Mr White from SSV, and had dealt with him on occasions when Mr Woolfe was absent; (2) Mr Woolfe was generally the main point of contact with SSV. He was the named sales representative on each invoice; (3) SSV is an online reseller; (4) Since 2012, Mr Nikic knew that one component of the business of SSV was its active involvement in vehicle enhancement, although he considered that SSV was a parts on-seller more generally that could be selling parts for the purpose of repair, supply or otherwise; (5) Emails from SSV to SSS Sydney, sent in September 2013, contain various iterations of an email footer that refer to SSV as a car customising company. In particular: (a) In September 2013, Mr Woolfe received emails from Mr White of SSV that contained the words "THE RELIABLE CAR CUSTOMISING COMPANY" in the signature block and included the following banner at the foot of the email: 2013 Banner (b) In February 2014, Mr Nikic received emails from Mr White of SSV with the following at the end of the signature block (SSV email footer): (c) In the period from May 2014 to February 2015, Mr Woolfe received emails from Mr White of SSV with the following banner at the foot of the email: 2014/2015 Banner (6) In May and June 2014, Mr Nikic and Mr White exchanged emails concerning the acquisition of Altezza lights and Chevrolet grilles, which are accepted to be customisation products (although not the subject of any relevant registered design). The emails from Mr White also contained the 2014/2015 Banner. 310 During cross-examination, Mr Nikic acknowledged that he received emails from Mr White but could not recall seeing any footer. GMH submits that, as the recipient of emails with one or more of the above-mentioned banners and signature block, both Mr Nikic and Mr Woolfe must also have known that SSV actively engaged in the enhancement business. However, I am not satisfied on the evidence before me that Mr Nikic received or saw emails other than those addressed specifically to him, which means that the first evidence of Mr Nikic receiving notice of the type relied upon by GMH is the February 2014 email. 311 Mr Woolfe did not give evidence in this proceeding. GMH submits that three inferences are to be drawn as a result of the failure on the part of SSS Sydney to call Mr Woolfe to give evidence. The first is that Mr Woolfe was aware that SSV was actively engaged in the enhancement of vehicles. The second is that, to the extent that Mr Nikic did not possess knowledge concerning the nature of the SSV business, Mr Woolfe knew or ought reasonably to have known that sales by SSS Sydney to SSV were not for the purpose of repair. The third repeats, mutatis mutandis, the similar submission made by GMH in relation to transaction 1 (concerning the role of Ms Curtis) and transaction 2, namely that it should be inferred that Mr Woolfe knew or ought reasonably to have known that the request was not for a repair purpose and that he had a duty to inform Mr Nikic of this matter, having the consequence that the knowledge of Mr Woolfe should be imputed to Mr Nikic. 312 I refer to these inferences where necessary below. However, as a general proposition, I note that apart from asserting that Mr Woolfe had more knowledge than Mr Nikic, GMH did little to establish a basis for concluding that his knowledge concerning the business of SSV was materially different to that of Mr Nikic. My observations in relation to the drawing of relevant inferences set out at paragraph [306] above apply equally here. The third inference is rejected on the same bases upon which I have rejected the aggregation of knowledge submission previously.

9.6.1 Transaction 3 313 Transaction 3 is evidenced by an invoice rendered by SSS Sydney on 19 July 2011 for 5 x VE Series I front bumpers, which are the subject of a registered design. The arguments 314 GMH submits that Mr Nikic or Mr Woolfe knew or ought reasonably to have known that the sale to SSV was not for the purpose of repair by reason of the following matters: (1) Each of the SSV factors referred to above; (2) It was a "bulk wholesale order"; and (3) The sale was made prior to SSS Sydney's introduction of the first repair only notice, before SSS had received legal advice in relation to s 72 of the Designs Act and that there is no evidence that any one in SSS had turned their minds to the repair purpose. Consideration of transaction 3 315 At the time of this transaction, no evidence indicates that Mr Nikic knew that SSV engaged in customisation work. In my view, the fact that SSV was an online seller is not determinative, for the reasons that I have already explained. Further, 5 x bumpers is a quantity that falls within the size of a typical transaction for SSS Sydney. Accordingly, SSV factor (3) and the bulk sales argument do not assist GMH in this transaction. SSV Factors (4)-(6) relate to events that post-date transaction 3 and are therefore not relevant. 316 Although GMH submits that the sale took place prior to the implementation of the repair only policies, it is for GMH to establish that it was not for a repair purpose. I have earlier accepted that the business model of SSS has at all material times been to sell aftermarket parts for use in the repair of motor vehicles. As a matter of approach, a party cannot be required to have a repair only policy, or even an appreciation of the terms of s 72 of the Designs Act, before being able to rely on the defence. The question is not as to the state of its knowledge of the law, but whether an alleged infringer has the requisite knowledge of the non-repair purpose. The fact that SSS obtained legal advice and articulated policies to conform with s 72 later, does not, of itself, mean that conduct prior to that advice or the commencement of those policies is not for the requisite purpose. 317 Having regard to these matters, I do not consider that GMH has established that Mr Nikic or Mr Woolfe had the requisite actual knowledge or that a person in their position ought reasonably to have known that the sale was not for the repair purpose. Nor, for the reasons given, would I draw the inferences sought in relation to the failure to call Mr Woolfe. Accordingly, in my view GMH has not discharged its onus under s 72(2) of the Designs Act in relation to transaction 3.

9.6.2 Transaction 4 318 Transaction 4 is evidenced by an invoice rendered by SSS Sydney on 18 December 2012 for 10 x VE Series 1 front bumpers, which are the subject of a registered design; and 10 x VE Series 1 Chevrolet bowtie grilles, which are not subject to a registered design. The arguments 319 GMH submits that Mr Nikic and/or Mr Woolfe knew or ought reasonably to have known that the sale to SSV was not for the purpose of repair by reason of substantially the same matters raised in relation to transaction 3, being SSV Factors (1)-(4) and the bulk sales submission (Knowledge Factor (5)). It additionally points to the sale of the Chevrolet bowtie grilles in this transaction, which Mr Nikic accepted were only a customisation part, and which fit with the front bumpers purchased. It submits that, even though Mr Nikic did not accept that this meant that the bumpers must have been sold for a customisation purpose, evidence shows that some 2 years later, in August 2014, SSV did in fact offer to sell these 2 parts together as part of a front end conversion kit. Consideration of transaction 4 320 This transaction is closer to the line than transaction 3. At the time it took place, Mr Nikic accepted that he was aware that part of the business of SSV was vehicle enhancement and that the sale of bumpers with the Chevrolet bowtie grilles could only have been for that purpose. Nevertheless, several factors lead me to conclude that GMH has not discharged its burden under s 72(2) of the Designs Act. 321 GMH has not established that Mr Nikic had actual knowledge of transaction 4. The salesman on the invoice is Mr Woolfe. The case advanced by GMH insofar as it depends on Mr Nikic is that he had constructive knowledge that the sale was not for the repair purpose. At this point, Mr Nikic was not obliged personally to approve the sale of the parts. Accordingly, I do not find that Mr Nikic, or a person in his position, knew or ought reasonably to have known that the sale was not for the repair purpose. By the time of transaction 4, SSS Sydney had commenced applying the first repair only notice to its invoices. Mr Nikic was aware of the policy underlying it. Although the notice was not printed on all invoices at this point (because of a software glitch), I am satisfied that, by this date, the sales people such as Mr Woolfe at SSS Sydney were well aware of that policy and Mr Nikic was entitled to assume that the salesman conducting the sale complied with the repair only policy. 322 In any event, for the following reasons, I would also not infer or find constructive knowledge on the part of Mr Nikic had he had knowledge of the sale. One must approach with some caution a submission that because of the conjunction of the sale of some items which are the subject of a registered design with others, which are not, SSS must have been alerted to the fact, or ought reasonably to have been alerted to the fact that the sale was other than for a repair purpose. I have earlier set out the nature of the day to day business of SSS. It is a high volume business where transactions are typically conducted swiftly. Whilst under the blowtorch of sustained attention, such as in the present proceedings, one might make connections between such parts listed on an invoice, I must in considering constructive knowledge have regard to the knowledge, capacity and circumstances of the person involved; Raben at 91. In my view, GMH has not demonstrated that a person in the position of Mr Nikic ought reasonably to have been alerted by the combined sale of the bumper and the bowtie grilles and drawn a connection that the sale was not for repair. 323 According to the evidence of Mr Nikic, Mr Woolfe has been employed by SSS Sydney since June 2005. He was initially employed in the warehouse as a storeman before being transferred to the position of sales executive and then sales supervisor. He is one of the longest serving sales executives at SSS Sydney. He was authorised by SSS to conduct sales of the impugned VE parts at the time of transaction 4, and as such he is a person whose knowledge would be considered to be the knowledge of the company; Westpac v ASIC at [1662]. As I have noted, I infer that Mr Woolfe was aware of the repair only policy by 18 December 2012 (the date of transaction 4), not least because the first repair only notice appeared on most of the invoices issued by SSS from 25 July 2012 and it reflected the general business approach of SSS. No evidence as at the date of transaction 4 indicates that Mr Woolfe had knowledge that SSV was engaged in vehicle enhancement or that it was a substantial part of its business. I would not infer that by reason only of his processing the sale of the parts that are the subject of this transaction that he, or a person in his position, ought reasonably to have known that the sale was not for the purpose of repair. 324 Accordingly, I do not consider that GMH has established that transaction 4 was not for the purpose of repair within s 72.

9.6.3 Transaction 5 325 Transaction 5 is evidenced by an invoice rendered by SSS Sydney on 30 July 2013 for the sale of 10 x left and right HSV fog lamp covers, HSV front bumpers, HSV lower grilles, and left and right HSV upper grilles, all of which are the subject of registered designs. The arguments 326 GMH submits that, in addition to the SSV factors, Mr Nikic or Mr Woolfe knew or ought reasonably to have known that the sale to SSV was not for the purpose of repair by reason of the following matters: (1) The sale was a "kit" sale; (2) The sale was a bulk sale; and (3) Mr Nikic accepted it was a possibility that by virtue of the nature and quantity of the parts sold, the transaction had the appearance of an order for customisation. Consideration of transaction 5 327 Transaction 5 is for HSV parts. No evidence indicates that Mr Nikic had actual knowledge of the transaction at the time that it occurred or that he ought to have had knowledge of the transaction. The additional factors raised by GMH do not lead me to any different view to that which I have expressed in relation to transaction 4, and in relation to "kit sales", "bulk sales" or otherwise more generally. In my view, the defence under s 72 will also apply for this transaction.

9.6.4 Transaction 6 328 Transaction 6 is evidenced by an invoice rendered by SSS Sydney on 6 May 2014 for the sale of 12 part types. Four of the part types are not the subject of registered designs, being; 20 x HSV left and right DRL brackets; and 4 x left and right HSV fog lamps. The remaining 8 part types are the subject of registered designs, being; 4 x HSV front bumper covers; 3 x HSV left upper grilles; 20 x HSV left and right DRLs; 5 x HSV right upper grilles; 4 x HSV lower grilles; and 4 x left and right fog lamp covers. The arguments 329 GMH contends that Mr Nikic or alternatively Mr Woolfe knew or ought reasonably to have known (on behalf of SSS) that the SSS sale was not for the repair purpose by reason of the following matters: (1) The SSV factors; (2) The sale was a "kit" sale; (3) The sale was a bulk sale; (4) Mr Nikic accepted it was a possibility that by virtue of the nature and quantity of the parts sold, this transaction could be used to customise the front of a Commodore to make it look like a HSV, but said that it was possibly also for repair; (5) This was the first sale of the HSV DRLs and it was made before the importation had taken place (they were first imported on 14 May 2014). Mr White of SSV had sent multiple emails to Mr Nikic and Mr Woolfe asking when they would become available; and (6) The evidence of the "HSV Call Ups" document sent by Mr Nikic to Ms Neoh on 15 May 2014 records an entry by Mr Woolfe to the effect that he had sold SSV 25 sets of the DRLs, having targeted "online guys". This adds force, GMH submits, to the submission that online customers are less likely to use parts acquired from SSS for repairs. Consideration of transaction 6 330 GMH has demonstrated that, by the time of this transaction, Mr Nikic had received emails from Mr White of SSV including the SSV email footer. Although Mr Nikic could not recall having actual knowledge of the SSV email footer and I accept this evidence as genuine (it was not suggested otherwise in cross-examination), I find it improbable that he did not see this footer at the time. It is relatively large, in a different font and, in my view, forms a prominent part of the email. Furthermore, its contents would, in my view, have alerted him to the fact that SSV promotes itself as a company for the customisation of vehicles or the sale of parts for that purpose, including Holden vehicles. Indeed, in cross-examination, Mr Nikic gave evidence to this effect. The evidence also demonstrates that Mr Woolfe had received by this time emails from Mr White bearing the 2013 Banner. These matters shift the balance against SSS in relation to transaction 6. 331 However, in relation to Mr Nikic, the evidence does not indicate that he had actual knowledge of the transaction at the time that it took place. At this time, it was not necessary for him to approve the transaction. SSV was a large customer of SSS, who acquired many different parts. Mr Nikic left it to Mr Woolfe to conduct the sales and was not required by corporate procedures to check or verify a transaction of the type under consideration. In such circumstances, I do not consider that there is adequate basis for a finding that Mr Nikic, or a person in his position, ought reasonably to have known of the transaction. 332 The same cannot be said for Mr Woolfe. He was entrusted with the transaction by the company and, as sales supervisor, he was alert to the repair only requirement of the company. In my view, the 2013 Banner would not be likely to have escaped the attention of a person receiving it. Mr Nikic accepted in cross-examination that there was a possibility that the parts the subject of transaction 6 could be used for vehicle enhancement and I am prepared to infer that Mr Woolfe would also have known this. Having regard to the content of the banner, in my view there is a likelihood, indeed a high probability, that Mr Woolfe was aware that the sale of these parts was not for the purpose of repair. In this instance I am prepared to draw an inference in accordance with the principles in Jones v Dunkel that the evidence of Mr Woolfe, had he been called, would not have assisted SSS's case. These matters lead me to the conclusion that Mr Woolfe had actual knowledge that transaction 6 was not for the purpose of repair and also that a person in the position of Mr Woolfe ought reasonably to have known that this was so. Accordingly, GMH has discharged its burden in respect of transaction 6.

9.6.5 Transaction 7 333 Transaction 7 is evidenced by an invoice rendered by SSS Sydney on 27 May 2014 for 11 part types. Five of the part types are not the subject of registered design protection, being; 4 x VE series 1 LED headlamp sets; 5 x black and 1 x chrome VE series II LED headlamp sets; and 4 x HSV left and right fog lamps. The 10 headlamps purchased are Altezza lights to which I have previously referred. Six of the part types are the subject of registered design protection, being; 4 x left and right fog lamp covers; 4 x HSV front bumper covers; 4 x HSV lower grilles; and 4 x HSV left and right upper grilles. The arguments 334 GMH contends that Mr Nikic or alternatively Mr Woolfe knew or ought reasonably to have known (on behalf of SSS) that the SSS sale was not for the repair purpose on the basis of the SSV factors; the matters raised in relation to transactions 5 and 6, which I discuss above; and the following matters, which I find to be factually correct: (1) On 14 May 2014, Mr White of SSV sent an email enquiry to Mr Nikic about the products for sale, to which Mr Nikic responded on the same day. The footer to Mr White's email was the 2014/2015 Banner; (2) Mr Nikic accepted that the invoice includes Altezza lights (being the 10 x headlamps purchased that were not protected by design registrations), which could only be used for customisation. In the light of that, he accepted that it was possible that the balance of the order was for customisation; (3) Mr Nikic also accepted that if a salesperson wanted to know what the parts were for, then he or she could have asked that question. However, SSS Sydney salespeople did not at the time ask what the parts were for, and were not required proactively to make enquiries; and (4) As at the date of this transaction, the first and second repair only notices were in place and Mr Nikic was well aware of the repair only policy. Consideration of transaction 7 335 I consider that the calculus remains in favour of GMH in relation to this transaction. In this instance, I consider that the facts support a conclusion that Mr Nikic, or a person in his position, ought reasonably to have known that the sale of the parts by SSS Sydney was not for the purpose of repair. Mr Nikic actively participated in the sale by way of his communications with Mr White and so was specifically aware of the transaction. He had received emails with the 2014/2015 Banner and so ought reasonably to have known that SSV promoted itself as a car customising company. Further, on the particular facts of this transaction, the presence of Altezza lights, which can only be used for the purpose of customisation, further supports the view that a person in the position of Mr Nikic ought reasonably to have known that the use by SSV was not for the purpose of repair. I would also find, for similar reasons, that Mr Woolfe knew and also that he (or a person in his position) ought reasonably to have known that the sale was not for the repair purpose.

9.6.6 Transaction 8 336 Transaction 8 concerns 2 sales that GMH has identified as being interrelated and took place some 2 years after transaction 7. The first is a sale of 1 x SSS VE Series I front bumper (which is the subject of a registered design) to W & G Smash Repairs on 5 April 2016. The second is the sale on 7 April 2016 to SSV for 14 separate part types. Five are not the subject of relevant registered designs, being; 2 x left and right DRL brackets; 1 x left and right fog lamps; and 1 x VE bonnet. Nine were the subject of relevant registered designs, being; 1 x left and right upper grilles; 1 x lower grille; 1 x HSV bumper cover; 1 x left and right DRLs; 1 x left and right fog lamp covers;1 x satin black bonnet mould. For both, the salesperson is identified as Mr Woolfe. The arguments 337 The submissions advanced by GMH contend that SSS Sydney, through Mr Nikic and Mr Woolfe, knew or ought reasonably to have known that this transaction was not for the purpose of repair. The basis for this allegation is somewhat different to that of the previous transactions, and involves allegations of misfeasance by Mr Woolfe in relation to the operation of the VIN system. 338 Both sales took place when the manual VIN regime was in operation but before the automated VIN process was in place and before vehicle registration numbers were also required. At the time of the invoices, SSS Sydney's practice was to use a website called CarFacts to check the vehicle model that corresponded with the VIN provided to ensure that the parts ordered corresponded with the car model. The invoices in question both have VIN details entered and Mr Nikic's evidence is that he saw no reason why the sales executive, in this case Mr Woolfe, would not have checked the VINs on the CarFacts website at the time of making the sales. Mr Nikic said that it is also likely that he approved those sales, and would have personally checked the VINs using the CarFacts website. 339 GMH notes, correctly, that the VIN identified in the invoice for the 5 April W & G sale was the same as that for the 7 April SSV sale. A search of the CarFacts website suggests that the VIN was for a HSV Maloo model. However, Holden's records suggest that it was for a VE SS Ute model. Thus, a search of CarFacts at that time would have suggested that the VIN was correct for the SSV sale for the HSV parts, but not for the W & G sale. GMH contends that the VIN was likely correct for the W & G sale but incorrect for the SSV order (however, GMH concedes that this was not evident if one searched the CarFacts website). 340 GMH submits that, based on the information supplied by CarFacts, SSS must have been on notice that the parts ordered by W & G did not correspond with the VIN provided. It also asserts that it is highly improbable that SSV obtained the same VIN as that provided by W & G and the more plausible explanation was that Mr Woolfe checked the VIN provided by W & G on CarFacts, saw that it was for a HSV Maloo and entered that VIN in relation to the SSV sale to enable the more lucrative transaction to proceed. In this regard, it again seeks a Jones v Dunkel inference to be drawn that Mr Woolfe's evidence would not have assisted SSS Sydney in this regard. GMH submits that the foregoing demonstrates that the VIN system was "hopelessly ineffective" and that Mr Nikic and Mr Woolfe, and thereby SSS Sydney, knew or ought reasonably to have known that transaction 8 was not for repair. Consideration of transaction 8 341 By April 2016, SSS had implemented extensive measures to give effect to its express policy that sales should only be made for the purpose of repair. They are summarised in the chronology given above and it is unnecessary for me to recite them here, but they include the first repair only notice, the second repair only notice, the staff repair only directive, the 999 prefix requirement and the manual VIN procedure. Mr Ung and other senior management had devolved the implementation of the policy to various staff members. At this point in time, only a sales manager could approve a sale, and so the relevant person, for the purpose of considering the SSS Sydney state of mind at the time, is Mr Nikic. Mr Woolfe occupied the position of senior salesperson, but he was, by this time, not authorised to make a sale without the consent of Mr Nikic. As a consequence, in contrast to the earlier transactions, I find that Mr Woolfe's knowledge is not relevant in assessing the knowledge of SSS, which now falls solely to Mr Nikic; ASIC v Westpac at [1662]. 342 Understandably enough, Mr Nikic could not recall giving consent for these sales to proceed, but he said that he would have approved them, which also would have involved conducting a search for the VIN using CarFacts. I find that Mr Nikic did approve the two sales in transaction 8 and that he conducted a search for the VINs using CarFacts. Having done so, I find that he would have identified the VIN as for a 2009 HSV E Series 2 Maloo. 343 There is no suggestion in the evidence of Mr Nikic that he did not consider that the repair only policy was not to be applied, or was, as a matter of corporate policy, to be circumvented. To the contrary, the tenor of his written and oral evidence was convincingly to the effect that he knew the intentions of the company and intended to adhere to them. Nor is there any suggestion that W & G attempted to circumvent the repair only policy, or that Mr Nikic was aware, or ought to have been aware that it would do so. 344 The purpose of SSS in introducing the VIN system was as a measure of enforcement of the repair only policy. It was, as Mr Ung explained in his evidence, a step taken to minimise the prospect that despite the SSS policies up to that point, a customer might nevertheless attempt to acquire a part for a purpose which SSS did not approve of. In the present example, 2 sales record the same 17 digit VIN. Depending on what means of searching was conducted, one or other of the sales was confirmed to be for the correct vehicle. The system fell down because there was no means within SSS to confirm that the same VIN had not been entered twice. The implication in the submissions advanced by GMH is that SSS should have introduced such a cross-referencing system and that, having failed to do so, it is somehow on notice that one of the transactions was not supported by a VIN and accordingly was not for repair. I reject that submission as unrealistic. 345 Insofar as GMH's submissions speculate that Mr Woolfe may have deliberately circumvented the VIN system in order to achieve a more lucrative sale, I reject them. That unpleaded allegation is not supported by any facts. No Jones v Dunkel inference is available to supply those missing facts. Furthermore, for the reasons outlined in paragraph [341] above, I am not prepared to find that Mr Woolfe's knowledge in relation to transaction 8 should be attributed to SSS Sydney. 346 These matters lead to consideration of whether or not Mr Nikic knew, or a person in the position of Mr Nikic, ought reasonably to have known that the sale by SSS Sydney to SSV was not for the purpose of repair. The question involves balancing the knowledge that Mr Nikic had of the SSV email footer and the 2014/2015 Banner, and with it the consequence that he ought to have appreciated that SSV was in the business of enhancing vehicles, with the fact that the numerous repair only notices and procedures that were by this time in place were designed to ensure that parts could only be purchased for the purposes of repair. Ultimately, I am influenced by the fact that the systems put in place by the time of transaction 8 were sufficiently rigorous for Mr Nikic to be entitled to assume that, when they are followed, a sale is for the purpose of repair. The process of obtaining VINs was demanding and required customers to give, in effect, affirmative evidence that they were complying with the well-publicised repair-only policy of SSS Sydney. By complying with that policy, any reservations that Mr Nikic had (or ought to have had) by reason of his knowledge of the SSV email footer and 2014/2015 Banner were, and ought reasonably to have been, legitimately assuaged. 347 As stated above, I have found that Mr Nikic conducted the CarFacts search, which would have indicated that the order was for a HSV vehicle. This would have meant that there was a correct match for the SSV sale, but an incorrect match for the W & G sale, which was for an impugned VE part. Mr Nikic gave evidence that this inconsistency reflected human error on his part and suggested he may have approved the sale on the basis that the VIN for the W & G sale was simply for a higher specification vehicle. There is no evidence (and it was not put to him) that he was aware of the mistake prior to authorising either transaction. However, there is no doubt that the impugned VE part could not be used for a repair purpose if it was supplied for a HSV vehicle. A person in the position of Mr Nikic ought reasonably to have known that fact. Accordingly, I consider that GMH has established that the W & G sale in transaction 8 (but not the SSV sale) was for a non-repair purpose.

9.7 SSS Melbourne sales to JHP Vehicle Enhancement Introduction 348 GMH relies on 5 invoices rendered by SSS Melbourne to JHP on 22 August 2013, 19 September 2013, 28 July 2014, 3 August 2015 and 30 May 2016. Each of these transactions is considered separately below. The arguments 349 There is a somewhat scattergun approach taken by GMH in relation to these transactions. In its general submissions, it contends that various circumstances were "known to Mr Wills, Mr Chuah and Mr Ung" and that they may accordingly be imputed to SSS Melbourne. That general submission faces a difficulty in that the knowledge of Mr Chuah has not been raised as part of the case advanced by GMH concerning sales in its reply particulars. Accordingly, in this submission GMH steps outside of its pleaded case in an impermissible manner. Secondly, in a related context, GMH submits that, to the extent that Mr Wills did not know the specifics of transactions 9, 10 and 12, Mr Chuah and another person named in the invoices ("Kevin V") should be inferred to have known them and that this knowledge should be "imputed to" Mr Wills because they had a duty to inform Mr Wills of this matter, and there can be no suggestion that they did not have the opportunity to do so. This submission is rejected. It is not the subject of any particulars, and in any event for the reasons outlined above is untenable. 350 Mr Wills' evidence is that he always understood that the business of SSS Melbourne was directed to the repair industry and from 2012 this had progressively become more apparent to customers by reason of the notices given. In May 2013, he participated in a meeting where Mr Chuah informed staff that HSV parts were only to be sold as a direct replacement for a specific make and model of vehicle. He gives evidence that he reinforced this policy to his staff in Melbourne, both one on one and as a group. He was not challenged on this evidence. 351 GMH draws attention in its submissions to each of the following aspects of the dealings between SSS and JHP in support of its case (JHP factors): (1) The corporate name of JHP includes the word "enhancements" and Mr Wills was aware that it was in the business of enhancing vehicles. In my view, the evidence does not support the proposition that, by virtue of its corporate name, Mr Wills, or others, were on notice that the business of JHP was directed only to vehicle customisation (or enhancement). The evidence of some (but not all) of the email correspondence is that the logo used by JHP is a stylised "JHP" in an oval disc, with the tagline "New Vehicle Specialist" as follows: Other emails from JHP had no footer at all. No evidence was led to the effect that the business was known as "JHP Enhancements" or by reference to the word "enhancement" at all. On those emails where the stylised logo appears, beneath the logo and tagline, the corporate name (JHP Vehicle Enhancements P/L) is rendered in plain type. In my view it is not likely that many would have noticed this name. In cross-examination, Mr Wills accepted that JHP was in the business of enhancing vehicles, but it was not suggested to him that the business was exclusively directed to that end. His evidence that, in his view, the impugned HSV parts sold to JHP were not for the purpose of enhancement (indicating his view that the business was broader than purely customisation) was not challenged. (2) One month before transaction 9, on 30 July 2013, JHP sent an email to a salesperson at SSS Melbourne asking for prices on various Holden parts and also for some parts used in customisation, being Altezza lights and "Angel Eyes Head Lamps". These were products that (the email exchange reveals) SSS Melbourne was actively promoting. Mr Wills was a participant in the exchange. GMH submits that a reasonable person in the position of Mr Wills, being aware of this exchange, would by the time of transaction 9 be on notice that the parts acquired may be for enhancement, and would have made further enquiries; (3) The parts sold were "kit" part components; (4) Mr Chuah was notified by JHP on 2 October 2013, being after transactions 9 and 10 but before transactions 11-13, that its eBay listings for SSS Parts had been removed due to violations of eBay's intellectual property policies. The notice prominently states "Listing policy violation alert: Trademark Violation - Unauthorized Item". In the small print, the notice states that the listing was removed "after the rights owner reported it as counterfeit". Upon receipt of the take down notice, Mr Chuah sent it to Ms Neoh who sent it to Mr Rickards for advice (copying Mr Ung). The steps that followed are set out in the chronology. GMH contends that, as a consequence of receipt of the take down notice, at least Mr Chuah was on notice that sales to JHP were "high risk" and steps ought to have been taken to stop sales to JHP. However, there is no evidence that Mr Wills was aware of the eBay take down notice issued to JHP, and no basis has been advanced by GMH for supposing that Mr Wills ought reasonably to have known about this notice (other than the aggregation of Mr Chuah's knowledge with his, which I reject); and (5) Only the first repair notice appears on the invoices for each of the transactions.

9.7.1 Transaction 9 352 Example transaction 9 is evidenced by an invoice rendered by SSS Melbourne on 22 August 2013. The salesperson identified is "Kevin V". It is for 8 separate part types, 2 of which (left and right HSV fog lamps) are not the subject of registered designs. The remaining parts are covered by registered designs, being; 2 x HSV front bumper covers; 1 x HSV lower grille; 1 x left and right HSV upper grilles; and 1 x left and right HSV fog lamp covers. The arguments 353 In its closing submissions GMH identifies as relevant to this transaction: (1) The JHP factors listed above; (2) Transaction 9 was invoiced the day before the impugned HSV parts were first imported (on 23 August 2013), which GMH submits suggests that SSS Melbourne had promoted the parts in advance of their arrival, despite there being no evidence addressing such promotion adduced by SSS; and (3) Transaction 9 corresponds with certain eBay listings later posted by JHP dated 24 September 2013. Those listings specifically promoted the products for the purpose of enhancement. In its submissions, GMH observes that the kits listed on eBay included HSV DRLs. As SSS did not offer these at that time, the only source for those must have been GMH itself. Consideration of transaction 9 354 I am not satisfied that GMH has discharged the onus that it bears in relation to transaction 9. No evidence indicates that Mr Wills had actual knowledge of the sale. Transaction 9 took place before it was necessary for sales managers to approve the sale of HSV parts. GMH does not contend that the knowledge of the salesman, "Kevin V" is relevant to the corporate knowledge of SSS Melbourne. Accordingly, the relevant question is whether SSS Melbourne ought reasonably to have known that transaction 9 was not for the repair purpose, having regard to the circumstances of Mr Wills at the time. As Mr Wills did not know of the transaction and was not by any corporate policy obliged to know of it, the question is whether, as at 22 August 2013, there was a reason why he (or a person in his position) ought reasonably to have known of it and that it was not for a repair purpose. For the following reasons, I consider there was not. 355 I have addressed JHP factor (1) above. Further, Mr Wills gave evidence that in 2013 or 2014 he informed a Mr Rob Tanner of JHP that HSV and VE SS range bumper bars were restricted parts that could only be sold for repairs. GMH disputes this evidence. It asserts that no context is given to the call or what else was said and there is no indication of who Mr Tanner is or what position he held at JHP. In the alternative, GMH states that such a statement would have likely been disregarded or treated as a "nod and a wink" in light of Mr Wills' asserted knowledge that JHP was engaged in vehicle customisation. However, Mr Wills was not cross-examined on this aspect of his evidence in chief, and the "nod and a wink" proposition was not put to him. 356 I accept that the JHP factor (2) (namely, the email concerning Altezza lights and "Angel Eyes Head Lamps") indicates that those parts were acquired by JHP for the purpose of vehicle enhancement, and this is a factor that may on balance weigh in favour of GMH, but it is not of itself decisive. Rather, it indicates that there is a possibility other parts were sold by JHP for a purpose other than the repair purpose. 357 In relation to JHP factor (3), for the reasons indicated earlier, I do not consider that the sale of parts that GMH characterises as a "kit" is a material consideration in the circumstances of this transaction. JHP factor (4) is not relevant as it post-dates transaction 9. Nor, are the particular matters identified for transaction 9 in paragraph [353] point (3) above relevant to the state of mind of SSS. Not only because the eBay posting took place after the transaction, but also because there is no evidence that Mr Wills was aware of the postings. 358 JHP factor (5) indicates that, at the time of the transaction, the SSS repair only policy was explicit, and known to Mr Wills. Mr Wills' unchallenged evidence is that he was familiar with and applied that policy from its inception. Further, as I have noted, Mr Wills' evidence is that he reinforced to his staff that the repair only policy should be enforced. I infer that "Kevin V" would have been aware of that policy, as a result of Mr Wills' exhortations and also because, by the time of transaction 9, the first repair only notice had been printed on SSS invoices for over a year. 359 In my view, the particular matters identified for transaction 9 in paragraph [353] point (2) above do not alter the position. The absence of evidence going to any promotion by SSS of the relevant parts or the fact that the sale pre-dated the first import cannot lead to an inference in favour of GMH that somehow there was a promotion that was adverse to the interests of SSS. I have found, consistent with the evidence of the SSS witnesses, that SSS did not generally engage in particular sales promotions. I have addressed point (3) in paragraph [353] above. 360 Accordingly, I am not satisfied that GMH has discharged its burden of establishing that SSS Melbourne knew or ought reasonably to have known that transaction 9 was not for the repair purpose.

9.7.2 Transaction 10 361 Example transaction 10 is evidenced by 2 invoices both rendered by SSS Melbourne on 19 September 2013. It is for 7 separate parts, 2 of which are not covered by the relevant registered designs, being; 2 x left and right fog lamps. Five of the parts are covered by the relevant registered designs, being; 2 x left and right HSV fog lamp covers; 2 x HSV lower grilles; and 2 x left and right HSV upper grilles. The named salesperson is Mr Chuah. The arguments 362 GMH relies first on the knowledge of Mr Chuah for this transaction. However, as I have noted, the knowledge of Mr Chuah has not been pleaded as relevant to any of the sales transactions (see reply particulars paragraphs 2(c), (e) and 3), and it is not available to GMH to advance this as the basis for its case. GMH also makes a more general submission that the knowledge of Mr Ung may be imputed to SSS Melbourne. GMH has pleaded this, but nowhere in its submissions does it elaborate on how Mr Ung knew or ought reasonably to have known any details about transaction 10 and it is not apparent to me how it can establish that he had the relevant actual or constructive knowledge. This finding applies also to transaction 11. Next, GMH submits that the knowledge of Mr Wills is relevant to transaction 10. This allegation has been pleaded and is perhaps what GMH relies upon most heavily. It is to Mr Wills that I direct attention in the paragraphs that follow. Finally, for completeness, I note an alternative submission by GMH that the knowledge of Mr Chuah is to be imputed to Mr Wills. I have previously indicated why this unpleaded aspect of the case advanced by GMH should be rejected. 363 In its closing submissions GMH identifies as relevant to this transaction: (1) The JHP factors; (2) The products sold in transaction 10 were likely to have been products that were the subject of an eBay take down notice on 2 October 2013; and (3) JHP subsequently advertised in August 2014 for the sale of some parts in a "HSV E2/E3 front version kit" that correspond with those sold in transaction 10. Consideration of transaction 10 364 For the same reasons given in relation to transaction 9, I am not satisfied that GMH has discharged the onus that it bears in relation to transaction 10. The additional factor concerning the advertisement by JHP of so called "kits" in August 2014 does not change my view. The relevant date for assessment is the date that the sale was made; subsequent events are not relevant. There can be no doubt on the evidence that the person who effected the sale in transaction 10, Mr Chuah, was aware of the repair only policies of SSS Melbourne and that Mr Wills was entitled to rely on the observation of those policies by Mr Chuah in effecting the sale.

9.7.3 Transaction 11 365 Transaction 11 is evidenced by an invoice dated 28 July 2014 rendered by SSS Melbourne. The named salesperson is again Kevin V. The sale was for 4 separate part types, 2 of which were the subject of registered designs (1 x VE series I front bumper and 1 x VE series I & III sedan rear bumper) and 2 which were not (2 x VE series I LED headlamp sets and 2 x Series II LED headlamp sets). The arguments 366 GMH relies primarily on the knowledge of Kevin V, which it seeks to impute to Mr Wills. For the reasons given I am not prepared to impute the knowledge of Kevin V to Mr Wills. In the paragraphs that follow, I consider the position of Mr Wills in relation to the actual or constructive knowledge of SSS. 367 In its submissions it draws attention to: (1) The JHP factors; (2) Two parts in the invoice, which are not the subject of registered designs, are LED headlamps which are customisation parts not used for repair. This is said to have put Kevin V on extra notice that the parts protected by the registered designs in this transaction were acquired other than for the purpose of repair; and (3) On 5 August 2014, JHP's website advertised the SSS VE Series II headlamps as part of its VE Series II front conversion kits to enable the kit to be fitted to Series I vehicles. Consideration of transaction 11 368 I am not satisfied that GMH has discharged the onus that it bears in relation to transaction 11. To the extent relevant, I repeat my comments above relating to the JHP factors and transactions 9 and 10. The additional factor concerning the LED headlamps does not cause me to change my view.

9.7.4 Transaction 12 369 Transaction 12 is evidenced by 2 invoices rendered by SSS Melbourne on 3 August 2015 which identify the salesperson as Kevin V. The first is for a single HSV front bumper cover. The second is for 11 separate part types, 4 of which are not covered by relevant registered designs (2 x left and right HSV fog lamps and 2 x left and right DRL brackets). The parts in respect of which there are registered designs are 2 x HSV lower grilles; 2 x left and right HSV upper grilles; 2 x HSV bonnet moulds (1 x black and 1 x chrome); and 2 x left and right HSV DRLs. The arguments 370 In its closing submissions GMH identifies as relevant to this transaction: (1) The JHP factors; and (2) SSS had, by the time of this transaction, been notified for almost 2 years of GMH's complaints in respect of the conduct of JHP, and after the present proceedings had commenced. When in cross-examination Mr Ung was asked why this transaction was allowed to proceed, he said "we think that we had the right to sell…The reason we keep selling them, because we put all the possible way to stop people from upgrading. That's what we trying to sell. We can't keep saying, 'Oh, you get the warning letter, you stop selling.' And then there's no defence, there's no - not the proper way to warn people". GMH submits that this conduct demonstrates that SSS Melbourne was willing to shut its eyes to the obvious in order to keep selling the impugned parts. Consideration of transaction 12 371 For substantially the same reasons given in relation to transactions 9-11 above, I am not satisfied that GMH has discharged the onus that it bears in relation to transaction 12. Further, by 3 August 2015, the repair only policies implemented by SSS were extensive and have been set out in detail above. As I have noted, a powerful indication of purpose is the staff declaration signed in January 2015. In my view, it, taken with the other measures, reflects an earnest desire on the part of Mr Ung and SSS senior management to ensure that sales of the impugned parts were sold in accordance with the policy. They were entitled to assume that their employees would follow company policy. 372 Transaction 12 was entered after the 999 prefix requirement was introduced. It was a transaction that Mr Wills, as the SSS Melbourne Sales Manager, was required to approve and accordingly, it may be considered that he had actual knowledge of it. However, in my view his knowledge of the sale is not sufficient for the purposes of GMH. I have addressed in relation to the earlier transactions the difficulties that arise for GMH in relation to each of the JHP factors. In relation to JHP factor (4), as I have noted, there is no evidence to indicate that Mr Wills was informed of the JHP takedown notice, or that he became aware of the subsequent eBay postings of JHP. Whilst he approved the transaction, I am not satisfied that the characteristics of the sale as set out in the invoices are such that he should be regarded as having actual knowledge that the sale was not for the purpose of repair. The evidence does not indicate that Mr Wills was aware of GMH's more general legal complaints identified in (2) above. In any event, GMH has not identified particular evidence which, it contends, would demonstrate (if disclosed to Mr Wills) that JHP would not use the parts for a repair purpose. Nor do I consider that a person in the position of Mr Wills at the time of the transaction ought reasonably to have known of that fact. 373 I also reject the submission advanced by GMH in relation to the knowledge of Mr Ung. The evidence does not support a conclusion that he had actual knowledge of the transaction 12 sale at the time that it took place. In cross-examination he did no more than to accept (as at the date of his evidence) that SSS continued to sell to JHP almost two years after becoming aware of the takedown notice. Accordingly, the only question insofar as Mr Ung is concerned is whether a person in his position ought reasonably to have known that the sale to JHP was not for the repair purpose. In this respect, in my view a person in the position of Mr Ung was reasonably entitled to rely on his staff correctly implementing the several repair only policies that I have earlier identified. Accordingly, GMH has not established that, in completing transaction 12, SSS sold the parts involved for a non-repair purpose.

9.7.5 Transaction 13 374 Transaction 13 is evidenced by an invoice rendered by SSS Melbourne on 30 May 2016, which identifies the salesperson as "Miki". The sale was for 11 separate parts. Four of these parts were not the subject of the relevant registered designs, being; 1 x left and right fog lamps and 1 x left and right DRL brackets. Seven of these parts were the subject of the registered designs, being; 1 x HSV bonnet mould (in satin black), 1 x left and right DRLs, 1 x HSV front bumper, 1 x HSV lower grille and 1 x left and right HSV upper grilles. The arguments 375 The matters upon which GMH relies in relation to this transaction are: (1) The JHP factors; and (2) By this time, SSS had implemented the additional procedures that Mr Ung put in place after the resumption, in January 2016, of the sale of HSV parts. GMH contends that a differentiating factor of this sale is that it occurred when SSS Melbourne required customers to provide a VIN and preferably a photograph of damage, but before the automated VIN process was implemented. The transaction 13 invoice does not bear the VIN and SSS has not provided a copy of the invoice bearing the VIN or any photograph to indicate that the parts were for repair. GMH submits that no explanation was given as to why this sale was allowed to proceed, with or without a VIN or photographs, in keeping with the history and background of dealings with JHP. Consideration of transaction 13 376 In my view, largely for the reasons stated in relation to transaction 12, GMH has not discharged its onus under sub-section 72(2) of the Designs Act. In relation to the additional factor, I note that, on 22 September 2015, Mr Ung sent an email to Mr Wills (and others) instructing him to explain to customers advertising on eBay that "it is illegal to advertise or sell for upgrade or modification". Mr Wills gives evidence that he and his team implemented this direction, including by informing customers selling on eBay of the right of repair limitation. Furthermore, this transaction took place after the VIN procedure was implemented and Mr Wills gave evidence that he adhered to it. In cross-examination, Mr Wills explained that he checked the websites of various customers, as instructed by Mr Chuah, which included the JHP website. He then contacted JHP. The evidence of Mr Neoh explains that the invoice in evidence for transaction 13 may not contain the details collected pursuant to the manual VIN system because of the particular means by which he executed the printing the invoices for the purposes of these proceedings. He states that the details could have been printed with the VINs had he used a different and more time consuming process. Mr Neoh was not required for cross-examination and was not challenged on this evidence. The evidence of Mr Wills indicates that he implemented the procedures put in place by SSS. 377 Accordingly, in my view, GMH has not demonstrated any discrepancy in the application of the system implemented by SSS Melbourne such as to qualify the justifiable belief on the part of Mr Wills that transaction 13 was in accordance with its repair only policy. As a consequence, GMH has not otherwise established that Mr Wills knew or that Mr Wills, or a person in the position of Mr Wills, ought reasonably to have known, that transaction 13 was not for the repair purpose.

9.8 SSS Melbourne sales to Motor Sport Corporation Introduction 378 Transactions 14 - 18 are evidenced by invoices rendered to Motor Sport Corporation (MSC) by SSS Melbourne between 9 September 2015 and 23 June 2016. Mr Wills was the point of contact and salesperson for sales to MSC. He dealt with Mr Jimmy Dee at MSC since about 2013, and by the time of transaction 14 MSC was an "average" customer, buying between $1,000 and $3,000 of stock per month. Mr Wills' affidavit states that he understood that MSC specialised in HSV cars and that it was an on-seller of some parts and accessories and engaged both in modification (enhancement) work as well as repair work. Mr Wills gives evidence that he was conscious of MSC's customisation activities and that he was particularly careful to ensure that the SSS restricted parts policies were applied. In his affidavit, he details examples of communications with Mr Dee since SSS resumed selling HSV parts in February 2016 in which he reinforces the policy and, as the VIN process was then in place, informs him that a particular restricted part would not be supplied without a photograph of the car showing the damaged area and a valid VIN or registration number. An example is an exchange with Mr Dee on 25 February 2016 (after transaction 14, but before transactions 15 - 18) where a sale for DRLs did not proceed in circumstances where Mr Wills requested a VIN and pictures of a vehicle that had been unregistered for a few years. 379 GMH submits that Mr Wills and Mr Chuah are persons through whom SSS Melbourne obtained relevant knowledge that MSC would not be using the impugned parts it acquired for the repair purpose. In the alternative, GMH submits that, to the extent that Mr Wills did not know the details of the relevant transactions, the knowledge of the relevant salesperson should be aggregated or imputed to Mr Wills because that salesperson had a duty to inform him and there is no suggestion that they did not have an opportunity to do so. For the reasons given above, I reject this alternative submission. For reasons given earlier, I reject as unpleaded the contention that the knowledge of Mr Chuah is relevant.

9.8.1 Transaction 14 380 Transaction 14 is evidenced by two invoices rendered by SSS Melbourne on 9 September 2015 which identify the salesperson as Laura Hi. The first is for 10 separate part types, 2 of which are not the subject of relevant registered designs (2 x left and right fog lamps) and 8 of which are (3 x left and right lower grilles, 2 x left and right DRLs, 4 x left and right fog lamp covers, 1 x bonnet mould (in black) and 3 x upper grilles). The second is for a further 5 x left and right DRLs, which are the subject of relevant registered designs. The arguments 381 In its closing submissions, GMH identifies the following aspects as relevant to this transaction: (1) Mr Wills knew that part of the business of MSC was to engage in the enhancement of Holden Commodores (as discussed above); (2) These were "kit sales"; and (3) This was a bulk transaction for about $3,000 and so was a "very large" transaction; (4) The transaction occurred after the impugned HSV parts were subject to a D flag and sales were meant to have ceased in August 2015. It submits that, whilst Mr Wills suggested that after the D flag was in place the restricted parts could be sold provided steps were taken to ensure that they were sold for the correct purpose, he was obviously confused about which policy was in place at the relevant time. Rather, GMH submits that it should be inferred that this sale was allowed to proceed in breach of the embargo to enable MSC to make a bulk purchase in circumstances where it was not known whether or when SSS HSV parts would be available again. Consideration of transaction 14 382 There is a discrepancy between the evidence of Mr Wills and that of Mr Ung in relation to the effect of the D flag. Mr Ung's evidence is that the D flag removed the impugned HSV parts from the electronic SSS parts list, thereby amounting to an embargo on all sales. In his affidavit, Mr Wills gives evidence that, during the time when transaction 14 took place, to the best of his knowledge SSS did not sell HSV parts at all. He instructed his sales team that "if a customer calls asking for a HSV part you are to say that we do not have any available", and, to the best of his knowledge, that instruction was followed. However, during cross-examination Mr Wills stated that his understanding was that the D flag did not preclude a sale of an impugned part provided that the requirements for sale by reference to a VIN were provided and the details were correct. 383 GMH submits that Mr Wills was obviously confused about which policy was in place at the time of transaction 14. To some extent that was evidently so. Despite the D flag being in place, and Mr Ung's evidence about its effect, transaction 14 went ahead, and Mr Wills, as the responsible Sales Manager, had the authority to approve it. 384 Although he could not remember the transaction specifically, I find on balance that Mr Wills did approve the transaction. Although Mr Wills gave oral evidence that he would have applied the VIN policy to this transaction, no objective evidence supports that fact and I am not prepared to infer that he did, having regard to his evidence in chief. 385 Having regard to these matters, I now turn to consider whether or not GMH has discharged its burden by reference to the knowledge of Mr Wills. Plainly Mr Wills knew that MSC could be purchasing the parts for a non-repair purpose (factor (1) above). However, he was very aware of the SSS repair only policy, and gives unchallenged evidence that he had explained to Mr Dee "many times" that sales by SSS were to be only in accordance with that policy. I have explained in the context of other transactions that the "kit sales" submission is not persuasive (factor (2) above). Nor do I consider that the size of the transaction is necessarily an indication that the sale was not for the purpose of repair (factor (3)). 386 Although Mr Wills' evidence does not clearly identify the circumstances of the transaction, the question is whether GMH has discharged its burden of establishing a non-repair purpose. I am not prepared to infer that the sale was made to thwart the embargo or, as GMH implicitly submits, that the reason for doing so was to enable MSC to acquire parts for a non-repair purpose. The cross-examination of Mr Wills in this respect did not cause me to doubt the tenor of his evidence, to th effect that he insisted to Mr Dee that sales were only tobe made where the parts were required for repair. It has not convincingly demonstrated to me that Mr Wills somehow connived with MSC to circumvent the SSS repair only policies. 387 On balance, I am not satisfied that GMH has established that Mr Wills had actual knowledge that the sale was not for the purpose of repair. No evidence suggests that, at this time, he was aware that Mr Dee would not comply with the repair only policy. He was entitled to expect that he would. Nor am I satisfied that a person in the position of Mr Wills ought reasonably to have known that the sale was not for repair. My discussion above regarding Mr Wills' conversations with Mr Dee applies equally to the matter of Mr Wills' constructive knowledge. Accordingly, I am not satisfied that in respect of transaction 14 GMH has satisfied the burden imposed by s 72(2) of the Designs Act.

9.8.2 Transactions 15-18 388 Transaction 15 is evidenced by 3 invoices rendered by SSS Melbourne on 3 March 2016, which identify the salesperson as "Laurie". All three orders include the same 11 part types. Eight are covered by the relevant registered designs, being; 1 x lower grille; 1 x left and right upper grilles; 1 x left and right fog lamp covers; 1 x left and right DRLs; and 1 x black bonnet mould. Three of the part types were not covered by registered designs, being; 1 x left and right fog lamps; and 1 x VE bonnet. The order relating to registration XXB626 also included 1 x HSV front bumper, which is covered by a registered design. 389 Transaction 16 is evidenced by 2 invoices rendered by SSS Melbourne on 17 March 2016, which also identify the salesperson as "Laurie". Both orders are for the same 10 part types. Eight are covered by the relevant registered designs, being; 1 x lower grille; 1 x left and right upper grilles; 1 x left and right fog lamp covers; 1 x left and right DRLs; and 1 x black bonnet mould. Two of the part types were not covered by registered designs, namely 1 x left and right fog lamps. 390 Transaction 17 is evidenced by 5 invoices, 3 of which were rendered by SSS Melbourne on 26 April 2016, and 2 of which were rendered on 31 May 2016 and 23 June 2016 respectively. All of the invoices identify the salesperson as "Laurie". All of the invoices are for a left and right DRL and one also includes a chrome bonnet mould; all three parts are the subject of registered designs. One of the invoices also includes a pair of DRL brackets, which are not the subject of a registered design. 391 Transaction 18 is evidenced by 1 invoice rendered by SSS Melbourne on 4 May 2016. Laurie is again the salesperson identified. The invoice is for a left and right DRL, which are the subject of the relevant registered designs. The arguments 392 The case advanced by GMH in relation to these transactions focuses on the manner in which SSS Melbourne, via Mr Wills, applied the VIN policy. The ultimate suggestion in relation to transactions 15-18 is that SSS failed to implement it correctly, with the consequence that impugned parts were sold to MSC with knowledge that they would not be used for repair. 393 The order for transaction 15 was placed on 1 March 2016 and the sale proceeded on 3 March 2016. It consists of three invoices, all for identical sets of impugned HSV parts, being upper and lower grilles, fog lamp covers, DRLs, and a black bonnet mould. Mr Wills sent these orders to Mr Chuah for informal approval or a second opinion. GMH drew attention to a number of problems with the process of checking the photographs and the VINs of the orders comprising transaction 15: (1) In relation to vehicle registration XXB626, the photograph attached to the email to Mr Chuah shows a white vehicle with a damaged front end, but with no bumper components visible. GMH therefore contends that it was not possible for Mr Wills to assess whether the parts ordered were damaged or not. This, in my view, is a trivial concern, because it is apparent that to sustain the damage visible from the photograph, the front of the car, including the bumper components, is likely to be damaged. Also in relation to XXB626, the evidence of Mr Wakeman shows that, according to Holden's internal register, the vehicle of the VIN provided is a 2011 E3 HSV GTS. The evidence of Mr Pieris is that, according to the CarFacts database which Mr Wills was using to check VINs at that time, the vehicle of the VIN provided was a 2010 E2/E3 HSV GTS. However, the combination of parts ordered are for a different model of HSV (not a GTS) vehicle. In cross-examination, Mr Wills gave evidence that he does not know precisely which parts are used for which model of HSV vehicle, but was satisfied that the VIN was for a HSV vehicle. (2) In relation to vehicle registration V6LIFE, the evidence of Mr Wakeman shows that, according to Holden's internal register, the VIN corresponds with a 2007 VE Series I Commodore Omega V-series (not a HSV vehicle). According to Mr Pieris' evidence, a search on CarFacts reveals that it is a 2006 Holden VE V Series sedan with a 3.6i engine (not a HSV). After seeing Mr Wakeman's evidence, Mr Wills states in his affidavit that he made an error. Based on the CarFacts website, he says that he saw that it was a V series, which he knew to be a higher specification variant of the Commodore. He considers that he likely confirmed that the VIN was for a higher spec variant without remembering that they were for sales of HSV parts. In cross-examination, he put the discrepancy down to human error. Also in relation to V6LIFE, Mr Wills' attention was directed to the registration number which refers to "V6", whereas HSV vehicles are equipped with "V8" engines. Mr Wills referred to this in cross-examination as "a very serious misjudgement on [his] end". Finally, the photograph of the V6LIFE vehicle: (a) did not show any grilles or fog lamp covers, which Mr Wills agreed during cross-examination meant that he could not assess whether the parts were damaged; and (b) showed a bonnet with a style of vents or 'fins', which on another photograph, Mr Wills recognised was not a HSV bonnet. (3) In relation to registration 177HSV, Mr Wakeman points out that the VIN given by Mr Dee is 18, rather than 17 digits long, suggesting an invalid VIN. When the VIN number shown in a photograph provided by Mr Dee is entered, the Holden records show it to be a 2008 VE Series 1 Commodore Lumina (Omega) sedan, and CarFacts shows it to be a 2011 VE Series II Omega, SV6 or SS vehicle. In his affidavit, Mr Wills contends that the strong likelihood is that he would have entered the 18 digits, meaning that the first 17 digits would have been checked against the CarFacts database, and the vehicle would have been identified as a valid VIN for a 2011 SV-6 model. This model is a higher specification variant (albeit not a HSV) and the bumper bar for that model is an SSS restricted part (but it wasn't ordered in any of the orders that make up transaction 15). It was also pointed out in cross-examination that the 3rd digit "K" in the VIN signified that it could not be a HSV vehicle. Unsurprisingly, Mr Wills was unaware of that level of detail about the VIN. Further, in relation to 177HSV, the photograph of the vehicle did not show any grilles or fog lamp covers, which Mr Wills accepted meant that he could not assess whether the parts were damaged. 394 Transaction 16 involved orders for parts for two vehicles, registration XSC358 and XXB626. GMH drew attention to the following matters: (1) In relation to XSC358, the CarFacts search indicated that the vehicle was a 2010 E2 HSV GTS, whereas the combination of parts ordered were for a different type of HSV vehicle (not a GTS). Furthermore, the photograph supplied with this order was the same photograph supplied in relation to order 2 in transaction 15 and the photograph did not show any grilles or fog lamp covers, which Mr Wills accepted meant he could not assess whether they were damaged. (2) In relation to XXB626, the VIN and registration number are identical to that provided for in transaction 15, as described above in paragraph [393] item (1). As stated above, a search of CarFacts would have revealed that the vehicle of the VIN provided was a 2010 E2/E3 HSV GTS. However, the combination of parts ordered are for a different model of HSV (not a HSV GTS) vehicle. In contrast, the photograph provided for this transaction was not the same photograph as that provided in transaction 15, despite the VIN and registration being the same. GMH also contends that the photograph does not show any damage to the parts ordered, as they have been removed from the vehicle, as had the vehicle badge; and the bumper reinforcement is straight, with none of the plastic, bonnet or headlights appearing to be damaged. However, it does not cite any evidence in support of this contention. 395 For transaction 17, similar discrepancies are relied upon. However, it is important to note that the sales identified in (1), (2) and (3) below took place on 26 April 2016, whereas (4) took place one month later on 31 May 2016 and (5) took place on 23 June 2016. Whilst (1)-(3) may be regarded as one transaction, (4) and (5) must be considered separately. In relation to these: (1) For vehicle registration 325HSV the description of the vehicle is a black E2 HSV Senator, whereas the CarFacts search reveals it to be for a 2008/2009 Holden Commodore VE SV6 (not a HSV). Further, GMH contends that the photograph depicts a style of bonnet which Wills identified (on a different photograph of the same car) as not being a HSV bonnet. Finally, GMH also contends that a detailed photograph was provided that showed no visible damage to the DRLs to be replaced. Mr Wills stated during cross-examination that "unfortunately, pictures with lights, in particular, are very, very hard to distinguish what kind or damage here may be on there", which GMH cites as support for its submission that the photograph provided Mr Wills with no basis for believing that the order was for the purpose of repair. (2) For vehicle registration U00000, the vehicle described is a black E2 GTS. GMH does not adduce direct evidence from Mr Wakeman or Mr Pieris in relation to this invoice and there is no evidence to suggest that a CarFacts search would indicate that the VIN was incorrect. However, GMH submits that a person with knowledge of the VIN system ought to know the VIN was for a HSV from manufacturing year 2009, and the E2 series was not released until manufacturing year 2010 and would have an "A", "B" or "C" in the model year position of the VIN. Further, when ordering these parts, Mr Dee stated that the reason for ordering 2 x left and right DRLs and DRL brackets was "hairline cracks". GMH submits that the photograph does not show any damage to the DRL, for which replacement was sought, and relies on Mr Wills' evidence during cross-examination that DRL brackets would not be required to repair hairline cracks in a DRL but would be required to fit HSV DRLs to a Commodore. (3) For vehicle registration YQM618, the vehicle described by MSC is a black E2 HSV Grange. No evidence suggests that the VIN is incorrect. Rather, GMH contends that the image does not show any damaged or cracked DRL lenses, for which replacement was sought. (4) For vehicle registration LILBRO, the description given was for a black E2 HSV GTS. The VIN provided was the same as the VIN provided for the sale identified in (3) above and the same contentions are made by GMH in relation to this sale. The car in the photograph is also the same car in the photograph provided for the sale identified in (3) and Mr Wills admitted that the photo was not clear enough to determine whether there was evidence of a minor impact requiring a new bonnet mould. (5) Similar criticisms are made in relation to the final sale in this transaction relating to registration number 325HSV, which is the same registration and VIN provided in relation to the sale identified in (1) above. 396 For transaction 18, the description for vehicle IGN 8NH (an order for a pair of DRLs) is of an E2 HSV Grange, which is different to a 2014/2015 Gen-F HSV Grange identified in a CarFacts search and allegedly not a vehicle that is compatible with the DRLs ordered. Again, GMH criticises the photographs as not showing any evidence of damage to the existing DRLs. Consideration of transactions 15-18 397 It is appropriate to consider the invoices reflected in transaction 15 as a whole as they took place on the same day, for the same customer and were processed by the same salesperson. It came at a time after SSS Melbourne had implemented a regime requiring the provision of VINs and photographs of the vehicle to be repaired. Mr Wills subsequently checked and approved each transaction. The evidence does not disclose whether he did so all at once, or spaced throughout the day. 398 The particular circumstances of the transaction cannot be ignored. One factor is that Mr Wills was aware that MSC might be acquiring the parts for non-repair purposes because MSC is a business that specialises in HSV cars. Of course, that also makes it more likely that it would want HSV parts for repairs, but nevertheless it put Mr Wills on alert because, as Mr Wills acknowledged, it also provided services for modification (enhancement). It was for this reason, for example, that he emphasised the requirements of the SSS policy to Mr Dee in respect of the 25 February 2016 order from MSC, which then did not proceed. 399 Mr Wills knew that the VIN system provided a means of verifying that a customer was acquiring a part for repair. On 1 March 2016, he received the orders for transaction 15. They were for three identical "nose clips" (parts for the front of a HSV). The VINs for two of the vehicles were manifestly incorrect. For V6LIFE, the CarFacts search indicated MSC had incorrectly informed SSS that the vehicle to be repaired was a HSV vehicle, when it was a 2006 Holden VE V Series sedan with a 3.6i engine. For registration 177HSV, the VIN was not valid at all and, accepting Mr Wills' explanation for the CarFacts search, the vehicle would still not have been identified as a HSV model, but rather a 2011 SV-6 model. 400 Where a CarFacts search reveals that the VIN provided is not for a HSV model at all, I accept that this is sufficient to infer constructive knowledge on the part of Mr Wills, even if the search reveals a higher specification variant that is not a HSV. However, I do not accept GMH's contentions that rely on more detailed analyses of the VIN numbers or the distinctions between models of HSV vehicles and the parts applicable to one or the other. The enquiries made must be considered in the context of the business of SSS. The forensic approach to such matters by GMH tended at times to the obsessive. That was perhaps understandable in the context of legal proceedings, but not particularly apposite in the context of determining what Mr Wills ought reasonably to have known in the circumstances of the transaction. 401 Mr Wills accepted in his evidence that he had made mistakes in relation to the checking process for transaction 15. It was not put to him that this evidence was false, and I accept that the errors to which I have pointed were accidental and that he was not aware at the time that they were mistakes. However, I do consider that, in the circumstances of the transaction, Mr Wills ought reasonably to have known that MSC had failed to comply with the SSS requirements. I find that a CarFacts search of V6LIFE was conducted with the VIN provided and that it revealed a non-HSV vehicle. I also find that a similar search was conducted with the VIN provided for 177HSV and that it was shown to be invalid (because of too many digits). At that point, a person in the position of Mr Wills ought reasonably to have known that MSC was providing incorrect information to circumvent the SSS sales only policy. This could only be because the acquisition by MSC was not for the purpose of repair. 402 My findings in relation to Mr Wills are sufficient to determine in favour of GMH that the section 72 defence is not made out for transaction 15. In my view, where 2 out of the 3 orders within transaction 15 were flawed in this way, a person in the position of Mr Wills ought reasonably to have been aware that MSC was gaming the system. However, insofar as GMH relies on the knowledge of persons other than Mr Wills, for the reasons given earlier, I reject that submission. 403 I set to one side for present purposes the other criticisms made by GMH of the process; it is by no means apparent to me from the evidence, that the photographs would not indicate sufficiently that there was damage depicted. Mr Wills considered that they did, albeit with the concession that, in relation to lights in particular, it can be "very very hard to distinguish what kind of damage there may be…". In the absence of evidence to the contrary, I do not consider that view to be unreasonable. I also repeat my comments at paragraph 393 item (1) regarding the absence of photographic evidence of certain parts to be replaced. These findings apply equally to GMH's contentions in relation to the photographs for the remaining MSC transactions that I consider below and I do not repeat them. 404 Transaction 16 took place a little later, on 17 March 2016. Prior to transaction 16, Mr Wills says that he approached future sales with MSC with some caution, and he wanted to avoid any misunderstanding. He telephoned Mr Dee to make sure that he understood the 'repair only' policy and sent him an email asking for an acknowledgement of his acceptance of it. None was forthcoming before transaction 16. 405 The details that Mr Dee provided on 17 March 2016 for transaction 16 were incorrect for the reasons that I have identified above. Broadly, in both cases the VIN provided was for a particular type of HSV but the combination of parts ordered were for a different model of HSV (not a GTS) vehicle. 406 Mr Wills gives evidence that he was not aware of the distinctions between different HSV models, and it was not suggested to him in cross-examination that this evidence was false. I accept that evidence. In my view, it is not reasonable to require a person in the position of Mr Wills, who is dealing with a busy sales environment where many parts are sold daily, to absorb and check such details. He was able to verify that a VIN and photograph had been supplied and that the customer had confirmed it was for a HSV vehicle. Nor do I consider that Mr Wills should have cross-referenced the details for transaction 16 against these for transaction 15, which took place a fortnight before. In my view, this imposes an obligation that is unrealistic. 407 In those circumstances, Mr Wills was entitled to rely on the policies put in place by SSS and the apparent adherence by MSC. Mr Dee's lack of response to Mr Wills' email prior to the completion of transaction 16 does not change my view. Significant processes had been implemented to try and ensure that all sales were for a repair purpose and for the reasons explained above, I do not consider that these minor technicalities ought to have been apparent to Mr Wills in view of the overall context. I do not consider that a person in the position of Mr Wills ought reasonably to have known that MSC was not ordering parts for the purpose of repair, and that accordingly the sale by SSS to MSC was not for a repair purpose. 408 Transaction 17 must also be viewed in a similar context, taking place as it did over a month after transaction 16 on 26 April 2016, 31 May 2016 and 23 June 2016. I find that for vehicle registration 325HSV the description of the vehicle is a black E2 HSV Senator, whereas the CarFacts search reveals it to be for a 2008/2009 Holden Commodore VE SV6 (not a HSV). Mr Wills denies having knowledge of this discrepancy, or of the other discrepancies to which GMH refers. It was not suggested to him that he did, and I do not find that this evidence is false. 409 The position in relation to transaction 17 is to be considered in the context of Mr Wills' apparently increasing concern that Mr Dee chose not to abide by the terms of the SSS repair only policy. He insisted on receiving by email a confirmation from him that he understood "that the supply of HSV/SS items can only be used for the repair use only and not for upgrade/up-spec purposes". On 19 March 2016, Mr Dee's response says "Yes I understand and acknowledge what you are advising here and As [sic] I have stated to you personally on more than 25 occasions the following information". The email then proceeds to state that MSC supplies reconditioned, used and mainly brand new genuine HSV parts to Motortrade-RWC-Mechanics, caryards, bodyshops and insurance assessors. He stated that "[w]e [a]re the HSV REPAIR specialists…". He also said (emphasis added): This in my opinion is classified as a REPLACEMENT OF AN EQUIVALENT PART ls and from my understanding would be approved under your NEW MARCH 2016 strict guide lines. If a client has existing VE E2/E3 HSV PARTS on their VEHICLE at the time that the VIN NUMBER + REGISTRATION has been supplied with IMAGES to myself, you advised me that you are happy to supply parts with these details + CORRECT? 410 Mr Wills denied ever making the statement attributed to him by Mr Dee and considered that, as he had on many occasions informed Mr Dee of the correct position that the whole purpose of obtaining the VIN was to ascertain whether it was a HSV vehicle, it was not necessary for him to respond to Mr Dee's email. GMH submits that, by not responding in writing to correct the statement, Mr Wills was content for Mr Dee to proceed with an incorrect understanding. In context of the whole of the email, I accept as more likely that Mr Wills' evidence is correct. Nevertheless, Mr Dee's response might reasonably be regarded to amount to further notice to Mr Wills that Mr Dee either did not understand or, perhaps more likely, preferred not to understand the SSS repair only policy. 411 Even so, I note that there are aspects of the criticism advanced by GMH of the adherence by Mr Wills to the VIN regime that are, in my view, excessive. It is not in keeping with the policy or purpose of s 72 to require a busy wholesaler such as SSS to ensure that its sales staff or Sales Managers are familiar with the minutiae of the 17 digit VIN system. Nor would one reasonably expect a person in the position of Mr Wills to know that a HSV GTS does not use the same type of fog light cover as a Maloo. Equally, there is room for the making of mistakes. It is to be recalled that it is the purpose of SSS (via Mr Wills) that is the question. 412 However, transaction 17(1) reveals clearly that the VIN is for a non-HSV vehicle and the photograph provided shows that the vehicle did not have a HSV bonnet, a fact that Mr Wills accepted in cross-examination (albeit in relation to a different photograph of the same car). These discrepancies are such that a person in the position of Mr Wills ought reasonably to have known that MSC was seeking to circumvent the repair only policy. In light of this, and the other matters to which I have referred in relation to MSC, Mr Wills, or a person in his position, ought reasonably to have scrutinised the orders of (2) and (3) accompanying order (1) with more care. This in turn would have revealed that transaction 17(2) was for an order including DRL brackets, which Mr Wills accepted were not required in order to replace the allegedly damaged part (the lens). Overall, these discrepancies lead me to find that Mr Wills, or a person in his position, ought reasonably to have known that none of the parts ordered on 26 April 2014 (namely orders (1)-(3) of transaction 17) were for a repair purpose. 413 In contrast, transaction 17(4) took place over a month later. The character of the discrepancy identified by GMH is not such that I am prepared to find in its favour. I would not expect SSS to compare past sales or search to see whether an earlier VIN (supplied one month before) has been duplicated. Nor is it expected to have knowledge of fine details such as the differences in HSV models. I repeat the comments made above regarding the assessment of damage from the photographs provided. In these circumstances, I do not consider that Mr Wills knew or ought reasonably to have known that the parts ordered on 31 May 2016, being order (4) of transaction 17, were not for a repair purpose. 414 Transaction 17(5) is in the same position as transaction 17(1). For the reasons given, I find that Mr Wills, or a person in his position, ought reasonably to have known that none of the parts ordered on 26 April 2014 (namely orders (1)-(3) of transaction 17) were for a repair purpose. 415 Transaction 18 took place on 4 May 2016 (prior to transaction 17(5) and (6) and after transaction 16). The salesman is again Laurie. The discrepancy relied upon by GMH is that whilst the VIN details are for a HSV Grange, it is the wrong model. In my view, this is not the sort of detail that Mr Wills, or a person in his position, ought reasonably to have identified as a basis for concluding that the sale is not for the repair purpose. 416 My findings in relation to Mr Wills are sufficient to determine in favour of GMH that the section 72 defence is not made out for transactions 15, Transactions 17(1)-(3) and (5) but not for transactions 16, 17(4) or 18. Insofar as GMH relies on the knowledge of persons other than Mr Wills, for the reasons given earlier, I reject that submission.

9.9.1 Transaction 19 417 Transaction 19 is evidenced by an invoice rendered by SSS Melbourne to Wagon Wheels Motors (WWM) on 6 February 2012. The invoice is for two separate part types, namely 6 x VY series 2 I SS front bumpers, which are not the subject of any relevant registered design, and 12 x VE SS series I front bumpers, which are. The nominated salesperson is "Kevin V", whose Sales Manager is Mr Wills. 418 Mr Wills gives evidence that WWM is a car yard that sells repaired second hand cars. It was what he characterised as an "occasional" purchaser of parts from SSS. The arguments 419 GMH relies on the following facts as forming the basis for a finding that Mr Wills knew or ought reasonably to have known that the sale of the 12 impugned parts in transaction 19 were not for a repair purpose: (1) The sale occurred when there was no repair only policy in place, and no statement of the repair purpose was on the invoices; and (2) Evidence of a practice of particular second hand car dealers that purchase second hand vehicles at auction and fit higher specification parts to enable them to sell a car at a premium price. This evidence comprises the evidence of Mr Wills who stated that he knew Wagon Wheel Motors to be a car yard that sells second hand cars; Mr Finn that Premoso receives "reports" of such activities, and Mr Searle regarding the business model of BKWT, which I discuss further below in relation to transactions 25 and 26. 420 GMH asserts that it is implausible that 6 parts for the top specification SS VY Commodores and 12 top specification SS VE Commodores acquired by WWM would all be damaged in precisely the same manner and require repair. It submits that a more likely explanation is that this was a bulk order of parts being used in the manner described in (2) above. Consideration of transaction 19 421 GMH asserts that Kevin V knew or ought reasonably to have known that the sale was not for a repair purpose unless the customer supplied SSS Melbourne with real VINs and photographs demonstrating the existence of actual knowledge. It asserts that Kevin V had a duty to inform Mr Wills and accordingly his knowledge should be imputed to Mr Wills. This contention was not pleaded and is rejected for the reasons previously given. To the extent that GMH relies on the contention that Mr Wills knew or ought reasonably to have known that the sale was not for repair, I reject that contention for the following reasons. 422 First, there is no evidence that Mr Wills was aware of this transaction, which pre-dates the 999 prefix and other relevant policies. 423 Secondly, the nature of the business of WWM as a car yard that sells second hand cars does not intrinsically suggest that it is engaged in vehicle customisation at all or to any particular degree and no evidence suggests that Mr Wills (or Kevin V) ought to have known that it did engage in customisation. 424 Thirdly, the placing of a bulk order may, for reasons explained in section 9.2.3 above regarding Knowledge Factor (5), legitimately be for the purpose of having stock for use at a later date. 425 Fourthly, for the reasons already given in relation to transaction 3, I do not consider that the absence of repair only policies prevents a party from relying on the defence afforded by s 72 of the Designs Act. 426 Accordingly, in my view, GMH has not established that SSS Melbourne did not have a repair purpose in the context of transaction 19.

9.10 SSS Melbourne sales to Ace Auto Parts and Accessories

9.10.1 Transaction 20 427 Transaction 20 is evidenced by an invoice rendered by SSS Melbourne to Ace Auto Parts and Accessories (Ace) on 9 December 2016 for a single VE Series II SS front bumper, which is the subject of a relevant registered design. The salesperson is named as Cecilia. The Sales Manager for SSS Melbourne was Mr Wills. Mr Wills gives evidence that he recalled that Ace is a parts re-seller that specialises in online sales, e.g. from eBay. However, he does not give evidence in chief about any specific sale made to Ace, including Transaction 20, and was not asked about it during cross-examination. As a consequence, there is no evidence of Mr Wills' actual knowledge about this transaction. The arguments 428 The sale was effected after SSS had implemented its automated VIN system. Mr Wakeman gives evidence that a search of the GMH database reveals that the VIN does not correspond to a real Commodore vehicle but that its structure corresponds with that of a Series I Commodore SS-V Sportswagon. GMH therefore submits that this was the car for which the sale was made, which has a front bumper with a different appearance to the Series II bumper sold to Ace. 429 GMH submits that had the search for the VIN been conducted by Cecilia, it would have indicated to her that the VIN was for a Series I, not a Series II Commodore. Accordingly, it submits that she knew, or ought reasonably to have known that the sale was not for the purpose of repair. GMH submits that Cecilia's knowledge should be imputed to Mr Wills. For the reasons discussed above, I reject any attempt by GMH to impute such knowledge to Mr Wills. Consideration of transaction 20 430 In my view, GMH has not discharged its onus in respect of this sale. First, SSS had implemented a system that it expected its sales staff to follow. The Sales Manager was entitled to assume that his sales staff would follow this process. Whilst Mr Wakeman's evidence is that the VIN provided for this transaction was not "real", but that the numbers that are valid indicate that the vehicle was a MY10 VE Series I SS-V, there is no evidence about what a search of CarFacts would have revealed, and as shown in relation to the transactions above, the CarFacts search did not always correspond with GMH's records. Accordingly, I am not prepared to infer that Cecilia did not conduct the search in accordance with the SSS policy or that had she conducted the search it would have indicated to her that the VIN was for a Series I, not a Series II Commodore. In any event, a failure by one salesperson to comply with the procedures set out does not lead to the conclusion that SSS knew or ought reasonably to have known that the sale was not for repair. In the present case, the relevant person nominated by GMH is Mr Wills. It has not pleaded, and therefore cannot rely on, the knowledge of Cecilia independently or aggregated with Mr Wills. There is no evidence that Mr Wills had actual knowledge of the sale or that the procedure undertaken by Cecilia was incorrect or not undertaken. 431 Secondly, assuming that GMH's hypothesis about the model of the vehicle is correct, the part acquired was for a Commodore VE series SS vehicle and the VIN provided with the sale is for an VE series SS Commodore vehicle. No evidence adduced by GMH suggests that a person in the position of Cecilia would have known that the front bumper being acquired was not suitable for the car identified. The difference between a part for a Series I and a Series II Commodore is not one that I am prepared to infer would or should be apparent to a person in Cecilia's role. 432 Thirdly, the fact that Ace is an online auto accessory vendor does not provide sufficient basis upon which to infer that Mr Wills (or indeed Cecilia) knew or ought reasonably to have known that Transaction 20 was not for a repair purpose.

9.11 SSS Queensland sales to Panel House Introduction 433 Transactions 21 - 24 are evidenced by invoices rendered by SSS Queensland to Panel House on 26 July 2011, 30 November 2012, 11 August 2014 and 22 June 2015. The nominated salespersons are "Richard", "Thomas", and Mr Lee, who is the Branch Manager for SSS Queensland. In its reply particulars GMH identifies Mr King, the SSS Queensland Sales Manager, as the person who knew or ought reasonably to have known that the sales to Panel House by SSS Queensland were not for the repair purpose (Mr Lee is referred to in the reply particulars but only in relation to importation). 434 The evidence indicates that Panel House was and is one of the largest customers of SSS Queensland, and acquires a large quantity of aftermarket, genuine and second hand parts for most makes and models of car. Mr King and Mr Lee dealt with Panel House on a daily basis and both had visited the premises. Mr King's evidence was that he knew Panel House to be a crash repair specialist, and that it sold parts for, in the words of Mr King, "replacement". 435 GMH emphasises Mr King's use of the word "replacement" rather than "repair" in his evidence, arguing that the use of both terms means that there is a distinction between the two. However, Mr King expressly denied that, in August 2014 and following, he knew that Panel House was promoting the availability of parts supplied for upgrade purposes. Therefore, even if such a distinction were to be made, for the reasons outlined below, I do not accept that the mere fact that Mr King knew that Panel House engaged in selling parts for upgrade purposes, amongst other purposes, is enough to disqualify SSS' reliance on the repair defence. 436 GMH also relies on Mr Lee's oral evidence to the effect that he took no interest in the purpose for which it was selling parts to Panel House and that he saw SSS Queensland's function as simply selling parts. As a consequence, GMH submits that SSS Queensland could not have known any sale of the impugned parts to Panel House was for the purpose of repair, particularly in light of the evidence given that no VIN numbers were sought for any of the Panel House transactions and Mr King could not recall asking for photographs of damaged vehicles. However, all of the Panel House transactions pre-date the implementation of the manual VIN system, meaning that there was no formal policy in place requiring sales staff to ask for VINs or photographs. In my view, Mr Lee's evidence must be understood in the context of the evidence that, by the relevant time, SSS had inter alia ensured that the first repair only notice appeared on each invoice, the second repair only notice appeared on each part, and each of Mr Lee and Mr King had signed the repair only directive. I did not understand Mr Lee's oral evidence to suggest that these policies were of no moment. Further, GMH's submissions reflect a misunderstanding of the requirements of s 72. Under the legislative scheme, it is not for SSS to prove a repair purpose, but for GMH to establish that it was not held. Whilst the implementation of measures reflected in the repair only policies might be regarded as assisting SSS in its affirmative case, the absence of such measures will not of itself establish a lack of that purpose. Nor does the fact that there may be a profit motive in making sales mean that there is no repair purpose.

9.11.1 Transaction 21 437 Transaction 21 is evidenced by an invoice rendered by SSS Queensland on 26 July 2011. Mr King is identified as the relevant salesperson. It is for 5 x VE series SS front bumpers, which are the subject of the relevant registered designs. The arguments 438 In its closing submissions GMH identifies as relevant to this transaction (Panel House Factors): (1) Panel House was an online seller; (2) Transaction 21 is a "bulk sale"; (3) The matters summarised in paragraph [436] above; and (4) That each of the above circumstances was known to Mr King. Consideration of transaction 21 439 I do not regard Panel House Factors (1) - (4) above as persuasive, taken individually or collectively. The relevant question on the case as pleaded by GMH is whether Mr King knew or Mr King, or a person in the position of Mr King, ought reasonably to have known that the sale by SSS in transaction 21 was not for the repair purpose. Mr King denied in his evidence that he had been aware that Panel House was selling the impugned parts for upgrading purposes. I accept that denial. Transaction 21 is for the sale of VE parts. No basis has been established by which Mr King might have knowledge that the sale of VE parts per se would lead to the conclusion that they were for use in vehicle enhancement. 440 It is not clear to me from the evidence that Panel House Factor (1) (online sales) has been established at the time of transaction 21. Mr King acknowledged during cross-examination that he knew Panel House was an online parts reseller and sold parts supplied by SSS on eBay and online. However, there is no evidence about when Mr King became aware of this. For instance, he only became aware of the Panel House website in about 2016 or 2017, after transactions 21 to 24 were completed. In any event, as I have noted, the fact that a business uses the internet for sales is not in my view indicative, in and of itself, of the sale of parts for vehicle enhancement. Nor is the fact that 5 parts have been sold at once necessarily indicative of that matter (Panel House Factor (2)). Accordingly, I am not satisfied that GMH has discharged the onus on it pursuant to s 72(2) of the Designs Act.

9.11.2 Transaction 22 441 Transaction 22 is evidenced by an invoice rendered by SSS Queensland on 30 November 2012. "Thomas" is named as the salesperson. It is for the sale of 3 x VE SS rear bumpers and 3 x VE Series 2 SS front bumpers. Both are protected by registered designs. The arguments 442 For Transaction 22, GMH primarily relies on the knowledge of Thomas, which it says should be aggregated with that of Mr King because Thomas had a duty to inform Mr King and there was no suggestion that he did not have an opportunity to do so. For the reasons outlined above, I reject this unpleaded submission. I turn to consider the position of Mr King. 443 In its closing submissions GMH identifies as relevant to this transaction: (1) Panel House Factors (1) - (3) relied upon for transaction 21; (2) The fact that transaction 22 is for the sale of identical quantities of front and rear VE SS bumpers. This is said to indicate that the parts have been sold for enhancement. In this regard, GMH relies on the evidence of Mr McDonald, who contends that the prospect of both parts being required for one vehicle is very low; and the evidence of SSS customers advertising kits including front and rear VE SS bumpers; and (3) The sale was made on the day before SSS had imported the relevant parts, which GMH submits suggests that SSS Queensland had promoted the parts in advance of their arrival, despite there being no evidence addressing such promotion adduced by SSS. Consideration of transaction 22 444 I do not regard these matters as persuasive, taken individually or collectively. There is no evidence that Mr King knew of transaction 22 or that he was required to approve it. 445 Furthermore, my reasons given in relation to the Panel House Factors are set out above in relation to transaction 21 and also apply to transaction 22. In relation to Panel House Factor (3), by the time of transaction 22, the first repair only notice had been implemented but the notice did not appear on the invoices of this transaction due to a technical error. However, this does not affect the views that I have expressed in relation to the absence of the repair only policies. 446 The additional submission in (2) above draws attention to the particular parts being sold. However, there is no evidence to suggest that the sale of such parts to a major customer would or should have alerted SSS Queensland to them being used for a non-repair purpose. No evidence indicates that SSS Queensland packaged parts for sale in batches. To the contrary, I am satisfied that SSS did not do so, but rather responded to customer requests for particular parts. Parts such as these could typically be required for repair and may have been used over time to repair 6 separate vehicles or something between 3 and 6 vehicles. I do not consider that an order of front and rear bumpers of the type in transaction 22 should be regarded as alerting SSS Queensland to the fact that the parts were for the purpose of vehicle enhancement. 447 In relation to the additional submission in (3) above, as stated in relation to transaction 9 above, neither the absence of evidence going to any promotion by SSS of the relevant parts nor the fact that the sale pre-dated the first import leads to an inference in favour of GMH that somehow there was a promotion that was adverse to the interests of SSS. 448 For these reasons, I consider that GMH has failed to establish that SSS knew or ought reasonably to have known that transaction 22 was not for a repair purpose.

9.11.3 Transaction 23 449 Transaction 23 is evidenced by an invoice rendered by SSS Queensland on 11 August 2014. The listed salesperson is "Thomas". The transaction was for 10 separate part types, 6 of which are covered by the relevant registered designs, namely 1 x HSV front bumper; 1 x left and right fog lamp cover; 1 x left and right DRL; and 1 x HSV lower grille. Four were not covered by the relevant registered designs, namely 1 x left and right fog lamp; and 2 x left and right DRL brackets. The arguments 450 For Transaction 23, GMH primarily relies on the knowledge of Thomas, which it says should be imputed to Mr King because Thomas had a duty to inform Mr King and there was no suggestion that he did not have an opportunity to do so. For the reasons outlined above, I reject this submission. 451 In its closing submissions GMH identifies as relevant to this transaction: (1) Panel House Factor (1) relied upon for transactions 21 and 22; (2) Transaction 23 reflects a "kit" sale; and (3) The parts sold in transaction 23, together with other parts sold on 13 August 2014, correspond with the parts later advertised by Panel House on eBay (on 21 August 2014) as a complete set with reference to "Commodore VE" and without any indication that they were sold by Panel House for repair. GMH notes that this Panel House listing was removed by eBay and was the subject of a letter of demand sent by the solicitors for GMH to Panel House on 4 September 2014. GMH submits that whilst it has not established that anyone at SSS Queensland saw the eBay listing, any cursory investigation of Panel House's website and eBay listings would have revealed that Panel House did not have a repair purpose. It submits that SSS Queensland, in the knowledge of the "nature of Panel House" and acting reasonably, would have made simple enquiries which would have resulted in it acquiring knowledge that the SSS Parts were not used for the purpose of repair. Consideration of transaction 23 452 There is no evidence that Mr King had knowledge of this transaction, which pre-dates the 999 prefix requirement. Further, for the reasons outlined above, I do not regard the combination of factors in (1) - (2) persuasive, taken individually or collectively. 453 Factor (3) must be set to one side. The later use by Panel House of the parts sold by SSS Queensland has no relevance to the s 72 enquiry for transaction 23. Further, as I have noted, the evidence is that Panel House was known by Mr King (and Mr Lee) to be a crash repair specialist. 454 For these reasons, I consider that GMH has failed to establish that SSS knew or ought reasonably to have known that transaction 23 was not for a repair purpose..

9.11.4 Transaction 24 455 Transaction 24 is evidenced by 5 invoices rendered by SSS Queensland on 22 June 2015. Mr Lee is the named salesperson on each invoice. Each of the 5 invoices are for the same number and type of parts. They were for 12 separate part types, 8 of which were covered by relevant registered designs, namely 1 x left and right upper grilles; 1 x lower grille; 1 x HSV front bumper; 1 x left and right DRLs; and 1 x left and right fog lamp covers. Four were not covered by relevant registered designs, namely 1 x left and right fog lamps; and 2 x left and right DRL brackets. The arguments 456 GMH primarily relies on the knowledge of Mr Lee, which it says should be imputed to Mr King because Mr Lee had a duty to inform Mr King and there was no suggestion that he did not have an opportunity to do so. Two points arise. First, the only case advanced in the reply particulars in respect of knowledge of a non-repair purpose for sales by SSS Queensland concerns Mr King. Accordingly, GMH is not able in closing submissions to rely on the knowledge of Mr Lee. Secondly, for reasons already given, I reject that the knowledge of Mr Lee can be aggregated with that of Mr King. Nevertheless, I address the knowledge of Mr King and Mr Lee in the context of the s 72 defence below. 457 In its closing submissions GMH identifies as relevant to this transaction: (1) Panel House Factor (1) relied upon for transactions 21-23 above; (2) Each of the sales in transaction 24 reflect a "kit" sale; (3) Taken together, the sales amounted to a bulk sale. To this end, GMH notes that Mr Lee could not recall why 5 separate invoices were rendered. However, it submits that it is highly unusual that the sale would be split up in this way if it was an ordinary order for parts and, in the context of this being the last sale of SSS HSV bumper components to Panel House, it can be inferred that this was intended to be a disguised final bulk order; (4) On 5 September 2014, Mr Lee was informed by Panel House that it had received a letter before action from GMH in respect of prior website and eBay promotions of parts sold by SSS, but SSS Queensland continued to supply impugned parts to Panel House until 13 July 2015 and Mr Lee did not check the Panel House website to ascertain Panel House's activities. Mr Lee did not bring the letter before action to Mr King's attention until 2015 or 2016, long after transaction 24 was complete. It was at this time that Mr King acknowledges that he became aware that Panel House was selling SSS Parts for upgrade purposes. This, GMH submits, can be used to infer that Mr Lee, after receiving notice of the letter in September 2014, also knew or ought reasonably to have known that sales of SSS parts to Panel House were not for the purpose of repair; and (5) Mr King knew that the parts sold in transaction 24 could be fitted to a Commodore to make it look like a HSV. He was the relevant person responsible for sales at SSS Queensland and his knowledge can be imputed to SSS Queensland in that respect. 458 Mr Lee and Mr King both give evidence of being aware, since about 2012, of the implementation by SSS of the repair only policy in relation to the sale of restricted parts, which included the impugned parts. They confirm that each had been reminded of the repair focus of the business and give evidence of the repair only policies implemented up until June 2015. 459 In factor (3) above, GMH suggests that Mr Lee processed 5 separate orders that make up transaction 24 in order to disguise the fact that this was a "final bulk order" by Panel House and demonstrates an apprehension that such sales would convey an appearance of a non-repair sale. The suggestion of a nefarious purpose on the part of Mr Lee was not put to him in cross-examination. Insofar as it is suggested (the practical consequence of the submission is not explained) that the "disguise" is to be interpreted as an admission that Mr Lee knew the sale was prohibited because he knew or suspected that it was for the purpose of Panel House supplying the parts for vehicle enhancement, then it should have been put to him. In any event, there is no evidence that Mr King was aware of or ought to have been aware of the disguise. 460 Factor (4) above refers to Mr Lee's knowledge in September 2014 of the GMH letter before action to Panel House, but Mr King was not made aware of that letter until late 2015, and apparently not before transaction 24 took place. Furthermore, the letter before action addressed to Panel House, dated 4 September 2014, alleges infringement by reproducing an embodiment of certain registered designs (see section 10.4 below, where it is summarised in detail). Nowhere does that letter assert that sales are made for a non-repair purpose. Rather, the allegations made include no reference to the s 72 defence or the potential use to which the impugned parts are to be put at all. 461 Factor (5) indicates that Mr King knew that the particular combination of parts sold could be sold for the purpose of enhancement. Taken alone, that knowledge is not surprising. The HSV range of parts has been designed to fit onto a Commodore vehicle body as modified by Premoso. The fact that Mr King was aware that the parts sold are capable of two uses, one of which is for a repair purpose, cannot be determinative. The relevant question focuses on the relevant knowledge of SSS beyond that point. 462 In summary, I do not regard factors (1) - (5), taken individually or collectively, to indicate that SSS Queensland via Mr King knew or a person in the position of Mr King ought reasonably to have known that transaction 24 was not for the purpose of repair. Further, although on the pleaded case I do not consider that it is open to GMH to rely on the knowledge of Mr Lee, I would reach the same conclusion if it was his knowledge that was relevant.

9.12 SSS Queensland sales to BKWT Introduction 463 Transactions 25 and 26 are evidenced by invoices rendered by SSS Queensland to BKWT on 24 March 2014 and 11 August 2015 respectively. Transaction 25 was the sale of 10 x VE Series I SS bumpers and transaction 26 is reflected in 5 invoices, details of which are set out further below. 464 GMH relied upon the evidence of Mr Searle, who was able to provide background details of the business of BKWT. The main purpose of BKWT's business was to supply parts to a related entity, NathanPark Pty Ltd, which operated under the name Brad Kimberley Cars and was located in Lawnton, some 20 km north of Brisbane. Although the companies were responsible for operating different aspects of the business, they were effectively part of the same single business, operating out of the same premises and SSS Queensland did not indicate any distinction when dealing with them. I therefore refer to both businesses as BKWT for ease of reference. 465 Mr Searle's evidence is that BKWT was a used car dealership that in the early 1990s focused almost exclusively on selling second-hand Holden Commodore cars. In the early 2000s, BKWT started offering customers optional accessories to customise Commodores bought from the dealership. Holden Commodores were popular cars and so the business decided to offer vehicle upgrades as a way of differentiating its cars from other second hand dealers. In 2012, the business moved to focus exclusively on selling customised Commodores with, as Mr Searle described it, radical and unique styling. 466 Tendered in evidence are print outs from the BKWT website including images of it as it existed in early 2011 - 2017, including the home pages for each year. Each of these feature images of what appear fairly plainly to be customised Holden Commodores and include prominently the words "Get the car of your dreams", a link to "Build your Dream Car", "Create your Dream Car" and the like. An example shown below is the snapshot taken in April 2013. 467 Mr Searle gives evidence that many of the parts that BKWT used to enhance the vehicles were genuine Holden or HSV parts, which it acquired from Holden dealers. Mr Searle gives evidence that from one dealer, Village Motors, he was required to provide a VIN prior to acquisition. He admits that he routinely supplied a false number for this purpose, because he knew that BKWT did not use the parts for the repair purpose. In cross-examination, he gave evidence of his view that the Holden dealer was aware that the parts were not for the repair purpose. 468 Mr Searle first purchased stock from SSS in transaction 25, which was in March 2014. He dealt with Mr Darren Drury, the Business Development Manager at SSS Queensland, whom he met at the premises of BKWT at about that time. Mr King is the Sales Manager who supervised Mr Drury. Mr King gives evidence that BKWT was a good customer. He recalls looking at the BKWT website in about 2014, shortly before it first became a customer of SSS and noted that it displayed a list of about 12 cars, but does not recall seeing any images of a showroom (which is discussed further below). He does not remember thinking at the time that it was in the business of enhancing vehicles, although he did recall seeing cars with mags, spoilers and stripes and thinking that it sold vehicles that had been customised to give each vehicle a unique appearance. Notwithstanding this observation, Mr King gives evidence that the first indication that he received that BKWT was involved in the practice of fitting higher specification Commodore parts to lower specification vehicles was between late 2015 and mid 2016, at which point he informed Mr Lee, who advised that SSS Queensland should not sell to BKWT until further notice. Mr King also gives evidence that Mr Drury (who reported to Mr King) was responsible for sales to BKWT, but in his role as Business Development Manager Mr Drury was often on the road, and so Mr King would often process orders placed by BKWT with Mr Drury. Mr Drury left the employment of SSS Queensland in August 2016. The evidence indicates that he has declined to voluntarily assist by giving evidence in these proceedings. 469 In the reply particulars, GMH contends that Mr King supervised Mr Drury in selling SSS parts to BKWT and that he was aware that BKWT was not engaged in vehicle repairs but was buying for the purpose of upgrading vehicles. It pleads that Mr King saw the BKWT website and so was aware of its activities. In the alternative, GMH contends that, by reason of the Knowledge Factors, it may be inferred that Mr King knew, or that Mr King ought reasonably to have known that the sales were not for the repair purpose.

9.12.1 Transaction 25 470 Transaction 25 is evidenced by an invoice rendered by SSS Queensland on 25 March 2014.The salesperson is identified as "Thomas". As I have noted above, it was for 10 x VE Commodore Series I bumpers, which are the subject of the relevant registered designs. The arguments 471 In its closing submissions GMH identifies the following matters as relevant to this transaction: (1) The evidence of Mr Searle, where he states that Mr Drury first visited BKWT at about the time that it placed the order for transaction 25 and that they met several times over the following years. It submits that the radical appearance and colour schemes of the cars on display would have alerted Mr Drury to the customisation of the vehicles. Further, there was no parts shop, or any facilities on site to conduct vehicle repairs; (2) Mr King had seen the BKWT website in 2014 when he first entered its details on the SSS system and, at the time of doing so, Mr King entered a description of BKWT as a "car yard", which meant that it was a company that sold cars, and not a smash repairer or panel beater; and (3) Transaction 25 was a bulk sale for 10 units of the same part, in circumstances where it was improbable that a second hand car dealer would need such numbers for repair. GMH submits that Mr King's oral evidence that it was "possible" that BKWT had 10 x damaged VE Series I SS cars waiting to be repaired was improbable and ought to be rejected. 472 In addition, GMH contends that, to the extent that Mr King did not know, and ought not reasonably to have known that the parts were not for the repair purpose, it is to be inferred that Mr Drury did or ought to have had such knowledge. It submits that he had a duty to inform Mr King, and that he had an opportunity to do so. 473 SSS submits that, by March 2014, it had implemented several repair only policies including an informal, Queensland based, VIN policy. It submits that the impugned parts are VE parts, not HSV, for which there was a large demand. Consideration of transaction 25 474 I address transaction 25 by reference, first, to the knowledge of Mr King and then, secondly, by reference to the knowledge of Mr Drury. 475 A number of aspects of the evidence satisfy me that GMH has established that Mr King and therefore SSS knew or ought reasonably to have known that the sale of the parts in transaction 25 was not for repair within the meaning of s 72 of the Designs Act. 476 In my view the evidence of the purpose of the business of BKWT was plain for anyone who might peruse its website. Mr King in fact went to the website prior to the first transaction which he says he generally did when entering the details of a new customer. Although in cross-examination he gave evidence that he does not recall the detail of what he saw (other than seeing cars with mags, spoilers and stripes and thinking that it sold vehicles that had been customised to give each vehicle a unique appearance), he looked at the website to satisfy himself that the business was authentic before entering BKWT as a new customer into the SSS system. This was a process whereby he authorised that company to be a customer of SSS. It seems to me unlikely that any person looking at the home page would be in much doubt that it was a business directed to the customisation of Holden Commodore vehicles. I accept that his characterisation of BKWT as a "car yard" in the SSS computer system further supports this conclusion. At that point, which was shortly before the first sale to BKWT (that is, transaction 25), Mr King was aware of the repair only policy. In my view at that time it may be inferred that Mr King was aware that transaction 25 was not for the purpose of repair. Furthermore, in my view a person in the position of Mr King ought reasonably to have known that a sale to BKWT was not for the purpose of repair. 477 I reject the SSS submission that an informal SSS Queensland VIN policy was applied to this sale. The evidence of Mr King is that the informal policy was implemented in late 2014 or early 2015, which is later than transaction 25. The earliest SSS Queensland invoice with a VIN recorded on it is May 2014. Furthermore, Mr Searle's evidence is that it applied only to the sale of HSV parts, not VE parts, which are the subject of transaction 25. 478 GMH contends that the assumed knowledge of Mr Drury should be imputed to Mr King. In my view, that was not pleaded. Whilst 1(a) of the further particulars states "Richard King, a Queensland Sales Manager of SSS, supervised the work of Darren Drury in selling SSS product to Brad Kimberley Cars in the abovementioned period and attended with Darren Drury at the premises of Brad Kimberley Cars on or about 11 August 2015 (and did so within the scope of his actual or apparent authority as the manager of SSS responsible for Darren)", I do not consider that this adequately particularises a contention that the knowledge of Mr Drury should be imputed to SSS or Mr King. Nor, for the reasons stated, do I consider the latter to be available in law. 479 In the event that I am incorrect on this point, I turn to consider the position of Mr Drury. He was not available to give evidence because he had by the time of the hearing ceased to be an employee of SSS Queensland. The evidence indicates that he refused to assist. He was not under the control of SSS and I draw no adverse inferences from Mr Drury's absence. 480 Nevertheless, I accept that once Mr Drury attended the premises of BKWT, he or a person in his position would have known or ought reasonably to have known that BKWT was not in the business of repair. The photographs in evidence establish that there were numerous modified cars prominently on display on the property outside as well as inside the showroom and that the premises did not have a parts shop or any facilities on site to conduct vehicle repairs. However, transaction 25 was the first sale that was made to BKWT and Mr Searle's evidence is that he cannot remember when Mr Drury first visited BKWT or whether it was before or after his first order. As a consequence, even if Mr Drury's knowledge should be attributed to SSS (which, for the reasons outlined above, I have found that it should not), I do not consider that the evidence is sufficient to establish that Mr Drury (and therefore) SSS knew or ought reasonably to have known that transaction 25 was not for the purposes of repair. Accordingly, GMH succeeds in establishing a non-repair purpose.

9.12.2 Transaction 26 481 Transaction 26 is evidenced by 5 invoices all rendered by SSS Queensland on 11 August 2015. Each is for 13 separate parts, 8 of which are the subject of registered designs, namely 1 x left and right DRLs; 1 x left and right fog lamp covers; 1 x left and right upper grilles; 1 x lower grille; and 1 x front bumper. Five parts were not the subject of relevant registered designs, namely 1 x left and right DRL brackets; 1 x left and right fog lamps; and 1 x VE Bonnet. For each invoice Mr Drury is the named salesperson. The arguments 482 In its submissions, GMH identifies Mr King and also Mr Drury as people whose knowledge is relevant. GMH relies on the matters identified in relation to transaction 25. It further submits that, by the date of this transaction, BKWT had acquired a large amount of impugned parts from SSS. As a business engaged in the sale of cars it was, GMH submits, inherently improbable that such purchases were for repair. 483 GMH submits that Mr King must from the outset have known that sales of SSS HSV parts to BKWT were not for the purpose of repair because SSS Queensland took the "unusual step" of asking Mr Searle for VINs for each order of HSV Parts (but not VE parts). The evidence indicates that, from late May 2014, invoices issued to BKWT record VIN numbers, which is over 18 months earlier than the implementation of the VIN policy by SSS more generally. Mr Searle's evidence is that he circumvented the system by providing VINs that were not referable to the cars for which the parts were acquired. 484 On 31 July 2015, SSS decided to implement a D flag on the impugned parts, in effect putting an end to their sale by recording in its internal system that there was zero stock. This was notified to Mr Lee and Mr King on 10 August 2015, and yet on the following day transaction 26 took place. Furthermore, transaction 26 was for 5 identical complete sets of HSV Parts spread over 5 invoices, which also occurred for the large order by Panel House in transaction 24. Further, GMH contends that each invoice represents a "kit" sale. 485 GMH submits that plainly Mr Drury knew or ought reasonably to have known that transaction 26 was not for the purpose of repair. It also submits that Mr King knew or ought reasonably to have known that it was not for the purpose of repair, pointing to Mr King's acknowledgement that it was possible that the types of parts sold in transaction 26 could be used to alter the appearance of a Commodore to make it look like a HSV and his evidence that he would have approved the sales. To the extent that Mr King did not have actual knowledge that the sale was not for the purpose of repair, GMH submits that Mr Drury's knowledge can be imputed to Mr King because Mr Drury had a duty to inform Mr King, and there can be no suggestion that he did not have an opportunity to do so. Accordingly, GMH submits that SSS knew or ought reasonably to have known that transaction 26 was not for repair. Consideration of transaction 26 486 As stated above, I do not consider that the knowledge of Mr Drury should be attributed to SSS. Even so, I address transaction 26 by reference, first, to the knowledge of Mr King and then, secondly, by reference to the knowledge of Mr Drury in the event that I am wrong about attributing his knowledge to SSS. 487 In relation to transaction 25 above, I infer that Mr King, having looked at the BKWT website prior to the first sale, had actual knowledge that transaction 25 was not for the repair purpose. In the alternative, I found that he ought reasonably to have known that the transaction was not for such a purpose. However, by the time of transaction 26, a number of the additional SSS repair only policies were implemented, including the: (1) Third repair only notice, which was present on the invoices related to transaction 26; (2) 999 prefix requirement; (3) Repair only directive; (4) D flag restriction; and (5) Informal VIN Policy (in SSS Queensland only). 488 For the reasons that I have stated in section 5.4 above, in my view the repair only policies implemented by SSS were not implemented as a sham or cover. In the absence of contraindicating factors, the additional policies help to bolster SSS' submission that it should be afforded the protection of s 72 of the Designs Act. 489 There is no dispute that, by 10 August 2015, SSS Queensland had implemented an informal VIN policy. Mr Searle recalls that when he bought HSV parts from SSS Queensland he was required to provide a VIN and, as with Village Motors, he gave a false one. He accepted in cross-examination that in so doing he misled SSS Queensland. The evidence of Mr King is that, whilst the informal VIN system was in place, when a sales executive received an order for a restricted part, Mr King was notified by a message on an internal messaging system. He would then look up the VIN on an authentication website (either CarFacts or one on the HSV website) by cutting and pasting the VIN into it. If the search indicated that it was for an authentic HSV car, he would approve the sale. GMH did not challenge this evidence in cross-examination. 490 Each of the invoices for transaction 26 includes a VIN, and in its closing submissions, GMH did not suggest that a search of these VINs would indicate that they were not authentic. Whilst Mr Searle accepted in cross-examination that he knew that the VINs provided were false and that he had misled SSS Queensland by providing them, it is the knowledge of SSS (in this case through Mr King), not Mr Searle's knowledge, that is relevant for the purposes of s 72 of the Designs Act. There is no evidence that Mr King knew that the informal VIN policy was being circumvented. Indeed, the fact that SSS Queensland was "misled" would suggest the opposite. 491 Mr King's evidence was that he would have approved each of the 5 sales making up transaction 26. I accept as a contraindicating factor that this sale was made the day after Mr Chuah had directed Mr Lee, as SSS Queensland Branch Manager, to stop selling all HSV parts. As a result of this direction, Mr Lee committed the parts from stock (i.e. reduced the stock of those parts held on the SSS Queensland system to zero). Although Mr King's evidence is not specific about when he was informed of this, I find that he learnt of the direction on the same day that Mr Lee did. This timing conforms with evidence given by Mr Searle to the effect that, on 10 August 2015, he received a telephone call from Mr Drury informing him that HSV parts would be taken off sale and that if he wanted any more parts, he would need to get an order in quickly. I accept that evidence as accurately reflecting Mr Searle's recollection of the conversation. On the following day, Mr Searle then placed the orders necessary for transaction 26. It was not put to Mr King that he had knowledge of Mr Drury's encouragement of Mr Searle to purchase stock notwithstanding the D flag. Even so, I find that Mr King approved these sales in circumstances when he knew that the D flag was in place. 492 In the circumstances of this specific transaction, including the existence of the D flag and the knowledge of BWKT's website, which for the reasons outlined in relation to transaction 25, I infer Mr King had, the fact that the sale was for a large number of parts, separated over 5 identical invoices, is a further contraindicating factor. 493 These contraindicating factors, mean that the case in relation to transaction 26 is finely balanced. I do not consider that GMH has established that Mr King had actual knowledge that the sale in transaction 26 was not for the repair purpose. 494 However, in the circumstances outlined above, I do consider that Mr King, or a person in the position of Mr King, ought reasonably to have known that the sale was not for the purpose of repair. I have found the content of the BKWT website decisive in relation to transaction 25. In my view, the objective concerns that a person ought to have had arising from the website and the other matters to which I refer in relation to transaction 25 could perhaps properly be regarded as being assuaged by the later implementation of the VIN policy and the employee declaration (as was the case for transaction 8). A manager in the position of Mr King was entitled to rely on the integrity of his staff and on the honesty of his customer in the course of approving the sale. Ultimately, however, I consider the contraindicating factors to which I have referred are factors that tend to favour the view that Mr King, or a person in his position, ought reasonably to have known that the sale was not for a repair purpose. 495 As stated above, I do not consider that GMH is able to rely on the knowledge of Mr Drury. Further, for the same reasons given in relation to Mr Woolfe in transaction 8 above, I do not consider that Mr Drury's knowledge is relevant in assessing the knowledge of SSS at the time of transaction 26 because Mr King was responsible for approving the transaction; ASIC v Westpac at [1662]. However, in the event that it was, then I would find that Mr Drury (and therefore SSS) knew that transaction 26 was not for the purposes of repair, or at the very least Mr Drury or a person in his position ought reasonably to have known that transaction 26 was not for the purposes of repair. The factors that lead me to this conclusion include: (1) Mr Searle's evidence that Mr Drury visited BKWT on a number of occasions in 2014 and 2015, where numerous modified cars were prominently on display on the property outside as well as inside the showroom and that the premises did not have a parts shop or any facilities on site to conduct vehicle repairs; (2) Mr Searle's evidence (which I accept) that on one occasion, whilst ordering parts for E2 HSVs, he explained to Mr Drury that some of the VINs were for E1 HSVs, and was told by Mr Drury "that works". Whilst Mr Searle fails to identify when this conversation occurred, I infer that it occurred prior to transaction 26 because no further sales were made, apart from a single HSV bumper bar sold on 22 August 2016, which was after Mr Drury had left SSS Queensland on 2 August 2016; (3) Despite the instigation of the D flag, Mr Searle received a telephone call from Mr Drury on 10 August 2015 informing him, to the effect, that HSV parts would be taken off sale and that if he wanted any more parts, he would need to get an order in quickly; and (4) In the circumstances of this specific transaction, in particular including the matters outlined above, the fact that the sale was for a large number of parts, separated over 5 identical invoices. 496 For the reasons outlined above, I reject GMH's contention that Mr Drury's knowledge should be imputed to Mr King. 497 As a consequence of these findings, GMH has established that SSS knew or ought reasonably to have known that the sales which make up transaction 26 were not for the purposes of repair in accordance with s 72 of the Designs Act.

9.13 Summary of conclusions in relation to the GMH case based on selling 498 In the reasons above I have concluded that GMH has discharged its onus under s 72 of the Designs Act in relation to the following transactions, with the consequence that each amounts to an infringing use by: (1) Transaction 1, sale by SSS Sydney to Instinct on 23 January 2015; (2) Transaction 6, sale by SSS Sydney to SSV on 6 May 2014; (3) Transaction 7, sale by SSS Sydney to SSV on 27 May 2014; (4) Transaction 8, sale by SSS Sydney to W & G Smash Repairs on 5 April 2016 (but not the sale to SSV on 7 April 2016); (5) Transaction 15 by SSS Melbourne to MSC on 3 March 2016; (6) Transaction 17, sales (1), (2), (3) and (5) by SSS Melbourne to MSC on 26 April 2016 (but not sale (4)) by SSS Melbourne to MSC on 31 May 2016 and 23 June 2016 respectively); (7) Transaction 25 sale by SSS Queensland to BKWT on 25 March 2014; and (8) Transaction 26 sale by SSS Queensland to BKWT on 11 August 2015.

10.1 Background 499 In 2013 and 2014, GMH wrote a series of letters to a number of businesses who were engaged in the supply of parts to the motor industry and who were selling HSV and VE parts. The letters variously alleged that the recipient supplier had engaged in infringement of registered designs, registered trade marks, copyright and passing off. In the Further Amended Notice of Cross-Claim (notice of cross-claim), the SSS cross-claimants (whom I refer to below as "SSS") seek relief against GMGTO in the form of declarations that this conduct amounted to unjustified threats under the Designs Act and (in one instance) the Copyright Act, injunctions restraining GMGTO from continuing to make the threats, declarations that the conduct of each of the GMH parties towards the suppliers contravenes ss 18 and 29(1)(m) of the ACL, injunctions to restrain further similar conduct, corrective advertising, and various ancillary orders. SSS also seeks damages or, in the alternative, compensation pursuant to s 237 of the ACL. SSS also alleges that the letter of demand served on SSS on 10 December 2014 contained unjustified threats in breach of the Designs Act. 500 Initially, SSS sought relief in respect of the conduct of GMH towards 13 parts suppliers. However, in a Further Amended Statement of Cross-Claim dated 24 April 2018 (statement of cross-claim) (the amendments having been foreshadowed in closing oral submissions), the claim was abridged to complain about correspondence with 10 parts suppliers; Panel House; Holmart; Carparts; JHP, John Kompogiorgas trading as Old Skool Auto Parts (Old Skool); Michael Ognenis and Priscilla Ognenis trading as Westside Imports (Westside); Mr Car Parts Victoria Pty Ltd (Mr Car Parts); Shane Miles trading as Commodore Frenzy Factory (Commodore Frenzy); Oz Car Parts; and Torq Industries Pty Ltd trading as Torq Parts (Torq). 501 SSS identifies correspondence that GMH sent or caused to be sent to each of the parts suppliers and notes that prior to sending any such letters (other than Holmart), GMH had made a request to eBay under eBay's VeRO program to remove certain eBay listings from sale on the basis that they violate "intellectual property rights" (the VeRO notification). 502 The cross-claim is supported by lengthy amended further and better particulars (particulars) of the allegations upon which SSS relies. Numerous legal and factual issues arise in relation to the cross-claim. Many apply globally to the correspondence, and may be addressed in that way. Some are peculiar to a subset of the correspondence or conduct in respect of which complaint is made. Exhibit B in the proceedings supplies a bundle of correspondence said to form the substantial part of the "conduct" in respect of each supplier. The parties agree that the cross-claim largely stands and falls on the content of Exhibit B. Perhaps for this reason, in the course of the hearing, very little time was directed to the cross-claim and comparatively little time in closing oral submissions was directed to it, despite the number of issues that it has been necessary to address in this part of my reasons. 503 The designs in respect of which the wrongful threats and ACL claims are made are designs 1 - 13 identified in Table 1 in Section 2 above.

10.2 Issues arising in relation to the Unjustified Threats Claim 504 SSS first contends that by sending identified letters to each of the parts suppliers, GMGTO threatened to bring design infringement or other similar proceedings against them, and that in so doing, GMGTO made threats that are unjustified within the meaning of s 77 of the Designs Act. The threats are pleaded to be unjustified because: (1) the legislative intent and effect of s 72 of the Designs Act was to create a right of repair exemption to exclude spare parts from protection under the designs law unless the design owner could prove that the parts were being used for non-repair purposes; (2) GMGTO had no evidence to discharge the onus on it under s 72 of the Designs Act to prove that the relevant parts were being made, supplied or used for non-repair purposes; and (3) GMGTO could not possibly know that the impugned parts were being supplied or used for non-repair purposes because those parts had not been applied to any vehicle. 505 This argument involves consideration of the relevance and operation of the s 72 defence in the context of s 77 of the Designs Act. In section 11.2.4 below I explain why, in my view, this argument is of no merit. 506 SSS next contends in the cross-claim that, in the case of threats made to Holmart, JHP, Carparts, Oz Car Parts, Torq and Panel House, at the time when the threats were made, one or other of designs 1, 2, 7 and 12 were not certified, and designs 7 and 12 were never certified (see Table 1 in section 2 above). As a consequence, SSS contends that the threats made in respect of those designs were unjustified by reason of the operation of s 73(3) of the Designs Act. In response, GMH submits; first, that it had not made threats at all in relation to those designs that were not certified at the relevant time. It contends that they were mere notifications of the existence of a registered design within the meaning of s 80 of the Designs Act; and secondly, that SSS is not "an aggrieved person" within the meaning of s 77 of the Designs Act in relation to some of the threats made. I address these matters below in section 11.2. 507 In relation to Holmart, SSS contends that GMH sent 3 letters containing unjustified threats within the meaning of s 202 of the Copyright Act, because Holmart had a complete defence to copyright infringement in respect of the product identified. GMH does not deny that the first two threats were unjustified, but contends that the third was not, and contends that no relief should be granted in respect of its conduct towards Holmart. I address these arguments in the context of my consideration of the correspondence between GMH and Holmart in section 12.12 below.

10.3 Issues arising in relation to the ACL claim 508 SSS contends that by sending the letters of demand, and in the context of other conduct identified in the particulars (and tendered in Exhibit B), each of GM Holden, GMGTO and (in the case of Holmart only) Premoso represented to each of the parts suppliers that: (1) the conduct outlined in the letters of demand was design infringement; (2) in the case of all of the parts suppliers but Holmart, the impugned parts identified in the demands were "counterfeit"; and (3) in the case of Holmart only, the conduct referred to in the first Holmart demand constituted copyright infringement, (the Representations). 509 Initially, SSS also relied upon a further representation that, in each of the transactions, each of GM Holden, General Motors LLC and (for Holmart only) Premoso, were legally entitled to make each of the demands set out in the letters. However, SSS abandoned this representation during closing submissions and I do not consider it further. 510 SSS contends that the Representations were false or misleading because it owed a duty to disclose certain "omitted information" to the parts suppliers. GMH contests the existence of such a duty and the content of the omitted information. I address these issues below in section 11.3. 511 Prior to each demand being sent, GMH had also sent VeRO notices to eBay, complaining about eBay advertisements that had been posted by the relevant parts supplier. In response to those notices, eBay had taken the advertisements down from its site. The VeRO requests no longer form part of SSS' cross-claim, but SSS contends that the "reflexive and ill-considered nature of GMH's VeRO Notice strategy is indicative of GMH's general conduct towards the Spare Parts Suppliers, which is relevant to SSS' ACL claim". 512 Before summarising the law and addressing some of the issues in a general sense, it is convenient to set out the details of one sample letter, which was sent on 4 September 2014 by K& L Gates on behalf of GMH to Panel House (Panel House letter). All of the initial letters of demand sent by GMH (other than Holmart) are substantially the same in content, relevantly varying only by reference to the parts offered for sale by the particular parts supplier, the designs alleged to have been infringed and (where relevant) by reference to "further designs" being designs that have been registered in the name of GMGTO, but not yet certified. The first letter to Holmart has different content, and I address that separately later in these reasons.

10.4 A sample GMH letter of demand: the Panel House letter 513 The Panel House letter commences by identifying K&L Gates' clients as follows: We act for GM Holden Ltd (Holden), General Motors LLC (GM) and GM Global Technology Operations LLC (GMGTO). 514 It then notes that GM Holden is responsible for (among other things) the manufacture, wholesale and distribution of all GM and Holden vehicles, and new genuine parts and accessories for such vehicles in Australia (Official Holden Products). 515 The letter then states: Holden is also responsible for the management and protection in Australia of all intellectual property associated with Official Holden Products and Holden Special Vehicles (HSV), including the designs registered in the name of GMGTO specified in Annexure A enclosed (Designs). 516 The "Annexure A" designs are design numbers 1, 8, 9, 10 and 11. Although there is some suggestion in SSS' submissions that the identity of the registered owner of the designs is somehow unclear, in my view this passage makes it sufficiently clear that it is GMGTO. 517 The Panel House Letter continues: Holden has substantial reputation and goodwill in all intellectual property associated with Official Holden Products (Holden Intellectual Property), including the Designs. Accordingly, Holden's dealers and other licensees pay a premium fee to, amongst other things, be granted the right to manufacture and sell Official Holden Products and to use Holden Intellectual Property. 1. Panel House Our searches indicate that A.P. International (QLD) Pty Limited (trading as Panel House) (Panel House) is the registrant of the business names PANEL HOUSE and MARK GIBBS PANEL HOUSE and the domain name www.panelhouse.com.au. Our searches indicate that Panel House is advertising, offering for sale and selling the following products from the website located at domain name www.panelhouse.com.au (Panel House Website). 518 Four Panel House products are then listed. Each is for a Commodore VE HSV E2 E3 style part, three being DRLs and one a front bumper with "DRL Lights Grilles New". They are defined as the "Bodykit Products". The letter continues: The Bodykit Products are identical to or substantially similar in overall impression to the Designs. We are instructed that Panel House also has, under the user name "panelhouse", advertised, offered for sale and sold through eBay the following products which are identical to or substantially similar in overall impression to the Designs. 519 A further Panel House part is identified, which has the same description as the front bumper described above. The Panel House Letter then states (emphasis added): We are instructed that the Bodykit Products are counterfeit and that the Designs have been utilised in the production of the Bodykit Products without the authority, consent or approval of Holden, GM or GMGTO. As a consequence, a listing featuring the Bodykit Products was removed by eBay at Holden's request under the VeRO program. 520 SSS contends that the allegation that the Bodykit parts are "counterfeit" is false. The Panel House Letter then goes on to characterise how GMH perceives the conduct so described: Panel House's conduct described above constitutes: 1. infringement of the Designs in breach of section 71 of the Designs Act 2003 (Cth) (Designs Act) by making, offering to make, importing, selling, offering for sale, using for the purposes of trade or keeping for the purposes of sale, products which embody designs that are identical to, or substantially similar in overall impression to the Designs without the licence or authority of the registered owner; 2. misleading and deceptive conduct in contravention of sections 18, 29 and 33 of the Australian Consumer Law (as found in Schedule 2 of the Competition and Consumer Act 2010 (Cth)) (Australian Consumer Law); and 3. passing off of the goods of GM, Holden and its authorised dealers and licensees. 521 SSS contends that the description of the conduct in (1) was false, because of the availability of the s 72 defence. The Panel House Letter then continues: 2. Further Designs Our clients have instructed us to put Panel House and its officers on notice of the designs depicted at Annexure B (Further Designs). Our clients intend to request examination of the Further Designs under section 65 of the Designs Act. Should the Further Designs then be certified by the Designs Office, our clients will be entitled to seek damages in relation to any sales of products which are made using a design that is identical to or substantially similar in overall impression to the Further Designs (or any of them). In particular, we draw your attention to the following products being sold from the Panel House Website which appear to be substantially similar in overall impression to the Further Designs. 522 Four further Panel House products are then identified in a schedule. The "Annexure B" further designs are designs 2, 7 and 12. 523 The demands made by GMH are as follows: 3. Demands We are instructed to demand that by 5pm on Friday 12 September 2014, Panel House provide to us: 1. the enclosed undertaking signed by you; 2. a statutory declaration to Holden detailing: (a) the number and particulars of Bodykit Products that Panel House has manufactured, imported, taken orders for, promoted, offered for sale, sold or otherwise dealt with; (b) the number and particulars of any other replicas of General Motors products (including but not limited to Chevrolet, Corvette, Hummer, Cadillac, GM, GMC, Buick, Camaro and Pontiac), Holden products (including but not limited to Kingswood, Torana, Monaro, Calais, HRT, Commodore, SS, Statesman and Clubsport) and HSV products (Other Replica Products) that Panel House has manufactured, imported, taken orders for, promoted; offered for sale, sold or otherwise dealt with; (c) the total number of Bodykit Products and Other Replica Products that have been sold to date; (d) the name and contact details of all persons from whom Panel House has received the Bodykit Products or Other Replica Products and the quantity received; and (e) the name of the person or company who supplied Panel House with moulds to manufacture the Bodykit Products and the Other Replica Products; 3. delivery up of: (a) all stock of the Bodykit Products or Other Replica Products in the possession, custody or control of you or Panel House; and (b) all moulds used in the manufacture of the Bodykit Products or Other Replica Products in the possession, custody or control of you or Panel House; and 4. delivery up of all packaging, purchase orders, invoices and other material in any form which include or refer to the Bodykit Products or Other Replica Products in the possession, custody or control of you or Panel House. 524 The letter then goes on to say that if Panel House does not comply with the above demands, then K&L Gates will take instructions to issue proceedings in the Federal Court for infringement of the designs, seeking amongst other things interlocutory and permanent injunctions restraining Panel House's conduct, and will refer to this letter on the question of costs. 525 The letter encloses a form of undertaking which includes an acknowledgement of infringement of Holden's intellectual property rights and a statement from an officer of Panel House that it will (emphasis added): Immediately cease and forever refrain from importing, manufacturing, promoting, offering for sale or selling the Bodykit Products or any other products bearing Holden Intellectual Property (including the Designs), without the licence, approval or authority of Holden or GM. 526 It also encloses a blank Commonwealth statutory declaration which was required to be completed and witnessed by an appropriate person as detailed in the enclosed document. It then states that "Under no circumstances" should the impugned parts be destroyed or given away and asks instead that they be delivered up. The letter concludes by stating (emphasis added): We look forward to receiving your compliance with the above demands within the time specified. This letter contains serious allegations and we recommend that you consider seeking legal advice.

11.1 The unjustified threats provisions - Designs Act and Copyright Act 527 Chapter 6 of the Designs Act concerns infringement. Part 3 of that Chapter contains ss 77 - 80, which provide for relief against unjustified threats as follows: 77 Application for relief from unjustified threats (1) If a person is threatened by another person (the respondent) with infringement proceedings, or other similar proceedings, in respect of a design, an aggrieved person (the applicant) may apply to a prescribed court, or to another court that has jurisdiction to hear and determine the application, for: (a) a declaration that the threats are unjustified; and (b) an injunction against the continuation of the threats; and (c) the recovery of damages sustained by the applicant as a result of the threats. (2) A threat mentioned in subsection (1) may be by means of circulars, advertisements or otherwise. (3) If a certificate of examination has not been issued in respect of a design, a threat to bring infringement proceedings, or other similar proceedings, in respect of the design is an unjustified threat for the purposes of this section. 78 Court's power to grant relief A court may grant the relief sought by an applicant under section 77, unless the respondent satisfies the court that: (a) the design concerned is registered, has been examined and a certificate of examination has been issued; and (b) the acts about which the threats were made infringe, or would infringe, the registered design. 79 Counter-claim (1) The respondent in proceedings under section 77 in respect of a design may apply, by way of counter-claim, for relief to which the respondent would be entitled in separate infringement proceedings against the applicant in respect of the design. (2) If the respondent applies under subsection (1) by way of counter-claim, the applicant may, without making a separate application under section 93, apply for revocation of the registration of the design. (3) The provisions of this Act relating to infringement proceedings apply, with the necessary modifications, to a counter-claim under subsection (1). (4) The provisions of this Act relating to proceedings for the revocation of the registration of a design apply, with the necessary modifications, to an application under subsection (2). 80 Mere notification of registration not a threat The mere notification of the existence of a registered design does not constitute a threat of infringement proceedings for the purposes of section 77. 528 Section 202 of the Copyright Act provides: Groundless threats of legal proceedings in relation to copyright infringement (1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding in respect of an infringement of copyright, then, whether the person making the threats is or is not the owner of the copyright or an exclusive licensee, a person aggrieved may bring an action against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he or she has sustained, unless the first-mentioned person satisfies the court that the acts in respect of which the action or proceeding was threatened constituted, or, if done, would constitute, an infringement of copyright. (2) The mere notification of the existence of a copyright does not constitute a threat of an action or proceeding within the meaning of this section. (3) Nothing in this section renders a barrister or solicitor of the High Court, or of the Supreme Court of a State or Territory, liable to an action under this section in respect of an act done by him or her in his or her professional capacity on behalf of a client. (4) The defendant in an action under this section may apply, by way of counterclaim, for relief to which he or she would be entitled in a separate action in respect of an infringement by the plaintiff of the copyright to which the threats relate and, in any such case, the provisions of this Act with respect to an action for infringement of a copyright are, mutatis mutandis, applicable in relation to the action. (5) A reference in this section to an action in respect of an infringement of copyright shall be read as including a reference to an action in respect of the conversion or detention of an infringing copy or of a device used or intended to be used for making infringing copies. 529 It will be seen that ss 77 - 81 of the Designs Act are similar in content to s 202 of the Copyright Act. The policy and purpose of s 202 of the Copyright Act was considered by the Full Court in Avel Pty Limited v Intercontinental Grain Exports Pty Limited [1996] FCA 293; (1996) 34 IPR 1 at 6 - 7 (Sheppard, Beazley, Tamberlin JJ): ….As Professor Ricketson in his work, The Law of Intellectual Property, 1984, remarked (para. [2.33] at 32), given the high cost of defending an action for infringement of an intellectual property right, the owner of such a right will frequently be able to deter an actual or potential infringer by a simple threat of infringement proceedings. Such a threat, however, may also have the same effect on a person whose activities do not infringe, but who is unprepared to face the costs and time involved in establishing this. As a result, a threat of an infringement action may enable the owner of an intellectual property right to frighten away competitors or to damage such persons less directly by threatening to sue their customers or suppliers. This potential for abuse has been recognised for a long time in patents, trade marks and copyright legislation. Currently, reference may be made to s.128 of the Patents Act 1990 (see formerly s.121 of the Patents Act 1952), s.124 of the Trade Marks Act 1955 (see now s.129 of the Trade Marks Act 1995, not yet in force) and, of course, s.202 of the Act here in question. It would appear that the earliest of the provisions was enacted in legislation relating to patents. The earliest English Act was the Act of 1883 referred to in Terrell on the Law of Patents, 14th ed. (1994), in para. 11.01 et seq at 349. The current English provision is s.70 of the Patents Act 1977 (UK). In some cases it will be difficult to determine whether or not the conduct of a defendant amounts to a threat. In Challender v Royal (1887) 4 RPC 363 Bowen LJ said (at 375): "Everybody, it seems to me, has still a right to issue a general warning to pirates not to pirate, and to infringers not to infringe, and to warn the public that the patent to which the patentee is entitled, and under which he claims, is one which he intends to enforce. But my language must not be misunderstood on this point. It does not follow that because a threat is so worded as in mere language apparently and grammatically to apply only to the future that, therefore, it may not be in any particular case in substance, and, in fact, applicable to what has been done. Supposing, for a moment, that a manufacturer is making and issuing machines which the patentee considers to be infringements of his patent; if with reference to that act done, or to those machines made, the patentee endeavours to guard himself against this section by merely issuing a threat in the air, it seems to me he would not escape if the true gist of what he has done is to apply that threat to a particular person and to a particular act." In Skinner & Co v Perry (1893) 10 RPC 1 at 8, Bowen LJ said: "The legislature desires that threats of patent action shall not hang over a man's head; that the sword of Damocles, in such a case, should either not be suspended or should fall at once..." In [Avel Pty Limited v Multicoin Amusements Pty Limited [1990] HCA 58; (1990) 171 CLR 88] in the High Court, Dawson J referred to s.121 of the Patents Act 1952. He adopted what had been said by von Doussa J in Townsend Controls Pty Ltd v Gilead (1989) 14 IPR 443 at 448 namely: "Section 121 provides the statutory machinery to enable the party threatened to bring down the sword. The provisions of s.121 give no right to a patentee to make a threat. The purpose of the section, on the contrary, is to provide a statutory remedy for a person against whom a threat is made by a patentee who embarks on 'self help' measures instead of enforcing his claimed monopoly by instituting proceedings for infringement." 530 The underlying policy and purpose of ss 77 - 81 of the Designs Act are, in my view, closely aligned with the same policy and purpose of cognate provisions under the Patents, Copyright and Trade Marks Acts.

11.2 Consideration of the legal issues relevant to the unjustified threats claims 531 Section 77(1) of the Designs Act provides that if a person is threatened by another person with infringement (or similar) proceedings in respect of a design, an aggrieved person may apply to a prescribed court for relief. The Designs Act supplies no definition of what will amount to a "threat" within s 77, or the meaning of "an aggrieved person". Both terms were the subject of contention between the parties.

11.2.1 "Threat" identification 532 By section 80 of the Designs Act, the mere notification of the existence of a registered design does not constitute a threat within s 77. Otherwise, the question is whether the language (or, more broadly, the conduct) the subject of the complaint would convey to any reasonable person that the author intended to bring proceedings for infringement against the person said to be threatened; U & I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd [1995] FCA 794; (1995) 60 FCR 26 at 31 (Cooper J); Lido Manufacturing Co Pty Ltd v Meyers & Leslie Pty Ltd (1964) 5 FLR 443 at 450-451. 533 The parties are at odds about whether the reference in certain letters to the uncertified designs constituted "mere notifications" rather than "threats" in the form contemplated by s 77 of the Designs Act. This applies to the letters sent to Carparts, Oz Car Parts, Torq and Panel House, and I discuss the contentions made by the parties on this matter in more detail in relation to those particular transactions below.

11.2.2 "Aggrieved person" - Designs Act 534 The meaning of a general word like "aggrieved" will depend on an examination of the language of the particular statute in which it appears, which will in turn reveal the subject, scope and purpose of the statute. It may vary as the subject, scope and purpose varies; Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; (2010) 240 CLR 590 at [21] (French CJ, Gummow, Heydon and Bell JJ). Generally, the authorities call for a word such as "aggrieved" to be liberally construed, in not too narrow or technical a sense; Daiquiri Rum Trade Mark [1969] RPC 600 at 620; Australian Institute of Marine and Power Engineers v Secretary, Department of Transport [1986] FCA 636; (1986) 13 FCR 124 at 131 (Gummow J). 535 In the context of the Copyright Act, a person aggrieved has been considered to include any person adversely affected by the threat. The supplier to the recipient of a threatening letter of the goods the subject of the threat was one such person; Cowan v Avel Pty Limited [1995] FCA 546; (1995) 58 FCR 157 at 164 (Wilcox J). However, the authorities urge that the identification of a person "interested" or "aggrieved" is not a technical legal question but a practical question which it is a mistake to attempt to answer by confining the expression to cases falling within rigid categories; Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co [1969] HCA 7; (1969) 120 CLR 136 at 141 (Kitto J). 536 In the context of consideration of the term insofar as it affected the ability of a party to bring proceedings for the rectification of the designs register under the Designs Act 1906, the Full Court in ASSA Abloy Australia Pty Ltd v Australian Lock Company Pty Ltd [2005] FCAFC 246; (2005) 147 FCR 126 at 132 (Heerey and Allsop JJ, as he then was, Finkelstein J dissenting) considered that it was inappropriate to consider the limits of the notion of aggrieved, and found merely that there was a close and direct connection in both a legal and practical sense between the existence and duration of the designs and the potential damage to the claimant. 537 In Health World, the plurality of the High Court at [31] observed that the Trade Marks Act had not defined the term, and that many courts have eschewed any attempt to do so. Rather they have proceeded to deal with the particular problem before them, leaving it to later courts to deal with different problems in the light of their own particular circumstances. 538 As a consequence of these authorities it is apparent that global observations about who may or may not be an aggrieved person are undesirable. However, at least in some circumstances, an aggrieved person need not be the direct recipient of the threat. 539 The secondary materials evince an intention to prevent design owners from using monopoly rights to intimidate and limit competition. As the EM provides (in relation to the right of repair provision selected for inclusion in the Designs Act) at [65]: There is a risk that the owner of a design could deter competitors from manufacturing and/or supplying it for use as a spare part, due to the threat of costly litigation. This is despite the fact that a right of repair would be explicitly recognised in the legislation as a complete defence against infringement. However, protection would be built into legislation against unjustified threats. In addition, manufacturers of such parts could not be expected to police the use of the parts once they have passed out of their control. These factors could cause them to think twice before entering the spare parts market. 540 SSS contends that they are aggrieved persons. GMH challenges the standing of SSS in the following four ways. First, it submits that no SSS party has standing to bring a wrongful threats proceeding in respect of the correspondence with Westside. Westside is a customer of SSS Perth, which is an entity that is separately owned and not a party to these proceedings. Secondly, the SSS Parties are not aggrieved in respect of designs 5, 7 and 12, because there is no evidence that SSS supplies products that embody these designs. Thirdly, design 6 embodies a design that was part of the proceedings between GMH and SSS in 2010, which Mr Ung settled "as it was not worthwhile for SSS to challenge GMH on behalf of other importers and suppliers". Fourthly, contrary to the SSS submission, GMH submits that 8 out of the 10 suppliers continued to purchase parts from SSS and there is no evidence that the remaining 2, Commodore Frenzy and Old Skool, did not do so. 541 As to the first submission advanced by GMH, SSS Perth is a company that is separately owned by a friend of Mr Ung. It uses the "SSS" trading name and has access to SSS support, including its IT system. The evidence indicates that Mr Chuah sourced product not only for the SSS parties, but also SSS Perth and that invoices issued by the SSS parties also refer to SSS Perth. The SSS parties, as well as SSS Adelaide and SSS Perth, use the "SSS" brand and in a general sense are likely to be affected by adverse action concerning their customers. Indeed, Mr Ung was informed of the Westside threat and responded to it (see section 12.4 below). 542 Having regard to these matters, I consider that there is a sufficiently close and direct connection in a legal and practical sense between SSS and the threat made to Westside to enable SSS to have standing as a person aggrieved within s 77 of the Designs Act. 543 The second and third criticisms do not arise. None of the threatened suppliers were threatened only in respect of designs 5, 6, 7 or 12. 544 The fourth submission raises a matter that concerns the consequence of the threat, which possibly goes to relief, rather than the question of whether or not SSS is aggrieved by the making of the threat. 545 Having regard to the nature and scope of the business of SSS, its relationship with the parts suppliers and the policy and purpose underlying s 77 of the Designs Act, I consider that there is a sufficiently close and direct connection in a practical legal sense between SSS and the alleged threats to the parts suppliers (being SSS customers) and the potential damage to the SSS parties for them to be characterised as persons aggrieved.

11.2.3 The operation of ss 77(3) and 78: threats and uncertified designs 546 In the present case, it is alleged that unjustifiable threats were made to some parts suppliers at a time when a design the subject of the threat was not certified. SSS contends that GMH has no defence to threats made in such circumstances, even if they were subsequently certified. This argument concerns demands made to Holmart and JHP in relation to design 1 and demands made to Carparts, Oz Car Parts, Torq Parts and Panel House in relation to one or more of designs 2, 7 and 12. In relation to designs 1 and 2, there is no dispute that the designs were not examined and certified at the time of the alleged threats, but that they have since been certified. It is also accepted that designs 7 and 12 were never certified. 547 An owner of a registered design may not bring infringement proceedings until a design is examined under Chapter 5 of the Designs Act and a certificate of examination has been issued; s 73(3) of the Designs Act. Examination involves consideration of whether a ground for revocation of the registration of the design exists; s 65. Prior to examination, a design may be registered but the only scrutiny of the design by the Registrar will be a formalities check and a check to determine whether the design is of a type prescribed by the Act or the regulations; ss 39 and 43. 548 Section 77(3) of the Designs Act makes plain that if a certificate of examination has not been issued in respect of a design, a threat to bring infringement proceedings in respect of that design is an unjustified threat. 549 GMH contends that whilst a threat made in respect of an uncertified design may be deemed to be unjustified pursuant to s 77, the Court would nevertheless not grant relief in respect of that threat if the conditions of s 78 are satisfied. 550 Section 78 provides that a court may grant relief sought by an applicant under s 77 unless the respondent satisfies it that the (a) design concerned is registered, has been examined and a certificate of examination has been issued; and (b) acts about which the threats were made infringe or would infringe the registered design. The onus lies on the respondent to establish the elements of s 78. The words in s 78(a) "the design concerned is registered, has been examined and a certificate of examination has been issued" raise the question whether the design must be registered and certified at the time of making the threat, or whether the defence will apply provided that the design is registered at a point in time before the defence is raised in proceedings. SSS contends for the former, GMH the latter. In my view the latter prevails. 551 The use of the present perfect tense "may grant the relief sought" unless the design "has been examined"; and the certificate of examination "has been issued" supports that construction. The section does not state that a court may grant the relief sought provided that the design and certificate of examination "had" been examined and issued respectively. 552 So too does the structure of Part 3, having regard to the terms of ss 77 and 78 of the Designs Act. Section 77(3) in effect deems a threat unjustified if it is made in relation to a design that has not been certified. That deeming is expressed to be "for the purposes of this section", not "this Part", which includes s 78. Further, s 78(a) states as a precondition to the operation of the defence that the design be registered and certified. No language in s 78 precludes the operation of the defence in the event that the deeming in s 77(3) applies. Had Parliament intended to limit the defence in the manner contended for by SSS, it could have introduced language in either ss 77(3) or 78(a) to do so, but it chose not to. It is to be noted that, apart from the language of s 77(3), the meaning of the word "unjustified" remains open. 553 Further, leaving to one side the present argument, it is apparent that the policy and purpose of Part 3 of Chapter 6 of the Designs Act is to ensure that a threat of infringement is not made absent the ability to justify it on the basis that a right that has been infringed. This affords protection to trade to ensure that caution is exercised in making threats, but also ensures that those engaging in unlawful conduct may be the subject of appropriate warning where the registered design rights can be vindicated. The provision is accordingly directed to substantive rights. For example, if a trader has registered but not had the design certified, and threatens infringement then it will be exposed. However, if the substantive rights are subsequently vindicated by the certification of the design, then the owner may be protected. In my view it is consistent with this policy for the Designs Act to enable a registered owner to defend what is prima facie an unjustified threat, and avoid the grant of relief for that threat, if it establishes that the previously uncertified design was certified and infringed. 554 In my view, the observations of Jessup J in World of Technologies (Aust) Pty Ltd v Tempo Pty Ltd [2007] FCA 114; (2007) 71 IPR 307 at [122] do not assist the current debate, because they are directed only to the language of s 77(3). His Honour was not called upon to consider the terms of s 78 and how it interplays with s 77(3). The interlocutory decision of Cooper J in U & I Global concerned the operation of ss 128 and 129 of the Patents Act (at 31), which contain different language to that of the Designs Act. Further, his Honour found that the threat was "presently" unjustified (at 32), notwithstanding the terms of s 129 and observed that s 129 does not give a person a right to make threats if the defence in s 129 is made out, it only operates as a statutory defence to proceedings against conduct which is otherwise unlawful. To that extent, his Honour's observations are consistent with the construction of s 78 which I have preferred.

11.2.4 The relevance and operation of s 72 in the context of the threats action 555 The language of s 78(b) of the Designs Act gives rise to a substantial dispute between the parties as to the operation of Part 3 of Chapter 6 in conjunction with the s 72 defence. As I have noted, s 78(b) provides that a court may grant relief in respect of a threat unless the respondent satisfies the Court that the acts about which the threats were made infringe, or would infringe, the registered design. 556 Insofar as the conduct of GMH towards the parts suppliers amounts to a threat, the following matters are not in dispute: (1) Each of the products the subject of the demands embodies a design that is identical to or substantially similar in overall impression to one of the designs asserted; (2) The conduct of almost every parts supplier the subject of a demand concerned an offer to sell an impugned product on eBay in Australia without the licence of GMGTO, with only one exception, being certain sales by Mr Car Parts; and (3) There is no allegation that the asserted designs are invalid. 557 The consequence is that the conduct of the parts suppliers amounts to an infringement of s 71 of the Designs Act, subject only to the application of the s 72 defence (and subject in some instances to the certification of the designs). 558 The argument as raised by SSS as set out in paragraph 7 of its cross-claim and refined in its closing submissions is as follows: (1) The legislative intent and effect of s 72 of the Designs Act was to exclude spare parts from protection under designs law unless the design owner could prove that the parts were being used for non-repair purposes; (2) In a spare parts case, the owner bears the burden of proof on all of the elements of s 72; (3) Section 72(2) provides a sui generis answer to infringement in a spare parts case. If the registered owner cannot demonstrate actual or constructive knowledge as required, that is the end of the matter; and (4) A spare parts case is one in which the assertion in s 71(2)(a) can or could be made. 559 Accordingly, SSS submits that a registered owner of a design cannot issue a letter of demand threatening infringement where the impugned product is potentially a component part of a complex product without first being in a position to establish that the recipient did not have the repair purpose within s 72(2) or that, if an answer to the action for threats is not made out by reason of s 72, then it necessarily follows that the threat is "unjustified". 560 The problem with this argument is that it ignores the language of s 72(1), which provides that, before the operation of s 72 will be triggered, the defendant must assert in infringement proceedings that because of the operation of this subsection, the use will not infringe; s 72(2)(b) of the Designs Act. Leaving to one side the reference in that subsection to "infringement proceedings", the evident legislative intention is that a registered owner is not expected to assume that the repair purpose will be asserted. To the contrary, until it is asserted, a registered owner is entitled to proceed on the basis that no such defence will be advanced. 561 This informs the correct approach to whether or not a letter of demand is an unjustified threat within the meaning of s 77 of the Designs Act. A registered owner is free to allege infringement in a letter of demand on the basis that it considers that the requirements for infringement within s 71 are made out (I leave to one side the question of certification for the present). 562 The argument advanced by SSS to the effect that s 72 provides for an "exemption" from registered design rights rather than a "defence" is beside the point. However characterised, the onus does not fall upon the registered design owner to establish the non-repair purpose until the alleged infringer asserts that it has the repair purpose. In my findings above relating to GMGTO's design infringement claim, I have discussed in detail the aspects of knowledge relevant to s 72. It is clear that the relevant knowledge is that of the alleged infringer. That is a substantive requirement. The requirement that this person asserts the operation of s 72(1) is similarly substantive. Only a party with the knowledge of the alleged infringer (being the alleged infringer or perhaps its agent) will be able to make such an assertion. SSS is not in such a position insofar as the alleged acts of the parts suppliers are concerned. Indeed, as the analysis of the law and evidence in relation to the claim brought by GMH against SSS shows, the question of knowledge can vary from one transaction to another and depends on the particular circumstances at a particular point in time of the alleged infringer. 563 SSS has not called any witness from any of the parts suppliers to give evidence or to make any assertion as to the applicability of s 72(1). SSS submits that in circumstances where the purpose of the cross-claim is to ameliorate the harm to SSS by reason of GMH's threats, it cannot follow that the spare parts suppliers must be called to give evidence. It submits that such an approach risks exacerbating the harm to SSS, and represents the opposite of the legislative intention. It submits that the "task is to evaluate the threats made by GMH". However, even having regard to the purpose of the provisions of Part 3, it is not apparent that it is appropriate to infer, as SSS would have it, that the purpose of the sale of the impugned parts is for repair within the meaning of s 72 of the Designs Act. That is a matter for which evidence is likely to be necessary, especially given the dual purposes for which such parts may be used. 564 That is not to say that an alleged infringer may not foreshadow an intention to rely on the repair defence under s 72 or that the circumstances of conduct by a trader are such that a registered owner is not on notice of that intention. But that is not the case advanced by SSS here. As I have noted, SSS contends that, in every case where the impugned product the subject of a threat is potentially a component part of a complex product, the party making the threat must assume that the s 72 defence applies. For the reasons given, I reject that submission. 565 In my view Parliament did not intend to stifle the ability of a party to issue a letter of demand for design infringement by requiring a registered owner to anticipate that the s 72 defence would be raised and then proceed to establish that there was no repair purpose. In most cases, before the assertion of the repair purpose can arise, there must be some sort of threat of suit, otherwise one might ask: how would a person know to make an assertion? In the present case, GMGTO was alerted by various advertisements placed on eBay that the parts suppliers were promoting parts for sale that appeared to amount to an infringement of its registered designs? The matters identified in paragraph [556] above and the context of the eBay notices themselves indicate that this was not fanciful. The fact that the s 72 defence may apply if raised does not preclude the sending of an appropriately worded letter before action, subject to compliance with the provisions of Part 3 of Chapter 6 of the Designs Act. 566 Section 78(b) provides that the Court may grant relief in respect of an unjustified threat unless the respondent satisfies the Court that the acts infringe or would infringe the registered design. Here, it is not in dispute that each of the parts the subject of the threats letters embodies one or other of the registered designs. At the time of the threats letters, no supplier had asserted an entitlement to rely on the s 72 repair defence [and it is not to be inferred from the circumstances that any would do so]. Accordingly, the prima facie position here is that for all of the designs the subject of threats that have been registered and certified, the acts about which the threats were made would infringe the registered designs.

11.3 Consideration of the legal issues relevant to the ACL claim 567 Sections 18(1) and 29(1)(m) of the ACL provide: 18 Misleading or deceptive conduct (1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. Note: For rules relating to representations as to the country of origin of goods, see Part 5-3. … 29 False or misleading representations about goods or services (1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services: … (m) make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy (including a guarantee under Division 1 of Part 3-2); or … 568 There is no dispute that the content of a letter of demand may amount to misleading or deceptive conduct; Wanem Pty Ltd v John Tekiela [1990] FCA 527; (1990) 19 IPR 435 at 444 (Gummow J). 569 In determining whether there has been a contravention of s 18 of the ACL (as for the former s 52 of the TPA, it is necessary to determine whether in the light of all relevant circumstances constituted by acts, omissions, statements or silence, there has been conduct which is likely to be misleading or deceptive: Miller & Associates Insurance Broking Pty Ltd v BMW Australia Finance Ltd [2010] HCA 31; (2010) 241 CLR 357 at [14]. For conduct to be misleading or deceptive within s 18, it is not necessary that it convey express or implied representations (although it is for s 29(1)(m)). It sufficies that it leads or is likely to lead into error; Miller at [15]. 570 Conduct is misleading or deceptive or likely to mislead or deceive if it has the tendency to lead into error, if there is a sufficient causal link between the conduct and the error on the part of the person exposed to the conduct. The causing of confusion or questioning is insufficient; it is necessary to establish that the ordinary or reasonable consumer is likely to be led into error; ACCC v Coles Supermarkets Australia Pty Ltd [2014] FCA 634; 317 ALR 73 at [39]). In this regard, it is necessary to view the conduct as a whole and in its proper context; Coles at [38]). 571 Gibbs CJ pointed out of s 52 of the TPA in Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited [1982] HCA 44; (1982) 149 CLR 191 at 199 (emphasis added): Although it is true, as has often been said, that ordinarily a class of consumers may include the inexperienced as well as the experienced, and the gullible as well as the astute, the section must in my opinion by (sic) regarded as contemplating the effect of the conduct on reasonable members of the class. The heavy burdens which the section creates cannot have been intended to be imposed for the benefit of persons who fail to take reasonable care of their own interests. What is reasonable will or (sic) course depend on all the circumstances. The persons likely to be affected in the present case, the potential purchasers of a suite of furniture costing about $1,500, would, if acting reasonably, look for a label, brand or mark if they were concerned to buy a suite of particular manufacture. 572 As stated above, SSS' pleaded ACL claim relies on the failure to disclose certain information. The circumstances in which silence or non-disclosure of information can be misleading are various. In Australian Securities and Investments Commission v ActiveSuper Pty Ltd (in liq) [2015] FCA 342; (2015) 235 FCR 181 at [388], White J summarised the position as follows: [388] The principles relevant to this part of ASIC's claim are settled. Many of the principles were discussed in Miller & Associates Insurance Broking Pty Ltd v BMW Australia Finance Ltd [2010] HCA 31; (2010) 241 CLR 357, in particular, at [16]-[21] (French CJ and Kiefel J). I take the applicable principles to be as follows: (1) Conduct involving silence or omission may, in some circumstances, constitute misleading or deceptive conduct; (2) In considering whether conduct is misleading or deceptive, silence is to be assessed as a circumstance like any other; (3) Mere silence without more is unlikely to constitute misleading or deceptive conduct. However, remaining silent will be misleading or deceptive if the circumstances are such as to give rise to a reasonable expectation that if some relevant fact does exist, it will be disclosed; (4) A reasonable expectation that a fact, if it exists, will be disclosed will arise when either the law or equity imposes a duty of disclosure, but is not limited to those circumstances. It is not possible to be definitive of all the circumstances in which a reasonable expectation of disclosure may arise but they may include circumstances in which a statement conveying a half-truth only is made, circumstances in which the representor has undertaken a duty to advise, circumstances in which a representation with continuing effect, although correct at the time it was made, has subsequently become incorrect, and circumstances in which the representor has made an implied representation; 5) In considering whether a party engaged in commercial dealing may have a reasonable expectation that a fact, if it exists, will be disclosed, it is appropriate to keep in mind that it will often be the case in such dealings that one party has more knowledge about a relevant matter than the other and yet will not, in accordance with ordinary commercial expectations, be guilty of misleading or deceptive conduct in failing to make that knowledge known to the other. [389] Ultimately, the determination of whether a failure to disclose a matter is misleading or deceptive requires examination of all the circumstances. If, in the circumstances assessed objectively, the representees would have been entitled to expect or infer (that is, have a reasonable expectation) that particular matters would be disclosed and they were not, the representor may have engaged in misleading or deceptive conduct: Clifford v Vegas Enterprises Pty Ltd [2011] FCAFC 135 at [198]. French CJ and Kiefel J in Miller said in relation to the concept of reasonable expectation, at [19]: The language of reasonable expectation is not statutory. It indicates an approach which can be taken to the characterisation, for the purposes of s 52, of conduct consisting of, or including, non-disclosure of information. That approach may differ in its application according to whether the conduct is said to be misleading or deceptive to members of the public, or whether it arises between entities in commercial negotiations. … (Citation omitted) 573 In Miller at [20] French CJ and Kiefel J (as her Honour then was) held (citations omitted): In commercial dealings between individuals or individual entities, characterisation of conduct will be undertaken by reference to its circumstances and context. Silence may be a circumstance to be considered. The knowledge of the person to whom the conduct is directed may be relevant. Also relevant, as in the present case, may be the existence of common assumptions and practices established between the parties or prevailing in the particular profession, trade or industry in which they carry on business. The judgment which looks to a reasonable expectation of disclosure as an aid to characterising non-disclosure as misleading or deceptive is objective. It is a practical approach to the application of the prohibition in s 52. 574 SSS relies on a passage from Cicero On Duties, quoted in Miller at [21] (citations omitted): Cicero, in his famous essay On Duties, seems to have contemplated such a standard when he wrote: "Holding things back does not always amount to concealment; but it does when you want people, for your own profit, to be kept in the dark about something which you know and would be useful for them to know." It would no doubt be regarded as an unrealistic expectation, inconsistent with the protection of that "superior smartness in dealing" of which Barton J wrote in W Scott, Fell & Co Ltd v Lloyd, that people who hold things back for their own profit are to be regarded as engaging in misleading or deceptive conduct. As Burchett J observed in Poseidon Ltd v Adelaide Petroleum NL, s 52 does not strike at the traditional secretiveness and obliquity of the bargaining process. But his Honour went on to remark that the bargaining process is not to be seen as a licence to deceive, and gave the example of a bargainer who had no intention of contracting on the terms discussed and whose silence was to achieve some undisclosed and ulterior purpose harmful to a competitor. 575 SSS made no submission directed specifically to the content of s 29(1)(m) in the context of its ACL claim. At one point in its closing submissions it appears only to rely on s 18, although in its most recent pleading, after closing submissions, the references to s 29(1)(m) remain. Perhaps understandably GMH in its submissions also gives the section a light touch. No doubt by the time that it came to this provision, the parties considered that the 600+ pages in written closing submissions in the proceedings were sufficient. In any event, I cannot see how s 29(1)(m) might apply to any greater effect than s 18. Section 18 is directed to conduct that is misleading or deceptive, whereas s 29(1)(m) is directed specifically to making false or misleading representations. Accordingly, I do not address s 29(1)(m) further.

11.3.1 GMH does not owe a duty to disclose 576 SSS characterises the Representations as false or misleading conduct primarily by reference to a failure on the part of GMH to disclose to the parts suppliers the omitted information identified in section 11.3.2 below. This allegation is predicated on, according to the case advanced by SSS, GMH having a "duty to disclose" that information to the parts suppliers. This, it submits, arises because GMH, through the specialised knowledge of its external legal counsel, had relevant information about, inter alia, the right of repair that, if not imparted to the parts suppliers, was unlikely to come into their hands via any other means. So much should have been clear, SSS submits, having regard to the nature of the industry, the identity of the recipients, subsequent interactions with the parts suppliers who were often without legal representation and the highly technical nature of the legal matters to which they referred concerning untested law. Furthermore, SSS asserts that the letters contained prima facie legal errors and omitted information relevant to the recipient's assessment of its position, such as the availability of the right of repair. 577 In Miller, French CJ and Kiefel J (as her Honour then was) observed at [22] that the section of the TPA which is now replaced by s 18 ACL does not require a party to commercial negotiations to volunteer information which will be of assistance to the decision making of the other party. A fortiori it does not impose on a party an obligation to volunteer information in order to avoid the consequences of the careless disregard for its own interests, of another party of equal bargaining power and competence. 578 The position of the parties to a letter of demand are even more obviously at arms-length. The recipient of a letter of demand is at a long step removed from the parties to an arm's length negotiation; contrast Burchett J in Poseidon Ltd v Adelaide Petroleum NL [1991] FCA 848; (1991) 105 ALR 25 at 48 (Sheppard J agreeing generally at 26). Correspondence such as the Panel House letter immediately places the sender and the recipient on opposing sides, antagonistic to each other and possibly heading for litigation. In that context, a reasonable recipient of such a letter is on notice that the sender is out to assert its rights, possibly put at their highest, to ensure that they are vindicated. 579 In such circumstances, in my view there are significant reasons for the Court to be slow to consider (as put by SSS) that a duty is owed by the author of the letter to inform the recipient of matters going to the legal rights of the recipient. One is that, as a matter of policy, it is not appropriate for the solicitors acting for the party making the demand to be placed in a position where it must notify a potential respondent to legal proceedings of its rights. That could put the solicitor in a conflict of interest. Further, it would be illogical to require the holder of an intellectual property right such as a registered design to put an alleged infringer on notice that, in its opinion, the recipient may counter-claim for the invalidity of the right or that a particular defence to infringement arises. It is the defendant to a claim that must be in the position to assert its own rights. 580 Further, turning for a moment to the template example of the Panel House letter, the context is expressly a letter before action. It was plainly written on behalf of GMH, which wished to vindicate what it perceived to be its rights by receiving satisfaction in the form of compliance with its demands. A reasonable recipient of the letter would understand that the letter was intended to set out the position of GMH, possibly stated at its highest, and that he or she would be well advised to seek legal advice. To the extent that there was any ambiguity about this, the letter concluded with that express recommendation. In my view nothing in its contents suggests that Panel House should be able to rely on K&L Gates to provide it with the omitted information. 581 Leaving aside the text of the Panel House letter, SSS bases its case on the existence of a "duty to disclose" upon external contextual matters. One point pleaded is that there was a "gross inequality of bargaining" power between GMH and the recipient. Another is that each parts supplier was vulnerable by reason of the likely trust and reasonable expectation it had of Holden to act fairly and equitably toward it and to make "full disclosure" of all material facts relevant to its demands. Another is that GMH had specialised knowledge of the repair defence and that the parts suppliers suffered from a lack of assistance or explanation. None of these allegations is supported by evidence from any representative of a parts supplier, and I would not infer them. 582 SSS contends that all but three of the parts suppliers did not have the benefit of legal advice, and that accordingly they were in some respect vulnerable and required the omitted information to be disclosed to them. However, 3 of the parts suppliers did engage solicitors who responded to the demands made (being Panel House, Oz Car Parts and Holmart). In the absence of evidence on the subject, I would not infer that the balance did not receive some legal advice. For instance, as GMH points out, Ms Neoh arranged for SSS to provide information to various recipients of letters, including advice about the s 72 defence. 583 In addition, an integral part of the case as advanced by SSS is that GMH knew or ought to have known that each parts supplier lacked knowledge of material aspects of the law or claim as set out in the omitted information. However, Mr Round and Mr Pieris, the solicitors who had written the K&L Gates letters of demand, including the Panel House Letter, gave affidavit evidence. Mr Round was available to be cross-examined. Mr Pieris was cross-examined. Neither was asked about this subject. 584 SSS submits that the parts suppliers were at a particular disadvantage such that it was necessary for GMH to disclose the omitted information to them. No evidence supplied a basis upon which it was possible to assess the 'disadvantage' from which the parts suppliers suffered. For the most part, they corresponded with GMH in a wholly rational manner, albeit sometimes with a degree of naivety as to the scope of their legal rights. 585 Each parts supplier is a commercial enterprise, which sold the impugned parts for profit. Despite SSS' characterisation of each as a small business, there is no reason advanced why businesses engaged in the sale of parts for profit could not take steps to protect their own interests. The scant references in Exhibit B that SSS contends suggest a lack of sophistication fall well short of indicating that they were under some sort of special disadvantage. As I have noted, no evidence was called from any parts supplier to elaborate on the subject.

11.3.2 The Omitted Information 586 Although, given the way that SSS pleads its case, my finding that GMH owed no general duty to disclose is sufficient to dispose of its ACL claim, I now turn to consider separately the omitted information that SSS contends GMH failed to disclose. 587 The first is the failure to mention the details of the s 72 defence. Before it applies, the alleged infringer must substantively assert that it had the repair purpose. As I have said in section 11.2.4, it is not for a registered owner to assume that the repair defence will be relied upon. Nor at least in the circumstances of this case, is it for the registered owner to assume that the recipient of a letter of demand will be ignorant of its rights by the time it responds to the letter before action. Accordingly, I reject the proposition that GMH owed a duty to disclose to the parts suppliers the s 72 defence. I refer to this below as my section 72 finding. 588 The second is the failure to identify that some of the designs are uncertified. I have addressed this in relation to the Panel House example in section 12.2.3 below which I refer to as my uncertified designs finding. 589 The third is the failure to mention the maximum term of monopoly that the designs referred to have or had. Demands were made by GMH for the parts supplier to give general undertakings, including to cease trading in the impugned parts forever. A related submission is that the demands that GMH made were in excess of the rights available to a registered design owner in the event that infringement is established. In my view, a registered design owner owes no duty to disclose detailed aspects of the designs asserted. The design is on the public register, and a party being reasonably astute to protect its own interests will conduct a search to ascertain the true position. Although it is perhaps more professional and courteous for those representing a rights owner to do so, I see no reason why, in a letter of demand, the registered owner owes a duty to the recipient to state the expiry date of the design. Nor do I consider that a demand that exceeds the strict bounds of a legal right can be made only when accompanied by a qualification stating that fact. In this regard, the passage of the decision cited below in paragraph [592] is also apposite. 590 The fourth focuses on the reference in the letters of demand to the word "counterfeit". As pleaded, SSS asserts that the Representations were false and misleading because GMH failed to disclose that the impugned products referred to in the letters of demand as "counterfeit" were not in fact "counterfeit" because aftermarket spare parts may be sold legally pursuant to the right of repair. SSS submits that the word is a term suggesting that an imitation part is sold with falsely applied trade marks, names and logos. It provides no source for this definition. The Macquarie Dictionary (7th ed, 2017) supplies as its first definition of the term "made to imitate, and pass for, something else; not genuine". No evidence was supplied as to the way that parts suppliers understood the term, but in my view it is likely that the dictionary definition would be regarded as applicable. For aftermarket car parts, a dichotomy exists between parts made by the original manufacturer and replica parts which are not "genuine" in the sense of being sourced from the original manufacturer. 591 The word "counterfeit" was used in the Panel House letter as follows (emphasis added): The Bodykit Products are identical to or substantially similar in overall impression to the Designs. We are instructed that Panel House also has, under the user name "panelhouse", advertised, offered for sale and sold through eBay the following products which are identical to or substantially similar in overall impression to the Designs. … We are instructed that the Bodykit Products are counterfeit and that the Designs have been utilised in the production of the Bodykit Products without the authority, consent or approval of Holden, GM or GMGTO. As a consequence, a listing featuring the Bodykit Products was removed by eBay at Holden's request under the VeRO program. 592 In my view, a reasonable reader of this passage, knowing it to be a letter before action from a rights owner, would understand that GMH alleged that the parts were not authorised reproductions of the "genuine" HSV or VE Parts, and that by reason of the Designs, they infringed its rights. I do not consider that GMH owed a duty to explain to the parts suppliers that the parts that they were selling may not have infringed its rights or may not otherwise have amounted to counterfeits. See BLH Engineering and Construction Ltd v Pro 3 Products Pty Ltd [2015] FCA 833; (2015) 114 IPR 105, in which Jessup J said: [103] …When one trader causes his or her professional advisers to make such an accusation in formal correspondence, it should not, in my view, be regarded as misleading merely because it turns out that the advisers were wrong on the law or the facts. That view is based on the terms and the purposes of ss 18 and 29(1)(m) themselves; but it takes into account also the policy consequences of a holding that a letter of demand of the kind sent on 2 September 2011 may be employed only under peril of contravening the ACL should the contention on which the letter is based turn out to be other than that held to be correct in the litigation which follows. 593 I refer to the above findings relating to the counterfeit representation as my "counterfeit findings". 594 Having regard to this analysis, it is apparent that, in my view, SSS has failed to establish that by reason of the making of the pleaded Representations and failing to disclose the omitted information, GMH engaged in misleading or deceptive conduct in breach of s 18.

12.1 Introduction 595 In this section, I turn to consider the threats case and the ACL claims advanced by SSS in the context of the correspondence with each of the parts suppliers. For all but Holmart, the initial letter of action sent by GMH was substantially the same, varying only by the identification of the impugned products sold by the parts supplier, the designs (and other rights) said to have been infringed and the "Further Designs" (being registered but uncertified designs) to which GMH drew attention. For brevity, the section below only identifies material differences from the Panel House letter. The ACL claim relies on a course of conduct set out in Exhibit B, which includes correspondence between the parts suppliers and GMH. For that reason, the relevant correspondence is summarised for each. To the extent possible, to avoid duplication I have abbreviated my findings in relation to each by reference to my findings in section 11 above.

12.2.1 The relevant correspondence 596 I have summarised in detail the content of the Panel House letter which was sent on 4 September 2014. The solicitors for Panel House responded on 10 September 2014, stating that their client had removed the items described as "body kits" from eBay and returned all body kit products to SSS Queensland. On the same day, K&L Gates responded, stating that this was unsatisfactory and that Panel House would have to sign the undertaking supplied in the initial letter and also provide a statutory declaration setting out information regarding sales of infringing products and supporting documentation. On 16 September 2014, the solicitors for Panel House responded, stating inter alia that there was no person at SSS Queensland with whom their client particularly spoke, they had received no flyer or brochure from SSS Queensland for HSV parts and that their client "was informed by phone call" that SSS Queensland had HSV parts in stock.

12.2.2 The unjustified threats claim 597 In its particulars, SSS pleads that by threatening to bring design infringement proceedings or other similar proceedings against Panel House in its letters of 4 and 10 September 2014, GMGTO made unjustified threats within the meaning of s 77 of the Designs Act for the following reasons: (1) As at the date of the 4 September 2014 letter, Designs 2, 7 and 12 had not been certified; (2) Design 2 was not certified at the time that the threat was made and Designs 7 and 12 were never certified; and (3) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within the meaning of s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle. 598 As to whether the letter constitutes a threat, in my view, the 4 September 2014 letter would convey to a reasonable person that the author intended to bring proceedings for infringement against Panel House of the Annexure A designs, being Designs 1, 8, 9, 10 and 11. There is no dispute that this is so. 599 The language used in respect of the "Further Designs" (Designs 2, 7 and 12), which were not certified at the time of the demand, is more circumspect and more controversial. SSS contends that it is a threat, because it exceeds the terms of a "mere notification of the existence of a registered design" within the meaning of s 80 of the Designs Act. GMH does not accept that the language amounts to a threat. 600 The particular language used is: Further Designs Our clients have instructed us to put Panel House and its officers on notice of the designs depicted at Annexure B (Further Designs). Our clients intend to request examination of the Further Designs under section 65 of the Designs Act. Should the Further Designs then be certified by the Designs Office, our clients will be entitled to seek damages in relation to any sales of products which are made using a design that is identical to or substantially similar in overall impression to the Further Designs (or any of them). In particular, we draw your attention to the following products being sold from the Panel House Website which appear to be substantially similar in overall impression to the Further Designs. 601 Following this section is a heading "3. Demands" in which, as I have set out in section 10.4 above, GMH then advances a series of demands. The first is that Panel House undertake to cease and refrain "forever" from dealing in the "Bodykit Products", which are the products of the certified, registered designs. The second is that Panel House provide a statutory declaration setting out, inter alia, details of the "number and particulars" of sales and so forth not only of the Bodykit Products but also "Other Replica Products". These are defined in 2(b) as: any other replicas of General Motors products (including but not limited to Chevrolet, Corvette, Hummer, Cadillac, GM, GMC, Buick, Camaro and Pontiac), Holden products (including but not limited to Kingswood, Torana, Monaro, Calais, HRT, Commodore, SS, Statesman and Clubsport) and HSV products… that Panel House has manufactured, imported, taken orders for, promoted; offered for sale, sold or otherwise dealt with 602 The third is that Panel House deliver up, not only the Bodykit Products but also the "Other Replica Products" in its possession, custody or control and any moulds used in the manufacture thereof. The fourth is delivery up of all packaging, purchase orders, invoices and other materials which "include or refer to" the Other Replica Products (and Bodykit Products). 603 The letter goes on to say "[i]f Panel House does not comply with the above demands within the time stated, we will take our clients' instructions to issue proceedings in the Federal Court for Infringement of the Designs" (which is earlier defined by reference to the annexure A registered and certified designs). 604 It is necessary to consider the terms of the letter objectively to determine whether, as a whole, it contains a threat to a reasonable person that the author of the communication intended to bring proceedings for infringement in respect of the uncertified designs. In my view, it does. 605 First, the final paragraph under the "Further Designs" heading extends beyond mere notification and would convey to a reasonable recipient that GMH regarded the conduct of Panel House in relation to those additional products as amounting to an infringement in respect of which it intended to bring suit. Secondly, the demands made and the letter as a whole are menacing and threaten imminent action. Although the letter defines "Bodykit Products" and "Other Replica Products" separately, the demands require immediate action in respect of both. In this regard, a reasonable reader would understand the demand for information ("particulars") about the Other Replica Products and delivery up of all stock and moulds for those products to be referable to a demand based on a legal right. A recipient would quite sensibly understand that right to include any products embodying the "Further Designs", images of which were supplied with the letter. 606 In this regard, I do not consider that the statement that the author would take instructions to issue Federal Court proceedings in respect of infringement of the "Designs" (defined to mean the registered and certified designs) as opposed to the "Designs" and "Further Designs" to take the sting from the threat implicit in the demands in respect of the "Other Replica Products". The paragraph that follows is (emphasis original): Under no circumstances should the Bodykit Products or Other Replica Products (or moulds used to manufacture the Bodykit Products or Other Replica Products) be destroyed, given away or sold to a third party. Please immediately deliver up all Bodykit Products or Other Replica Products (and moulds used to manufacture the Bodykit Products or Other Replica Products) remaining in your possession to K&L Gates. 607 The strong message from this paragraph, set out in bold in the original, is that any dealing with "Other Replica Products" will be offensive to the rights asserted. No rights in respect of the Other Replica Products are referable to the registered and certified designs. The impression left to the reader is that GMH has rights in respect of both Other Replica Products and Bodykit Products and will take steps to enforce them in legal proceedings. The reasonable reader would understand "the true gist" of the letter (Challender v Royal (1887) 4 RPC 363 at 375) to include a threat of proceedings in respect of products embodying the "Further Designs". For these reasons, I accept that a threat was made in relation to both the certified and uncertified designs. 608 For the reasons given in section 11.2.4, I do not accept SSS' submission that a registered owner of a design cannot issue a letter of demand threatening infringement without first being in a position to establish that the recipient did not have the repair purpose within s 72(2). Nor am I satisfied that the threats are objectively groundless or unjustifiable in light of the surrounding circumstances of the Panel House transaction and the matters set out in section 11.2.4 above. 609 For the reasons given in section 11.2.3 above, I find that a threat will not be unjustified pursuant to s 78(a) if an uncertified design is subsequently certified. This applies to Design 2, but not Designs 7 and 12. Accordingly, in my view, the threats made in relation to Designs 7 and 12 cannot be justified pursuant to s 78(a). 610 As the granting of relief for unjustified threats is discretionary, GMH raises two further arguments to defend its conduct in relation to this. First, it submits that SSS has not established that the products said to embody these designs were supplied by SSS. Accordingly, SSS is not a relevant aggrieved person. Secondly, it asserts that Design 7 embodies the silhouette of the Holden lion logo, which in itself would warrant a claim for trade mark infringement. I do not consider that either argument has merit for the reasons set out in section 11.2.2 above. Further, it is not to the point to contend that conduct the subject of the threat of designs infringement might also be the subject of trade mark infringement. The relevant question is whether or not the former is unjustified under the terms of the Designs Act, regardless of the validity of the latter. 611 Accordingly, insofar as the letter of 4 September 2014 to Panel House made threats concerning Designs 7 and 12, it was unjustified. In the context of threats actions concerning patents, where the threat refers to more than one patent, it is a sufficient defence to show infringement of a claim of any one of them, even though there may be no infringement of the others; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 62. However, the parties have not addressed on the subject and they should have an opportunity to do so.

12.2.3 The ACL claim 612 SSS contends in its particulars that, by reason of the identified communications, GM Holden and GMGTO represented in trade or commerce that the conduct of Panel House constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) Designs 2, 7 and 12 were not certified at the date of the threats, proceedings may not be brought until the designs had been certified and, additionally, it was by no means inevitable that they could or would be certified; (c) the relevant designs each had a maximum term of monopoly and the design rights did not extend beyond that term; and (d) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 613 I have rejected the proposition that GMH owed a duty to disclose as alleged. That is sufficient to dispose of the ACL claim. Further, in relation to (a), (c) and (d), I refer to my s 72, maximum term and counterfeit findings respectively. 614 As to (b), the question is whether, in all of the circumstances, the "Further Designs" part of the Panel House letter was misleading or deceptive or a misrepresentation as to the existence of rights. When taken away from the context of the unjustified threats provisions of the Designs Act, it may be seen that it was not. It includes the observation that should the Further Designs be certified by the Designs Office, K&L Gates' clients would be entitled to seek damages in relation those designs. That was not an incorrect statement of fact and accurately summarised the position in relation to s 71 of the Designs Act; see also Jessup J's findings in BLH at [103]. I refer to this conclusion as the uncertified designs finding.

12.3.1 The relevant correspondence 615 On 26 March 2014, K&L Gates wrote to JHP in substantially the same terms as the Panel House letter with the following relevant exceptions: (1) The impugned design products are defined as "bumpers"; (2) Only one "registered" design - Design 1 - is identified in annexure A; and (3) No "Further Designs" are mentioned. 616 Whilst no "Further Designs" are mentioned, at the time of the letter, Design 1 had not been certified (which occurred on 6 August 2014). Unlike subsequent letters, the JHP letter does not disclose that Design 1 would need to be certified before design infringement proceedings could be commenced. The JHP and the Holmart letters are the only cases in which this issue arises because Design 1 had been certified by the time that all of the other letters of demand which are the subject of SSS' unjustified threats claims were sent. 617 On 8 April 2014, a K&L Gates solicitor's file note records that Geoff Thuring of JHP indicated that he had not received the letter, that he knew about the VeRO removals, that JHP had not relisted the products since, and he would check if there were any products left. After being sent a copy of the letter of demand to his personal email, Mr Thuring indicated that he would read it further and respond. The only other correspondence in evidence is a further file note dated 3 September 2014 which records that Mr Thuring thought that K&L Gates "kept asking for more and more information" and he was advised that if he provided all of the information sought in a 20 August 2014 email they could "wrap it up".

12.3.2 The unjustified threats claim 618 In its particulars, SSS pleads that by threatening in the 26 March 2014 letter to bring design infringement proceedings or other similar proceedings against Mr Thuring and JHP, GMGTO made unjustified threats within the meaning of s 77 of the Designs Act because: (1) As at the date of the letter, Design 1 had not been certified; and (2) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle. 619 In my view, the 26 March 2014 letter would convey to any reasonable person that the author intended to bring proceedings for infringement against Panel House of Design 1. However, as it was later certified, for the same reasons given in section 11.2.3, I find that s 78 of the Designs Act applies and SSS is not entitled to relief in respect of the threat made.

12.3.3 The ACL claim 620 SSS contends in its particulars that by reason of the correspondence, GM Holden and GMGTO represented in trade or commerce that the conduct of Mr Thuring and JHP constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) Design 1 was not certified at the date of the threats, proceedings could not be brought until the design had been certified and, additionally, it was by no means inevitable that it could or would be certified; (c) Design 1 had a maximum term of monopoly and the design rights did not extend beyond that term; and (d) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 621 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, uncertified design, maximum term and counterfeit findings.

12.4.1 The relevant correspondence 622 On 26 August 2014, K&L Gates wrote to Michael and Priscilla Ognenis (trading as Westside Imports) in substantially the same terms as the Panel House letter with the following relevant exceptions: (1) The impugned parts in the demand are defined as "Bodykit Products"; (2) Design 6 is identified in annexure A, which related to "Old Act Designs" registered pursuant to the Designs Act 1906; (3) Design 1 is identified in annexure B, which related to "New Act Designs" registered pursuant to the Designs Act; and (4) No "Further Designs" are mentioned. 623 On 28 August 2014, Mr Ognenis responded saying that they received the letter with surprise. Their business consists of Mr and Ms Ognenis and one recent employee. The eBay notice of listing removal was changed and they had removed all reference to the impugned items from their website and would not post them again until they received "clearance" to do so. The letter also states that the GMH email would be sent to Westside's suppliers (that is, SSS) to "get an answer as to why we have been placed in this position" and "this is the first we have heard regarding copyright [sic] issues". The letter then proceeds to ask GMH questions including "is it against the law to sell non genuine parts? If so, why is there a raging industry within Australia and around the world?" and several others. 624 The following day, K&L Gates responded by stating that they understand that the Bodykit Products were sourced from third parties and that they note that Westside asserts that it is neither the importer or manufacturer of these items. The email states that under s 30 of the Designs Act 1906 and s 71 of the Designs Act "our clients are not required to show that you knew the Bodykits Products infringed GMGTO's registered designs". The email also recommends that Westside consider seeking independent legal advice in relation to the questions that it asks and that K&L Gates is not in a position to give them advice. On 8 September 2014, Mr Ognenis responded to K&L Gates saying that Westside was trying to comply with the requests, but was waiting on legal advice. Subsequently, signed undertakings were provided. 625 In addition, Mr and Ms Ognenis signed a statutory declaration on 12 September 2014. It said (emphasis added): We are a small on-line business selling autoparts like lights, door handles and panels to customers anywhere. We have sold s/hand and aftermarket parts as well as parallel products. We have never sold "bodykits" as such. As far as Commodore VX SS Bumpers go, we have had three on-line sales and we still have 1 damage left in stock. With regards the Commodore VE HSV models, we have sold 1 of each for repairs and do not have any remaining in stock…We admit selling 5 units on line and are wanting to resolve this and accept our mistake. We are sincerely sorry should we have breached any copyright code and will take any future warnings with the urgency they deserve…. 626 On 23 September 2014, K&L Gates wrote to Westside stating that, on the basis for the signed undertakings and statutory declaration, GMH did not intend to take further action.

12.4.2 The unjustified threats claim 627 In its particulars, SSS pleads that by threatening in the 26 March 2016 letter (the particulars say 29 August but that seems to be a mistake) to bring design infringement proceedings or other similar proceedings against Westside, GMGTO made unjustified threats within s 77 of the Designs Act for the following reasons: (1) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle; and (2) From at least 12 September 2014, by way of the statutory declaration, GMH had express notice that Westside had sold the relevant spare parts for the purpose of repair. 628 In my view, the 26 March 2014 letter to Westside would convey to any reasonable person that the author intended to bring proceedings for infringement against Westside and Mr and Ms Ognenis of Designs 1 and 6. However, for the following reasons I do not consider that SSS is entitled to relief pursuant to s 77 of the Designs Act in respect of this letter. 629 First, for the reasons given in section 11.2.4, I do not accept SSS' submission that a registered owner of a design cannot issue a letter of demand threatening infringement without first being in a position to establish that the recipient did not have the repair purpose within s 72(2). Nor am I satisfied that the threats are objectively groundless or unjustifiable in light of the surrounding circumstances of the Westside transaction and the matters set out in section 11.2.4 above. 630 Secondly, the Westside statutory declaration says "[a]s far as Commodore VX SS Bumpers go, we have had three on-line sales and we still have 1 damage left in stock. With regards the Commodore VE HSV models, we have sold 1 of each for repairs and do not have any remaining in stock". This amounts to an assertion that for the bumper parts for the Commodore VE HSV model one each had been sold for the repair purpose. However, at the time that the 26 March 2014 letter was sent, GMH was not on notice that this was the position of Westside. Nothing in the materials suggests that GMH ought to have been aware that this would be Westside's position in relation to these parts. Indeed, the eBay adds include (emphasis added) "THIS IS A NEW NON GENUINE SS BUMPER FOR VX AND VU COMMODORES. IT WILL ALSO FIT A VT ALTHOUGH YOU WOULD NEED TO CHANGE THE HEADLIGHTS". The statutory declaration does not assert or suggest any repair purpose within s 72(2)(b) of the Designs Act for other parts sold. Furthermore, the statutory declaration was given on 12 September 2014. That was the first date from which GMH could reasonably be regarded to be on notice that an element of the conduct of Westside involved sale for the purpose of repair. No further threat was made from then. 631 In light of these matters, I decline to grant relief in respect of the threats made in the 26 March 2014 letter.

12.4.3 The ACL claim 632 SSS contends in its particulars that, by reason of the communications between GMH and Westside, GM Holden and GMGTO represented in trade or commerce that the conduct of Westside constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) Designs 1 and 6 had a maximum term of monopoly and the design rights did not extend beyond that term; and (c) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 633 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, maximum term and counterfeit findings. 634 Accordingly, I would decline to grant relief in relation to Westside.

12.5.1 The relevant correspondence 635 On 1 September 2014, K&L Gates wrote to Paul Hunter of Carparts in substantially the same terms as the Panel House letter with the following relevant exceptions: (1) Designs 1, 8, 9, 10 and 11 are identified as "registered designs" in annexure A; (2) Designs 2 and 7 are identified as "Further Designs" in annexure B; (3) The language used in relation to the "Further Designs" is different, as I explain below. 636 A file note prepared by Mr Round of K&L Gates dated 3 September 2014 summarises a conversation that he had with Mr Hunter, which Mr Hunter subsequently confirmed in an email on 8 September 2014. In it, Mr Hunter states that Carparts is a small seller of aftermarket products to the retail market. Upon receipt of the 1 September letter, Carparts removed all items containing the HSV branding from eBay and the main website and notified SSS of the letter, seeking confirmation that any parts they on-sell are compliant with all "statutory laws". Mr Hunter also advised that Carparts also sells genuine items. 637 On 8 September 2014, K&L Gates sent a series of questions to Carparts asking for invoices issued by SSS and details of correspondence of promotions done by SSS. On 11 September 2014, Mr Hunter responded with copies of 7 invoices for a total of 16 parts.

12.5.2 The unjustified threats claim 638 In its particulars, SSS pleads that by threatening in the 1 September 2014 letter to bring design infringement proceedings or other similar proceedings against Carparts, GMGTO made unjustified threats within the meaning of s 77 of the Designs Act for the following reasons: (1) As at the date of the 1 September 2014 letter, Designs 2, 7 and 8 had not been certified (the reference to Design 8 is an error. It was certified prior to the letter on 28 August 2014); (2) Design 2 was not certified at the time that the threat was made and Design 7 was never certified; and (3) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle. 639 In my view, the 1 September 2014 letter would convey to any reasonable person that the author intended to bring proceedings for infringement against Carparts of the annexure A designs, being Designs 1, 8, 9, 10 and 11. The language used in respect of "Further Designs" (Designs 2 and 7), which were not certified at the time of the demand, is more circumspect. SSS contends that it is a threat, because it exceeds the terms of a "mere notification of the existence of a registered design" within the meaning of s 80 of the Designs Act. GMH does not accept that the language amounts to a threat. 640 The particular language used is as set out below, although it is of course to be understood in the context of the letter as a whole: Our clients have instructed us to put Hunter Projects and its officers on notice of the designs depicted at Annexure B (Further Designs). Our clients intend to request examination of the Further Designs under section 65 of the Designs Act 2003 (Designs Act 2003) and should the Further Designs meet the necessary requirements as set out in the Designs Act 2003 then Certificates of Examination will be issued by the Designs Office. Should the Further Designs then be certified by the Designs Office, our clients will be entitled to seek damages in relation to any sales of products which are made using a design that is identical to or substantially similar in overall impression to the Further Designs. 641 It will be seen that the letter to Carparts does not include the third paragraph that is present under this heading in the Panel House letter, which draws particular attention to certain Panel House products that are said to appear to be substantially similar in overall impression to the Further Designs. I have above set out the passages in the Panel House letter that follow the "Further Designs" section under the heading "3. Demands". The terms of the Carparts letter are in substantially the same form as the Panel House letter. In my view, reading the Carparts letter afresh, for substantially the same reasons given in relation to Panel House in section 12.2.2 above, I consider that this letter conveys a threat of infringement proceedings in respect of the uncertified designs. The fact that the letter states that K&L Gates will take instructions to issue proceedings for infringement of the "Registered Designs" (as opposed to "Designs") does not change my view. 642 In light of these matters, I first find that threats within s 77(1) have been made in respect of Designs 1, 8, 9, 10 and 11 (the certified designs) and a threat was also made in respect of Designs 2 and 7 (the uncertified designs). Secondly, for the reasons given in section 11.2.4, I do not accept SSS' submission that a registered owner of a design cannot issue a letter of demand threatening infringement without first being in a position to establish that the recipient did not have the repair purpose within s 72(2). Nor am I satisfied that the threats are objectively groundless or unjustifiable in light of the surrounding circumstances of the Panel House transaction and the matters set out in section 11.2.4 above. Thirdly, in relation to Design 2, for the reasons given in section 11.2.3 above, I find that the threat is not unjustified pursuant to s 78(a) because it was later certified. That is not the case for Design 7, which was never certified. 643 Accordingly, in my view, the threats made in relation to Design 7 cannot be justified pursuant to s 78(a). I will hear submissions from the parties as to the appropriate relief to grant, if any.

12.5.3 The ACL claim 644 SSS contends in its particulars that, by reason of the identified communications, GM Holden and GMGTO represented in trade or commerce that the conduct of Carparts constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) that Designs 2, 7 and (in error) 8 were not certified at the date of the demand, proceedings may not be brought until the designs had been certified and, additionally, it was by no means inevitable that they could or would be certified; (c) the relevant asserted designs had a maximum term of monopoly and the design rights did not extend beyond that term; and (d) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 645 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, uncertified design, maximum term and counterfeit findings.

12.6.1 The relevant correspondence 646 On 1 September 2014, K&L Gates wrote to Mr Kasim Ates, company secretary of Oz Car Parts in substantially the same terms as the Panel House letter with the following relevant exceptions: (1) Design 5 is identified in annexure A, which related to "Old Act Designs" registered pursuant to the Designs Act 1906; (2) Designs 1, 8, 9, 10 and 11 are identified in annexure B, which related to "New Act Designs" registered pursuant to the Designs Act; (3) Design 2 is identified as a "Further New Act Design" in annexure D; and (4) The language used in relation to the "Further New Act Design" is, for all relevant purposes, the same as the wording adopted in the Carparts letter, which I discuss in section 12.5 above. 647 After receipt of the letter, a file note in evidence records that Mr Round and Mr Ates had a conversation in which Mr Round explained the difference between genuine and other parts and Mr Ates said that some of his parts were genuine. On 9 September 2014, solicitors retained by Oz Car Parts responded by denying infringement of any rights, but stating that their client had agreed to cease buying Holden parts from other Holden dealers and reselling them on eBay. They also supplied invoices identifying the source of the products.

12.6.2 The unjustified threats claim 648 In its particulars, SSS pleads that by threatening in the 1 September 2014 letter to bring design infringement proceedings or other similar proceedings against Oz Car Parts, GMGTO made unjustified threats within the meaning of s 77 of the Designs Act for the following reasons: (1) As at the date of the 1 September 2014 letter, Design 2 had not been certified; and (2) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle. 649 For reasons consistent with those identified above in relation to Carparts, I consider that a threat was conveyed in the 1 September 2014 letter but the threat is not unjustified. Accordingly, I decline to grant relief in relation to Oz Car Parts.

12.6.3 The ACL claim 650 SSS contends in its particulars that by reason of the identified communications, GM Holden and GMGTO represented in trade or commerce that the conduct of Oz Car Parts constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) that Design 2 was not certified at the date of the demand, proceedings may not be brought until the design had been certified and, additionally, it was by no means inevitable that it could or would be certified; (c) the relevant designs had a maximum term of monopoly and the design rights did not extend beyond that term; and (d) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 651 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, uncertified design, maximum term and counterfeit findings.

12.7.1 The relevant correspondence 652 On 1 September 2014, K&L Gates wrote to Mr Tom Bubner, Company Secretary of Torq Industries Pty Ltd (trading as Torq Parts) in terms, again, which are substantially similar to the Panel House letter, with the following relevant exceptions: (1) Designs 1, 9, 10 and 11 are identified as "registered designs" in annexure A; (2) Designs 2 and 7 are identified as "Further Designs" in annexure C. The language pertaining to those designs is the same as that used in the letter to Carparts identified above. 653 On 11 September 2014, Mr Bubner gave a statutory declaration stating that Torq had not made, imported, ordered or sold any of the Bodykit products (or "Replica Products") and that he believed that there was an error in that they sold either "new design" items or genuine GM Holden products. Even so he stated that they had withdrawn the items in dispute from sale and they would be no longer available for purchase from Torq. Mr Bubner also provided the undertakings requested. 654 On 23 September 2014, K&L Gates responded saying that the materials supplied were insufficient because GMH required information and supporting documentation about sales of the impugned products. It also sought information about the source of those products. One of the matters that GMH sought was details of any conversations or correspondence between the supplier "concerning the provision of replica Holden/HSV bodykits parts in order to up spec lower model vehicles". In his response on 25 September 2014, Mr Bubner said that "[a]t no time were the products designed 'in order to up spec lower model vehicles' - the products were direct replacements [sic] parts for E2/E3 model HSV vehicles. They were not designed to 'spec lower model vehicles' as they are not a direct fit". He states that his advertisements may be read the wrong way as they describe how the items can be made to fit the lower specification vehicles, "in exactly the same way the genuine products can be". 655 In its response, on 6 October 2014, K&L Gates contended that Mr Bubner had misunderstood the nature of the information and documents sought by GMH. They accepted that the parts were exact replicas of the E2/E3 GTS parts and that they would not exactly fit all lower specification vehicles. The information sought was not what the products were designed to do, but rather the nature of the market for the product in the context of owners of lower specification Commodores seeking out HSV parts to enhance the appearance of their vehicles. On 7 October 2014, Mr Bubner responded by saying that they assume that there is a demand for these products, but no market place surveys or research was undertaken. He advised that they had very few enquiries for the products and did not sell a single one advertised.

12.7.2 The unjustified threats claim 656 In its particulars, SSS pleads that by threatening in the 1 September 2014 letter to bring design infringement proceedings or other similar proceedings against Torq, GMGTO made unjustified threats within the meaning of s 77 of the Designs Act for the following reasons: (1) As at the date of the 1 September 2014 letter, neither Design 2 nor Design 7 had been certified, and Design 7 was never certified; and (2) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle. 657 For reasons consistent with those identified above in relation to Carparts, I consider that a threat was conveyed in the 1 September 2014 letter and that the threat, insofar as it relates to Design 7, is unjustified. I will hear submissions from the parties as to the appropriate relief to grant, if any.

12.7.3 The ACL claim 658 SSS contends in its particulars that by reason of the identified communications, GM Holden and GMGTO represented in trade or commerce that the conduct of Torq constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) that Designs 2 and 7 were not certified at the date of the demand, proceedings may not be brought until the designs had been certified and, additionally, it was by no means inevitable that they could or would be certified; (c) the impugned designs had a maximum term of monopoly and the design rights did not extend beyond that term; and (d) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 659 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, uncertified design, maximum term and counterfeit findings.

12.8.1 The relevant correspondence 660 In early October 2014, GMH via K&L Gates issued VeRO takedown notices to eBay, which eBay acted upon. These had the consequence that a number of products advertised by Mr Car Parts on eBay were removed from listings. On 15 October 2014, Mr Ante Kekez (a representative of Mr Car Parts) informed K&L Gates that takedown notices had been sent in relation to 6 genuine HSV parts that Mr Car Parts had advertised for sale on eBay. Two takedown notices had been sent in relation to "aftermarket items", in respect of which Mr Kekez contended that there was no "copyright/patent preventing sale". On the same day, K&L Gates asserted that Mr Kekez's understanding of the law was incorrect and asserted that the products featured in the eBay listing utilise designs that are identical to or substantially similar in overall impression to Designs 2 and 4 and accordingly keeping for sale, advertisement and sale of these products constituted an infringement of s 71 of the Designs Act. The letter then notes that if some of the items the subject of the takedown notice are genuine, then, upon receipt of verification, K&L Gates will write to eBay asking for the listings to be reinstated. 661 On 16 October 2014, K&L Gates wrote, in relation to the labelling of aftermarket products: Please note that aftermarket parts that are specifically covered by a registered design (such as the VE SS/SV6/SS-V bumpers) cannot be kept for sale, advertised or sale [sic], even if they are clearly labelled as aftermarket. 662 On 17 October 2014, K&L Gates wrote to Ronald Alcosta of Mr Car Parts in terms which are substantially similar to the letter to Panel House, with the following relevant exceptions: (1) The impugned parts are defined as "Products"; (2) Designs 2 and 4 are identified as registered designs in annexure A; and (3) No "Further Designs" are identified. 663 On 20 October 2014, Mr Kekez supplied invoices which demonstrated that a number of the parts the subject of takedown notices were not SSS replicas, but genuine Premoso HSV parts. On the same day, K&L Gates confirmed that arrangements would be made for certain bezels, grilles and VX/VU bumpers to be reinstated. On 31 October 2014, further invoices were provided by Mr Kekez. 664 On 21 November 2014, K&L Gates wrote to Mr Alcosta and Mr Kekez referring to the 17 October 2014 letter and noting claims by Mr Car Parts that it never "knowingly supplied counterfeit products" and that it purchased them in good faith from SSS. The letter then asserted that there were a large number of replica HSV, SS, SSV and SV6 bodykits in the market; that SSS was one of the companies responsible for their manufacture; and that GMH was particularly interested in obtaining information and supporting documentation regarding the circumstances in which SSS supplied these products, so that "they may focus their attention on addressing this problem at the supply level, rather than on retailers such as Mr Car Parts". The letter also warns "[h]owever, our clients are also taking further action against a number of retailers who have been unwilling to provide material assistance". The letter then asks for undertakings as sought in the 17 October 2014 letter and a statutory declaration providing detailed information in relation to the Products, including the source, how Mr Car Parts became aware of them and details of the industry knowledge of upgrading vehicles. 665 On 25 November 2014, Mr Kekez responded by email. He asked for confirmation that the requested statutory declaration "is in relation to aftermarket parts only that are protected by intellectual property rights? Aftermarket parts for items not covered or no longer covered by patent can be sold? Also…genuine (new and 2nd hand) can be sold as well"? Relevantly, the email also said: (1) That Mr Car Parts had not purchased any of the Products from SSS since items were removed from eBay; (2) They specialise in supplying the smash repair industry; (3) People already have a smashed car and are repairing it as it used to be. When it comes to upgrades, especially HSV, even aftermarket is too expensive; and (4) In relation to the request for information about how Mr Car Parts came to learn of the availability of the Products: it's general knowledge within the industry that SSS…supply VE SS bumpers. [I]t's not a secret, but there is no specific catalogue or brochure…you just ring and order. [H]ow do you find out that they started to stock specific part? You just call and ask…. 666 Apparently, no response to the questions asked was provided by K&L Gates.

12.8.2 The unjustified threats claim 667 In its particulars, SSS pleads that by "the conduct" identified generally as the correspondence summarised above, including the 17 October 2014 letter, GMGTO threatened to bring design infringement proceedings or other similar proceedings against Mr Car Parts and in so doing made unjustified threats within the meaning of s 77 of the Designs Act for the following reasons: (1) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle. 668 Regrettably, neither the SSS pleadings nor its closing submissions were more precise as to the specific "conduct" alleged to amount to the unjustified threats. In closing submissions, SSS addresses the allegations in relation to Mr Car Parts only very briefly insofar as they concern the Designs Act threats claims, and do not elucidate the allegation insofar as it might extend beyond complaint about the 17 October 2014 letter of demand. I assume that the impugned threats are contained in the two letters dated 17 October 2014 and 21 November 2014. 669 I accept that the 17 October 2014 and the 21 November 2014 letters were threats within the meaning of s 77(1) of the Designs Act. However, for the reasons set out above, I consider that s 78 of the Designs Act is satisfied and I decline to grant relief in respect of the threats made.

12.8.3 The ACL claim 670 SSS contends in its particulars that by reason of the "conduct" described above, Holden and GMGTO represented to Mr Car Parts in trade or commerce that the conduct of Mr Car Parts constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) the impugned designs had a maximum term of monopoly and the design rights did not extend beyond that term; and (c) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 671 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, maximum term and counterfeit findings.

12.9.1 The relevant correspondence 672 On 28 October 2014, K&L Gates wrote to Mr John Kompogiorgas (trading as Old Skool Auto Parts) in terms, again, which are substantially similar to the Panel House Letter, with the following relevant exceptions: (1) The impugned parts are defined as "Products"; (2) Designs 1, 2, 8, 9 and 11 are identified as "registered designs" in annexure A, and all were certified by this time; and (3) No "Further Designs" are identified. 673 A file note dated 19 November 2014, refers to a conversation between Mr Guy (of K&L Gates) and Mr Kompogiorgas. In it, SSS is identified as the source of the stock. Mr Kompogiorgas is recorded as stating that they have hardly sold any of the impugned products, and that they mainly "do muscle car parts". He advised that he was not sent any emails or brochures by SSS, dealings were purely by phone.

12.9.2 The unjustified threats claim 674 In its particulars, SSS pleads that by threatening in the 28 October 2014 letter, and otherwise in the general conduct summarised above, to bring design infringement proceedings or other similar proceedings against Old Skool, GMGTO made unjustified threats within the meaning of s 77 of the Designs Act for the following reasons: (1) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle. 675 For reasons consistent with those identified above, I consider that threats were conveyed in the 28 October 2014 letter. However, for the reasons set out above, I consider that s 78 of the Designs Act is satisfied and I decline to grant relief in respect of the threats made.

12.9.3 The ACL claim 676 SSS contends in its particulars that by reason of the identified communications, GM Holden and GMGTO represented in trade or commerce that the conduct of Old Skool constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) the impugned designs had a maximum term of monopoly and the design rights did not extend beyond that term; and (c) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 677 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, maximum term and counterfeit findings.

12.10.1 The relevant correspondence 678 On 28 October 2014, K&L Gates wrote to Mr Shane Miles (who conducts the business trading as Commodore Frenzy) in terms which are substantially similar to the letter to Panel House, with the following relevant exceptions: (1) The impugned part is defined as "Product"; (2) Design 2 alone is identified as the registered design in annexure A; and (3) No "Further Designs" are identified. 679 On 18 November 2014, Mr Miles informed Mr Guy of K&L Gates by telephone that the supplier of the Product was SSS. They had one in stock that was not sold and they had only sold one online. Delivery up of the product in stock and a full response to the 18 November 2014 letter was sought. However, follow up calls from Mr Guy appear to have elicited no further response in relation to the demands made.

12.10.2 The unjustified threats claim 680 In its particulars, SSS pleads that by reason of the "Commodore Frenzy demand" and the "conduct" summarised above, GMGTO threatened to bring design infringement proceedings or other similar proceedings against Commodore Frenzy, and therefore GMGTO made unjustified threats within s 77 Designs Act for the following reasons: (1) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) of the Designs Act because they had not been applied to any vehicle. 681 As for the claim in relation to Old Skool, the more general pleading of "conduct" is not further elaborated upon in its pleadings or closing submissions but I assume for present purposes that it intends to rely on the 28 October 2014 letter. 682 I accept that the 28 October 2014 letter was a threat within the meaning of s 77(1) of the Designs Act. However, for the reasons set out above, I consider that s 78 of the Designs Act is satisfied and I decline to grant relief in respect of the threats made.

12.10.3 The ACL claim 683 SSS contends in its particulars that by reason of the "conduct" described generally in section 12.10.1 above, Holden and GMGTO represented to Commodore Frenzy in trade or commerce that the conduct of Commodore Frenzy constituted design infringement and that the impugned products were 'counterfeit'. SSS contends that each representation was false or misleading because GM Holden and GMGTO were under a duty to disclose that; (a) the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) the impugned designs had a maximum term of monopoly and the design rights did not extend beyond that term; and (c) that the parts were not "counterfeit" in that aftermarket spare parts may be sold pursuant to the right of repair. 684 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, maximum term and counterfeit findings.

12.11.1 The relevant correspondence 685 On 10 December 2014, GMH sent a letter of demand to Mr Ung in his capacity as Sole Director and Company Secretary of SSS Melbourne, Adelaide, Queensland and Sydney. The letter is in substantially the same terms as the Panel House letter with the following exceptions; (1) The impugned parts are identified as "SSS Products"; (2) The registered designs identified in Annexure A are designs 1, 2, 3, 4, 8, 9, 10, 11 and 13; and (3) No "Further Designs" are identified.

12.11.2 The unjustified threats claim 686 SSS advances no ACL claim, but contends that by sending the letter, GMGTO threatened to bring infringement proceedings against it within the meaning of s 77 of the Designs Act. It pleads that GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) Designs Act because they had not been applied to any vehicle. 687 For the reasons given above, set out more fully in section 11.2.4, whilst I accept that the 10 December 2014 letter made a relevant threat, I am not satisfied that SSS has made out its case that the threat was unjustified.

12.12.1 The relevant correspondence 688 The Holmart correspondence is quite different to Panel House letter, which has served as a template for the previous parts of these reasons. It is dated 20 September 2013 and was sent by Mr Warren Slade, an in house corporate lawyer for GM Holden. The terms of the letter are (omitting annexure A): We act for Premoso Pty Ltd trading as Holden Special Vehicles (HSV), GM Holden Ltd (Holden), Holden New Zealand Ltd (HNZ), General Motors LLC (GM) and GM Global Technology Operations LLC (GMGTO). HSV vehicles are modified from Holden vehicles using, amongst other things, unique body-work, alloy wheels and interiors, and performance upgraded engines, brakes, transmissions and suspension. Genuine HSV vehicles, parts and accessories are sold at HSV dealers throughout Australia and New Zealand. Holden is responsible for the management and protection in Australia and New Zealand of all intellectual property associated with Official Holden and HSV Products (Holden Intellectual Property) and all Holden and HSV trademarks, including the following designs registered in the name of GMGTO: GMGTO owns the copyright in the graphic design of the front fascia for all HSV vehicles, including the design of the VE E2 E3 Clubsport GTS Front Bumper Bar Cover Kit and VE E2 E3 Clubsport GTS Front Bumper Bar Cover for the Clubsport GTS Holden Commodore VE Vehicle. VE E2 E3 Clubsport GTS Front Bumper Bar Cover Kit and VE E2 E3 Clubsport GTS Front Bumper Bar Cover are original artistic works (Copyright Works) within the meaning of section 10 and 31 of the Copyright Act 1994 (Copyright Act). Pursuant to section 36 of the Copyright Act, Holden is granted a number of exclusive rights with respect to the Copyright Works. The Copyright Works were subsequently registered as designs in the name of GMGTO and are depicted above (Registered Designs). Pursuant to section 10 of the Designs Act 1953 (Designs Act), GMGTO has the exclusive right in Australia to make, import for sale or use, sell, hire, or offer for sale or hire, articles in respect of which the Registered Designs are registered, being articles to which the Registered Designs or designs not substantially different from the Registered Designs have been applied. We are instructed that the Registered Designs have been reproduced by you and advertised on eBay without the authority, consent or approval of GMGTO. Attached as annexure A to this letter is a copy of the eBay advertisement in question. Further, our attention has been drawn to the fact that you are using the Holden, HSVI, HSV and HSPO trademarks on your front signage. These trademarks are the exclusive property of GMTO and may not be used by others without proper authorisation by Holden. Furthermore, apart from the statutory rights conferred by registration, very substantial common law rights have been acquired by our organisation and considerable goodwill is attached to these trademarks. We are concerned your use of these trademarks are likely to cause the public to believe that you are authorised to use them, or that there is some connection between our respective business activities which entitles you to do so, or that you have our organisation's approval or sponsorship. Your conduct described above constitutes: 1. Infringement of the Registered Designs conferred by section 10 of the Designs Act; 2. Infringement of the Copyright Works in breach of section 36 of the Copyright Act. The importation and possession or dealing with the Products constitutes an infringement of the Copyright Works in breach of sections 37 and 38 of the Copyright Act; 3. Infringement of the Trades Marks Act 1995; and 4. Passing off of the goods of GMGTO and Holden and authorised Holden Dealers and licensees. Holden is committed to protecting its reputation, established goodwill and legal rights in Holden Intellectual Property, including the Copyright Works and Registered Designs. We therefore demand that you: 1. on or before 5pm on Friday 27 September 2013 provide to us: (a) the enclosed undertaking signed by you; (b) a statutory declaration to Holden detailing: (i) the number and particular products that you have manufactured, imported, taken/orders for, promoted, offered for sale, sold or otherwise dealt with; (ii) the total sales of Products that have been sold to date; (iii) the name and contact details of all persons from whom you have received and the quantity received; and (iv) any other relevant information you may have about the supply of replica HSV wheels in Australia (c) all stock of Products in your possession, custody or control; (d) written confirmation that you have immediately ceased use of Holden's trademarks in the manner referred to above, and undertake that you will not use our trademarks in the manner we have taken exception to in the future, nor will your [sic] represent your business as having any connection with our organisation; and (e) all packaging, purchase orders, invoices and other materials in any form which include or refer to Products in your possession, custody or control, we will take further steps to protect Holden's reputation, established good will and legal rights. Such steps may include issuing proceedings in the Federal Court of Australia seeking, among other things, interlocutory and permanent injunctions restraining your conduct and we will also refer to this letter on the question of costs. We look forward to your compliance with the above demands within the time specified. 689 It is not in dispute that the GMH letter contained errors of law. One is that "GMGTO owns the copyright in the graphic design of the front fascia for all HSV vehicles". Another is the incorrect identification of the "Copyright Act 1994" as applicable and the "Designs Act 1953". A further error is the assertion that the conduct of Holmart in placing an advertisement on eBay constitutes an infringement of copyright. 690 In response, Mr Grace, Managing director of Holmart sent an undated letter to GMH saying that Holmart buys "from the main two suppliers" in good faith and assumes that any of the parts that it buys are no longer under any copyright protection. It apologised if Holmart had "inadvertently impeded on any copyright from GMH" and stated that it had immediately withdrawn all advertising of the relevant parts. 691 On 31 October 2013, GMH responded, stating that Holmart had failed to address a number of issues raised in its letter and asking further questions. In particular, it sought details of the supplier of the impugned parts and repeated the demand that the statutory declaration attached be completed in response to the questions asked. It also noted that particular bumper bar cover products were advertised on Holmart's eBay account, stating that there were three available notwithstanding that Holmart's letter had stated that they had not sold any and did not hold any in stock. On 13 November 2014, Balfe & Webb, solicitors who by then were acting for Holmart, declined to provide the names of the suppliers and confirmed that Holmart had withdrawn its advertising of the bumper bar in question. 692 On 16 December 2013, K&L Gates sent a letter, thereby joining the fray on behalf of GMH. It referred to the earlier correspondence regarding "your client's advertisement of a replica HSV E2/E3 GTS front bumper product, which our clients allege, among other things, infringes [Design 1]". It observed that Holmart had refused to provide some of the requested information, and threatened to issue proceedings in the event that it was not supplied; seeking, in effect, preliminary discovery from Holmart. The letter goes on to assert that the Product is an exact replica of Design 1, and "its advertisement represents a straightforward design infringement under section 71 of the Designs Act 2003 (Cth)…". 693 No response from Holmart is recorded in the evidence.

12.12.2 The unjustified threats claim; Design Act and Copyright Act 694 In its particulars, SSS pleads that by threatening in the 20 September 2013, 31 October 2013 and 16 December 2013 letters, to bring design infringement proceedings or other similar proceedings against Holmart, GMGTO made unjustified threats within the meaning of s 77 of the Designs Act for the following reasons: (1) As at the date of those letters, Design 1 had not been certified; and (2) GMGTO had no evidence to discharge its onus under s 72 to prove that parts were being made or used for non-repair purposes; and/ or GMGTO could not possibly have known that the impugned parts were being supplied for non-repair purposes within s 72(2) and (3) Designs Act because they had not been applied to any vehicle. 695 SSS also contends that by threatening to bring copyright infringement proceedings against Holmart in the same letters, GMGTO made unjustifiable threats within the meaning of s 202 of the Copyright Act because Holmart had a complete defence under s 75 of the Copyright Act to the infringement. Analysis of the threats claims 696 I commence by considering the question of whether SSS is entitled to relief from unjustified threats in the context of the Designs Act. In that regard, there is no dispute that the 20 September 2013 letter identified Design 1, referred (correctly) to s 10 of the Designs Act, but incorrectly stated that the relevant legislation was the "Designs Act 1953". The letter plainly asserted that the eBay advertisement of annexure A to the letter was an offer for sale of a part that infringed Design 1. That threat is implicitly repeated in the 31 October 2013 letter (which is entitled "Copyright and Design infringement" and identifies as the impugned products a HSV VE E2 E3 Clubsport front bumper bar and front bumper kit) and expressly repeated in the 16 December 2013 letter. However, for the following reasons I do not consider that SSS is entitled to relief in respect of those threats. 697 First, Design 1 was not at that stage certified. However, it was certified on 6 August 2014. There is no dispute that the part identified as comprising the products identified embody Design 1, and was offered for sale by Holmart without the licence of GMGTO. Accordingly, my reasons set out in section 11.2.3 apply. 698 For the reasons given in section 11.2.4, I do not accept SSS' submission that a registered owner of a design cannot issue a letter of demand threatening infringement without first being in a position to establish that the recipient did not have the repair purpose within s 72(2). Nor am I satisfied that the threats are objectively groundless or unjustifiable in light of the surrounding circumstances of the Panel House transaction and the matters set out in section 11.2.4 above. 699 Accordingly, I decline to grant relief in respect of the threats of infringement of the registered design. 700 In relation to the threats of infringement of the Copyright Act, it is to be noted that GMH concedes that the threats of infringement contained in the letters of 20 September 2013 and 31 October 2013 were unjustified. It submits that the letter of 16 December 2013 contained no threat of copyright infringement. I disagree with that submission. In the passage of the 16 December letter quoted above, whilst K&L Gates emphasised the design infringement, it did so "among other things", which can only be a reference to the other allegations contained in the earlier letter expressly referred to. That letter then pressed Holmart to accede to the demands initially made, including by divulging the name of its supplier and the provision of a statutory declaration. 701 Accordingly, in my view, SSS has established that in respect of all three of its letters, GMH has made an unjustified threat within s 202 of the Copyright Act. 702 GMH submits that the grant of declaratory and injunctive relief is discretionary as conveyed by the word "may" in s 202 of the Copyright Act, citing Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd [2008] FCA 1257; (2008) 78 IPR 586 at [36]. 703 It is correct that the Court has a discretion in considering whether or not to grant such relief. In the present case, there is an air of futility in granting injunctive relief, particularly in circumstances where, as I have found, the same conduct of Holmart was the subject of a justified threat of infringement for the same registered design. The references in the letters to infringement of the Copyright Act were incorrect. GMH was entitled to demand that Holmart cease selling the same parts on the basis of its design registered under the Designs Act. However, I will hear submissions in relation to relief on this subject.

12.12.3 The ACL claim 704 SSS contends in its particulars that by reason of the GMH letters of 10 September 2013, 31 October 2013 and 16 December 2013, GM Holden, Premoso and GMGTO represented in trade or commerce that Holmart's conduct as described in the 20 September 2013 letter constituted both design and copyright infringement. SSS contends that each representation was false or misleading because each was under a duty but failed to disclose; (a) that the s 72 defence provided for a right of repair, the onus lay on GMGTO to prove a non-repair purpose and GMGTO did not have evidence to discharge its onus; (b) that Design 1 was not certified at the date of the demand, proceedings may not be brought until the design had been certified and, additionally, it was by no means inevitable that it could or would be certified; (c) that Design 1 has a maximum term expiring on 3 September 2018; and (d) that s 75 of the Copyright Act provided a complete defence to copyright infringement. 705 I have rejected the proposition that GMH owed a duty to disclose as alleged. Further, I refer to my s 72, uncertified design, maximum term and counterfeit findings. 706 In relation to (d), it was accepted by GMH that it was not justified in making the assertion of copyright infringement to Holmart. That was a regrettable error that a large corporation such as GMH ought to have taken steps to avoid. It had the potential to cause harm. But it is an error that, for the reasons set out by Jessup J in BLH Engineering at [103], is not misleading merely because it turns out that the advisers were wrong on the law.

CONCLUSION 707 In these reasons, I conclude that GMGTO has failed to establish the bulk of its claim for design infringement. Despite extensive forensic examination of the business of SSS, it has not established infringement in respect of the importation, keeping for sale or offering for sale of the impugned SSS products in respect of any of the SSS respondent companies. In its claim for infringement by selling, GMGTO has established infringement in respect of 4 representative transactions made by SSS Sydney, 2 representative transactions entered into by SSS Melbourne (but only in part in relation to Transaction 17) and 2 representative transactions entered into by SSS Queensland. The parties must now, on the basis of these reasons, attempt to agree on a formula by which the balance of the transactions the subject of GMGTO's claim might be resolved. They should also confer and attempt to agree to directions to bring these proceedings to a close. 708 I have concluded that SSS has substantially failed to establish its case on the cross-claim. It has established that there were unjustified threats insofar as they relate to designs that were never certified, which involves the threats made to Panel House, Carparts and Torq. SSS has also established an unjustified threat in relation to copyright infringement in the case of Holmart. I will hear submissions from the parties as to the appropriate relief to grant, if any. 709 I direct that the parties confer and endeavour to agree on a timetable for further steps to be taken in these proceedings consequent upon these reasons. I will relist the matter for a case management conference within 28 days so that a suitable timetable can be put in place. I certify that the preceding seven hundred and nine (709) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Burley.