GM Holden Ltd v Paine

REASONS FOR JUDGMENT 1 On 30 May 2011, due to the urgency of this matter and having the benefit of all written submissions relied on, the Court made the following orders in chambers: The notice to produce dated 17 May 2011 and filed by the ninth and tenth respondents is set aside. The ninth and tenth respondents pay the applicants' costs of the application to set aside the notice to produce. What follows are the reasons for so doing. 2 GM Holden Ltd, General Motors LLC and GM Global Technology Operations LLC ("the applicants") commenced a proceeding in this Court against certain respondents, including Belaaa Pty Ltd (in liquidation), Ahmed Taleb and Mohamed Taleb ("the eighth, ninth and tenth respondents respectively"). 3 The applicants sought relief for what they alleged to be trade mark and design infringement, passing off and passing off style misrepresentations in breach of ss 52 and 53(a) of the Trade Practices Act 1974 (Cth). The applicants have settled their claims as against all respondents, except Ahmed Taleb and Mohammed Taleb ("the Talebs"). The trial of the applicants' proceeding as against the Talebs was heard by Justice Gordon on 18 April 2011. 4 The applicants sought damages against the Talebs in the sum of $750,000 and expected to recover another approximately $100,000 in costs. 5 Based on information provided in an affidavit sworn by the applicants' solicitor, Mr Round, the Court (as presently constituted) made a freezing order directed to the Talebs on 20 April 2011 on an ex-parte basis. 6 The freezing order required the Talebs not to remove from Australia or dispose of, deal with or diminish the value of the assets of each of them in Australia up to the unencumbered value of $1,000,000. Particular assets were specifically mentioned in the order, being certain properties in the State of New South Wales. 7 Paragraph 8 of the freezing order required the Talebs to inform the applicants in writing of all their assets in Australia, on affidavit. The return date stated on the freezing order was 4 May 2011. 8 On the return date, Mr Christopher Nolan appeared for the Talebs. Mr Nolan filed an affidavit sworn by him in which he stated that the Talebs were attempting to raise security to the value of $800,000 "in place of the Freezing Order". 9 On 4 May 2011, the Court extended the time for the filing of affidavits in compliance with paragraph 8 of the freezing order to 17 May 2011 and continued the freezing order until 5 pm on 25 May 2011. It was subsequently continued, by consent, until 5 pm on 1 June 2011. 10 On 17 May 2011, Mr Ahmed Taleb filed an affidavit disclosing an interest in six properties in New South Wales. Mr Mohamed Taleb disclosed an interest in a jet ski worth $10,000. Mr Ahmed Taleb's properties, in total, and after allowances for encumbrances, exceed $1,000,000 in value. 11 On 18 May 2011, the Talebs served a notice to produce dated 17 May 2011 on the applicants. The notice sought the production of a large number of documents. On the face of their description none of the documents sought appear to relate to any issue which may be relevant on the return of the freezing order, with the possible exception of the quantum of funds the subject of the freezing order. 12 On 19 May 2011, pursuant to the Court's Fast Track Directions contained in Case Management Note 8 of the Court's practice notes, the applicants filed a brief accompanying their interlocutory application to set aside the Taleb's notice to produce, and for the Talebs to pay the costs of that interlocutory application. 13 The applicants contend that the considerations which apply to the setting aside of a subpoena are equally applicable to a notice to produce. They say that a notice to produce will be set aside where: the documents sought under the notice lack apparent relevance; the notice is too wide and oppressive; and the issuing of the notice constitutes an abuse of process, having regard to orders previously made by the Court concerning discovery and inspection. 14 The applicants say that the documents sought to be produced add nothing to the issues to be determined by the Court for the purposes of meeting a freezing order. They contend that the documents sought fall into three categories: 1. communications between the first applicant and those authorized to sell its products which concern the sale by those persons of "Counterfeit Wheels"; 2. documents concerning a settlement agreement between the applicants and Bob Jane Corporation and antecedent negotiations; and 3. documents showing the alleged sale of replica wheels by Bob Jane Stores to Holden dealers. 15 The applicants submit that these documents may arguably be relevant to the quantum of loss suffered by the applicants, although they do not concede such relevance. They say that no such evidence was sought to be adduced at the trial before Justice Gordon, which has now been completed. There was no request to the trial judge for the proceeding to be re-opened before her Honour published her reasons for judgment on 30 May 2011; see GM Holden Ltd v Paine [2011] FCA 569. 16 None of the documents, the applicants say, relate to whether the freezing order should be continued. They go to substantive issues related to the completed trial. In pre-trial matters, the applicants made discovery. Such discovery was not objected to. There was no suggestion it was inadequate. 17 On the above grounds the applicants press for their claimed interlocutory relief. 18 In response the Talebs allege that there is a prima facie case that the applicants have not disclosed facts which may impact on any award of damages against the Talebs in favour of the applicants. In particular, the Talebs assert that since the 18 April 2011 hearing before Justice Gordon, they have learnt that one or more of the applicants have made a substantial claim against Bob Jane T Mart as a result of damages allegedly suffered by it out of Bob Jane's sale of replica Holden Wheels. The wheels include Supersport wheels. The applicants' claim against the Talebs included a claim for damages in respect of Supersport wheels sold by Taleb Tyres. 19 The Talebs say the notice to produce seeks the production of documents that are relevant to evidence of damages and consequently to the value of assets to be frozen. 20 The amount of damages which should be awarded against the Talebs in favour of the applicants remains a matter for the trial judge to determine by making a final order about damages in the proceeding. The sum of damages sought in the proceeding against the Talebs was $750,000. It appears from the reasons for judgment that a lesser amount may be granted, although no final orders have been made by the trial judge. The amount of $1,000,000 referred to in the freezing order was based on the applicants' damages claim plus costs. 21 The appropriate damages figure will be the subject of final orders by Justice Gordon on the material before her. The Talebs may make application for a variation of the freezing order to reflect those reasons for judgment and any final order. A notice to produce should not be used to frustrate the effect of a freezing order in circumstances where the material sought to be adduced was material for the trial judge to consider. It remains open for the Talebs to move for a re-opening of the proceeding, based on the allegedly new information relevant to quantum in circumstances where no final orders have been made. In so commenting, the Court observes that the alleged 'freshness' of the material sought is a matter of contest, having regard to the applicants' reply submissions. 22 In all the circumstances, it is not appropriate to seek to have produced the material the subject of the notice to produce. It is more appropriate for that information to be sought to be placed before the trial judge in support of an application to re-open the proceeding, should the Talebs still wish to pursue the course. Whether a re-opening is permitted is entirely a matter for the trial judge. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Marshall.