Australian Corporate Lawyer - Autumn 2016

theAustralian 

corporatelawyer 

Autumn 2016, Volume 26 – Issue 1 

The official journal of 

ADVANCING 

YOUR 

IN-HOUSE 

CAREER 

IN THIS ISSUE: 

Managing Stress 

Trade Marks and Domain Names 

Cultural Diversity 

Career Motivated Misconduct 

Sponsored by

Most Innovative 

Australian Law Firm 

2015 Financial Times Asia-Pacific 

Innovative Lawyers Awards 

Most Innovative 

Law Firm 

2014 BRW Client Choice Awards 

Australian Law Firm of 

the Year 

2015 Australasian Law Awards 

(250-500 lawyers) 

2015 International Financial Law 

Review Asia Awards 

Innovation 

Seeing what others 

haven’t seen. 

Innovation involves taking conventional, 

established practices and making them better, 

smarter, more successful. 

At Gilbert + Tobin, we’ve been a leader in 

innovation in the legal market for over 25 years. 

We have assisted leading Australian and 

international businesses with innovative solutions 

to their commercial challenges. This is why Gilbert 

+ Tobin has become the firm of choice for our 

clients’ most important work. 

Sydney 

Melbourne 

Perth 

gtlaw.com.au

INSIDE… 

Volume Number 26 Issue Number 1 



Features 

6 Member Profile: Lauren Miller 

2015 Young Lawyer Achiever of the Year 

8 What it Means to Advance Your In-house Career 

10 Career Motivated Misconduct 

12 Cultural Diversity in the Legal 

Profession – A New Frontier? 

14 There is No ‘One Size Fits All’ for Execution of Deeds 

16 What are the Key Issues Keeping CLOs Up at Night? 

18 Member Profile: Freya Smith 

Talks Business and Building an In-house 

Legal Team from Scratch 

20 How Linkedin Can Help Your Career 

in Today’s Digital First World 

22 Trade Marks and Domain Names: Quicker and 

Cheaper Strategies for Resolving Disputes 

24 Australia’s Insolvency Law Overhaul 

27 Member Profile: Carmel Mulhern 

2015 Corporate Lawyer of the Year 

28 Where to Next When Your Grass is Already Green: 

How to Progress Your Career from Within 

30 Tips and Insights for In-House Counsel on 

How to Manage Stress 

32 Warranties & Indemnities – where to draw the line? 

34 Update from the Courts 

36 An Overview of the State of the Legal Profession in 

Australia and Across the Asia Pacific Region in 2016 

38 When the Court Will Fix Your Mistakes: 

Section 1322 in The High Court 

42 Day in the Life - Ricardo Cortés-Monroy 

Advancing Your 

In-house Career 

Regulars 

4 ACC Australia News 

ACT / QLD / NSW 

5 President’s Report 

13 ACC Australia News 

SA / TAS / VIC 

41 ACC Australia News WA 

43 New Members 

ACC Australia 

ACN 003 186 767 

Editorial 

Editor: Emma Langoulant 

T: (61) 3 9248 5548 

E: e.langoulant@acc.com 

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Emma Langoulant 

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opportunities with ACC Australia, please contact: 

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Letters to the Editor 

You are invited to submit letters to the editor by 

email: e.langoulant@acc.com 

Articles for Publication 

If you have an article you would like to submit 

for publication, please contact: 

Emma Langoulant 

T: (61) 3 9248 5548 


Contributions are included at ACC Australia’s 

discretion and may be edited. 

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The Australian Corporate Lawyer is published by 

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Disclaimer 

The opinions, advice and information contained in 

this publication may not be shared by ACC Australia. 

They are solely offered in pursuance of the object of 

ACC Australia to provide an information service to 

corporate lawyers. 

The Association issues no invitation to any member 

or other person to act or rely upon such opinions, 

advice or information or any of them and it accepts 

no responsibility for any of them. It intends by this 

statement to exclude liability for any such opinions, 

advice or information. Readers should rely on their 

own enquiries in making any decisions which relate to 

the content here. 

VOLUME 26, ISSUE 1 – AUTUMN 2016 

3

theAustraliancorporatelawyer 

ACC AUSTRALIA NEWS 

ACT President 

Jane Bates 

News from ACT 

Once again the New Year has started at 

lightning speed and it is shaping up to be 

a big year for the ACT Committee. We have 

recently farewelled Jane Young and Christine 

Ng from the Executive Committee and thank 

them for their support. While we are sad to 

see them leave, it presents an opportunity 

for members wanting to increase their 

involvement in ACC Australia’s activities. We 

are always on the lookout for enthusiastic 

members to join the ACT Committee and help 

us to make a difference for in-house lawyers 

in Canberra, so please get in touch via email: 

ausmembership@acc.com 

We are also excited to be hosting the 2016 

National Conference and look forward to 

showing ACC Australia members around our 

beautiful city. The conference will be located 

at the Hotel Realm, with the In-house Lawyer 

Awards to be held at the National Arboretum 

(with its award-winning architecture and 

sweeping views of Canberra). For those that 

haven’t been to Canberra in a while (or even 

since their primary school camp), I’m confident 

that you’ll find that the city has undergone 

dramatic change in recent years. Like all good 

metropolitan cities, we too are seeing an 

influx of hipsters who have come to enjoy 

the amazing food options (think food trucks, 

freakshakes and smoked meats), outdoors 

lifestyle and world-class museums! 

Of course, the National Conference is in 

addition to our regular schedule of CPD 

activities which will run throughout the 

year. Look out in the ACC Australia weekly 

newsletter for further details and dates – 

particularly as the end of the CPD 

year approaches. 

QLD President 

Karen Grumley 

News from QLD 

First let me start by welcoming everyone 

to 2016. The Queensland Division of ACC 

Australia is looking forward to another big 

year – and we are hoping you will help. 

We have recently sent out an Expression of 

Interest for nominees to join the Queensland 

Divisional Committee. If you haven’t yet 

responded and are interested in helping us 

shape the future of in-house legal practice in 

Queensland and nationally, please email us at 

ausmembership@acc.com 

2015 ended with a well-attended end of 

year lunch at A Alimentari, Italian Bar and 

Trattoria. As always, this event would not have 

been possible without our sponsor, Clyde & 

Co. Thank you to the partners for their time 

in attending and their support. We had a 

fantastic time celebrating our successes in 

2015 and looked forward to a year in 2016 

full of innovation, education and strong 

networking opportunities. Congratulations to 

Dominic Goosem on winning our trivia – we 

hope you’ve been able to make use of the 

$150 Webjet voucher! 

We have an exciting CLE program unfolding 

for the year ahead – with sessions already 

held this year by our longstanding corporate 

alliance partner, Holding Redlich, on 

negotiation and dispute resolution, and 

managing risk in commercial contracts. 

We are all looking forward to another exciting 

QLD Corporate Counsel Day on 5 May 2016. 

This year’s venue is the Hilton Hotel, where we 

will be focusing on “The future of in-house in 

the global village”. Our Keynote speaker, Morris 

Miselowski will be speaking on “Futurevation: 

The Tomorrow and Beyond of Business”. Make 

sure you register for this unique event – the 

only local conference, by in-house counsel, for 

in-house counsel. Come and mingle with your 

peers and plan for the future of a globalised 

in-house profession. Details of the program 

and registration are available at 

acla.acc.com/qld-ccd-home. 

NSW President 

Justin Coss 

News from NSW 

2015 ended in spectacular style with a hugely 

successful Christmas Cocktail Function held 

at Bar100 in the Rocks. The sell-out event 

featured complimentary corporate head shots 

taken by a professional photographer and of 

course some quality refreshments provided by 

our sponsors, Clyde & Co. 

The CPD calendar is in good shape this year 

with a number of events having taken place 

already in the first quarter, including most 

notably the ACC Australia NSW Corporate 

Counsel Day held on 10 March at the 

Swissotel, Sydney. With the theme “Essential 

Ingredients for In-House Success”, the event 

featured speakers including CEO of Emergent 

Solutions, Holly Ransom and Group General 

Counsel, Telstra and 2015 Corporate Counsel 

of the Year, Carmel Mulhern. 

Thank you to all those who attended and 

contributed to yet another successful CCD. 

I encourage members of the NSW division to 

regularly check the ACC Australia website as 

plenty of CPD seminars have been scheduled 

for the year ahead. Get in quick to register 

for sessions to be held in the next quarter 

including: 

• An IP Masterclass on 17 March presented 

by Watermark. 

• Your subpoena checklist on 17 May 

presented by Holding Redlich. 

• Statutory Interpretation on 22 June 

presented by Holding Redlich. 

We also have some great social events in the 

planning stages including the ever popular 

Trivia Night to be held in May, and the End of 

Financial year drinks to be held in June/July. 

Look out for the dates to be announced soon 

and register early for these sell-out events! 

On behalf of the NSW ACC Committee, I 

extend to our members best wishes for a great 

year ahead and I look forward to seeing you at 

our next event. 

4 VOLUME 26, ISSUE 1 – AUTUMN 2016

The official journal of 

Autumn 2016, Volume 26 – Issue 1 

Sponsored by 

acla.acc.com 

PRESIDENT’S REPORT 



ADVANCING 

YOUR 

IN-HOUSE 

CAREER 

Gillian Wong 

National President 

IN THIS ISSUE: 

Managing Stress 

Trade Marks and Domain Names 

Cultural Diversity 

Career Motivated Misconduct 

Welcome to 2016! It is shaping up to be 

another big year for ACC Australia and as a 

valued member I thank you for your support. 

I look forward to bringing a lot of exciting 

new initiatives to our members during 2016. 

No doubt many of you have attended or 

have registered to attend one of the many 

Corporate Counsel Days around the country. 

These days are unique opportunities to meet 

and network with other corporate counsel, as 

well as attend CPD sessions specially designed 

by in-house counsel for in-house counsel. We 

will continue to offer our usual mix of black 

letter and soft skills CPD sessions throughout 

the year as well. 

The New Year is also a time for New Year 

Resolutions – one resolution for me is to 

promote diversity and inclusion in the legal 

profession by briefing more diverse partners 

at law firms and barristers and continuing 

to discuss this important issue within our 

profession. Whether its gender, race, sexuality 

or disability, diversity brings opportunities for 

different points of view and you can discover 

legal talent in unexpected places. 

Earlier in the year, I attended a lunch at 

Ashurst in Melbourne presented by ACC 

Australia in conjunction with the Asian 

Australian Lawyers Association on improving 

diversity and inclusion in the legal sector. It 

was an eye opening session and clearly, the 

legal profession has made a lot of progress in 

this space. That said, there is more to do and 

I hope that all of us can make a New Year’s 

resolution to brief more diversely, whether its 

law firms or the bar. 

You will find an article on cultural diversity 

written by the President of the Asian Australian 

Lawyers Association, Reynah Tang, in this 

edition of The Australian Corporate Lawyer. 

This month, the ACC Australia GC100 will host 

their second bi-annual meeting in Melbourne. 

Launched last year, the ACC Australia GC100 

brings together general counsel/chief legal 

officers from the ASX100 companies. This 

peer-to-peer forum continues to grow 

and a series of working groups have been 

established to share knowledge, and use 

collective, practical experience to promote 

better and more effective regulation and 

policy. The bi-annual meeting provides a 

great opportunity for some of Australia’s 

leading legal minds to come together to 

discuss current challenges and opportunities 

in the profession. 

One of the major benefits in our global 

alliance with the Association of Corporate 

Counsel, is the availability of data and research 

into the in-house profession. Along with 

Australia’s In-house Counsel Report: Benchmarks 

and Leading Practices, members now have 

access to a range of surveys including the 

recently released ACC Chief Legal Officers 2016 

Survey and the ACC Foundation: The State of 

Cybersecurity Report. 

Such research reports can help you to 

understand the potential risks and challenges 

in the profession, improve your internal 

planning and assist you to discover cost 

saving strategies. Each report shares the 

ever-valuable insights and experiences of your 

in-house peers around the globe. 

As we go to print the CPD year is coming to a 

close and March madness is upon us! As the 

first CPD year under the new Uniform Law for 

Victorian and New South Wales based lawyers 

I encourage you to check with your local 

jurisdiction to ensure you have met 

the requirements. 

We are extremely grateful for the ongoing 

support of our Corporate Alliance Partners 

who continue to provide top-quality 

CPD opportunities for our members across 

the nation. 

And for those already planning for the new 

CPD year, please save the date for the 2016 

National Conference and In-house Lawyer 

Awards to be held on the 16-18 November 

at the Hotel Realm in Canberra. I know our 

Canberra colleagues are eager to show us all 

the city has to offer and I for one cannot wait! 

PS. I am always delighted to hear from fellow 

members with your thoughts, feedback and 

suggestions on any area of our services and 

I encourage you to email me at 

ausmembership@acc.com. 

ACC AUSTRALIA BOARD 

President 

Gillian Wong 

St Barbara Limited 

Vice President 

Karen Grumley 

Aurizon 

Immediate Past President 

Adrian Goss 

Bauer Media Limited 

Company Secretary 

Rachel Portelli 

Intensive Group Pty Ltd 

Directors 

Jane Bates 

Airservices Australia 

Alicia Burgemeister 

Adelaide Airport Limited 

Justin Coss 

AUB Group 

Valerie Hodgins 

Metropolitan Redevelopment Authority 

Jenny Kiss 

Public Transport Authority WA 

Andrew Lamb 

Mike Madden 

Auscript 

Monika Maedler 

Tassal Group Limited 

Marisa Muchow 

Metricon Homes 

Mei Ramsay 

Medibank Private Limited 

Melvin Yeo 

African Mining Capital Group 

Membership 

1300 558 550 

PO Box 422 

Collins Street West 

Melbourne VIC 8007 

acla.acc.com 


5


MEMBER PROFILE: 

LAUREN MILLER – 2015 YOUNG LAWYER 

ACHIEVER OF THE YEAR 

Lauren Miller 

Lauren is the Assistant General Counsel at 

Carnival Australia. She is also the 2015 ACC 

Australia Young Lawyer Achiever of the Year. 

In 2006, Lauren Miller, who is now Carnival 

Australia’s Assistant General Counsel, 

effectively banned herself from taking 

cruises. She had just started working at 

Carnival Australia and was only in her second 

year of law school. During that time, P&O 

Cruises Australia, one of Carnival Australia’s 

seven cruise brands, was concerned by the 

risk of excessive behavior onboard during so 

called “schoolies cruises” – where 18-yearolds 

headed after they finished high school. 

“Schoolies” are a rite of passage for many 

young Australians, and they celebrate like 

young people do everywhere. But the 

risk of excessive behavior on cruise ships 

is that land-based resources like major 

hospitals and law enforcement can be 

far away. The company was also in the 

process of transforming the damaged 

reputation of cruising by upgrading the 

product to attract a wider customer base. 

It had implemented a range of measures 

to deal with excessive behavior including 

providing extra onboard security, installing 

hundreds of CCTV cameras, strictly applying 

responsible service of alcohol policies, and 

limiting the number of passengers under 21 

years of age. The changes were influential in 

improving passenger safety and security, but 

the company subsequently had to address 

complaints of age discrimination. 

Unwilling to dilute the company’s 

transformation policies, Lauren’s team 

decided to approach the Australian Human 

Rights Commission to seek an exemption 

from the country’s Age Discrimination 

Act. The application was initially rejected 

and Lauren remembers talking to Carnival 

Australia’s CEO Ann Sherry who decided it 

was vital for the policies to be allowed to 

work. Ann was supportive of Lauren taking 

up the challenge. 

The Human Rights Commission was invited 

onboard to get a feel for the P&O shipboard 

environment, and to see why the company’s 

age limiting policies were in the best 

interests of passengers and crew, given the 

nature of ocean voyages 

as distinct from land-based settings. 

Ultimately an understanding was reached 

based on some refinement of Carnival 

Australia’s initial approach. It was the first 

ever age discrimination exemption of its kind 

granted in Australia to a corporate entity – 

even though it meant at the time Lauren 

wasn’t old enough to cruise on her own 

company’s ships! 

Lauren didn’t fully appreciate the legal 

significance of gaining the exemption at 

the time. “It was much more about the 

commitment we had made in an operational 

sense about safety, the responsible service 

of alcohol, and applying zero tolerance to 

excessive behavior,” she says. 

Despite making legal history, Lauren wasn’t 

always focused on a law career. 

She wanted to become an artist and 

attended an orientation at a local university 

with a friend. She gathered all of the 

materials on art while her friend picked up 

material on law. In a chance mix up, they 

confused their bags, and Lauren went home 

with the law materials. 

After browsing through the information, 

she thought law sounded interesting. Up to 

that point, her only notion of a lawyer was 

a criminal defense lawyer and she couldn’t 

imagine joining that practice. In particular, 

she was interested in human rights work 

– something that she has continued to do 

throughout law school and her later career. 

Lauren did an internship with the 

Commonwealth Human Rights Initiative 

in Ghana that focused on child trafficking. 

Throughout, Carnival Australia has 

supported her human rights work and she 

recently returned from Nepal where she 

helped rural communities establish water 

sanitation facilities. 

She recently completed her Master of Law 

in International Development from the 

University of Sydney – to understand the 

development side of things – and she says 

she’s gained a valuable sense of perspective 

from her work. “You see people who are 

struggling so much just to meet basic needs 

and they still are happy and generous and 

giving. We have all of the privileges here that 

we take for granted and it’s sometimes easy 

to lose sight of what real challenges and real 

problems look like, and I think we’re just so 

lucky [in Australia],” Lauren explains. 


acla.acc.com 

Her sense of perspective and scope keeps 

her grounded when incidents occur. She 

joined Carnival Australia at a critical time 

in 2006, during the inquest into the death 

of a passenger onboard a P&O Cruise ship. 

The death received widespread media 

coverage and was the catalyst for Carnival 

Australia’s moves to transform its product 

and operating procedures, changes that led 

to industry-wide transformation. 

Lauren hasn’t forgotten the deep sense of 

tragedy that pervaded the company during 

the inquest into the passenger’s death. “I 

think for those of us who were there at that 

time and came in in the years afterwards, 

we will never lose that feeling of why it’s 

so necessary for us to continue to prioritise 

and adhere to those policies, and to make 

that commitment to safety and security a 

very real thing,” she says. 

Part of the transformation also involved the 

development of reporting procedures to 

give people confidence that arrangements 

are in place for the reporting of serious 

incidents that can happen in international 

waters. In popular imagination, international 

waters have an image of lawlessness but, in 

Lauren’s view, it’s actually the opposite of a 

legal vacuum. “It’s not that no law applies. 

It’s that so many different laws can apply and 

that’s what can create confusion,” she says. 

Lauren coordinated with the Australian 

Federal Police, Australian State police forces, 

and the regional body for Chiefs of Police in 

the South Pacific to design a protocol to be 

followed in the event of alleged crimes at sea. 

“Serious crime on cruise ships is comparatively 

rare and the protocol we have developed is 

not intended to displace international law, 

obviously we can’t do that, but it was intended 

to at least give a very practical guide so that 

any kind of crime could be investigated 

quickly,” Lauren explains 

The protocol states that a ship will report 

the crime to the receiving jurisdiction, 

which is the next port of call. If a ship leaves 

Vanuatu and it’s on the way to Fiji when a 

crime occurs, then it will be reported to Fijian 

authorities. In addition, Carnival Australia 

routinely reports to the Australian Federal 

Police and to the New South Wales Police 

Marine Area Command in Sydney or the 

Queensland Police Marine Area Command 

in Brisbane. The document is owned and 

managed by the respective police forces and 

Carnival Australia has given its blessing for it 

to be shared industry-wide. 

Lauren has been busy since she joined 

Carnival Australia. “I can honestly say that in 

nine years I’ve never had a day that’s the same,” 

she says. Her favorite part is working with 

the broader business units – fleet operations 

engineers, creative marketing executives, and 

event planners – that expose her to a range of 

fields every day. 


7


WHAT IT MEANS TO ADVANCE 

YOUR IN-HOUSE CAREER 

A discussion with Deborah Ben-Canaan of Major, Lindsey & Africa 

Ilona Korzha 

Ilona Korzha is counsel at Sprint Corporation. 

She is also co-chair of the ACC Career 

Development Committee. 

Deborah Ben-Canaan 

Deborah Ben-Canaan is partner and head of the 

Washington, DC in-house legal practice at Major, 

Lindsey & Africa, a global legal search firm. 

Is your New Year’s resolution career related? 

Have you decided that 2016 is the year you 

become better at your job, advance in your 

career or change jobs? If so, then 

keep reading. 

This month, I spoke with Deborah 

Ben-Canaan, partner and head of the 

Washington, DC in-house practice for Major, 

Lindsey & Africa, a leading global legal 

search firm. She provided great insight into 

determining career goals and what it 

means to advance your career in-house. 

What does it mean to advance an 

in-house career? Is there one general 

formula for moving up and growing 

professionally? 

It depends on what advancement means to 

you. For some people, this means a higher 

compensation; for others, it’s a different title or 

broader skill set or leadership role. You need 

to carefully think about what advancement 

means to you and how you want to grow 

professionally. Different answers will take you 

down different career paths. 

How does one advance their career 

in a corporate legal department since 

they tend to be flat with 

fewer turnovers? 

You need to start by asking yourself what it 

is you want. Depending on the answer, there 

are a variety of different paths available to you. 

For example, you might choose to broaden 

your practice by acquiring more skills and 

volunteering to take on more responsibilities. 

By taking on more things, you can become 

indispensable to the organisation. On the 

other hand, you might consider moving 

outside of legal and transitioning into 

compliance, government relations, or 

human resources. If your goal is to look 

for a better title, broaden the scope of 

responsibilities, or have more people 

reporting to you – and you aren’t getting 

that in your current organisation, you may 

need to consider looking elsewhere. And 

keep in mind that sometimes the next step is 

not a bigger company, but a bigger role in a 

smaller company. 

Since we are talking about a title, 

how important is one? 

Once again, this depends on your goal. A title 

is less important if you want to stay within 

your current organisation and continue your 

professional growth by acquiring new skills, 

expanding your practice, getting leadership 

opportunities, and being compensated fairly. 

However, if you are looking to switch jobs, you 

want to consider the title and the significance 

of the role within the new company. 

A vice president in one organisation means 

something completely different than that 

same title in another organisation. 

Since different companies have 

different title structures, how can 

someone find out where the new job 

they are interviewing for fits in? 

The best approach would be to ask about 

the structure of the organisation during 

the interview. This will give you an idea of 

where this position fits into the department 

and organisation as a whole then you can 

determine if this job is a wise move for 

your career. 

If the path someone wants to take 

is a leadership one, what type 

of skills do they need? 

Being able to demonstrate that you have 

business and financial acumen and are able 

to think strategically – along with possessing 

actual leadership and management 

experience – will position you for success 

as a leader. 

How does one obtain those skills 

while in their current position, 

especially if these are not in their 

current job description? 

Volunteer to do more within your own 

organisation. For example, if you are a 

litigator but are looking for contract drafting 

experience, ask to shadow your transactional 

colleague and then ask to assist with a 

smaller transaction. Also, look for learning 

opportunities externally. If you are interested 

in board governance experience, volunteering 

for a not-for-profit board is an examples of 

something you can do. For financial acumen – 

and even business skills – take classes or find a 

mentor in your finance group that will answer 


acla.acc.com 

your questions. The more proactive you are 

in seeking knowledge, the more likely your 

leadership will take notice of the steps you are 

taking to advance yourself. 

To help with professional 

advancement, should one 

proactively look for a sponsor? 

Absolutely! A sponsor is someone who 

proactively touts your accomplishments and 

helps you identify new opportunities. Finding 

one is a natural process. You need 

to align yourself with the right person, 

identify a need, and become indispensable 

to that person. You should also consider 

finding a mentor, which is different from a 

sponsor, who may be outside of your legal 

organisation and who will help you develop 

professional relationships. 

Is there anything our readers 

should consider before starting on 

the road to career advancement? 

In thinking about your career advancement, 

you should always ask yourself why you want 

to advance and what your goal is. Is it because 

you think you have to move up? You might 

be assuming that everyone wants to be a 

general counsel, but not everyone wants to 

be or should be one. And, that’s OK! It is OK to 

excel as a corporate counsel, to work part time 

or even move into a non-legal position. You 

need to answer what advancing means to you 

personally, then the path will become clear. 

I hope you enjoyed a peek into our 

conversation. As you begin on your path 

to career advancement, keep the following 

in mind: 

1. Find ways to broaden you skill sets 

and volunteer to do more within your 

organisation to show your initiative and 

interest in advancing. 

2. Keep your resume up-to-date and 

maintain a running list of your 

accomplishments, which will help when 

you need to demonstrate all the hard work 

you have done. 

3. Always take a recruiter call because 

the conversation will either help you 

appreciate your current position or 

introduce you with a new, better 

opportunity. 

This article is part of a blog series written by the 

author: www.inhouseaccess.com 

The materials contained herein represent the opinions 

of the author and should not be construed to be the 

views or opinions of Sprint Corporation. 

Get the insights and data you need for a 

successful new year in-house 

ACC Australia are offering a complimentary data pack 

specific to your industry for in-house counsel who purchase 

the Benchmarks and Leading Practices Report before March 

31. 

If your organisation is making plans for the new financial 

year, the full report plus complimentary data pack can assist 

you to better understand and communicate with your 

organisation about your own in-house function, as well as 

gain insights into other organisations practices. 

It will provide you with data on Resources/Costs, Managing 

Workflow, Organisational structure, plus more. 

To purchase the full report or receive a free Executive 

Summary, go to: acla.acc.com/resources/research 

ABN 97 003 186 767 


9


CAREER MOTIVATED MISCONDUCT 

Employees who are tempted to do the wrong thing just to get (or stay) ahead 

Robyn McKern 

Robyn leads the McGrathNicol Forensic team 

in Melbourne and has been the firm’s Chief 

Executive Officer since 2011. Robyn has extensive 

experience in dispute resolution and forensic 

investigations gathered over a long career in a 

range of roles. 

Dean Newlan 

Dean is a forensic accounting specialist at 

McGrathNicol with more than twenty-five years’ 

experience, including investigations into major 

corporate collapses and workplace fraud and 

misconduct in business, quantification of loss 

in commercial disputes, complex funds tracing 

and fraud and misconduct control. 

At the start of each New Year, many 

employees are encouraged to 

think about their personal 

development and the contribution they will 

make to the organisation for the year ahead. 

This usually involves setting financial and 

non-financial goals, and implementing and 

self-managing a program to ensure they 

meet the organisation’s expectations of them. 

Frequently, there is a strong nexus between 

goal attainment and career progression. 

Employees are told they need to carefully plan 

how they will achieve the ambitious financial 

targets they have committed to. Inevitably, 

some employees find themselves bending 

or even breaking the rules to meet personal 

goals and the organisation’s expectations and, 

by extension, their own career aspirations. 

In this article, we explore the phenomenon 

of employees who act inappropriately to 

meet financial goals in order to advance their 

careers or even, in some cases, just to hold 

on to the job they currently have. It also looks 

at how businesses can identify and better 

manage the risks associated with career– 

motivated misconduct. 

The Court of Arbitration for Sport (CAS) 

recently overturned the AFL Anti-Doping 

Tribunal’s “not guilty” findings in relation to 

doping charges against 34 past and present 

players of the Essendon Football Club. As 

a result, the 34 players are banned until 

November this year. There has been much 

media speculation as to how this situation 

could have arisen. Professional football 

is a highly charged environment, and it’s 

not surprising that some clubs and some 

individuals making-up some clubs push 

right to the boundary and, occasionally, cross 

that boundary. 

This is an example of how things can go 

wrong in the sporting arena in order to 

achieve superior performance, but there are 

parallels in business where people respond to 

pressures in ways reminiscent of the Essendon 

case. Movies such as The Wolf of Wall Street, 

The Smartest Guys in the Room and The Big 

Short highlight a business culture of greed and 

entitlement where the desire to make it “at 

all hazards” leads to disastrous consequences 

and, in some cases, criminal charges for the 

corporations and the individuals involved. 

Performance management systems and 

career mapping encourage employees to take 

responsibility for their personal development 

in order to maximise their value to the 

organisation in the short term, but also to 

ensure that they can meet their career goals in 

the longer term. Often, career progression in 

the future is strongly linked to the individual’s 

personal financial contribution to the business 

here and now. It is made very clear to 

employees in many organisations, that what 

is good for the organisation is good for them. 

Individuals who perform in accordance 

with organisational expectations will be 

rewarded and many will receive a bonus. But 

almost certainly, their career prospects will 

also be enhanced. 

On the face of it, linking career progression 

to financial outcomes makes good business 

sense and, most of the time it works well for 

the individual and for the organisation. It spurs 

the employee to a higher level of effort, which 

in turn is likely to achieve hoped for financial 

outcomes for the organisation. But sometimes 

things go wrong. 

Problems start when ambitious employees 

adopt certain behaviours which are, in 

their mind, necessary to achieve financial 

targets. These can include challenging, or 

often stretching, targets that may have been 

set for them but which they have agreed. 

Unchecked, these behaviours can result in 

irreparable career damage for the individual, 

and reputational damage and unwanted 

regulatory scrutiny for their organisation. 

But what are these destructive behaviours 

that are driven by the need for career 

advancement? What rules are employees 

prepared to bend or break in order to achieve 

corporate and individual financial targets for 

the benefit of the organisation in the shortterm, 

but by extension, for their career in 

the longer-term? Recent experience has 

shown that some employees adopt a 

“whatever it takes” approach to meeting 

financial expectations in the hope of 

furthering their careers. 

Option 1 - Bribe your way to the top 

Financial targets are usually aligned with 

top-line revenue and/or profitability. 

Achieving superior revenue and/or 

profitability can mean: 

• Converting more new opportunities 

into sales; 

• Generating more revenue from 

existing customers; 

• ‘Churning’ (winning over a competitor’s 

customers); and 


acla.acc.com 

• Collusive tendering: Arranging with other 

bidders on specific projects to decline or 

to overbid. 

It sometimes occurs to ambitious employees 

that they may be able to ‘buy’ business from 

customers or potential customers. In this 

context, ‘buying’ of course means bribing 

or improperly influencing a prospective 

customer to award business to the 

organisation. We have seen a number of 

recent examples where this has occurred: 

• A project manager who secured work with 

a major industrial corporation by offering to 

carry out construction works on his primary 

contact’s rural property; 

• A senior executive of a multinational 

organisation who paid bribes to help win 

large international infrastructure projects; 

• A senior executive of a supplier to the 

Australian retail sector who bribed a senior 

executive of a major customer in order to 

secure significant new business; and 

• A senior executive in the recycling sector 

who paid kickbacks to recycling suppliers 

for preferred supply of recycled materials 

in order to maintain profitability and his 

position in the business. 

Option 2 – If bribery doesn’t work, 

try “fudging the numbers” 

In addition to generating increased sales by 

improperly influencing customers or potential 

customers, some employees seek career 

progression by making it appear that they 

have achieved financial targets: 

• Booking sales that have not occurred and 

will not occur; 

• Bringing forward revenues that should be 

recognised in a future financial period; 

• Deferring expenditure; 

• Failing to write down the value of 

impaired assets; 

• Budget manipulation (under budgeting for 

revenue or over budgeting for expenditure); 

• Profit smoothing (making it appear that 

the business is performing in-line with 

expectations by shifting profits into other 

financial periods); and 

• “Channel stuffing,” or generating high 

volume but unprofitable business in order 

to meet revenue targets. 

Recent examples where this has occurred: 

• A CFO who sought to protect his/her career 

with a publicly listed transport company by 

fraudulently capitalising pallet hire expense 

over a period of four years; 

• A COO who manipulated the company’s 

accounts by creating fictitious revenues 

over a two year period with the sole aim of 

protecting his/her position; 

• A CFO who reversed staff bonus 

provisions in order to make short term 

performance look better and meet 

company forecasts; and 

• A sales manager who demanded his/her 

sales team make sales ‘at all costs’ resulting 

in fictitious sales being booked and then 

reversed in the following period. 

But what can businesses do to control 

career–motivated misconduct? 

Controlling fraud and corruption in Australian 

business practices requires applying sound 

and well accepted risk management 

principles. Fortunately, there is plenty of 

guidance available to assist organisations 

to do just that. At a fundamental level, 

controlling fraud and corruption risk comes 

back to: 

• Knowing the organisation’s people, risks and 

business partners; 

• Investing in fraud and corruption control; 

• Implementing adequate 

monitoring procedures; 

• Setting the right ‘tone at the top’; and 

• Raising awareness of behaviours that can 

damage the organisation, and what to do if 

those behaviours are suspected. 

To put this into context, organisations with a 

strong focus on employee accountability for 

generating revenue or profitability, particularly 

where performance against expectation is 

closely monitored, need to consider what 

employees could potentially do to achieve 

or to make it appear that they have achieved 

expected outcomes. There are many examples 

where employees who are otherwise 

shining examples of being committed to an 

organisation cross the line and bribe potential 

customers to win revenue, or manipulate 

financial aspects to make it appear that they 

have achieved their targets. Organisations 

where employees are accountable for 

generating revenue should understand the 

risks associated with creating those financial 

obligations and manage the risks accordingly. 

Linking financial performance to career 

progression makes sound business sense. It 

encourages employees to achieve superior 

results on the basis that there is a strong 

link between achieving those results and 

advancing their career. In essence it represents 

a win-win; what is good for the business 

is good for the employee and their career. 

Difficulties arise when the targets are seen by 

career–motivated employees as unattainable 

or unrealistic even though, in the heat of the 

moment, the employee has agreed to them 

in advance. Employees with a sense that there 

is no other way of achieving their targets 

can find themselves, particularly in a tight 

employment market, engaging in the wrong 

kinds of behaviour just to meet expectations 

such as the organisation’s expectations 

in terms of revenue and profitability, and 

their own expectations in terms of career 

advancement or job security. 


11


CULTURAL DIVERSITY IN THE LEGAL 

PROFESSION – A NEW FRONTIER? 

Reynah Tang 

Reynah is a Partner in the Transaction & 

Advisory practice at Johnson Winter & Slattery, 

focusing on corporate taxation, as well as 

the President of the Asian Australian Lawyers 

Association. In 2013, Reynah became the first 

President of the Law Institute of Victoria from 

an Asian Australian background in its (then) 

154 year history. 

Over the past decade, there has been 

a lot of debate and discussion in 

relation to the issue of diversity in 

the legal profession. However, most of that 

discussion has been focused on gender 

rather than broader issues of diversity such 

as culture, sexual orientation or ability. While 

there is still a way to go in addressing the 

issues encountered by women in the legal 

profession, there is now growing recognition 

of the need to also consider cultural diversity. 

Relevantly, as Gillian Wong observed in the 

Summer Edition of the Australian Corporate 

Lawyer, in-house counsel have “an important 

role to play in championing diversity (in 

gender and other minority groups) and 

driving change at the most senior levels 

of our profession”. 

Last year, the Asian Australian Lawyers 

Association (AALA) released its landmark 

report, The Australian Legal Profession: A 

snapshot of Asian Australian diversity in 2015, 

examining the level of Asian Australian 

participation within law firm partnerships, at 

the Bar and on the Bench. The report makes 

for sobering reading, suggesting the potential 

existence of a “bamboo ceiling” which 

hampers the progression of Asian Australians 

as they seek to move up the ranks in the 

profession. Unfortunately, due to the lack 

of publicly available information, the report 

did not include data on in-house counsel 

although it would seem there are a number of 

prominent general counsel of Asian heritage. 

The general lack of cultural diversity in the 

senior echelons of the legal profession is of 

concern at a number of levels. 

Firstly, given the focus of many Australian 

companies on the opportunities in Asia, there 

is a business imperative to harness the talent 

of those with Asian capability. As suggested 

in a recent report by the Diversity Council of 

Australia – Leading in the Asia Century: 

A National Scorecard of Australia’s Workforce 

Asia Capability: 

“Australian organisations can improve their 

Asian capability… by focusing on existing 

Asian-identifying talent, as well as better 

recognising and rewarding workers who have 

lived and worked in Asia, and those with Asian 

language proficiency.” 

Second, given the number of Asian Australians 

coming into the profession, there will be an 

inevitable loss of talent to the profession if 

they do not see opportunities for progression. 

Indeed, the Career Intentions Survey released by 

the Women Lawyers Association of New South 

Wales last year revealed that some 11.4% of 

law student respondents in NSW were born in 

Asia, and up to 30% had a cultural background 

from one or more Asian countries. 

Third, there is a clear business case at an 

organisational level for having greater 

cultural diversity. In Diversity Matters, a 

research report published by McKinsey 

& Company in 2015, it was noted that 

companies in the top quartile for ethnic 

diversity enjoyed financial returns which were 

35% above the national industry median. 

While Asian Australians make up 

some 9.6% of the population, the 

AALA report reveals Australian law 

firms had only 3.1% of partners 

from Asian backgrounds. At the Bar, 

only 1.6% of barristers were Asian 

Australian and less than one in a 

hundred judges have Asian heritage. 

Lastly, as the Hon. Michael Kirby AC CMG 

reminded attendees at the launch of the 

NSW Branch of the AALA: 

“Law is not an ordinary profession… Law is 

about the values that inform what we do, how 

we do it and outcomes… therefore it’s more 

important in law to reflect the diversity of values 

than it is in just about anywhere else because 

law is about power … And if values affect the 

exercise of power, it is very, very important that 

the diversity of values and the experience of 

backgrounds should be reflected.” 

The AALA is, of course, actively working to 

promote greater cultural diversity, through 

advocacy and programs such as its mentoring 

scheme. However, in-house counsel can also 

help address the issue, both in their own legal 

teams and in the wider profession. 

At an organisational level, unconscious bias 

training for those involved in recruitment and 

retention is of critical importance, as is the 

provision of mentoring and coaching to assist 

those from culturally diverse backgrounds 

overcome any internal and external barriers 

they may face. 

In terms of the wider profession, firms can 

be asked in panel appointment processes to 

provide information and ongoing reporting 

regarding their level of diversity (including 

in relation to culture) and the steps they are 

taking to promote diversity and inclusion. And 

in-house counsel should not feel shy to ask 

questions if they are consistently presented 

with the partners - and recommendations 

regarding counsel - that do not appropriately 

reflect the cultural diversity of their 

organisation’s own customers. 

In his maiden speech as 2015 Australian of 

the Year, Mr David Morrison AO poignantly 

observed that: 

“[t]oo many of our fellow Australians are denied 

the opportunity to reach their potential … 

because of their gender, because of the God 

they believe in, because of their racial heritage, 

because they’re not able-bodied, because of their 

sexual orientation. We as a nation ... should 

be able to give them the chance to reach their 

potential because when they do, we all benefit…” 

In this day and age, diversity – including 

cultural diversity – should no longer be 

regarded as optional. 


acla.acc.com 


SA President 

Alicia Burgemeister 

News from SA 

2016 kicked off with a bang as the Corporate 

Counsel Day returned to South Australia. 

A record number of delegates attended 

the day at the Adelaide Convention Centre 

where high quality speakers presented on a 

range of topics including crisis management, 

commercial contracts and indemnities and a 

fantastic panel discussed the value that the 

legal team can provide to a business during 

adverse times. We took home some great 

tips from the ‘Performing under Pressure’ 

and ethics sessions, and left inspired after 

the 2015 Young Lawyer Achiever of the Year, 

Lauren Miller from Carnival Australia, gave her 

keynote speech. 

Thank you to our sponsors, Wallmans Lawyers, 

FTI Consulting and Korda Mentha, for helping 

us hold such an important event for the 

profession. We look forward to bringing 

back the event in 2017. For those who are 

interested in attending the 2016 National 

Conference in Canberra, registrations open 

early May. 

SA already has a number of CPD activities 

lined up for 2016 with some really exciting 

topics! Keep up to date by ensuring you are 

subscribed to receive the weekly e-newsletter 

and event emails. You can also check out the 

events listing on the ACC Australia website. 

Our popular breakfast snapshots will be 

returning shortly, along with our midyear and 

end of year drinks, AGM and of course plenty 

of other great CPD’s 

ACC Australia in SA are always on the look out 

for new members so if you have any in-house 

contacts or colleagues please send them our 

way! I look forward to seeing you all at an 

upcoming event soon. 

TAS President 

Monika Maedler 

News from TAS 

In my first ‘News from TAS’, I’d like to introduce 

myself as the new ACC Australia Tasmanian 

President, and welcome the new TAS 

Committee: Alice Fielding, Theo Kapodistrias, 

Claire Myers and Alisa Sypkes. 

I hope Tassie members made the most 

of being so close to Victoria this year and 

were able to travel up to Melbourne for the 

Corporate Counsel Day. The feedback 

from attendees indicated the session by 

keynote speaker Professor Gillian Triggs, 

President of the Human Rights Commission, 

was well-received. 

For members on the move, remember to 

check what’s on at 

acla.acc.com/events. If you can’t make it to 

face-to-face events, ACC offers members 

online education through webcasts. A list 

of archived webcasts that are searchable by 

keyword can be found at 

acc.com/education/online-education. 

If you’re planning for change in 2016/17, 

we have a fantastic resource that you can 

use to support financial conversations with 

the business. The 2015 In-house Counsel Report: 

Benchmarks & Leading Practices will provide 

you with data on topics such as resources/ 

costs, managing workflow, organisational 

structure. Go to 

acla.acc.com/resources/research for 

more information. 

VIC President 

Mei Ramsay 

News from VIC 

Happy New Year! The Victorian Corporate 

Counsel Day was a great start to 2016. The 

theme “Beyond the horizon: Global issues, 

local solutions”, recognised the increasing 

global nature of our work as in-house counsel, 

but also showcased our home grown talent, 

many of whom are being recognised as global 

talent in their organisations 

Attendees were engaged from the beginning, 

as Professor Gillian Triggs, President of the 

Human Rights Commission spoke about the 

role of in-house counsel as the moral compass 

of the business/government body for which 

they are working. 

For the first time the conference catered 

for in-house counsel working in Government 

departments, with well-received sessions 

on procurement negotiations and 

managing change. 

The Victorian CPD program is also now in 

full swing. A stand-out event was a panel 

discussion on improving diversity and 

inclusion in the legal section, a topic close 

to the heart of our ACC Australia’s National 

President, Gillian Wong. Gillian has noted 

that in-house lawyers have an important 

role to play in championing diversity and 

driving change at the most senior levels of 

our profession. 

As I write this, ‘The Wash up from Harper’ 

seminar is coming up. The “Harper Review” 

is the most significant review into Australia’s 

competition policy in more than 20 years, 

and the seminar is a must attend event for 

all in-counsel. The CPD program for 2016 

includes seminars on new topics such as 

adding value to the C-suite, social media and 

digital innovation, as well as previously wellreceived 

topics such as legal research training. 

I encourage you all to regularly check 

acla.acc.com/events and your inbox as 

activities/events open for registrations. 

I hope to see you at one of our many events 

over the coming year. 


13


THERE IS NO ‘ONE SIZE FITS ALL’ 

FOR EXECUTION OF DEEDS 

“No good deed goes unpunished.” – Oscar Wilde 

Orla McCoy 

Orla McCoy is a Partner at Clayton Utz, 

specialising in corporate restructuring and 

insolvency. She acts on behalf of financiers, 

private equity interests, external administrators, 

government departments, corporations and 

individuals and has acted in many of Australia’s 

most significant and high-profile corporate 

restructuring and insolvency matters. 

Flora Innes 

Flora Innes is a Senior Lawyer at Clayton Utz 

and specialises in corporate restructuring and 

insolvency. She has had exposure to a number 

of high-profile clients and matters, acting for 

external administrators, creditors, trustees, and 

government clients. 

For the enforceability of any commercial 

arrangement, proper execution of 

the underlying documentation is 

critical. However, compliance with execution 

formalities takes on heightened importance 

when the arrangement is being documented 

by deed. 

Importantly, there are substantial differences 

in the manner in which deeds may be 

executed by companies, individuals and other 

types of entities. 

The aim of this article is to provide a high 

level summary of the general execution 

requirements applicable to the different 

types of legal entities most frequently 

appearing as counterparties; and provide 

some practical tips for assessing whether 

a deed has been properly executed by a 

counterparty (Counterparty). 

Companies registered under 

the Corporations Act 

For companies incorporated in Australia and 

foreign companies that are registered under 

the Corporations Act 2001 (Cth) (Corporations 

Act), the position is straightforward. These 

companies can simply execute a deed 

in accordance with section 127 of the 

Corporations Act, that is, they can arrange 

for the deed to be: 

• signed by two directors; 

• signed by one director and one 

company secretary; 

• signed by the sole director (who must also 

be the company secretary); or 

• affixed with the company’s common seal in 

the presence of: two directors; one director 

and one company secretary; or the sole 

director/company secretary. 

By having the Counterparty execute a deed in 

accordance with section 127, a party can rely 

on the statutory assumptions in sections 128 

and 129, including the assumption that the 

Counterparty has duly executed the deed. 

Moreover, provided that the document is 

expressed to be “executed as deed” and is 

executed in accordance with section 127 of 

the Corporations Act, the document will not 

need to be otherwise sealed in order 

to become a deed. The document will, 

however, need to be delivered by the parties 

(that is, formally intended to be released 

to the Counterparty). 

It is important that the identities of the 

signatories are checked against ASIC’s records 

to ensure that they are in fact current directors 

and/or secretaries of the company. 

Power of attorney 

Occasionally, a Counterparty may indicate 

that it intends for its attorney to execute a 

deed on its behalf. In those circumstances, a 

copy of the relevant power of attorney should 

be reviewed, to ensure that the power of 

attorney itself: 

• is expressed to be “executed as deed”. 

This is because of a common law rule that 

an agent signing a deed on behalf of a 

principal must be authorised by a deed of 

appointment to do so; 

• was properly executed by the Counterparty 

in accordance with section 127 of the 

Corporations Act; 

• has not expired; and 

• actually confers upon the attorney the 

requisite authority to execute the deed 

in question. 

The principal deed should state that it was 

“executed as a deed” and that it was “signed, 

sealed and delivered for and on behalf of” the 

Counterparty by its attorney in the presence 

of a witness. The witness should sign the deed 

and the attorney should declare, by signing 

the deed, that he has not received any notice 

of the revocation of the power of attorney. 

Australian companies under 

external administration 

It is possible for one or both parties 

to a deed to be companies under 

external administration. 

Formalities 

In those circumstances, it will normally be the 

external administrator of the company that 

will sign the deed on its behalf. The deed itself 

should expressly state that it is: 

• “executed as a deed”; and 

• “signed, sealed and delivered for and on behalf 

of” the relevant company by its external 

administrator in the presence of a witness. 

The witness should also sign the deed to 

attest to the execution of the deed. 

Unless the deed is (also) being entered into by 

the external administrators in their personal 

capacity, the Corporations Act facilitates 


acla.acc.com 

execution by one external administrator on 

behalf of the company, where two or more 

have been appointed jointly and severally: see, 

for example, sections 451A(2) and 530(a). 

Power 

Generally, external administrators have broad 

powers under the Corporations Act to execute 

documents on behalf of the companies to 

which they have been appointed. 

For instance, a liquidator has power under 

section 477(2)(d) of the Corporations Act 

to execute all deeds in the name, and on 

behalf, of the company, using the company’s 

common seal if necessary. 

Where the deed in question involves: 

• a compromise of a debt in excess of 

$100,000 that is owed to the company; or 

• an agreement, the term of which may end 

more than three months after the date 

on which the deed is entered into, the 

liquidator will need to obtain approval 

pursuant to sections 477(2A) or 477(2B) 

of the Corporations Act, from the Court, 

the committee of inspection or the 

company’s creditors, in order to validly 

execute the deed. 

Individuals 

Where a deed is being executed by an 

individual, he may execute the deed by: 

• signing the deed in the presence of a 

witness who is not a party to the deed; 

• having the witness also signing the 

deed; and 

• having the deed state that it is “signed, 

sealed and delivered by” the individual in 

the presence of a witness. 

In New South Wales, by virtue of section 38(3) 

of the Conveyancing Act 1919 (NSW), a duly 

executed deed that is expressed to be a deed 

or to be sealed will be deemed to be sealed, 

without it physically being sealed. 

Companies or individuals executing 

in their capacity as trustees 

Where a deed is being executed by a 

company or an individual acting in its/his/her 

capacity as trustee of a trust, in addition to 

ensuring that the trustee executes the deed in 

accordance with the execution requirements 

set out above as applicable to companies and 

individuals, a copy of the relevant trust deed 

should also be reviewed to ensure that the 

trustee has power under the trust deed to 

enter into the deed. 

Local government authorities 

In each of the States and Territories (save for 

the ACT), the Local Government Act, together 

with the related regulations, provide, fairly 

comprehensively, for the method(s) by which 

a local government authority (in the relevant 

State or Territory) is to execute documents. 

When entering into a deed with a local 

council, the relevant State or Territorial 

legislation and regulations should be 

reviewed to determine the specific 

requirements applicable to that particular 

council. Copies of any relevant instruments 

of delegation or authorisation should be 

requested and checked. 

For example, under section 683 of the Local 

Government Act 1993 (NSW), a local council 

in NSW may ‘authenticate’ a document 

without the seal of the council if it is signed 

by the general manager or public officer of 

the council. A public officer is a member of 

the council staff designated by the General 

Manager to be the public officer. Accordingly, 

when assessing whether a deed has been 

properly executed by a local council in NSW, 

the available public records, and (if applicable) 

the relevant instrument designating a public 

officer, should be reviewed to ensure that the 

signatory in fact holds the office he purports 

to hold. 

Incorporated associations 

Incorporated associations (Associations) are 

separate legal entities capable of entering into 

contracts with third parties. 

In each State and Territory, there is legislation 

regulating the registration and management 

of Associations. Such legislation provides 

for the manner(s) in which an Association 

(to which that legislation applies) may 

execute documents. 

For example, pursuant to section 22 of the 

Associations Incorporation Act 2009 (NSW), 

where a document is expressed to be executed 

as a deed, an Association (registered in NSW) 

may generally execute a deed by: 

• having the document signed by two of 

its “authorised signatories” (including its 

public officers); 

• affixing the common seal of the association 

to the document in the presence of two of 

its authorised signatories; or 

• executing the document in accordance 

with other specific requirements in its 

constitution relating to the execution 

of deeds. 

As this article has sought to make apparent, 

there is, unfortunately, no “one size fits 

all” when it comes to execution of deeds. 

To ensure that a deed has been properly 

executed, a party should: 

• first and foremost, ascertain the 

Counterparty’s entity type; 

• consider the relevant legislation and 

regulations which prescribe the manner 

in which entities of its kind are to execute 

documents (e.g. the Corporations Act); 

• ensure that the deed expressly states that it 

is “executed as a deed” and/or “signed, sealed 

and delivered” by, or for, the Counterparty; 

• where a signatory is signing as an attorney 

for the Counterparty, ensure that the power 

of attorney is itself executed as a deed; 

• review any applicable trust deed, 

constitution and/or instrument of 

authorisation to ensure sufficient authority 

has been conferred upon the signatories; 

• where the signatories are authorised 

to sign the deed by virtue of the office 

they hold, ensure that they are in fact the 

officeholders. This may involve reviewing 

ASIC’s records in respect of the corporate 

Counterparty; and 

• where applicable, ensure that the deed is 

signed by the signatories in the presence of 

an independent witness who is not also a 

party to the deed. 


15


WHAT ARE THE KEY ISSUES KEEPING 

CLO's UP AT NIGHT? 

As compliance and regulatory issues demand GCs’ attention, many turn to legal operations 

teams to run global law departments. 

James A. Merklinger 

James A. Merklinger is the Vice President 

and Chief Legal Officer of the Association of 

Corporate Counsel. 

Despite working in disparate corners 

of the globe, today’s community of 

chief legal officers (CLOs) and general 

counsel (GCs) share much in common when it 

comes to their leading concerns – ethics and 

compliance, regulatory issues/challenges and 

data breaches. According to more than 1,300 

GCs from 41 countries, these three topics 

are the most likely to keep them up at night, 

as reported in the Association of Corporate 

Counsel (ACC) CLO 2016 Survey, released at the 

end of January. 

Certainly not a coincidence, the increasingly 

strategic nature of the CLO role affects the 

importance awarded to these top three issues. 

Their complexity grows out of the confluence 

of overseas enterprise expansion, the pace 

of the business environment, technology’s 

supremacy in commerce and the GC’s desire 

to engage in strategic conversations and 

decisions. As a result, the CLO community 

tackling these challenges must both possess 

legal skills and be business savvy. 

M&A activity 

ACC surveyed its legal department leaders in 

October – November 2015, towards the end 

of a year marked by business expansion and 

transitions. Mergers and acquisitions were at 

a record high – just over AUS$7 trillion (US$5 

trillion) – last year, including huge deals by 

Pfizer, Anheuser-Busch InBev and Royal Dutch 

Shell. An astounding 40 percent of in-house 

lawyers, responding to an earlier survey 1 work 

in a company that experienced a merger or 

acquisition in the past year. Nor does it appear 

that the pace of mergers will slow, either. In 

Australia and New Zealand specifically, more 

than half of companies reported planning 

acquisitions in the next 12 months 2 . 

With M&A activity so frequent in 2015 and 

still primed for a fast pace into 2016, new 

compliance challenges follow, especially in 

emerging or undefined markets. Companies 

rely on their CLOs to drive enterprise risk 

management and, increasingly, to anticipate 

the risks of the various business considerations 

weighed by their C-suite peers. Although 

ethics and compliance has been a top 

concern in the ACC CLO Survey for many years, 

CLOs felt even more intensely of the topic’s 

importance this year, with 71 percent ranking 

the topic as “extremely” or “very” important 

(compared to 66 percent last year). 

Regulatory issues/challenges 

Related and not far behind, 70 percent of 

CLOs stated that regulatory issues/challenges 

are “extremely” or “very” important. The 

significance of regulatory matters is further 

illustrated by the high percentage of CLOs 

– 31 percent worldwide – who report that 

their companies have been targeted by 

regulators or other government entities for 

an enforcement action in the past two years. 

CLOs in the Asia Pacific region had an even 

higher rate of response at 35 percent. To put 

this into perspective, this is greater than the 

percentage who reported a data breach in 

the past two years, a figure that CLOs reported 

at 22 percent this year (down from 27 percent 

last year). 

Larger legal departments were nearly twice 

as likely (56 percent) to report being targeted 

by regulators than their smaller counterparts 

(29 percent), likely due to the scale of their 

global operations. CLOs at these companies 

have come to understand that extensive 

multi-national work responsibilities, and 

consequential heightened regulatory risks, are 

the “new normal” for their departments. Each 

time a company acquires a competitor in a 

new location, alters its global supply chain or 

opens a new branch across borders, the CLO 

must advise on the requirements to keep the 

company compliant, thus keeping them out 

of the regulatory spotlight. With regulatory 

activity growing, in-house legal departments 

are certainly feeling greater pressure, and 

hiring in the compliance space remains high. 

For the second year in a row, 18 percent of 

legal departments – both worldwide and in 

Asia Pacific in particular – are hiring in-house 

lawyers to practice in the area of compliance, 

the top area for hiring (beating out even 

contracts and general legal advice – two 

stalwarts of traditional in-house practice). 

The topics keeping CLOs up at night are 

complex as legal matters and high stakes as 

corporate concerns. They require business 

skills and strategic thinking abilities. The issues 

stretch across cultures, legal jurisdictions 

and time zones. Because so many business 

decisions are tied to compliance and 


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regulatory activity, the CLO’s C-suite peers are 

constantly looking to the legal department 

to navigate these difficult issues in order to 

enable enterprise growth. Clearly, the CLO has 

taken on more strategic responsibilities in the 

corporation. Fortunately, most CLOs prefer – 

and thrive in – this role. 

Advising executives and participating in 

strategic corporate issues is once again where 

CLOs prefer to work this year, as 68 percent 

said this is one of the three areas where they 

prefer to spend the majority of their time. In 

reality, 53 percent of CLOs say that advising 

executives and participating in strategic 

corporate issues is one of the top three areas 

where they principally spend time, a slight 

drop from those who prefer this work, but still 

the top answer in the ACC CLO 2016 Survey. 

This time-consuming role fulfills two of 

the three responsibilities of the modern 

CLO: serving as counselor in chief and 

business strategist. 

Legal operations 

This greater participation in business 

strategy, however, means less time for 

legal department management, the third 

responsibility of the modern CLO. According 

to the 1,300 CLOs ACC surveyed this year, 

many have found a solution. Nearly half, 48 

percent, use legal operations professionals 

to enable them to maintain well-run legal 

departments while dedicating most of their 

time to strategy. 

The legal operations role is often called 

“burgeoning,” and ACC CLO 2016 Survey 

data certainly supports this claim, as the 

number of GCs/CLOs reporting legal 

operations staff has more than doubled 

since last year. This explosive growth reflects 

ACC’s own experience with the legal 

operations profession. 

The most sophisticated in-house legal 

departments today employ a Chief Operating 

Officer (COO), a seasoned executive able to 

run major strategic initiatives to advance the 

efficiency and effectiveness of the (almost 

always global) legal department. These 

initiatives both free up the time of the CLO 

to focus on more strategic work and make it 

possible for the department to take this work 

on in the first place. Whether by building 

efficient work flows, instituting better project 

management, finding the right legal service 

providers or applying the best technology, 

the COO and his or her legal operations team 

enable the department to do its best work. 

ACC created a special membership section, 

ACC Legal Operations, to serve this important 

constituency last March. Since then, it has 

grown to almost 400 members from 258 

different companies. The section features 

eight regional groups, including one in 

Europe, where members can collaborate 

with their peers leading global legal 

operations and discuss the needs of the legal 

departments of the future. 

Although currently less common in Australia 

and Asia Pacific, we anticipate growing 

demand for similar collaboration on legal 

department strategic planning, use of 

technology, and innovation in managing 

internal and external resources. 

At a time when compliance and regulatory 

issues are so crucial for in-house legal 

departments, the time is right for the legal 

operations role to grow worldwide. Ensuring 

compliance and keeping abreast of the 

regulatory climate necessitates large budgets, 

global teams of lawyers and the most efficient 

delivery of internal and external legal services. 

Having a legal operations team, led by a COO, 

ensures a seamless delivery of value for the 

company’s legal resources and expenditures. 

As compliance and ethics and regulatory 

issues/challenges continue to drive the 

trajectory of the business environment, CLOs 

remain indispensable in solving these issues, 

while their COOs are indispensable in building 

the law departments of the future. 

Footnotes 

1 2015 ACC Global Census Report 

2 Australasia Capital Confidence Barometer, released by 

London-headquartered Ernst & Young in November 

To learn more about the ACC CLO 2016 Survey, visit www.acc.com/closurvey. 


17



FREYA SMITH TALKS BUSINESS AND 

BUILDING AN IN-HOUSE LEGAL TEAM 

FROM SCRATCH 

Freya Smith 

Freya is the Leagl Counsel for Asia Pacific 

at OFX. 

Freya Smith is a legal professional with 

a unique background. Still relatively 

new to her role as Legal Counsel for 

Asia Pacific at OFX, Freya is responsible for 

leading the legal function for the company’s 

operations in Australia, New Zealand, 

Hong Kong and Singapore. However, it is 

her experience as General Counsel in her 

previous role at Kyocera, where Freya was 

presented with one of the most challenging 

and rewarding professional experiences an 

in-house lawyer will come across. 

At Kyocera, a global supplier of document 

solutions, Freya took the opportunity to build 

the in-house function from scratch, and ran 

with it developing the legal function into a 

business enabler and trusted partner. During 

her time at the company Freya took on a 

pivotal role in initiating and developing a 

number of key strategic initiatives which lead 

to business growth; the proudest of which was 

an IP protection strategy which was the first of 

its kind in the document solutions industry. 

In preparing for change, it was crucial for Freya 

to show that investing in an in-house team 

would bring value to the business. Freya’s 

first challenge was to make the in-house 

team a pivotal part of the business. One of 

the strongest attributes of leading in-house 

functions is having a seat at the table. Freya 

says she was lucky to work with a Managing 

Director who recognised the importance of 

the legal team and of having the General 

Counsel sit on the executive, and found 

that she was in a position from the start to 

influence strategic and commercial decision 

making. However, Freya understands that not 

all in-house counsel will be able to walk into a 

position on the executive team, and in these 

circumstances, Freya says the first step to be 

able to influence the business is to build trust. 

It was this opportunity to influence business 

outcomes and to work at the commercial front 

line that attracted Freya to the profession. 

From her first experience of life in-house 

during a secondment from Gilbert + Tobin, 

Freya says: “My enjoyment of in-house practice 

was instant!” 

Working in private practice provided Freya 

with the opportunity to know the law 

in greater detail, but working in-house 

provided her with the opportunity to 

experience how the application of the law 

truly affects the business. 

The breadth of work was also an attractive 

attribute of in-house: “I was finding in private 

practice a growing pressure to specialise 

which I was rebelling against,” Freya explains. 

“I’ve always enjoyed having a varied practice 

and found it to be intellectually engaging 

and challenging.” 

That’s not to say that life in-house is all roses: 

“In-house practice is just as much, if not more, 

hard work than private practice. Limited 

resources, tight budgets and greater diversity 

of work all increase stress. Coming to in-house 

practice relatively junior I also had to get used 

to being outside my comfort zone quickly. You 

come in-house and people in the business 

assume that you can do a lot more than 

you’ve trained to do,” says Freya. 

For those new to the in-house role, Freya 

says they need to step up quickly as the role 

necessitates making more decisions and 

taking on more responsibility than might 

typically be expected in private practice. 

Freya’s next challenge at Kyocera was 

to efficiently manage the legal function 

by developing policies and procedures; 

implementing company-wide training 

programs and document management 

systems; and introducing robust precedents 

to streamline work processes and create 

efficiencies. Freya says the experience was 

“a baptism of fire - but also the best training 

I ever received.” 

From her experience at Kyocera, and in all the 

environments she has worked in, Freya has 

learnt a lot about the challenges of working in 

small team. With very little reliance on external 

counsel and an expectation that a bulk of 

the work will stay in-house, Freya shares her 

experiences and provides tips in doing more 

with less. 

“The challenge in these circumstances is 

knowing when you can justify external 

spend. In my experience I’ve been able to 

justify external legal spend where I have 

narrowed the need for external advice down 

to very distinct questions or specialist issues. 

Committing to keeping the bulk of work 

in-house has also assisted to get the approval 

to go external when I need to. This of course 


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requires me to have enough time to get 

an increasing amount of work done while 

maintaining levels of quality and service and 

demonstrating value,” she explains. 

Despite this being no easy task, Freya found 

that putting in place efficient internal systems 

and processes can free up time to spend on 

the more important strategic work and says: 

“Keeping external providers in check is also 

vital including developing alternative cost/ 

retainer arrangements.” 

Working in a small team with a tight budget 

may be challenging, but Freya has also found 

it enriching as it has allowed her to handle 

most of the interesting and complex work that 

would have traditionally been sent externally. 

For Freya, the reality is that being an excellent 

lawyer is not enough, the head of a legal 

function also needs to be a savvy business 

person. She believes you can distil the most 

important qualities for in-house counsel to 

possess into a few key areas: 

• Be commercial: “In-house counsel need 

to be commercially focussed. It’s all about 

the business. At the heart of everything, 

in-house counsel need to have a genuine 

understanding of the business.” 

• Communicate: “In-house counsel need to 

be excellent communicators and have an 

ability to distil complex issues into concise 

and user-friendly advice.” 

• Be proactive and prioritise: “A good inhouse 

counsel can drive strategic projects 

using a combination of sound project 

management, good commercial acumen, 

and a ‘can-do’ attitude.” 

In the current industry Freya operates in, 

a growing challenge for in-house teams is 

increasing regulatory assault. Regulators are 

becoming more active. Keeping up with 

regulatory changes, what the regulators 

are doing and in turn, ensuring that the 

business is kept up to speed, is a constant 

challenge. And this is even more important 

in a multinational like OFX. Global financial 

services licensing issues, money laundering, 

terrorism funding, sanctions and data privacy 

are just some of the areas that OFX has to 

actively manage. 

The world of online payments is also fast 

paced and constantly evolving. Freya 

explains how OFX’s focus on innovation and 

acceleration impacts members of the legal 

team. “The business needs to be agile and the 

legal team is central to that. We need to be 

agile, flexible and have an understanding of 

risks in this constantly evolving landscape,” 

she states. 

Freya started working at OFX less than six 

months ago and has already faced the 

challenge of navigating a new role in an 

especially busy period. In November 2015 the 

company received a non-binding, indicative 

proposal from Western Union to acquire 100% 

of the shares of OFX Group Limited. 

As Freya looks ten years down the track, she 

expects there will be plenty of challenges 

along the way, but when asked how things 

will play out from here she concludes: “To steal 

from the late, great David Bowie – ‘I don’t know 

where I’m going from here, but I promise it won’t 

be boring.’” 


19


HOW LINKEDIN CAN HELP YOUR CAREER 

IN TODAY’S DIGITAL FIRST WORLD 

Kylie Chown 

Kylie Chown specialises in helping business 

owners, professional service providers and 

consultants increase their visibility using 

LinkedIn. She is the author of CONNECT: How 

to Leverage Your LinkedIn Profile for Business 

Growth and Lead Generation. 

I 

recently worked with a client who 

worked in a professional services 

business with a major corporation. She 

didn’t have a particular role in mind, but her 

plan was to move to a new role within the 

next 12 months. 

We had talked about her resume and the 

importance of making it outcomes focused. 

We were moving on to her LinkedIn profile 

when she asked: “But don’t I just upload my 

resume to my LinkedIn profile?” 

I explained that her resume could include 

more comprehensive details on her past, while 

her LinkedIn profile was about her future. 

I explained that if she was to just upload 

her resume to her profile, she would not 

be maximising LinkedIn’s capabilities. Her 

LinkedIn profile was in the public domain, 

and her resume contained confidential 

information we couldn’t put on her profile. 

Business Insider Australia 1 recently reported: 

“Users who simply post a static resume (on 

LinkedIn) and don’t make an effort to interact 

with others in their network will not receive as 

many opportunities.” 

Like my client, when used effectively, LinkedIn 

can help in-house lawyers establish and grow 

their personal brand and career by: 

• Supporting their establishment and 

positioning in their niche market. 

• Being found and approached by recruiters 

and hiring managers for their target role. 

• Positioning themselves to appeal to their 

ideal audience by tailoring language 

and key words. This will support their job 

applications, introductions or referrals as a 

validation tool. 

• Nurturing and strengthening relationships 

with key industry stakeholders, recruiters 

and decision makers. 

To ensure that in-house lawyers can leverage 

LinkedIn to benefit their personal brand and 

career, they need to be found, positioned 

and validated. 

Be found: LinkedIn, first and foremost, is a 

search engine. In other words, it’s similar to 

Google in that it’s designed for people to use 

it to search for what they’re looking for. 

The first and one of the most important steps 

for developing a LinkedIn profile that will 

support your personal brand, network and 

career is to identify and research keywords 

for SEO. 

Gravitate Online 2 reported that 94 percent of 

web visitors don’t go beyond the first page of 

their search results. Jeff Bullas 3 reported that 25 

million LinkedIn profiles are viewed every day. 

There are five areas that will contribute 

to the search engine optimisation of your 

profile. These include your: title, summary, 

employment history, skills and endorsements 

and recommendations. 

It is important to note that keywords are 

based on your goals moving forward and 

may not directly reflect what you are doing at 

the moment. 

Reflections: Think about your ideal 

clients and the words they would use 

to find people like you and build your 

profile around these words. 

Be Positioned: William Arruda recently wrote 

an article for Forbes 4 that stated: “The resume 

used to be the tool that would get you 

noticed. Now, by the time someone has seen 

your resume, they’ve already Googled you.” 

In Ctrl Alt Delete 5 , Mitch Joel introduces “digital 

first”: the concept that the first place we learn 

about people is online. 

This means that you need to be aware that 

before someone has even read your resume, 

they have likely reviewed your LinkedIn profile 

and Google search results. Keeping this in 

mind, strong positioning in your LinkedIn 

profile is essential. 

Your LinkedIn profile needs to have a clear 

value proposition with positioning. When you 

have positioning, it means you stand out from 

your competition. You have differentiated 

yourself from others and you are perceived 

in the market for the work you want to be 

perceived as being able to do. 

One way to get strong positioning is in the 

summary section. Many people don’t realise 

the importance of a great summary section 

in your LinkedIn profile. More than any other 

section, the summary represents you, your 

business and your brand. It is also one of the 

most viewed sections on LinkedIn. 

It’s a bit like the introduction on a company 

website. If it is not compelling to the reader 

they will simply go to another website. 

To write a standout summary you need three 

key elements: 

Clarity: Firstly, be clear about your objective. 

Before writing your summary, be clear about 

what you want to achieve with LinkedIn. Are 

you using it to raise your credibility or are 

you looking to expand your network? Are 

you looking to attract recruiters? Understand 


acla.acc.com 

Be Found 

this person, I …” (This brings up the known 

unspoken of your audience. This means 

that the audience can relate to the person 

giving the testimonial.) “After working with 

them, I now…” 

In addition to skills and testimonials, you can 

also add websites and plugins to showcase 

your work. 

Reflections: What validation is 

on your current profile? Can you 

increase this by adding testimonials, 

endorsements or plugins? 

Be Positioned 

what you are trying to do and make sure 

this is clear in your summary. Make a strong, 

compelling summary that will have your ideal 

audience thinking you are what they need to 

solve their problem. 

Relevance: You need to make it relevant 

to your audience. Again, as in the “clarity” 

element above, make a strong, compelling 

summary that will have your ideal audience 

thinking you are what they need to solve 

their problem. The key to a strong LinkedIn 

summary is writing for your future, not 

your past. 

Keywords: Your summary meets the blend of 

keywords and your purpose. The content will 

be targeted to your audience and purpose. 

For a job seeker, think about content that will 

engage a recruiter. 

The summary section is limited to 2,000 

characters. Ensure your LinkedIn summary 

aligns with who you are but isn’t all about how 

great you are. It is about how you can help 

solve your ideal audience’s problem. 

Positioning can also include sharing content. 

According to a LinkedIn blog post 6 , users 

who share content on their professional social 

network at least once a week are nearly 10 

times more likely to be contacted for new 

opportunities than people who don’t share. 

Curate information of value to your audience. 

This offers the opportunity to develop 

credibility as an educator and is a great 

option for those who do not wish to write 

their own articles. 

Be Validated 

Reflections: Assess your current 

“Digital First” impression. Is it 

aligned with your current goals? 

Review your current summary. Is it 

keyword rich and talking to solving 

the audience’s problems? 

Be validated: What others say about you 

is more important than what you say about 

yourself. The importance of validation, 

testimonials and case studies cannot be over 

emphasised. The evidence that you can do 

what you say you can do is invaluable and 

gives people hope as well as trust in you. One 

way to do this is in skills and endorsements. 

DMR 7 reported that profile views increase 13 

times for LinkedIn members who list skills on 

their profiles. 

Although skill endorsements are not generally 

a favourite for users, you can control what you 

are endorsed for and how this is presented on 

your profile. 

Why testimonials? Testimonials give hope 

and evidence. The person looking at your 

testimonials uses their imagination to think, 

“Wow, I would love that to happen for me.” 

They make the direct connection between 

what they need and how you can help them 

without you telling them. 

Also, what others say about us is more 

important than what we say about ourselves. 

Quite often, we work with clients to tone back 

their self-selling and let others do the talking. 

A good testimonial includes a before and 

after. For example, “Before working with 

The importance of contact 

information 

I am sure you have had the experience 

of finding exactly what you were looking 

for – the perfect product or service – and 

then couldn’t find the necessary contact 

information or instructions on how to place 

your order. 

Quickly, happiness is replaced with frustration. 

LinkedIn offers a number of ways to manage 

contact information. 

Once you have developed your profile, 

make it easy for people to connect with you. 

Include links to your LinkedIn profile on your 

other material. This includes your business 

card, email signature and other websites. 

Remember to send a meaningful, personalised 

request for new connections. 

You can also join groups to keep up-todate 

on industry changes. The Association 

of Corporate Counsel 8 group on LinkedIn 

is a closed group of in-house counsel 

professionals only. 

Remember that LinkedIn is about your 

future, so write your content to reflect this. 

Your profile works for you 24/7, so it needs 

to align with your goals, support your 

face-to-face activity and define what you’re 

trying to achieve. 

Footnotes 

1 http://www.businessinsider.com.au/users-who-post-onlinkedin-get-more-jobs-2013-9 

2 http://gravitateonline.com/2nd-place-1st-place-loserseriously/ 

3 http://www.jeffbullas.com/2014/12/02/25-linkedin-factsand-statistics-you-need-to-share/ 

4 http://www.forbes.com/sites/williamarruda/2014/03/18/ 

move-over-resume-youve-been-replaced/ 

5 http://www.twistimage.com/books/ 

6 http://blog.linkedin.com/2013/09/03/4-steps-to-joiningthe-professional-conversation-on-linkedin/ 

7 http://expandedramblings.com/index.php/by-thenumbers-a-few-important-linkedin-stats/ 

8 https://www.linkedin.com/groups/1458/profile 


21


TRADE MARKS AND DOMAIN NAMES: 

QUICKER AND CHEAPER STRATEGIES 

FOR RESOLVING DISPUTES 

Nicholas Smith 

Nicholas Smith is a barrister in Blackstone 

Chambers, specialising in Intellectual Property 

and the Australian Consumer Law. Prior 

to being called to the bar he worked in the 

Intellectual Property and Dispute Resolution 

groups at King & Wood Mallesons. He is a 

panellist with the World Intellectual Property 

Organization Arbitration and Mediation 

Centre and has written over 100 decisions 

under the Uniform Domain Name Dispute 

Resolution Policy (“UDRP”) and .au Dispute 

Resolution Policy (“auDRP”). 

Disputes involving domain names and 

those before the Trade Marks Registrar 

can be frustrating and expensive 

to resolve. Due to the launch of thousands 

of new domains, such disputes are likely to 

become more prevalent. 

Domain Names: Launch of new 

domains will lead to an increase 

in cybersquatting 

Cybersquatting disputes arise when one 

party (“the Respondent”) registers a domain 

name that another party (the “Complainant”) 

has rights to, usually a registered trade mark 

or sufficient reputation to ground a passing 

off or misleading and deceptive conduct 

claim. The Respondent may be a professional 

cybersquatter deliberately registering a 

domain name for financial gain, it may be a 

criminal, registering the domain name as 

part of a “phishing” scam or it may be a 

malicious competitor or a gadfly, registering 

the domain name to annoy or damage the 

Complainant’s business. 

Cybersquatting has been an issue for over 

15 years. What has changed is that ICANN 

(the entity responsible for the domain name 

system) is in the process of introducing 

over 1000 new top-level domains (i.e. .com). 

No longer does a company have to worry 

about cybersquatters registering trademark. 

com, trademark.net or trademark.com.au; 

now it also has to worry about trademark. 

web, trademark.shop, and several hundred 

other variants of its trade mark. No company 

wants to discover that cybersquatters have 

registered trademark.shop or trademark.bank 

(if it is a financial services entity) and 

are operating a site selling counterfeit 

products or harvesting personal details of 

potential customers. 

Most cybersquatting disputes are resolved 

under the Uniform Domain-Name Dispute- 

Resolution Policy (“UDRP”) which, following 

the making of a complaint and a decision 

by an independent panellist, allows a 

Complainant to recover ownership of a 

disputed domain name. However, there are 

now other solutions that may reduce the time, 

cost and effort in dealing with cybersquatting. 

Solution: the URS 

Domain names registered using the new 

domains are subject to the UDRP and a new 

dispute resolution mechanism called the 

Uniform Rapid Suspension System (“URS”) 

which aims to provide a similar outcome 

to the UDRP at a lower cost. Proceedings 

under the UDRP and URS run in a similar way, 

and a Complainant that does not succeed 

under the URS can bring a separate claim 

under the UDRP. 

The substantive and procedural provisions 

of the URS are similar to the UDRP and the 

outcomes will usually be similar except, where 

the Complainant only has a composite/ 

figurative mark, as the URS is limited to 

word marks or if the Complainant’s case 

is particularly weak or speculative, as the 

URS has a higher standard of proof of the 

Complainant’s allegations. 

The URS is currently provided by the National 

Arbitration Forum and the Asian Domain 

Name Dispute Resolution Centre. The cost 

of a proceeding is US$375 (more for appeals 

and 3-member panel cases). The timeframe is 

tighter than the UDRP. The URS also provides 

for an appeal in the event that a party is 

dissatisfied with the decision. 

The main downside of the URS is that the 

only remedy a URS panel may order is the 

temporary suspension of the domain name 

for the remainder of the registration period. 

This means that the Respondent remains the 

holder of the domain name but they cannot 

use or renew the domain name. The risk of this 

is that when the domain name does expire it 

may be registered by a new cybersquatter and 

new proceedings will need to be commenced 

over the same domain name. For this reason, 

and also the potential additional cost of any 

appeals sought by an active Respondent, the 

URS may not be suitable in all cases. 

Solution: Trademark Clearinghouse 

With new domains being launched everyday, 

a company may want a simple notification 

system when a domain name (such as 

trademark.shop) that it wishes to register is 

available, or when a potential cybersquatter 

has registered a domain name that 

corresponds to its trade marks. 

The Trademark Clearinghouse is a database of 

validated trade marks maintained by ICANN 

at www.trademark-clearinghouse.com. Any 

entity with a registered trade mark can register 

with the Clearinghouse for approximately 


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US$150 for one year. If a company has 

registered its mark with the Clearinghouse 

it will automatically be provided with the 

opportunity to register a domain name 

associated with its mark in any new domain 

at least 30 days before the general public has 

that opportunity, enabling it to ward 

off cybersquatters. 

If the trade mark owner does not register that 

domain name, and someone else attempts 

to register it then that potential registrant 

will receive a warning notice informing them 

of the potential conflict with the trade mark 

owner’s rights. If the person goes ahead and 

registers the domain name, the trade mark 

owner will receive a notification from the 

Clearinghouse of the new registration so they 

can take appropriate action immediately, such 

as filing a URS or UDRP complaint. 

Solution: Direct Briefing 

Regardless of whether a claim is made under 

the URS or UDRP, the process of resolving 

a domain name dispute is one that can be 

done without external solicitors. The costs 

of a domain name dispute are the cost of 

preparing a complaint, which is a discrete cost 

in advance of the proceeding, and the cost of 

filing the complaint (generally around $1500 

for UDRP or $375 for URS complaints). The 

cost and time spent preparing a complaint 

can be minimised by direct briefing of the 

bar, which means that the time spent on any 

domain name dispute is the time spent filing 

the complaint and ensuring the enforcement 

of the decision (which is limited). As the work 

in preparing a complaint (or even a series of 

complaints) is a fixed piece of work, it should 

be possible to negotiate a clear fixed fee 

rate in advance meaning that the costs are 

predictable and the time spent is minimised. 

Trade Marks: Consequences of 

Raising the Bar for proceedings 

before the Trade Marks Registrar 

While most domain name proceedings 

are international, disputes involving the 

registration and removal of trade marks are 

decided in Australia, before the Trade Marks 

Registrar. In 2013 most provisions of The 

Intellectual Property Laws Amendment (Raising 

the Bar) Act 2012 came into effect and changed 

how trade mark proceedings are conducted. 

Prior to 2013, the deadline to file evidence in 

matters before the Trade Marks Registrar was 

three months but extensions were relatively 

easy to obtain, either because of settlement 

negotiations or delays in preparing evidence. 

While the 3 month deadline remains (with 

the exception of evidence in reply, where it 

has now shifted to two months), what has 

changed is that it is now very difficult to 

obtain extensions of time to file evidence. 

Regardless of whether an opponent has 

consented, or whether there would be any 

detriment to allowing an extension, an 

extension will only be allowed if: 

a) the party has made all reasonable efforts to 

comply with all relevant filing requirements 

and despite acting promptly and diligently at 

all times to ensure the filing of the evidence 

within the period, is unable to do so; or 

b) there are exceptional circumstances 

that justify the extension, with exceptional 

circumstances being essentially limited to 

circumstances outside the control of a party 1 . 

In order to obtain an extension it will generally 

be necessary to identify, in great detail, 

precisely what steps have been taken and 

when. In short, when preparing evidence in 

proceedings before the Trade Marks Registrar, 

it is worthwhile to assume that an extension 

of time will not be obtained and late evidence 

will not be admitted. 

Solution: early start 

Regardless of whether the evidence is to be 

prepared in-house, by external solicitors or by 

the bar, it is important to promptly commence 

the preparation of evidence, and ideally 

have the evidence in near final draft form 

several weeks prior to the deadline given the 

risk of last minute changes or the difficulty 

in ensuring that any declaration is properly 

signed and witnessed by a busy deponent. 

Solution: suspensions for negotiation 

If both parties agree, the Registrar may 

suspend proceedings for 6 months for 

negotiations. This option is useful if the parties 

are considering settlement negotiations 

but is not a panacea in the event that the 

preparation of evidence is delayed. A party 

who does not have an upcoming evidentiary 

deadline may have little incentive to agree to 

a suspension as they are unaffected by any 

upcoming deadline. 

Solution: negotiate before 

commencing proceedings 

The difficulty in obtaining extensions to 

file evidence means that it is both more 

difficult to negotiate a settlement during 

a proceeding, but such proceedings will 

generally proceed quicker than previously. 

As such an early mediation or settlement 

conference with the opponent, ideally within 

a week or two of the initial controversy, has 

a number of benefits including the early 

resolution of a dispute prior to commencing 

proceedings before the Trade Marks Registrar, 

but also the possibility of narrowing the 

dispute such that it can be quickly resolved 

during any proceeding. 

Disputes involving domain names or before 

the Trade Marks Registrar are often not 

complex, however when not managed 

well, have the potential to be long-running 

expensive and stressful. A bit of advance 

thought in how to approach such matters can 

result in them being resolved quickly, cheaply 

and without fuss. 

Footnotes 

1 Trade Marks Regulations 1995, Reg 5.15 


23


AUSTRALIA’S INSOLVENCY 

LAW OVERHAUL 

Dr. Kai Luck 

Dr. Kai Luck is an Associate at Jones Day. He 

advises on complex, high-level strategic M&A, 

corporate law, and corporate governance 

matters. He regularly counsels clients on share 

sale and capital restructuring transactions, 

insider trading, board practices and 

procedures, and corporate compliance and 

best practices. 

Over the last decade, there have been 

increasing concerns that directors 

have prematurely appointed 

voluntary administrators to financially 

distressed but viable companies to avoid 

personal liability for insolvent trading. 

Voluntary administration has in turn 

compromised the enterprise value of those 

companies as key creditors and suppliers, 

aided by ipso facto contractual clauses 

authorising termination upon insolvency, have 

acted to protect their own interests, leaving 

little scope for a work out attempt. While 

secured creditors and major suppliers often 

recover most of their funds in full, corporate 

failure has a devastating impact on more 

vulnerable claimants such as employees and 

small trade creditors. 

With the impending end of the mining boom 

in Australia and the widespread view among 

economists that current conditions are the 

most dangerous we have seen since the 

global financial crisis, there are renewed calls 

for reforms that promote corporate rescue. 

Late last year, the government announced it 

would introduce legislation to achieve that end 

by mid-2017. As well as reducing the default 

bankruptcy period, the legislation will introduce 

a ‘safe harbour’ defence to insolvent trading 

and will prevent the enforcement of ipso facto 

clauses during a restructuring attempt. 

The focus of this article is the safe harbour 

and ipso facto reforms. Because the reforms 

will significantly alter legal, regulatory and 

risk frameworks for corporate stakeholders, 

it is crucial that they, and their professional 

advisers, have a sound understanding of how 

the reforms will operate. 

Overview of the reforms 

On 7 December 2015, the government 

released its “National Innovation and Science 

Agenda” (Agenda). Among other things, the 

Agenda commits the government to the 

introduction of three significant reforms to 

Australia’s insolvency laws. 

Apart from the reduction in the default 

bankruptcy period from three years to one 

year, amending legislation will: 

1. Introduce a safe harbour providing 

directors with immunity from personal 

liability for insolvent trading during the 

implementation of a restructuring plan; 

and 

2. Prevent the enforcement of ipso facto 

clauses during a restructuring attempt. 1 

The reforms are based on the Productivity 

Commission’s recommendations in its 

final report, Business Set-Up, Transfer and 

Closure (Report), released on the same day 

as the Agenda. 2 

The safe harbour defence builds on the 

‘business judgment rule’ proposed in the 

Gillard Government’s 2010 report, Insolvent 

Trading: A Safe Harbour for Reorganisation 

Attempts Outside of External Administration 

(Options Paper). 

Peak professional organisations, including 

the Australian Institute of Company Directors 

(AICD), the Australian Restructuring, 

Insolvency and Turnaround Association 

(ARITA) 3 and the Law Council of Australia 

(LCA), previously expressed strong support 

for the business judgment rule. However, 

following the Federal election in August 2010, 

the Options Paper was not pursued. 

Motivation for the reforms 

Research suggests that the threat of personal 

liability provides directors with strong 

incentives to “adopt a defensive posture, 

becoming extremely cautious and risk-averse, 

with the consequence that they either 

minimise the taking of risks or even refuse to 

take any at all.” 4 

In circumstances of corporate financial 

distress, the manifestation of directors’ 

risk averse behaviour is the immediate 

appointment of a voluntary administrator, 

an action taken into account in considering 

whether directors have breached their duty 

to prevent insolvent trading. 5 Additionally, the 

potential for personal liability, including civil 

and criminal penalties for insolvent trading 

and automatic disqualification from managing 

companies during a period of personal 

bankruptcy, 6 may cause directors to resign 

from office as soon as a company’s solvency is 

in question. 7 

Immunity from personal liability allows 

directors to assume greater risks by 

considering an informal work out rather 

than immediately appointing a voluntary 

administrator. Ultimately, the revival of a viable 

company or business is in the best interests of 

all corporate stakeholders, resulting in fewer 

losses for creditors and business continuity 

for the benefit of employees, small trade 

creditors, customers and shareholders. 8 

By promoting allocative efficiency and 

productivity, corporate and business rescue 

are also beneficial to the broader economy. 


acla.acc.com 

In the absence of an informal restructuring 

attempt, the appointment of a voluntary 

administrator invariably destroys a company’s 

enterprise value. This is a reflection of: 

1. The individualist, enforcement focused 

culture among creditors in Australia when 

a company is insolvent, which leads to 

the invocation of ipso facto clauses and 

the appointment of receivers by major 

financiers; and 

2. The strong stigma that insolvency carries 

in Australia. 

Indeed, voluntary administration is often 

a precursor to liquidation, or at least a 

“quasi-liquidation” under a deed of company 

arrangement providing for the cessation 

of trade and the break-up of a company’s 

business and assets. 9 

Implementation of the reforms 

The government intends to release an 

exposure draft of its proposed legislation 

in the first half of this year before finalising 

legislation in mid 2017. 10 The exposure draft 

is likely to take the form suggested by the 

Productivity Commission in the Report. 

Safe harbour defence 

According to the Productivity Commission, the 

safe harbour defence should only be available 

if the following safeguards are satisfied: 

1. A company’s directors appoint an 

insolvency and turnaround adviser to 

create a restructuring plan; 

2. The adviser is presented with proper books 

and records of the company, and certifies 

that the company is solvent, 

upon appointment; 

3. The adviser is registered with at least five 

years experience; 

4. The directors take all reasonable steps to 

pursue a restructuring; and 

5. The restructuring plan is proximate to a 

specific circumstance of financial difficulty 

and is pursued with the dominant purpose 

of improving a company’s solvency. 11 

Critically, under the Productivity Commission’s 

proposed safeguards, while a company must 

be solvent when a restructuring adviser is first 

appointed, the safe harbour defence will still 

be available if the company later becomes 

insolvent during a restructuring attempt. 

Without that possibility, the defence would 

have no utility because it would not apply 

in the very circumstances the safe harbour 

reforms are intended to address. 

It is submitted that the Productivity 

Commission’s proposed safeguards are 

sufficient to protect the interests of all 

corporate stakeholders by ensuring 

directors will only be able to pursue genuine 

restructuring attempts and will still be 

required to act responsibly, in good faith and 

in the best interests of the company. 

Ipso facto reforms 

If directors cannot satisfy themselves, the 

company is solvent and a restructuring 

adviser has not yet been appointed, the safe 

harbour defence will not be available and the 

directors should either appoint a voluntary 

administrator, seek to negotiate a scheme of 

arrangement or otherwise initiate liquidation. 

To maximise the potential for a company 

or its business to be revived over time even 

if it is currently insolvent, the Productivity 

Commission recommends that ipso facto 

clauses should be unenforceable during 

voluntary administration or the negotiation of 

a scheme of arrangement. 12 

However, in light of its recommendation that 

a restructuring adviser’s appointment should 

not be subject to market disclosure, 13 the 

Productivity Commission does not consider 

an ipso facto enforcement moratorium to be 

necessary during a period of safe harbour, 

noting that: 

creditors who are not directly involved in the 

restructure will likely be unaware that the 

company is in safe harbour, and thus would 

only terminate contracts on normal, nonperformance 

grounds. 14 

A moratorium is also unnecessary during 

liquidation because the prospect of a 

successful restructuring has disappeared. 15 

The Productivity Commission recommends 

allowing creditors and suppliers to apply for 

a court order terminating a contract if the 

ipso facto enforcement moratorium would 

cause undue hardship. 16 This would protect 

particularly vulnerable corporate stakeholders 

that have a limited capacity to self protect 

against the risk of insolvency loss, such as 

small trade creditors lacking the bargaining 

power to insist on security. 

Some commentators have suggested the ipso 

facto and safe harbour reforms could increase 

the risk of insolvency loss for financiers and 

therefore increase the cost and/or reduce 


25


the availability of credit for companies. 17 

Significantly, however, financiers retain the 

ability to self protect under the reforms 

by negotiating security for their loans and 

exercising their security rights (which do 

not require termination of a contract with a 

company pursuant to an ipso facto clause) 

upon insolvency. 

Other insolvency reforms 

The Productivity Commission also 

makes a range of other reform 

recommendations, including: 

1. Allowing voluntary administration to 

continue only if, within one month of 

being appointed, the administrator 

certifies there are reasonable grounds to 

believe the company is capable of being a 

viable business; 18 

2. Preventing enforcement actions during the 

formation of a scheme of arrangement; 19 

3. Allowing directors to conduct ‘prepositioning’ 

work to sell a company or 

parts of its business with the benefit of 

various independence and contractual 

review provisions absent from the United 

Kingdom’s ‘pre-pack’ process; 20 and 

4. Creating a streamlined ‘small liquidation’ 

process to minimise regulatory burdens 

where few assets are at stake. 21 

Stakeholders have generally supported these 

reforms on the basis that they will achieve 

greater efficiency in the insolvency process 

and increase the rate of corporate and 

business rescue. 

The government should also consider other 

amendments to promote those outcomes. 

For example, creditors advancing funds to 

a distressed company could be guaranteed 

‘super priority’ over corporate assets and 

secured creditors’ enforcement rights could 

be restricted if creditors could be assured 

of ‘adequate protection’ (thereby limiting 

the impact on the cost and supply of credit). 

Those mechanisms are already part 

of the United States Chapter 11 

reorganisation procedure. 

While the Productivity Commission sensibly 

recommended against the wholesale 

adoption of a Chapter 11 restructuring 

framework in Australia, due to excessive 

costs, delays and cultural differences, 22 it did 

recognise the merit in further investigating 

the use of ‘certain components of the Chapter 

11 system to achieve the desired reform 

outcomes.’ 23 This is consistent with the 

previous recommendations of the Financial 

System Inquiry 24 and the Senate Economics 

References Committee. 25 

Concluding remarks 

The government’s proposed insolvency safe 

harbour and ipso facto reforms have received 

widespread support from peak professional 

organisations and practitioners as an effective 

way to enhance the efficiency of Australia’s 

insolvency laws and increase the likelihood of 

rehabilitating distressed but viable companies 

and businesses for the benefit of all corporate 

stakeholders. 

During the forthcoming public consultation 

process, it is hoped the government will 

also adopt additional reforms to voluntary 

administration and schemes of arrangement 

to further promote corporate and 

business rescue. 

With the impending fundamental change 

to Australia’s insolvency regime, legal and 

insolvency practitioners should have a 

thorough knowledge of the government’s 

proposed reforms, and remain actively 

involved in the consultation and 

implementation process over the next 

18 months. 

Footnotes 

1 Agenda, 7. 

2 Report, 319, 338-341, 373, 378-387, 394-398. 

3 At that time, ARITA was known as the Insolvency 

Practitioners Association of Australia (IPA). 

4 Andrew Keay, ‘Directors’ Duties to Creditors: Contractarian 

Concerns Relating to Efficiency and Over-Protection of 

Creditors’ (2003) 66(5) The Modern Law Review 665, 681. 

5 Corporations Act 2001 (Cth), ss 588H(5), 588H(6). 

6 Corporations Act 2001 (Cth), ss 206A(1), 206B(3). 

7 LCA, IPA and Turnaround Management Association, ‘Joint 

Submission in Relation to Insolvent Trading Safe Harbour 

Options Paper’, 2 March 2010, 8. 

8 LCA Business Law Section, ‘Submission on Aspects of the 

Productivity Commission’s Issues Paper – Business Set-Up, 

Transfer and Closure, December 2014’, 20 February 2015, 3. 

9 LCA, IPA and Turnaround Management Association, ‘Joint 

Submission in Relation to Insolvent Trading Safe Harbour 

Options Paper’, 2 March 2010, 3-4. 

10 Australian Government, ‘National Innovation and Science 

Agenda: Welcome to the Ideas Boom, Insolvency Reform 

Fact Sheet’, December 2015. 

11 Report, 386-387. 

12 Report, 397-398. 

13 Report, 383. 

14 Report, 397. 

15 Report, 398. 

16 Report, 395-398. 

17 See the concerns expressed by Australian Bankers 

Association chief executive Steven Munchenberg after the 

reforms were announced, cited in: Glenda Korporaal, ‘Big 

Changes to Insolvency Law Planned’, The Australian, 8 

December 2015. 

18 Report, 377. 

19 Report, 399. 

20 Report, 388-392. 

21 Report, 403-409. 

22 Report, 370-372. 

23 Report, 372. 

24 Financial System Inquiry, ‘Final Report,’ November 2014, 

266. 

25 Senate Economics References Committee, ‘Performance 

of the Australian Securities and Investments Commission,’ 

June 2014, 446-449. 


acla.acc.com 


CARMEL MULHERN 

2015 CORPORATE LAWYER OF THE YEAR 

Ireland and farming; technology and law. 

Different areas, but they have one thing in 

common: They are critical to who Carmel 

Mulhern is, professionally and personally. 

Carmel, Group General Counsel at Telstra 

Corporation Limited, was recognised in 2015 

for two prestigious ACC Australia awards – 

Corporate Lawyer of the Year and Legal Team 

of the Year – Large. 

“I feel so honoured to have received this and 

very humbled,” she says. “I think receiving 

such a prestigious award really reflects the 

outstanding work of my team, and it’s lovely 

to have that recognition.” 

Hong Kong-based Simon Brookes, Deputy 

Group General Counsel at Telstra, also says he 

is honoured to be part of a winning team. 

“We are thrilled to win the ACC in-house 

team of the year award,” Simon says. “Our 

focus is doing the best for our customers and 

shareholders, and meeting our professional 

responsibilities as a high-performing team. 

To get this additional recognition from our 

peers is a wonderful bonus.” 

The daughter of parents who left Irish farm 

life in the 1960s for a more urbane Australian 

existence, Carmel says her family always 

just wanted her to be happy, and she partly 

pursued becoming a lawyer to make them 

proud. She attended the University of 

Queensland where her natural abilities in 

English and public speaking prepared her well 

for her legal studies. 

One of her first jobs was as a prison duty 

lawyer at the historical Brisbane Jail — known 

as “Boggo Road Gaol”. It was a position she 

held while still at university, and as Carmel 

reflected back, she praised her youthful 

naiveté. Because of it, she wasn’t intimidated 

by the grim surroundings, which allowed her 

to be open to picking up some important 

skills she still uses today. 

“I certainly wasn’t fearful then,” she says. 

“I would walk across the exercise yard, sit 

inside an interview room, and give legal 

advice to prisoners, some who were in jail for 

things like murder. But I got to really know 

about people, and learn about family history 

as well.” 

Going from a prison environment to Telstra, 

Australia’s leading telecommunications and 

information services company with offices 

worldwide, involved a path Carmel says even 

she couldn’t have predicted. She adds it’s 

important to take opportunities as they come 

along, even if they don’t quite seem what 

you thought. 

“If someone else is prepared to back you or 

give you an opportunity, then you should 

back yourself,” she says. “Don’t hold yourself 

back just because you might not feel you 

have the requisite experience. Take ownership 

of making your own opportunities 

proactively and don’t be afraid to approach 

people for advice.” 

With the telecommunications field growing, 

and about 90 percent of Australian residents 

who own smartphones checking them as 

soon as they wake up, Carmel says technology 

is embedded in every part of our lives. 

Some things that lawyers in this area need 

to constantly monitor – whether they are in 

Australia or any other part of the world – are 

privacy issues, cybersecurity, and how the 

impact of technology affects people since it’s 

been so widely integrated at an outstandingly 

fast pace. 

“It’s not enough to just say you went to law 

school. You need to keep educating yourself, 

raising the bar, being agile so that you can 

see what is coming over the horizon. Which 

means keeping up-to-date not only on the 

law, but what is happening in technology,” 

Carmel says. 

It’s an industry that’s moving very quickly, 

she says, and “anyone working for a 

telecommunications company, including 

lawyers, needs to make sure their customers 

are brilliantly connected.” 

She feels the awards highlight the Telstra 

team and what they strive toward in their 

professional roles. Besides the actual 

telecommunications work, the team 

endeavors to make a difference through 

volunteering and doing pro-bono work, 

promoting flexibility, and advocating for 

diversity and wellbeing, both internally and in 

the legal profession as a whole. 

“These awards tie a nice bow around all 

these things that we are so passionate about,” 

she says. 

Carmel Mulhern 

Carmel is the Group General Counsel at 

Telstra Corporation Limited. She is also the 2015 

ACC Australia Corporate Lawyer of the Year. 

And being recognised by fellow ACC 

members from across the globe is a truly 

gratifying thing too. 

“I received a text from an in-house 

counsel friend in the United States, and she 

said she saw the team and me on the ACC 

website,” she said. “It makes you feel chuffed 

to be recognised.” 


27


WHERE TO NEXT WHEN YOUR GRASS IS 

ALREADY GREEN: HOW TO PROGRESS 

YOUR CAREER FROM WITHIN 

This article explores the myriad of career options for in-house counsel 

Nicola Phillips 

Nicola is an Executive Consultant at Mahlab 

Recruitment (Vic). As a former lawyer, she 

thoroughly enjoys working in the profession, 

assisting lawyers who want to work in-house to 

secure great roles and build great careers. 

John Egerton 

John is the Manager, Corporate (NSW) at 

Mahlab Recruitment with extensive experience 

in searching and sourcing lawyers and 

company secretaries at all levels across various 

industries including a significant number of 

General Counsel and senior level legal positions. 

John has also successfully recruited lawyers for a 

government bodies and statutory corporations 

throughout Australia. 

In 2003, Annette Carey joined Linfox 

Logistics as Legal Counsel. In 2015, she 

was appointed Chief Executive Officer, 

with responsibility for a business that 

generates close to $2 billion in revenues and 

employs 6,500 people. Back in 1993, just 10 

years before Annette first joined Linfox, inhouse 

counsel were working hard to prove 

their value to their businesses and have a 

voice. More than 20 years later, the role of 

in-house counsel is well and truly entrenched 

and thriving. Annette is the supreme example 

of how the perception of ‘the company 

lawyer’ has transitioned from being seen as 

a roadblock, to instead being viewed as an 

inspirational leader. 

While Annette’s story is still relatively rare for a 

lawyer in Australia, there are many examples 

of lawyers who are taking on broader 

responsibilities than just legal, or moving 

into non-legal roles. Many are achieving 

this without having to leave their existing 

organisation. So how is it done? 

Lawyers are constantly seeking new 

challenges. How many times have we heard: 

How can I learn more and where am I headed 

professionally? In-house counsel consistently 

cite working close to the business as one of 

the key drivers for working in the corporate 

sector over private practice. At least 50 

percent of in-house legal teams in Australia 

are comprised of just one to five lawyers. 

So it is not long before team members can 

outgrow their roles and yearn for more. This 

applies equally to general counsel and more 

junior legal counsel. 

The expanded legal role is the most common 

way lawyers build on their expertise and 

maintain interest. Debra Tegoni is Executive 

General Manager Legal & Regulatory and 

Company Secretary of Crown Melbourne 

Limited. Debra’s responsibilities have included: 

legal, governance and company secretary, 

compliance, risk, insurance and internal 

audit, responsible gaming (part of CSR), 

specific group projects and being a part 

of the Crown Resorts Foundation Advisory 

Board (philanthropic activities). Debra was 

provided this broad array of responsibilities 

as they are viewed as being aligned to legal, 

and regulatory and compliance based in 

nature. Areas such as CSR, crisis management 

and philanthropy have evolved “through 

executive discussions around my areas of 

interest and ability to value add in a way that 

is beneficially aligned with the business needs 

and strategy.” Debra has taken on training and 

study in various areas to ensure she is “job 

ready,” including a Masters of Law and a senior 

executive MBA. 

Nevenka Codevelle at APA Group enjoys an 

expanded role comprising four functional 

areas: legal, company secretary, group 

compliance and office management. She 

is also heavily involved in external affairs. 

Nevenka welcomes broader responsibilities 

because she believes “breadth is critically 

important to understanding the business 

and the environment in which it operates, 

enabling greater contribution at a more 

senior strategic level.” If you want greater 

responsibility, the task is on you to make it 

known within your company. 

At Ramsay Health Care Limited, Group 

General Counsel John O’Grady oversees risk 

in addition to legal and company secretarial. 

For John, “The risk management role presents 

an opportunity to work closely with all key 

aspects of the business. The role of chief 

risk officer is very satisfying because one 

can develop a solid working relationship 

with senior executives as well as the risk 

management committee. “I very much 

enjoy the risk management role because it is 

focused on the future, assisting the company 

to manage both existing and emerging risks.” 

Like Nevenka, John’s advice is to “let other 

key players in the organisation know of your 

interest [beyond legal] and what you are 

doing to develop the specialist skills in that 

area such as undertaking additional course 

work. It also helps to offer to assist others in 

your area of interest, so that you have the 

opportunity of learning on the job.” 

Some organisations provide lawyers with a 

“try before you buy option” when it comes 

to taking on a non–legal role. This is usually 

achieved by way of internal secondment 

into the business. Toyota Motor Corporation 

Australia has a system of rotating employees 

across divisions and providing opportunities 

for international secondments and temporary 

assignments. For the members of the legal 

team, these opportunities provide a deeper 


acla.acc.com 

understanding of the business, and the 

opportunity to build relationships with their 

commercial stakeholders in Australia and 

abroad. Internal secondments have been 

into the HR, marketing teams and brand 

protection. At Toyota, the secondments are 

usually for six to 12 months. 

Increasingly, an organisation’s company 

secretary is legally qualified. Lynne Jensen 

is Company Secretary of Seek Limited, 

responsible for group governance. Prior to 

Seek, she was Company Secretary at Grocon, 

but she initially joined that organisation as 

General Counsel. When reflecting on the 

transition from legal to company secretary, 

Lynne notes that in many respects this 

change in career “found her” because she had 

successfully demonstrated she had broader 

knowledge and skills. Her sage advice to 

others keen to make a similar transition within 

their company is to “seize opportunities 

to show you have broader skills and can 

add value in other areas. Being involved in 

cross–functional projects can provide such 

opportunities. Sometimes just asking the right 

questions can show that you have a broader 

understanding or insight and can make a 

greater contribution to the organisation.” 

A new and progressive opportunity for 

in-house counsel seeking a non–legal role 

within their organisation is the chief of staff 

role. Kylie Castrissios is Chief of Staff to the 

Chief Information Officer at National Australia 

Bank. “It’s my job to run the CIO’s office, 

which at a basic level means I advise and 

protect the CIO. My responsibilities span all 

aspects of NAB’s technology operations, and 

mainly include leadership communications, 

corporate governance, internal and 

external stakeholder engagement, and 

implementation of NAB’s technology strategy 

and vision.” Prior to this role, Kylie was Senior 

Legal Counsel – Technology Legal at the bank. 

Kylie enjoyed the buzz that comes with being 

a big deals lawyer, but felt she had a narrow 

view of the business, advising on isolated 

tactical transactions. “I was eager to work in 

a role that would get me up on the balcony 

for a better view, and in a position where 

I could make, and influence, commercial 

decisions and be involved in development 

and execution of long term strategy.” 

The chief of staff role also offers a great 

platform for career progression to senior 

organisational leadership positions. While not 

a prerequisite to taking on the new role, Kylie 

completed the company directors course 

through the Australian Institute of Company 

Directors (AICD). While understandably 

nervous about the change initially, she says, 

“Don’t let fear hold you back!” 

After five years as Legal Counsel at Toll 

Holdings, Rebecca Stenhouse stepped across 

into the newly created business role of 

General Manager, Continuous Improvement 

and Development (Corporate). While in 

the legal team, Rebecca had worked hard 

to demonstrate she was more than “just a 

lawyer.” She had a passion for continuous 

improvement within the legal function 

and was able to transfer these skills and 

knowledge into a commercial role. She is 

now assisting the business with a company 

wide continuous improvement journey. She 

has done Lean Sigma Black Belt and will be 

undertaking the AICD company director’s 

course in 2016 to support her transition. 

“Have the right conversations with your 

sponsors and ensure they are people of 

influence,” is Rebecca’s advice to achieving a 

successful transition out of legal. While still 

in legal, try and get a seat at a business unit 

leadership table. Be seen as a contributor to 

the whole of your organisation, not just legal. 

Today’s in-house counsel want to be involved 

at a strategic level within their organisation. 

Illustrative of this is the rise of the direct 

report to CEO for general counsel and a seat 

at the executive leadership table for these 

senior lawyers. Rohan Singh joined AICD in 

2013 as Legal Counsel and ultimately held 

the position of Head of Strategy & Major 

Projects until he left the organisation in 

January 2016. “In my case, the non–legal 

responsibilities landed with me. It was 

more chance than design. When our new 

CEO commenced, he brought me across 

from the legal team into a sort of ‘chief 

of staff’ style role. He wasn’t looking for a 

lawyer necessarily but it clearly was a big 

advantage as it gave him a confidence in 

my thinking and communication skills. I 

shadowed him and assisted him to run the 

organisation. From there I was promoted into 

the strategy and projects role.” 

Rohan observes “I didn’t move organisations 

when I took up these non-legal roles, so I was 

broadly known within the organisation as the 

‘legal guy’. It was a challenge to throw off that 

stereotype and associated stigma. Lawyers are 

often seen as conservative and a hand brake. 

You can’t have your ‘strategy guy’ seen this 

way!” Some organisations are more amenable 

than others to lawyers taking on expanded 

legal or non–legal roles. Rohan urges others to 

“Find one that is! But in addition you need to 

be prepared to get out of your comfort zone 

and back yourself. Do your research, get the 

best understanding possible of the potential 

new role and then strap yourself in for a ride. 

You have to be prepared to adapt and to learn 

on the job to some degree.” 

For Annette Carey at Linfox, who is now at 

the pinnacle of her organisation, there was no 

grand plan: 

I am not a big believer in game plans and rigid 

career paths. I think it is important to take 

opportunities that come your way even if they 

are not part of a broader career plan. How 

you behave, the values you demonstrate and 

how you treat people have an impact on what 

opportunities arise. You need to build goodwill 

by being practical and responsive, and treating 

everyone at all levels of the organisation equally 

(don’t kiss up and kick down!) so that people 

want you to be part of their team. Don’t be afraid 

to step out of your comfort zone and volunteer 

to take on projects or assist in areas that are 

not legal. Ask lots of questions. Be interested in 

and respectful of the technical and commercial 

knowledge of people in line roles and try 

to understand as much as you can about 

the broader business. Finally – be authentic 

– it’s sustainable! 


29


TIPS AND INSIGHTS FOR 

IN-HOUSE COUNSEL ON 

HOW TO MANAGE STRESS 

Nancy Bryla 

Nancy Bryla has been an in-house lawyer for 

13 years. Having experienced first-hand the 

benefits of meditation and mindfulness on 

her stress levels and wellbeing, she founded 

The Light Lawyer to connect leading wellness 

teachers with those in the legal industry. The 

Light Lawyer offers innovative and lifechanging 

CPD courses. 

When was the last time you 

felt stressed out, anxious or 

overwhelmed? Sadly, it seems to 

be a default state these days, and particularly 

so for the legal profession. I’m sure you are 

aware that stress and anxiety can negatively 

impact your health and wellbeing. The 

challenge is, most secondary and tertiary 

education systems do not offer adequate 

stress reduction methods in their syllabus. 

I believe that a stress free life is possible if 

you find the right tools to help you stay in 

the present moment. In this article I reveal 

five key stress reduction methods that I 

have integrated into my life, helping me to 

prioritise my wellbeing and become a more 

conscious lawyer. 

Start meditating 

“Meditation makes the entire nervous system go 

into a field of coherence.” – Dr. Deepak Chopra 

Unless you have been hiding under a rock, you 

will have noticed that meditation has become 

mainstream. Why? Because science has 

provided us with proof of the many benefits 

that meditation has on our physical and 

emotional wellbeing. In fact, according to Dr. 

Rudolph Tanzi, a Professor in Neurology and 

the Chair of Neurology at Harvard University, 

and his co-author Dr. Deepak Chopra, a 

world-renowned pioneer in integrative 

medicine and personal transformation, 

“meditation is the most important strategy 

for reducing the stress response 

and rebalancing the mind-body system”! 1 

There are hundreds of ways to meditate and 

I encourage you to explore meditation until 

you find a style you enjoy. Some people 

practice mindfulness, some people use 

mantras, others prefer silence, or a guided 

meditation, some people surf, others run, 

walk, garden or enjoy adult colouring books. 

The key to reaping the benefits of meditation 

is consistency. And if you choose the style of 

meditation that you enjoy, then you are more 

likely to make it a consistent practice. 

Meditation has certainly helped me to 

become more resilient in stressful situations. 

I’m a calmer, more balanced person. My 

memory has improved, and I can focus 

and get things done without the need of 

a pressing deadline or stressor to get me 

there. So if you have been thinking about 

meditating, then now is definitely the 

time to learn how to meditate or reignite 

your practice. 

Sleep your way to rejuvenation 

“Sleep is the best meditation.” – Dalai Lama 

Busy professionals often overlook adequate, 

deep sleep because there are other important 

and urgent things to finish before going to 

bed. I’m afraid this myth needs to be dispelled 

because restful and adequate sleep is a key 

ingredient to wellbeing. 

Science has proven that adequate sleep can 

benefit your heart health, help you maintain a 

healthy weight, improve your memory, assist 

your creativity, boost productivity and reduce 

stress levels. 

When we are stressed our bodies release the 

stress hormone cortisol 2 , which triggers a 

fight or flight response. Cortisol is useful in 

the short term, but damaging if it continues 

to circulate in the body for a long period of 

time. Relaxation allows our bodies to return 

to a normal ‘non stress chemical’ state. If 

we are unable to relax, there is a risk of our 

stress levels becoming chronic or our body 

developing chronic disease and illness. 

Adequate sleep provides our bodies with the 

opportunity to rejuvenate. 

I used to be guilty of taking my laptop to 

bed, trying to use every spare minute I had 

to answer a few more emails or finalise some 

drafting. Many times I have fallen asleep with 

my laptop still on, and then I’d wake up with a 

very sore neck! Whether it’s a laptop, a tablet 

or a smartphone, I am sure you can relate to 

this scenario. Swapping this unhealthy habit 

for a more relaxing bedtime ritual, such as 

reading an inspirational book, listening to soft 

music or meditating, has done wonders for my 

sleep and my energy levels. 

Welcome a musical intervention 

“Music is the divine way to tell beautiful, poetic 

things to the heart.” – Pablo Casals 

Have you ever had a strong reaction to a 

song? A song can be the catalyst for an 

awesome experience. It’s actually one of the 

strongest and easiest tools we have at our 

disposal to connect ourselves to our inner 

(stress free) spirit. 

When I need to shift my energy from stressed 

out to calm I always turn to music. It refocuses 


acla.acc.com 

my being. Spend time creating a playlist to 

suit your mood: one that will ignite your spirit 

and put a smile on your face. Or perhaps a 

list of upbeat songs that you just can’t help 

but sing or dance to. Listen to it while you 

are getting ready in the morning, on your 

commute or while you are cooking dinner. 

Use it to shift your energy whenever you are 

feeling stuck, overwhelmed or down. 

Anyone can make time to listen to a song or 

two each day. Try it. 

Yoga for stress relief 

“Yoga takes you into the present moment, the 

only place where life exists.” – Anonymous 

Yoga not only benefits the physical body, it 

reduces stress, anxiety and depression. Yoga 

teacher Mandy Habener offers the perfect 

explanation of the science behind yoga for 

stress relief: 

When we practice skilfully responding to the 

‘stress’ of certain physical postures, using 

mindfulness and breath, we begin to rewire the 

brain so that our skilful response becomes an 

ingrained automatic response. We therefore 

build our resilience to stress and as a 

consequence become less stressed, healthier 

versions of ourselves. 3 

As someone who has never been the sporty 

type, and who avoided exercise at all costs 

throughout school, I was elated when I tried 

a yoga class for the first time. I realised that 

it was actually providing me with a rigorous 

workout, yet left me feeling relaxed and at 

peace. So if you have never tried yoga before, 

I dare you to have a go. You can find Hatha 

or Bikram yoga (fast paced, power) classes or 

nurture yourself through a Kripalu (slower, yin) 

class. You may be surprised at how much you 

will actually sweat! 

Practice self compassion 

“And now that you don’t have to be perfect, 

you can be goo d.” – John Steinbeck 

Now for my confession. I don’t always practice 

what I preach. There are days when I simply 

don’t want to get up early to fit in yoga 

practice. There are days when I blow off my 

meditation practice. Some nights I need to 

prioritise work over sleep in order to meet 

a deadline. But I no longer berate myself for 

choosing work over self–care because I know 

I will show up again the next day. So, my final 

insight: Practice self-compassion and give 

yourself a break. Don’t let the guilt of not 

looking after yourself outweigh the benefits 

of doing so. Because if you are not kind to 

yourself, how can you serve others? 

Footnotes 

1 See their latest book Super Genes – The Hidden Key to Total 

Well-being, Deepak Chopra, M.D., and Rudolph E. Tanzi, 

PH.D, Random House 2015. 

2 http://www.huffingtonpost.com.au/entry/ 

adrenaline-cortisol-stress-hormones_n_3112800. 

html?section=australia 

3 http://www.mandyhabener.com/blog/how-yoga 

-reduces-stress 

ACC AUSTRALIA 

MENTORING PROGRAM 

BECOME A MENTOR TODAY 

Each year, we attract a pool of quality 

mentors and mentees who undergo a 

cohesive matching process based on their 

interests, expertise and development 

aspirations. 

The program is not only beneficial for 

young lawyers starting out in their in-house 

careers; past mentors have also benefited 

enormously by making a deliberate effort 

to learn from the experience of others and 

be informed by different perspectives. 

WHY MENTOR? 

“The mentoring relationship assisted my 

own personal and career development 

in many ways. There are various 

invaluable skills to be gained as a 

mentor in mentoring another person - 

leadership, management and teaching.” 

- ACC Australia Alumni Mentor 

Apply to become a mentor at 

acla.acc.com/careers/mentoring 

ABN 97 003 186 767 


31


WARRANTIES & INDEMNITIES – 

WHERE TO DRAW THE LINE? 

Carla Degenhardt 

Carla is Special Counsel, Lawyer at Watermark. 

Carla’s experience includes leading the IP 

group in Australia for one of the world’s largest 

resources companies, and over 10 years working 

in the top tier legal practice specialising in 

litigation strategy and procedure. Carla has 

led numerous negotiations in connection with 

technology-focused agreements; developed 

and implemented legal strategy for global 

technology projects; and conducted significant 

IP litigation. 

As more industries and sectors have 

become alive to concept of IP risk, 

it is now not uncommon to see IP 

warranties and indemnities being included in 

everything from research and development 

agreements to the most routine procurement 

agreements. Notwithstanding their pervasive 

presence, it is only sometimes that IP is 

genuinely a source of significant risk in a 

transaction, i.e. the transaction primarily or 

fundamentally relates to the creation, transfer 

or licence of IP rights. 

Where IP is a material risk, the inclusion of a 

standardised IP warranty and indemnity 

clause will rarely adequately manage or 

balance risk between the parties – just 

when it is most important to effectively do 

so. In truth there is no one ‘ideal’ solution 

for management of IP risk. Such risk is best 

managed through a combination of precontractual 

acts, contractual terms and 

performance, namely by: 

• independent assessment, or due diligence, 

of the rights involved that are in existence 

and which are critical or registered; 

• customised warranties and/or indemnities 

primarily for the purpose of managing risk 

associated with rights that are not yet in 

existence; not known to be critical; or not 

registered; and 

• incorporation of mandated behaviours into 

contracts which act to mitigate IP 

risk and overreliance on the warranties 

and indemnities. 

Risks and Rights – How does the 

risk profile change depending 

on type of right? 

Different rights can be differently exposed to 

entitlement, validity and freedom to operate 

risk. For example: 

• historically, warranties as to copyright 

were fairly routinely and broadly given. 

Such a position may still be appropriate in 

relation to, for example, the creation of a 

logo, promotional campaigns or corporate 

photography or copy. Consider whether, 

however, broad warranties should be given 

routinely in relation to copyright in software 

which may include open source software? 

• warranties are often given in relation to 

patent entitlement, but what proportion of 

patentees would sensibly warrant without 

any qualification as to actual knowledge 

that their patent is valid and enforceable? 

Perhaps none but the reckless or patentees 

who have already had their rights survive a 

claim of invalidity before the court? 

IP Benefit and Risk 

The fundamental positive function of IP is to 

secure competitive advantage. It can also be 

used defensively to prevent third parties from 

using the rights granted. Typically, an entity 

which is looking to create, acquire or licence 

some form of IP is looking to: 

• maximise the certainty of maintaining the 

competitive advantage through the IP (derisk 

entitlement/ validity of rights); and 

• minimise the risk that a third party will 

at any point assert pre-existing IP which 

precludes the use of their IP (de-risk 

freedom to operate issues). 

IP Risk: Technology Development 

and Maturity 

The required scope of the warranties 

and indemnities in a contract also needs 

assessment against the stage of development 

of the technology or product in which the 

rights exist or will be created. 

In early development, the technology of 

interest and any associated rights are nascent 

or non-existent: i.e. are matters to be created. 

While one or both parties may come with 

background IP, neither party has an existing 

solution to the technology issue in question. 

As a consequence, at project commencement: 

• the risk associated with securing any 

competitive advantage is high. This risk will 

decrease as the technology develops and: 

- is exposed to the marketplace and/or 

- further market and competitive 

assessment is undertaken; and/or 

- proposed rights protecting the preferred 

technology solution are examined by 

independent IP regulators. 

• the exposure to operational risk (i.e. the 

consequence of any freedom to operate 

challenge) becomes higher. As it matures, 

technology becomes less adaptable as 

it is fixed into plant, process or products, 

making workarounds challenging or 

impossible to implement cost effectively. 

If the agreement in question relates to 

development or creation of IP, it is therefore 

necessary to assess what stake (or exposure 

to risk) each party has in the outcome of the 

agreement. If both parties are sharing risk in 

the success of a project, it is typically more 

appropriate that only light touch warranties 

and indemnities be required (for example, 

in relation to mature background IP). If one 

party is carrying all the risk of success, it would 

be expected that the contribution of the 


acla.acc.com 

party which bears no risk (and is presumably 

being paid on a full commercial basis for its 

contribution) gives more robust warranties 

and indemnities for its contribution. 

Negotiations and appropriate 

adoption of risk 

When entering into any IP focused transaction, 

the relative position, commercial exposure 

and resources of the parties should be taken 

into account when negotiating the IP risk 

that each party should bear. Any perceived 

unreasonable exposure to risk can lead to a 

complete failure of negotiations. By contrast, 

in some circumstances, the desire of one 

party (Party A) to work with another 

(Party B) can lead to Party A adopting 

a disproportionate amount of risk. The 

disproportionate exposure of Party A to IP 

risk can give rise to greater downstream 

project and IP risk for Party B, as Party A may 

mismanage or downplay issues early in the 

development process, causing the issue 

to compound. By the time issue becomes 

apparent to Party B, it may not be within the 

financial means of Party A to meet any claim 

of damages or make good on any indemnity. 

Indemnification 

Indemnities manage costs associated with IP 

exposure typically by requiring one party to 

indemnify the other for all costs associated 

with a breach of any IP warranty or other 

specified events where the promise of the 

IP (competitive advantage) or third party 

risk (freedom to operate) is not secured – in 

essence an interparty insurance arrangement. 

An indemnity can be uncapped in value, 

subject to a materiality threshold, capped by 

reference to a stated amount or a formula (e.g. 

a percentage or multiple of the payments 

made by the indemnifier to the indemnified 

under the contract). 

Any party asked to give an IP related 

indemnity should consider whether it is 

reasonable and appropriate to give one at all: 

• in light of their contribution and adoption 

of risk in the contract; and/or 

• given that a breach of warranty will give 

rise to a claim for damages in any event 

(albeit limited by factors such as remoteness 

and mitigation). 

The inclusion or not of an indemnity can 

impact on contract price. If the risk is 

material and indemnities: 

• are not included – an adjustment down of 

the contract price might be warranted to 

allow the party acquiring the benefit of the 

works under the contract to self-manage 

the IP risk; or 

• are included – an adjustment up of the 

contract price might be warranted by the 

provider of goods or services to manage 

the exposure associated with the indemnity 

(which may include the invalidation of its 

insurance policies). 

Regardless of how it is put, any indemnity 

is only as good as the indemnifier’s ability 

to meet it. If there are doubts as to that 

capacity, an agreed indemnity might need 

to be supported by a side agreement such 

as a parent company guarantee, escrow 

arrangements (if the risk is short term) 

or recourse to the shareholders (e.g. on 

acquisition of IP assets of a start-up). 

Indemnities often lead to heated negotiations 

between the legal advisers for the contracting 

parties, with the commercial advisers reluctant 

to take part in the discussions. In such 

situations, requiring commercial involvement 

in the negotiation and a broad discussion in 

relation to risk and mitigation (see below) can 

be helpful to avoid an impasse. 

If an indemnity is included with a significant 

potential value, contractual provisions 

regarding management of indemnified legal 

claims are sensible contractual inclusions. 

Once an indemnity has been triggered, 

the interests of the parties often diverge: 

one may be looking to minimise cost or 

reputational exposure, the other might be 

looking to defend the claim at any cost and 

with attendant publicity. There can also be 

significant disparity between the capacity 

of the indemnifier and the indemnified to 

manage legal proceedings, and their relative 

legal sophistication. Incorporating clear 

options or requirements for communication, 

management of claims and decision making 

will minimise disputes between indemnified 

and indemnifier allowing both parties to focus 

on resolution of the primary third party claim. 

Mitigation 

The incorporation of mitigation clauses 

setting out mandated behaviours (i.e. further 

performance obligations) into contracts can 

mitigate IP risk and avoid overreliance on any 

IP warranties and indemnities. 

There is no limit on what such mitigation 

clauses might be. For example: 

• in preference to a third party IP warranty or 

blanket indemnity, allowing the receiver of 

services to require a provider to attempt to 

secure a licence from the third party, adapt, 

replace or remove any contract output 

which is infringing third party IP. This could 

be at the election of the receiver on the 

basis that the cost of doing so is shared 

or borne by the provider. Third party IP 

indemnity is capped subject to compliance 

with the mitigation clause; or 

• requiring the provider of goods or services 

to include an IP assignment in all its 

contracts with subcontractors etc. Any 

indemnity in relation to IP entitlement will 

come into effect only if the provider has not 

met its obligations in relation to obtaining 

IP assignments. 

Typically speaking, mitigation clauses 

specify further performance obligations 

which a receiver of goods or services 

perceives to be necessary for the provider to 

undertake in order to manage a significant 

IP risk. Well crafted, such clauses lessen the 

overall IP risk and reliance on warranties and 

indemnities, and act to give both parties an 

incentive to raise and address IP risk at the 

earliest possible time. 

So next time you are negotiating IP 

warranties and indemnities, don’t solely 

focus on questions about the particular 

rights the subject of the deal. Be open to 

and initiate negotiation of warranties and 

indemnities based on the nature of the 

rights, the relationship between the parties 

and the technology maturity, remembering 

that warranties and indemnities are blunt 

instruments to use in isolation to manage 

IP risk and cost. Far better outcomes can 

be achieved by a rounded risk 

management strategy: 

• conducting due diligence on the assets on 

offer and freedom to operate; 

• incorporating customised warranties and 

indemnities; and 

• incorporating performance clauses in the 

contract which act to mitigate IP risk. 


33


UPDATE FROM THE COURTS 

Kathryn Howard 

Kathryn is a partner in Holding Redlich’s 

Dispute Resolution & Litigation group, who has 

practised in Melbourne, Tokyo and London. 

Kathryn advises both business and government 

on the full spectrum of disputes, always with a 

primary eye on implications for the client’s dayto-day 

activities both internally and externally. 

Roxanne Burd 

Roxanne is a fourth year solicitor in Holding 

Redlich’s Dispute Resolution & Litigation group, 

with a key focus on commercial matters. 

In our first column for 2016, we consider 

the continuing trend of Australian Courts 

construing insurance cover in favour of 

the insured, by reference to the statutory 

protections offered in the Insurance Contracts 

Act 1984 (Cth) (the Act). 

The Federal Court of Australia has recently 

applied section 54(1) of the Act to “an act” 

that the insured deliberately took, which 

was specifically excluded under the Policy 

and which the insurer alleged caused a 

suspension of the insurance policy. The Court 

declared that the insurer was liable to provide 

indemnity (Pantaenius Australia Pty Ltd v 

Watkins Syndicate 0457 at Lloyds [2016] FCA 1). 

This case concerned a claim for contribution 

between insurers as a result of the total 

loss of a luxury yacht, which ran aground 

in Australian waters while returning to 

Australia after competing in a yacht race from 

Freemantle to Bali. 

The owner of the yacht had subscribed to two 

policies of insurance provided by different 

insurers (Insurer A and Insurer B). Insurer A, 

which issued the first policy, provided cover in 

respect of loss occurring in Australian waters. 

The policy excluded liability in the event that 

the vessel intended to enter foreign waters, 

and provided that all cover under the policy 

would be suspended between the time when 

the vessel cleared Australian Customs for the 

purpose of leaving Australian waters and the 

time when it cleared Australian Customs upon 

its return (Suspension Clause). The owner 

was specifically offered insurance by Insurer A 

that would have covered the yacht race, for 

an additional premium, but declined. The 

owner instead took out coverage from Insurer 

B, which specifically covered the yacht race 

and the return voyage to Australia. 

Insurer B accepted the claim and provided 

indemnity for the value of the yacht and the 

cost of salvaging the vessel. Insurer A 

denied the claim on the basis of the 

Suspension Clause. 

Insurer B argued that section 54(1) of the 

Act prevented Insurer A from refusing to pay 

the claim on the basis that it could not deny 

indemnity by reason of an act of the insured 

which occurred after entry into the contract 

of insurance. 

Insurer A submitted that as the loss occurred 

prior to the yacht clearing Australian Customs 

upon its re-entry to Australia, the policy of 

insurance had been suspended and there was 

no act of the insured which enlivened section 

54(1). Hence, the insurer was not liable to pay 

the claim. 

Section 54 of the Act 

In summary, section 54(1) of the Act provides 

that “where the effect of a contract of 

insurance would … be that the insurer may 

refuse to pay a claim … by reason of some act 

of the insured … being an act that occurred 

after the contract was entered into … the 

insurer may not refuse to pay the claim by 

reason only of that act…”. An insurer may seek 

to reduce their liability to pay a claim if the 

insurer can prove that it suffered prejudice 

as a result of the act enlivening section 

54(1), however as a matter of practicality 

establishing prejudice is difficult. 

Insurer A also sought to rely on section 54(2), 

which provides that “where the act could 

reasonably be regarded as being capable of 

causing or contributing to a loss in respect 

of which insurance cover is provided … 

the insurer may refuse to pay the claim”. If 

enlivened, the onus would shift to the insured 

to prove that it did not cause or contribute to 

the loss. 

The legislative purpose of these sections 

is said to strike a fair balance between the 

interests of the insured and the insurer in 

circumstances where the literal application 

of a clause, which seeks to minimise risk, 

would have the effect of denying indemnity 

in circumstances otherwise covered by the 

policy. The controversy lies in defining the 

scope of policy coverage. 

In this instance, the two principal questions for 

the Court were whether: 

a) section 54(1) of the Act was enlivened 

such that Insurer A would not be 

permitted to refuse the claim by reason 

of the fact that the insured had not yet 

cleared Australian Customs on the return 

voyage; and if so, 

b) the failure to clear Australian Customs 

could be regarded as causing or 

contributing to the loss claimed such 

that Insurer A was entitled to refuse to 

pay the claim. 

A third question for the Court was whether 

Insurer B was entitled to itself rely on section 

54 (as distinct from the insured) so as to seek a 

contribution from Insurer A. 

The Court’s reasoning 

In construing the contract of insurance, the 

Court looked to the operative provisions to 


acla.acc.com 

determine the scope of the policy and the 

risk that the insurer sought to avoid. The 

policy was an occurrence based contract of 

insurance and therefore required that the 

event causing the loss occur within the period 

of cover, which it did. 

A key clause, in addition to the Suspension 

Clause mentioned above, provided that 

cover was only provided in relation to events 

causing loss or damage which occurred 

within: (a) “250 nautical miles off mainland 

Australia and Tasmania”; and (b) “all waters 

within Australia…”. The Court determined 

that the policy’s intent was to insure loss that 

occurred while the insured was sailing in 

Australian waters, but not to provide cover 

in respect of all journeys (ie, voyages outside 

Australian waters). 

In considering the application of section 54 

of the Act, the Court adopted the approach 

taken by the High Court in the 2014 decision 

of Maxwell v Highway Hauliers Pty Ltd and 

closely analysed whether the insured had 

committed an “act” that enlivened section 54. 

The Court held that it was the vessel’s 

departure and clearance of Australian Customs 

with the intention of leaving Australian waters 

(not the failure to clear customs on re-entry) 

that constituted the “act” upon which the 

insurer sought to deny the claim, and which 

enlivened section 54(1) of the Act. 

The Court also declined Insurer A’s submission 

that an act of the insured caused the loss 

of the yacht. The Court held that the act of 

passing Australian Customs with the intent 

of leaving Australian waters to compete in a 

sailboat race did not contribute to the damage 

and ultimate loss suffered on re-entry. Put 

another way, had the yacht remained in 

Australian waters and not cleared Australian 

Customs it may still have ran aground on the 

same reef. Accordingly, despite the terms 

of the Suspension Clause and the Insured’s 

failure to pay the additional premium, Insurer 

A was prevented from denying liability and 

ordered to make contribution to Insurer B. 

What does this mean for you? 

This decision illustrates the extent to which 

Australian Courts are prepared to use section 

54 of the Act to narrow the operation of 

exclusions in a policy of insurance, with a view 

to providing greater fairness, even 

where insurers are seeking contribution 

amongst themselves. 

It is apparent that the Court will require the 

very act that enlivens section 54 to be the act 

that directly causes the loss, if the insurer is 

to resist indemnity; here, one could say that 

the boat would not have been in the waters 

but for participating in the race that was 

excluded from the policy. However, this 

approach was rejected. 

Accordingly, insurers should ensure that the 

subject matter of their policies do not overlap 

with the risk sought to be excluded. Here, the 

subject matter of the policy was said to be 

events causing loss within Australian waters. 

Realistically, insurers should ask whether the 

act that is sought to be excluded would cause 

the loss that the insurer seeks to avoid. If not, 

the premium should reflect the actual risk to 

the insurer. 

The application of section 54 of the Act 

continues to be a live issue and is currently 

before the Supreme Court of Victoria. Watch 

this space… 

In-house practice can present challenges you 

probably didn’t encounter in private practice. 

SHARPEN YOUR SKILLS WITH THE 

LLM (APPLIED LAW) MAJORING IN 

IN-HOUSE PRACTICE 

NEXT SEMESTER COMMENCES 

7 MARCH 2016 

EMAIL US 

alp@collaw.edu.au 

CALL US 

1300 506 402 

VISIT US 

collaw.edu.au/alp 


35


AN OVERVIEW OF THE STATE OF THE 

LEGAL PROFESSION IN AUSTRALIA 

AND ACROSS THE ASIA PACIFIC 

REGION IN 2016 

Sandra Gibson 

Sandra is the Managing Director, Australia 

for AdventBalance. She has over 20 years’ 

experience in finance, operations, HR and 

information management in diverse industries 

including Australia’s largest ASX listed 

agribusiness and national and international law 

firms in Australia and Canada. 

Asia Pacific is vast with exceptionally 

diverse legal, regulatory and 

economic environments and making 

predictions about the future of the legal 

profession for the entire region is challenging. 

However, we believe there are a number of 

key trends that have emerged over the 

past few years particularly in Australia 

and Asia, which will influence and shape 

the region’s legal markets in 2016. These 

are globalisation, deregulation and the 

burgeoning of alternative services providers 

and innovative solutions. 

Significant economic and regulatory factors 

underpin these trends and they are reshaping 

the way legal services are both delivered and 

offered to clients. Here’s our thoughts about 

each trend and how they may impact 

in-house legal teams going forward: 

Mergers and the emergence 

of the global firm 

Throughout Asia, foreign law firm leaders 

remain optimistic about legal market growth 1 

based on the overall macro-economic 

conditions in China and South East Asia. 

Despite a recent slowdown in Chinese 

GDP, there was an increase in cross-border 

deals, with M&A activity in the Asia-Pacific 

region (excluding Japan) reaching a peak in 

2015 2 . In addition, the establishment of the 

ASEAN Economic Community in 2015 has 

contributed to rising economic integration 

among Asian countries 3 , which has a 

standardising effect on cross-border trade and 

regulatory practices and mechanisms. 

However, regulatory issues and competitive 

challenges from entrenched domestic law 

firms are moderating that optimism. This 

has led to a climate where some foreign law 

firms have chosen to expand into the region 4 

through acquisition or mergers while others 

have pulled back 5 , particularly from China, 

in the face of stiff price competition and 

challenging regulatory hurdles 6 . 

During 2015, a record number of law firm 

mergers and acquisitions occurred worldwide 

– 91 in all. This is the largest number of law 

firm mergers on record, according to Altman 

Weil 7 , a US-based management consulting 

firm to the legal services sector. An increase in 

the complexity and pace of economic activity 

has driven the drive to consolidate, resulting 

in some truly international law firms – global 

behemoths promising to seamlessly serve the 

needs of clients across borders globally. 

For example, in 2012 King & Wood Mallesons 

was the first-ever merger of a Western and 

Chinese law firm 8 , adding UK law firm SJ 

Berwin in 2013. In 2015, Dentons merged 

with China’s Dacheng 9 , creating the world’s 

largest law firm. Regionally, Dentons have 

continued during the course of 2015 to merge 

with Australia’s Gadens and Singapore’s oldest 

law firm Rodyk. When these recent Dentons 

mergers are finalised, the firm’s headcount will 

exceed 7,000 lawyers. 

The promise of these mega mergers is 

consistent, seamless, quality global services 

– easy to say but hard to achieve. However if 

they are successful, the simplicity of a single 

point of contact for all legal services will no 

doubt be very appealing to multinational 

corporate counsel. This will be to the 

detriment of firms with less of a unified 

global footprint. 

A by-product of these mergers is increased 

partner mobility – between jurisdictions 

and firms. The ability to offer clients a global 

and mobile workforce and lawyers a global 

workplace is a significant benefit of the global 

firm. International law firms therefore typically 

facilitate and encourage movement of lawyers 

between jurisdictions. As a consequence, 

partners are moving jurisdictions more freely 

than ever before. It used to be the case that 

lawyers typically did their overseas stint 

pre-partnership and returned home to make 

partnership. Now the global firms are moving 

partners to bolster skills needed in far flung 

locations, to encourage integration and cross 

fertilisation or to open new offices and follow 

client activities. This offers exciting career 

options to adventurous partners and the 

deepening of global expertise in the firms 

that will surely benefit clients. 

A less positive product of these mergers, 

however, is the noticeably increased 

movement of partners between firms in the 

last decade. It appears that if you change the 

original brand, loyalty can wane. Perhaps also 

the tumult inherent in mergers in effect allows 

partners to consider a different future. This 

creates an interesting dilemma for corporate 

counsel – whether to follow the partner or 

stick with the known brand. Anecdotally it 

seems more and more are prepared to follow 

the partner. 

Deregulation and Growth in 

Alternative Services Providers 

In the Asia Pacific region, deregulation of the 

legal industry is occurring apace, however 

at different rates and creating different 

opportunities. For example, the Ministry of 

Law in Singapore approved ABS (alternative 

business structures) in 2014. This permits 

non-lawyer ownership of up to 25% of legal 

services providers. In Japan and Korea 10 , a 

liberalisation of legal markets 11 to permit more 

foreign law firm participation, coupled with 

an expansion of the number of law graduates 

entering the workforce, has helped foreign 

firms gain greater market share. Throughout 


acla.acc.com 

the region the opening up of markets to 

foreign law firms has been in the wind for years 

and we are likely to see more opportunities for 

foreign law firms in Malaysia 12 and India 13 . It is 

not all plain sailing, however,there has been a 

push-back in Korea 14 to the final phase of legal 

market liberalisation. 

This deregulation has also led to the 

emergence of new firms with different 

business strategies aggressively striving to 

provide corporate counsel with a wider 

variety of options. 

There has been a perception that Australia 

and the Asia Pacific region lagged behind 

the rest of the world in legal innovation 

but according to the Legal500 15 today the 

reality is different. In Australia, Singapore 

and Hong Kong in particular, a group of new 

legal services companies utilising alternate 

business structures, new pricing models 

and technologies to optimise services, 

processes and new client development 

have sought increasingly to take market 

share from traditional law firms. These are 

legal technology startups, NewLaw firms 

championing secondments and alternate 

service delivery, and legal process 

outsourcing companies (LPO’s). In addition, 

some traditional law firms have adopted 

NewLaw-style service divisions 16 in an effort to 

meet the needs of corporate counsel seeking 

flexible, price competitive secondments and 

other services. 

NewLaw firms such as AdventBalance have 

been able to create virtual teams that provide 

greater flexibility for lawyers and corporate 

counsel alike in when, where and how legal 

services are delivered – rendering greater cost 

savings from these innovative solutions as 

compared to their traditional law firm rivals. 

And tech-based firms like Australia’s LawPath 

and Hong Kong-based Dragon Law are 

forging new, cost effective technology-based 

solutions for clients. Notably, these options 

have created a new dynamic for lawyers 

where career options abound 17 , from flexible 

NewLaw careers to even more entrepreneurial 

legal startup endeavours. 

Australia’s Crowd & Co and LegalVision 

and Singapore-based Asia Law Network 

have sought to harness the power of the 

internet to connect lawyers to clients via a 

variety of creative online strategies including 

content marketing and proprietary or public 

matchmaking portals. 

Many traditional partnership law firms have 

great difficulty being innovative, which 

is one of the main reasons for the rise of 

client-centric NewLaw firms. A case in point 

is a recent study conducted by ALM Legal 

Intelligence 18 , outlining how general counsels 

want alternative fee arrangements with 

outside counsel but that many traditional law 

firms are not responding to these demands 

effectively. NewLaw firms have been adept at 

addressing this gap between traditional law 

firms and the needs of the corporate counsel. 

This growth in new entrants to the Asian and 

Australian legal markets – foreign law firms, 

NewLaw providers, outsourcers and IT legal 

solutions providers throughout the region 

– gives corporate counsel significantly more 

choice and should lead to cost effective and 

better legal outcomes. 

In conclusion, growing competition amid a 

rapidly changing legal landscape means firms 

are looking for new avenues to effectively 

compete with one another in a crowded 

legal marketplace. 

As Eric Chin 19 , management consultant to the 

region’s professional services firms 

has outlined: 

“Disruptive innovation should put the client 

service experience at the center of change. We 

can anticipate a ‘kaleidoscope future’ where 

different types of legal services providers have a 

specified place in the market. Law firms of the 

future will be characterised by different service/ 

business models for different tiers in the market.” 

This has been our experience at 

AdventBalance. The rapidly evolving legal 

marketplace in Australia and Asia is helping 

to change corporate counsel buying 

behavior as the option of unbundling legal 

services providers them with a menu of 

service options they have not previously 

had. In addition, the deregulation of Asian 

legal markets will facilitate access to new 

providers and increased competition will drive 

improved service delivery. The rise of NewLaw 

and other innovative businesses promise to 

bring greater choice, more customer-focused 

service and competitive pricing options to 

corporate counsel in Australia and Asia. 

Footnotes 

1 Stuart Fuller of King & Wood Mallesons on Vereins and 

Succeeding in the Chinese Legal Market, by David J. 

Parnell, Forbes, July 20, 2015: http://www.forbes.com/ 

sites/davidparnell/2015/07/20/stuart-fuller-king-woodmallesons-on-vereins-chinas-legal-market/#504354f72164 

2 MergerMarket Global and Regional M&A: 2015, 

January 5, 2016 http://www.mergermarket.com/pdf/ 

MergermarketTrendReport.2015.LegalAdvisorLeague 

Tables.pdf 

3 Doing Business Across Asia: Legal Convergence in an Asian 

Century: International Conference and Launch of the Asian 

Business Law Institute, 21-22 January, 2016, Singapore: 

http://www.legalconvergenceasia.com/ 

4 Morgan Lewis to Combine with Stamford Law in Singapore 

to Establish Major Asian Hub, Morgan Lewis Press Release, 

March 15, 2015 https://www.morganlewis.com/news/ 

morgan-lewis-to-combine-with-stamford-law-insingapore-to-establish-major-asian-hubnews#sthash. 

twkT3IBv.dpuf 

5 Fried Frank is Closing Offices in China: Business of Law, 

Bloomberg Business, by Ellen Rosen, January 20, 2015 

http://www.bloomberg.com/news/articles/2015-01-21/ 

fried-frank-is-closing-hong-kong-office-business-of-law 

6 The Legal 500: China Legal Market Overview: http://www. 

legal500.com/c/china/legal-market-overview 

7 Law Firm Mergers Rose Again Last Year by Elizabeth Olson, 

New York Times DealBook January 7, 2016 http://www. 

nytimes.com/2016/01/08/business/dealbook/law-firmmergers-rose-again-last-year.html?_r=2 

8 SJ Berwin merges with King & Wood Mallesons in Asia 

push, Financial Times, by Caroline Binham July 31, 2013 

https://next.ft.com/content/ea9ce7c6-f9d2-11e2-b8ef- 

00144feabdc0 

9 Dentons to merge with Dacheng of China to Create 

World’s Largest Law Firm, by Neil Gough, January 27, 

2015, New York Times DealBook http://dealbook.nytimes. 

com/2015/01/27/dentons-to-merge-with-dacheng-ofchina-to-create-worlds-largest-law-firm/?_r=0 

10 Nuno Garoupa on Reforming Legal Professions In East Asia, 

by Larry Ribstein, 20 September 2011, Truth on the Market 

Blog http://truthonthemarket.com/2011/09/20/nunogaroupa-on-reforming-legal-professions-in-east-asia/ 

11 Liberalizing Trade in Legal Services under Asia-Pacific FTAs: 

The ASEAN Case, by Pasha L. Hsie, Journal of International 

Economic Law, 2015, 18, 153–185 doi: 10.1093/jiel/jgv011 

12 How the UK has helped to liberalise the Malaysian Legal 

Services Sector for foreign firms by Winnie Seow, Blog of the 

Foreign and Commonwealth Office, 22 June, 2015 http:// 

blogs.fco.gov.uk/winnieseow/2015/06/22/malaysianlegal-sector/ 

13 Why foreign law firms are most likely to enter India now 

(or never): An investigation into the realities of legal policy, 

lobbying & backroom talks by Kian Ganz, LegallyIndia, 3 

March, 2015: http://www.legallyindia.com/Law-firms/ 

legal-market-liberalisation-investigation-into-lobbyingand-policy 

14 Foreign firm’s success stirs liberalization fears, Korea 

JoongAng Daily, Jan 23, 2016: http://koreajoongangdaily. 

joins.com/news/article/Article.aspx?aid=3014284 

15 Green Shoots: The Growth of NewLaw in Asia Pacific. GC 

looks at the emergence of alternative legal service providers 

in Asia Pacific, by Catherine Wycherley, The Legal 500, 

Winter Issue, 2015 http://www.legal500.com/assets/pages/ 

gc/winter-2015/green-shoots-the-growth-of-newlaw-inasia-pacific.html#sthash.LI6EMP5X.7IMbrBF9.dpuf 

16 UK Firms Eye Axiom-Like Outsourcing Biz in Asia, by Tom 

Brennan, The Asian Lawyer, August 17, 2015: http://www. 

international.law.com/id=1202734873341/UK-Firms-Eye- 

AxiomLike-Outsourcing-Biz-in-Asia#ixzz3zX4hebur 

17 Green Shoots: The Growth of NewLaw in Asia Pacific. GC 

looks at the emergence of alternative legal service providers 

in Asia Pacific, by Catherine Wycherley, The Legal 500, 

Winter Issue, 2015 http://www.legal500.com/assets/pages/ 

gc/winter-2015/green-shoots-the-growth-of-newlaw-inasia-pacific.html#sthash.LI6EMP5X.7IMbrBF9.dpuf 

18 Your Clients Want Alternative Fees: Is Your Firm Ready? 

by Chris Johnson, The American Lawyer, Aug, 24, 2015: 

http://www.americanlawyer.com/id=1202735048162/ 

Your-Clients-Want-Alternative-Fees-Is-Your-Firm- 

Ready#ixzz3zXCGNKeP 

19 Eric Chin LinkedIn profile: https://au.linkedin.com/in/ericchin-06019017, 

as cited in Legal Innovation takes centerstage 

in Asia-Pacific by John Grimley, Asia Law Portal, 

August 23, 2015: http://asialawportal.com/2015/08/23/ 

legal-innovation-takes-center-stage-in-asia-pacific/ 


37


WHEN THE COURT WILL FIX 

YOUR MISTAKES: SECTION 1322 

IN THE HIGH COURT 

Mark Gerus 

Mark is a partner in Gilbert + Tobin's Litigation 

group. Mark specialises in litigation for mining 

and petroleum companies and provides 

assistance and advice on complex contentious 

and strategic issues in the resources sector. 

Tim O’Leary 

Tim is a partner in Gilbert + Tobin’s Litigation 

group. Tim specialises in corporate, commercial 

and resources litigation, particularly for mining 

and petroleum companies. He acts for clients 

in relation to contractual disputes, insolvency 

disputes, regulatory investigations and 

Corporations Act matters, including schemes 

of arrangement. 

Section 1322 of the Corporations Act 2001 

(the Act) provides that a proceeding 

under the Act is not invalidated because 

of any procedural defect unless that defect 

causes substantial injustice. A Court can 

make orders under section 1322 to deal with 

omissions, errors, defects and irregularities, 

including an order that acts or matters 

that contravene the Act or a company’s 

constitution are not invalid “by reason of any 

contravention” of the Act or constitution. 

In Weinstock v Beck 1 the High Court held that 

the words “by reason of any contravention” 

do not provide any basis for distinguishing 

between what cannot be done at all under 

the Act or constitution of a company and, on 

the other hand, what can be done but has not 

been done validly. This is significant because 

it means that an assessment of acts that can 

potentially be the subject of an order should 

be conducted inclusively and applying the 

broadest possible definition of “contravention”. 

The decision in Weinstock v Beck 

In Weinstock the relevant conduct by Mr 

Weinstock was to exercise a power that he 

did not have. On 30 July 2003, Mrs Weinstock 

was appointed as an additional director of 

LW Furniture Consolidated (Aust) Pty Ltd by 

Mr Weinstock, her husband. Mr Weinstock 

had been a director of the company. While 

he had acted as director for some 30 years, 

his appointment had lapsed on 31 December 

1973 by operation of the company articles. 

Ms Beck, who had also been a director of 

the company, applied for an order that the 

company be wound up on the basis that 

it was just and equitable to do so because 

it had no directors and no means of validly 

appointing directors. 

At first instance, the Court dismissed the 

winding up application and made an order 

under section 1322(4)(a) that Mrs Weinstock’s 

appointment as a director was not invalid by 

reason of the fact that Mr Weinstock did not 

hold office as a director at the time of the 

appointment. Justice Barrett accepted that 

Mr Weinstock’s purported appointment of 

Mrs Weinstock was not properly authorised 

(because Mr Weinstock was not a director at 

that time), and was therefore a “contravention” 

of the constitution. His Honour noted the 

significance of this conclusion. 

Further, the contravention here was a matter 

of substance rather than of form or procedure. 

That is, the appointment of Mrs Weinstock 

was not defective, but was a nullity (in that 

there had not been any appointment) 2 and so 

it was necessary to consider whether section 

1322(4) could apply. Justice Barrett noted that 

the section provides expressly that the court is 

given power to declare “not invalid” that which 

is in truth “invalid”, so that a case of nullity is 

clearly covered 3 . 

Justice Barrett’s decision was overturned by 

the NSW Court of Appeal. A majority of the 

Court of Appeal determined that an applicant 

must bring themselves within the language 

of section 1322, and the acts of somebody 

who had never been validly appointed could 

not properly be considered a “contravention”. 

The majority (Sackville AJA and Young JA) 

noted that there was no procedure that 

Mr Weinstock could have validly used to 

appoint her under the Act or the company’s 

constitution, and that section 1322 had to be 

read to exclude the ability to validate acts that 

could not have been validly done by following 

any procedures in the Act or the company 

constitution 4 . Young JA noted that without 

such a restrictive reading, section 1322 “would 

cover almost every invalid action in the face of 

the express limitation in s1322(6)” 5 . 

The minority in the Court of Appeal (Campbell 

JA) held that there was no basis for imposing 

such a limitation on section 1322(4) 6 , and to 

do so would be contrary to High Court 

authority that provisions conferring 

jurisdiction or granting powers to a court 

are not to be read by making implications or 

imposing limitations which are not found in 

the express words 7 . 

The High Court’s approach 

in Weinstock 

The High Court took a similar approach to 

Campbell JA in the Court of Appeal and 

held that the section should be applied 

pragmatically. Chief Justice French stated that 

it is not only the evident purpose of section 

1322(4)(a) but its field of operations which 

requires the broadest available construction 

of “contravention”. His Honour also noted that 

it is not in the public interest that the validity 

of decisions made in relation to corporations 

be “unduly vulnerable to innocent errors 

which can be corrected without substantial 


acla.acc.com 

injustice to third parties” 8 . Justices Hayne, 

Crennan and Kiefel held that the provision 

is not to be read by making implications or 

imposing limitations which are not found in 

the express words 9 . 

Chief Justice French rejected a submission 

that the ordinary meaning of “contravention” 

is an infringement, violation or transgression 

of some negative prohibition or positive 

requirement, and said that its interpretation 

should not be limited by reference to “a 

subset of contraventions which attract 

civil liability nor by reference to that subset 

which can be characterised as a ‘failure’ to 

do something” 10 . His Honour also rejected a 

submission that while section 1322(4) could 

apply where there had been noncompliance 

with a necessary condition for the exercise of 

a power, it could not apply where a person 

purported to “exercise a power which he 

simply does not have”. The joint judgment 

concurred that the words “by reason of any 

contravention” provide no basis for drawing a 

distinction between what cannot be done at 

all under the Act or under the constitution of 

a company and what can be done but has not 

been done validly 11 . Indeed, the distinction 

cannot be drawn when the premise for 

applying section 1322(4) was that what has 

been done was invalid. 

Chief Justice French stated that the 

distinction was “at best difficult” and “at odds 

with the legislative history” 12 . Accordingly, 

the High Court held that the appointment by 

Mr Weinstock of Mrs Weinstock as a director 

of the company (that is, a power that Mr 

Weinstock did not have) was within the 

scope of the remedial power conferred by 

section 1322(4)(a). 

The power to make orders under section 

1322(4)(a) is not in the nature of a general 

absolution for all past errors, and does not 

authorise the making of an order declaring 

that an impugned act, matter or thing is valid. 

Rather it allows a determination that the act, 

matter or thing done “is not invalid” by reason 

of a provision of the Act or a provision of the 

constitution of a corporation 13 . 

Such an order can be sought by a party 

fearing or suspecting invalidity on such a 

ground or, as in Weinstock, in response to an 

allegation of invalidity. A declaration is limited 

to overcoming invalidity flowing from a 

particular contravention. 

The application of section 1322 

by the Courts 

Contraventions arising from non-compliance 

with governance requirements provide a 

good example of the Court’s readiness to 

exercise its power under section 1322 of the 

Act. In Re Clinical Cell Culture Ltd 14 the applicant 

failed to correctly alter its financial year end to 

synchronise with another group entity, with 

the effect that it failed to lodge its statutory 

reports and to hold its annual general meeting 

in time. The officers erroneously but honestly 

believed that the change could be effected 

by shareholder vote at the annual general 

meeting. These breaches meant that the 

company was not entitled to rely on relevant 

ASIC class orders, and shares had been issued 

without a prospectus. The Court was satisfied 

of the inadvertent and innocent nature of the 

various breaches and relieved the officers of 

civil liability, validated the shares and extended 

time to enable compliance with the Act. 

The Court has often been asked to extend 

time under section 1322(4)(d), and to 

overcome a failure to comply with sections 

723 and 724 of the Act, in circumstances 

where ASIC will not grant relief to remedy the 

breaches 15 . If an application for quotation of 

securities issued under a prospectus is not 

lodged within 7 days after the date of the 

prospectus, the issue of the securities will be 

void and the company must return money 

received from persons subscribing for shares. 

The Court has dealt with varied circumstances 


39


where company secretaries have been 

delegated by the company’s board to perform 

the urgent task of lodging prospectuses, 

processing applications for securities and 

lodging quotation applications. The reasons 

for the late lodgement have included 

inadvertence 16 , an honest but mistaken 

belief as to the requirements of the Act and 

the ASX Listing Rules 17 and even because of 

solicitor’s error 18 . The Court has made orders 

extending time where such an order is in the 

interests of subscribers and the company, and 

in some cases where the securities have been 

admitted to quotation and traded 19 . 

Relief regarding what cannot be 

done under the Corporations Act 

or company constitution 

As noted above, the High Court held that 

the words “by reason of any contravention” 

provide no basis for drawing a distinction 

between what cannot be done at all under 

the Act or company constitution and what can 

be done but has not been done validly. The 

recent decisions of Re Golden Gate Petroleum 

Ltd 20 and Re Silver Lake Resources Ltd 21 are 

pertinent examples of the power under 

section 1322(4)(a) being applied to instances 

of what cannot be done under the Act. 

In each of the Golden Gate and Silver 

Lake decisions, the Court ordered that 

sales of securities that had been made in 

contravention of sections 707(3) and 727(1), 

in that there had been no disclosure by the 

company and no compliance with section 

708A, were not invalid by reason of the 

company’s failure. In Golden Gate, the Court 

held that although the requirements of 

section 708A regarding disclosure were not 

met prior to the offer for sale of some of the 

company’s options, the public policy of the 

Act would not be undermined in that case if 

any sale transactions of the options between 

the date of the offer and the date that trading 

was suspended were validated 22 . The Court 

noted that investors had available to them 

comparable information to that which would 

have been made available to them had the 

company complied with section 708A(11) 

when the securities had been offered for sale. 

On that basis, Justice McKerracher considered 

that the policy of adequate disclosure to 

investors “was met in this case informally, but 

not formally” 23 . 

Further, in both decisions, the Court ordered 

that sellers of the securities be wholly 

relieved of any civil liability arising from the 

contravention 24 . In Golden Gate the Court 

observed that persons who subsequently 

offered the company’s options for sale 

during the period when no disclosure had 

been made are likely to have done so in 

good faith and in reliance on the company’s 

representations to the effect that offers for 

sale did not require disclosure under section 

707(3) of the Act due to an exemption under 

section 708A 25 . Further, it was difficult to 

identify the persons to whom the options 

were transferred during the relevant period, 

and they were unlikely to have known that 

they were acquiring options in relation to 

which disclosure had not been given: that is, 

having regard to all of the company’s options 

on issue, it would be difficult to “unscramble 

the egg”. 

It is notable finally that in both the Golden 

Gate and Silver Lake decisions, the companies 

did not request ultimately that the Court grant 

relief from potential liability to the company 

and its servants, and it’s likely that ASIC would 

have opposed such relief. The rights of any 

person who may have been affected by the 

error were preserved for a limited period 

following the making of the Court’s orders. 

The exercise of the Court’s discretion 

The Court has acknowledged that a refusal 

to grant relief on such applications would 

inevitably cause additional and wasted 

costs. But Courts express concern with 

any appearance of recklessness and have 

warned that non-compliance based on a 

risk assessment that a company could avoid 

its obligations would be a factor weighing 

heavily in the balance against an extension 26 . 

Ancillary orders have sometimes been made 

that the costs of the Court applications not be 

paid out of Company funds, reflecting that the 

error rests with officers of the company 27 . 

The Court will also be careful to take into 

account the interests of parties that may 

be affected, including whether orders are 

opposed by ASIC or ASX, and will generally 

give persons liberty to apply to vary or revoke 

orders made pursuant to section 1322. It is 

important for any applicant to anticipate 

the parties that may have an interest in the 

application under section 1322 and obtain 

their support for the orders sought on an 

informed basis. In Re Phylogica Ltd 28 , Justice 

Nicholson validated a share issue pursuant 

to section 254E of the Act and ordered that 

the applicant company, directors and officers 

be relieved from civil liability arising from 

a contravention of the Act arising from an 

unwitting variation of shareholders rights 29 . 

Such orders were considered to be in the 

commercial interests of the company who had 

entered into a valuable agreement with a third 

party on the basis that the shares were valid 30 . 

An acknowledgement was sought from each 

of the shareholders in the class affected. 

His Honour made the orders conditional on 

receipt of an acknowledgement and approval 

to the orders by two major shareholders that 

might otherwise have been affected by the 

orders in the application 31 . 

In Weinstock Gageler J summarised the 

interpretation of the words “by reason of any 

contravention” in section 1322(4)(a) as follows: 

“If something is done which has not been 

properly authorised because, for example, 

appropriate resolutions have not been passed or 

because there is in office no validly elected board 

of directors, the doing of it without authority may 

be regarded as a contravention. 32 ” 

The High Court’s broad approach to the text 

and purpose of the section reflects a concern 

for substance over form, and is potentially 

very helpful for those involved in matters of 

corporate governance. 

Footnotes 

1 [2013] HCA 14; (2013) 297 ALR 1; (2013) 251 CLR 396;. 

2 Beck v L W Furniture Consolidated (Aust) Pty Limited [2011] 

NSWSC 235 at [153]. 

3 Ibid at [154], where Barrett J cited the decision of Gillard J in 

Jordan v Avram (1997) 23 ACSR 153. 

4 Beck v LW Furniture Consolidated (Aust) Pty Ltd (2012) 87 

ACSR 672 at [223], [236]. 

5 Ibid at [224]. 

6 Ibid at [129]. 

7 Ibid at [131]. 

8 (2013) 251 CLR 396at [39]. 

9 (2013) 251 CLR 396at [56]. 

10 (2013) 251 CLR 396at [42]. 

11 (2013) 251 CLR 396at [52]. 

12 (2013) 251 CLR 396at [42]. 

13 (2013) 251 CLR 396at [40]. 

14 [2004] FCA 1798, (2004) 52 ACSR 362. 

15 ASIC considers that it does not have power under s741 of the 

Act to exempt a person from a provision of Chapter 6D of 

the Act retrospectively. 

16 In the Matter of Alara Uranium Limited [2007] FCA 724 

17 Re Ashburton Minerals Ltd [2005] FCA 512, 53 ACSR 694. 

18 Re Insurance Australia Group Ltd (2003) 45 ACSR 702. 

19 Re Golden Gate Petroleum Ltd (2004) 50 ACSR 659, 22 ACLC 

1292. 

20 (2010) 77 ACSR 17 (cited with approval by French CJ in 

Weinstock at [10], footnote 15). 

21 (2012) 87 ACSR 436. 

22 (2010) 77 ACSR 17 at [69]. 

23 Ibid. 

24 See also Re Elemental Minerals Ltd (2010) 79 ACSR 277. 

25 (2010) 77 ACSR 17 at [51]. 

26 French J (as he then was) in Alara. 

27 Re Wave Capital Ltd [2003] FCA 969, (2003) 47 ACSR 418, per 

French J at 427. 

28 [2004] FCA 1769, [2004] 52 ACSR 159. 

29 Sections 246F(3)(a) and 246B(1) and (3) at [23]. 

30 Re Phylogica Ltd at [19] and [20]. 

31 Re Phylogica Ltd at [22] and [23]. 

32 (2013) 251 CLR 396at [66] per Gageler J, citing Campbell 

JA’s dissenting judgment in the Court of Appeal ((2012) 265 

FLR 60 at 91 [137]), particularly his Honour’s reference to the 

judgment of Lehane JA in Nece Pty Ltd v Ritek Incorporation 

(1997) 24 ACSR 38 at 46. 


acla.acc.com 


WA President 

Jenny Kiss 

News from WA 

For many in-house lawyers the diversity of 

work is one of the reasons that they enjoy 

law. Every business faces a multitude of legal 

challenges and in-house counsel add value 

through experience, expertise and pragmatism 

in assisting the business to thrive. Preventing 

adverse outcomes is as much a part of this 

work as fixing up problems. Online resources, 

the ACC Docket, research publications and 

events such as the Corporate Counsel Days 

(CCD), local seminars and webcasts are key 

offerings from ACC that aim to help in-house 

lawyers keep up to date with change. From 

my perspective, the in-house connection 

ACC also provides is most valuable, as we are 

able to have a laugh, share experiences, and 

sometimes perspective. 

As this goes to print, I am really looking 

forward the Masterclass on The Role of 

In-house Counsel in Crisis Management and 

gaining some international perspectives on 

the topic, as we hear from Derede McAlpin, 

Vice President & Chief Communications Officer 

for ACC, who is visiting from Washington. 

I’m also excited about the WA Corporate 

Counsel Day (CCD) to be held in May. 

Following on from his success on ABC TV’s 

“Gruen Planet” and at the VIC CCD, I don’t want 

you to miss Dan Gregory’s session on how to 

align leadership and performance with human 

decision making filters and how we can 

accelerate innovation and acceptance in times 

of change. 

The WA Committee welcomes new 

members Michael Cornes, Nadia Ardalich 

and Katrina Wild and is excited about our 

new Social Subcommittee. 

ACC AUSTRALIA CORPORATE ALLIANCE PARTNERS 


41


DAY IN THE LIFE - Ricardo Cortés-Monroy 

Ricardo Cortés-Monroy 

Chief Legal Officer, Nestlé 

Vevey, Switzerland. 

6 am: Alarm goes off. Joey – our blond Havanese family dog – eagerly waits for his brisk 

morning walk. 

7 am: A copious breakfast with my wife – kiwi fruits ‘by the ton’, Nestlé’s Fitness cereals and 

Argentinean dulce de leche. Then it’s time to organize my working day, make some 

decisions, and answer relevant emails on my iPad. This is my best time of the day 

because I am at home with no interruptions. I read strategic papers, dossiers, and 

documents while enjoying at least two more of our Nespresso coffees – what else? 

9 am: First meeting with one of our expert or business legal teams. We have 70 lawyers at our 

headquarters, and another 330 worldwide. Typically we discuss progress with a big cross 

border M&A transaction, or a big litigation case, or a functional initiative at Nestlé Legal. 

10 am: A call from the CEO: He wants to understand the extent of a recent US Supreme Court 

decision. The call becomes a meeting and we ask corporate communications to join. It 

is important to work as a team to preserve and enhance our most valuable asset: trust 

from all stakeholders. 

11 am: The intellectual property team needs my approval for a proposed way forward 

regarding a blatant imitation case affecting our Kit-Kat wafer. We decide to sue. 

12 pm: Business lunch at our private dining rooms, usually with a senior partner from a law 

firm, or an ambassador, or another special guest. In both the French and Latin cultures 

the business lunch is an art where important agreements are reached. And yes, we do 

enjoy good wines at lunch. 

1 pm: I try and dedicate some quality time every day to my four mentees. All are young, 

female Swiss lawyers. They deserve the best from us; they represent the future of our 

profession. Some work at Nestlé, some at our preferred law firms. They reverse mentor 

me as well, and it is fascinating. 

2 pm: The Employment & Labor Law team wishes to discuss a difficult case. We find a 

pragmatic approach: People first! 

3 pm: The next executive board of directors meeting is approaching fast. We accelerate the 

final version of the annual group legal strategy. There is so much we want to say and 

share. How to fit this into two pages? 

4 pm: Time to work with our executive assistant from the European General Counsel 

Association, members of which are from the largest European multinationals. I have 

just been appointed chairman and I need everyone’s help for the next plenary session. 

It reminds me how much we all love our profession. 

5 pm: A quick Nestlé Legal Leadership meeting. This collegial body is composed of the 12 

most senior lawyers in the group. 

6 pm: Not my favorite activity but a must as a CLO: My assistant brings me around 20 

corporate documents per day to sign. They tend to come from all corners of the 

world. Proper governance is always a must. 

7 pm: Indulgence time for the daily session at the gym, usually a high intensity workout with 

heavy free weights and machines. The perfect time as well to plug the headphones and 

listen to good music shared by good friends; I am now exploring Elements, Ludovico 

Einaudi’s new album. 

8 pm: The blessing of living in the Geneva Lake Riviera: Home is just 10 minutes away from the 

office so plenty of quality time with the family. As we say at Nestlé “Good Food, Good 

Life,” which at home means having a collective culinary experience enjoying the best 

Cabernet Sauvignons, Chilean of course. Yesterday my wife and daughters cooked an 

amazing risotto with truffles. I just admire people who can cook. One day I will learn! 

10 pm: Some additional time to catch-up with urgent emails and mainly, to prepare my 

academic activities as a Master in Law professor at the University of Lausanne, or the 

one or two presentations I have to give every week at professional associations, or at 

the Nestlé training facilities. 

11 pm: More indulgence time, reading either a medieval history essay (right now B. Reilly’s 

biography of the King of Castile don Alphonse VI) or some creative literature. 

12 am: Switch-off the lights. 


acla.acc.com 

ACC AUSTRALIA WOULD LIKE TO WELCOME 

The following new members to the association who joined in the 3 months to 1 February 2016 

AUSTRALIAN CAPITAL TERRITORY 

Andrew Paloni 

University of Canberra 

NEW SOUTH WALES 

Kristy Do 

Nikko Asset Management 

Danielle O'Doherty University of Wollongong 

Megan West 

University of Wollongong 

Cherry Siu 

University of Wollongong 

Bianca Bates 

Cuscal 

Natasha Bryant 

Scentre Group 

Joanne Khoo 

Sydney Airport Corporation Limited 

Gregory Nyman 

Greater Building Society 

Meredith Richer 

DuPont (Australia) Pty Ltd 

Josephine Johnston FOX SPORTS Australia 

Joseph Smith-Davies FOX SPORTS Australia 

Andrew Moore 

PricewaterhouseCoopers 

Magdalen Malone The George Institute 

Melinda Wong 

Abacus Property Group 

Fui Kong 

Bank of China 

Jasveen Ali 

NEXTDC Limited 

Gordon Quah-Smith IMAP Limited 

Jade Marishel 

ninemsn pty limited 

Sneha Balakrishnan Digital Alchemy 

Christa Badenhorst Mission Providence 

Catherine Rein 

Mission Providence 

Alison Dwyer 

Resmed Limited 

Sarah Alderson 

Police Association NSW 

Catherine James 

Challenger Limited 

Aoife Murray 

Civeo Pty Ltd 

Zoee Bradley 

Resmed Limited 

Linda Vogel 

Deloitte Touche Tohmatsu 

Amarjit John Chal 

AdventBalance 

Sarah Sattout 

AdventBalance 

Heath Watt 

AdventBalance 

Michael Woodward AdventBalance 

Sally Buchanan 

AdventBalance 

James Kenney 

AdventBalance 

QUEENSLAND 

Kelly Keys 

NEXTDC Limited 

Christina Fox 

Unitywater 

Benjamin Harvey 

ALH Group Pty Ltd 

Janine Reid 

WorkCover Queensland 

Lucy Lovelock 

AdventBalancep 

VICTORIA 

Jessica Cantori 

Stuart Burvill 

Ian Teh 

Synnove Frydenlund 

Josh Underhill 

Gary Riordan 

Katrina Socratous 

Marita Gill 

Olivia Aliwarga 

Karen Abraham 

Leanne Whitechurch 

Anna McMahon 

James Hutchins 

Carolin Jenner 

Matthew Jeffrey 

Brett Waterhouse 

Chloe Brayne 

Penny Creswell 

Anthony Wright 

Danielle McCluskey 

Kylie Staines 

Jeremy Davey 

Sarah Gaidzkar 

Zoe Solomon 

David Wemyss 

Bianca Scarlett 

Bradley Holland 

Sarah Nichols 

James Ioannou 

Phil McAloon 

WESTERN AUSTRALIA 

Suzy Montandon 

Stephanie Wright 

Eve Metcalfe 

David Winch 

Glen Atkins 

Gordon Bennett 

John Sanders 

Karen Gardiner 

Leo Hartley 

Josephine Breen 

Programmed Facility Management 

SMEC Holdings Limited 

Redflex Holdings 

Western Health 

Future Fund 

IOOF Holdings Limited 

CEM Group 

State Trustees Limited 

Viva Energy Australia Limited 

RMIT University 

Plexus 

CEVA Logistics 

realestate.com.au Pty Ltd 

Dun & Bradstreet Australia Pty Ltd 

Jim's Group 

St Barbara Limited 

AustralianSuper 

Transpacific Industries Pty Ltd 

PPG Industries Australia PTY Ltd 

Australia Pacific Airports (Melbourne) Pty Ltd 

Dun & Bradstreet Australia Pty Ltd 

Envato Pty Ltd 

Envato Pty Ltd 

CUB Pty Ltd 

Telecommunications Industry Ombudsman Ltd 

Costa Group Holdings Ltd 

NBN Co Limited 

Bellroy Pty Ltd 

Jangho Group 

Australian Health Practitioner Regulation Agency 

iluka resources limited 

Sodexo Australia Pty Ltd 

Surf Life Saving Western Australia 

AdventBalance 

Wesfarmers 

AdventBalance 

AdventBalance 

AdventBalance 

NOPSEMA 

Legal and Legislative Services 

Department of Health WA 

SOUTH AUSTRALIA 

Andrea Wright 

Martine Feckner 

Eric Dale 

Kate O'Fathartaigh 

TASMANIA 

Theo Kapodistrias 

Anglicare SA Ltd 

ASC Pty Ltd 

Australian Rail Track Corporation Ltd 

Bio Innovation SA 

University of Tasmania 

A special welcome to the in-house team at the 

NSW Department of Family & Community Services 

– a new ACC Australia large legal member 


43

Australian Corporate Lawyer - Autumn 2016

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