Australian Corporate Lawyer - Autumn 2015

theAustralian 

corporatelawyer 

March 2015, Volume 25 – Issue 1 

The official journal of 

acla 

australian corporate 

lawyers association. 

NEW DIRECTIONS: 

IN-HOUSE LEGAL PROFESSION 

Innovate: Develop a 

“Possibilities Mindset” 

Class Action Funding 

Legal Profession Uniform Law 

Sponsored by

Most Innovative 

Australian Law Firm 

2014 Financial Times Asia- 

Pacific Innovative Lawyers 

Awards 

Most Innovative 

Law Firm 

2014 BRW Client Choice 

Awards 

Best Law Firm 

Revenue $50 to $200 million 

2014 BRW Client Choice 

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 

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INSIDE… 

Volume Number 25 Issue Number 1 

Australian Corporate Lawyers Association 

ACN 003 186 767 


In-house legal profession 



Features 

6 Member Profile: Janean Richards 

2014 Government Lawyer of the Year 

7 Winners 2014 In-House Lawyer Awards 

8 Innovate: Develop A “Possibilities Mindset” 

12 Benchmarking Legal Function Performance 

Or how to see the trees and the forest 

14 ACLA GC100 Launch: A new network for General 

Counsel of Australia’s ASX100 companies 

16 Class Action Funding: Can lawyers compete 

with third party funders? 

18 Legal Profession Uniform Law: Regulation of 

in-house lawyers is about to change 

21 My Experience: New to In-House 

Samantha Redfern, Senior Corporate Lawyer, 

Origin Energy 

22 Recent Developments In Trade Mark Practice: 

The ins and outs of what makes a trade 

mark registrable 

24 Update From The Courts: Maintaining privilege in 

transactions and investigations. Lessons for 2015 

26 Do Transactional Lawyers Actually Add Value? 

A case for the transactional lawyer in an 

imperfect world 

28 Duty of Care of Corporations Regarding Pure 

Economic Loss 

30 Moving From Lawyer to Manager 

31 Data Crisis Management: 

The Good, The Bad and The Ugly 

34 The Cost of Workplace Bullying - $733,723 

36 Mediation – The Use of Evidence to Achieve the 

Best Outcome 

An interview with John-Henry Eversgerd 

and Andrew Moffat 

38 What You Need to Know 

An update on a number significant developments 

in administrative law 

40 An Australian Expat Discusses Her Career 

Regulars 

5 President’s Report 

11 ACLA News 

SA / TAS / NSW 

15 ACLA News 

ACT / VIC / WA 

20 ACLA News QLD 

42 New Members 

Editorial 

Editor: Emma Langoulant 

T: (61) 3 9248 5548 

E: emmalangoulant@acla.com.au 

Journal Sponsorship and Advertising 

Are you interested in reaching 4,000 ACLA 

members Australia-wide? Please contact: 

Emma Langoulant 

T: (61) 3 9248 5548 


If you are interested in other sponsorship 

opportunities with ACLA, please contact: 

Nicole Greenwell 

T: (61) 3 9248 5511 

E: nicolegreenwell@acla.com.au 

Letters to the Editor 

You are invited to submit letters to the editor by 

email: emmalangoulant@acla.com.au 

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 ACLA’s discretion 

and may be edited. 

General Enquiries 

T: (61) 3 9248 5500 

E: membership@acla.com.au 

W: acla.com.au 

Publisher 

The Australian Corporate Lawyer is published by 

the Australian Corporate Lawyers Association. 

Design & Print 

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T: (03) 9561 8200 

E: sales@epress.com.au 

W: epress.com.au 

Disclaimer 

The opinions, advice and information contained in 

this publication may not be shared by the Australian 

Corporate Lawyers Association. They are solely offered 

in pursuance of the object of the Australian Corporate 

Lawyers Association 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. 

acla 



VOLUME 25, ISSUE 1 – MARCH 2015 

3

theAustraliancorporatelawyer 

FAST FACTS 

One in four CLOs reported experiencing a data breach 

within their organisation over the past two years. 

CLOs from Canada (41%) were most likely to report a 

breach when compared with CLOs in Asia Pacific (14%) 

and the United States (26%). 

CLOs in larger law departments were more likely 

to report using flat fees for entire matters than 

CLOs in smaller departments. 53% of CLOs leading 

law departments with 25 or more employees used 

flat fees for entire matters, compared with 36% in 

departments of less than 25 employees. 

Nearly all CLOs responding (96%) rated ethics and 

compliance as important for 2015. One in four 

CLOs rated compliance as ‘extremely important’. 

Compliance was one of the top areas in which CLOs 

reported creating positions over the past 12 months, 

particularly in Asia Pacific (30%). 

CLOs are increasingly satisfied with their current 

roles despite the many challenges associated with 

the position. The percentage of CLOs reporting they 

were ‘very satisfied’ with their current role rose to 

44% from 35% in the 2012-2013 survey. 

All statistics have been taken from the ACC Chief Legal Officers (CLO) 2015 Survey. 

4 VOLUME 25, ISSUE 1 – MARCH 2015

March 2015, Volume 25 – Issue 1 


The official journal of 


Sponsored by 

acla.com.au 

PRESIDENT’S REPORT 



acla 


IN-HOUSE LEGAL PROFESSION 

Innovate: Develop a 

“Possibilities Mindset” 

Class Action Funding 

Legal Profession Uniform Law 

Adrian Goss 

National President 

The theme for this edition of the 

ACLA Journal is ‘New Directions’. In a 

business environment where change 

is constant, we are continually being asked to 

head in new directions, address new issues 

and take new approaches. As a memberfocussed 

organisation, ACLA strives to provide 

its members with the resources and support 

that they need to meet the challenges 

associated with that change. I wanted to 

highlight 3 ways in which ACLA is doing that. 

Firstly, ACLA has been heavily engaged in 

advocacy in connection with the introduction 

of uniform regulation of the legal profession. 

The Uniform Law (though less uniform that 

the architects of it had originally hoped) will 

affect a large proportion of the in-house 

profession when it comes into effect (see 

page 18). As with any such new regulatory 

regime, the devil is in the detail and a great 

deal of work is currently being done to 

develop associated rules, including in relation 

to admissions, professional development and 

professional conduct. Much as ACLA did when 

the Uniform Law was first being considered, 

ACLA has been advocating on behalf of the 

in-house profession in that process. 

We are working closely with the regulators 

to ensure that no unintended consequences 

of the rules prejudice in-house lawyers. We 

have been impressed with the willingness 

of those regulators to engage with us and 

the seriousness with which the issues we are 

raising have been taken. We are also seeking 

to address issues that arise in connection with 

advising corporate groups and privilege. 

Secondly, ACLA is expanding its offering to 

the GCs of Australia’s major corporations. In 

the past, ACLA has not done enough to meet 

the specific needs of this group of in-house 

lawyers. Those needs include support in 

relation to issues such as managing large 

teams, dealing with the increased regulatory 

scrutiny associated with being a major 

corporation and managing cross-border issues. 

A key component of this initiative is the 

establishment of the ACLA GC100. The ACLA 

GC100 will provide a forum to address issues 

relevant to the group and an opportunity for 

members of the group to exchange ideas and 

experiences with each other. 

In addition to the ACLA GC100, we will be 

introducing a range of resources relevant to 

GCs of major corporations. To a large extent, 

that will be facilitated by the alliance with the 

ACC, which has already done a lot of work in 

developing such resources. 

This brings me to the third example I wanted 

to highlight – the alliance with the ACC. 

Announced prior to Christmas, we are now 

working through the operational changes 

needed to unlock the benefits the alliance will 

deliver. Over the coming months, you’ll see 

more information about those benefits, which 

will assist you to be better informed and 

resourced through, among other things: 

• The Value Challenge: tips and tools 

to deliver and demonstrate value to 

your organisation; 

• The ACC Docket: a monthly e-magazine 

with in-depth articles and targeted regional 

briefings; and 

• Resources: Quick Counsel (concise 

summaries on important topics with links 

to more detailed information); and Top Tens 

(Expert views in 10 succinct, substantive 

points on a variety of issues). 

ACLA was founded by in-house counsel and 

exists for in-house counsel. The alliance with 

the ACC enables global opportunities along 

with ACLA’s usual local dedication. 

ACLA BOARD 

President 

Adrian Goss 

Bauer Media Limited 

Vice President 

Gillian Wong 

St Barbara Limited 

Immediate Past President 

Suzanne Hillier 

National Offshore Petroleum Safety and 

Environmental Management Authority 

Company Secretary 

Tanya Khan 

Directors 

Jane Bates 

Airservices Australia 

Alicia Burgemeister 

Viterra 

Erica Clark 

IOOF Holdings 

Justin Coss 

InterRisk 

Amanda Davidson 

Karen Grumley 

Aurizon 

Michael Helmer 

Symantec 

Andrew Lamb 

Mike Madden 

iseek Communications 

Monika Maedler 

Tassal Group Limited 

Marisa Muchow 

Australian Building Codes Board 

Melvin Yeo 

African Mining Capital Group 

ACLA Membership 

1300 558 550 

PO Box 422 

Collins Street West 

Melbourne VIC 8007 

acla.com.au 


5


MEMBER PROFILE: JANEAN RICHARDS 

2014 Government Lawyer of the Year 

The legal function at the Department 

of Social Services (DSS) manages one 

of the largest legislation programmes 

in the Federal Government. They are required 

to provide broad ranging commercial and 

advising services across the policy and 

programmes related to social security, child 

support, family assistance, aged care, disability 

services, the NDIA, settlement services, 

multicultural affairs and more recently, 

childcare and early childhood. 

It is a credit to the team’s leader, Janean 

Richards, that the DSS legal team is seen as 

trusted business partners, involved in the 

organisation as ‘architects’ - designing positive 

and practical solutions to address complex 

policy and programme challenges. 

On the 20 November 2014, Janean– Chief 

Legal Counsel & Group Manager at the 

Department of Social Services – was 

commended for her legal skills, and positive 

and constructive approach to leadership 

when she was announced as the 2014 

Government Lawyer of the Year. 

Janean has an extensive background in 

the Commonwealth public sector and her 

previous roles include: Assistant Secretary 

Office of Legal Services Coordination in the 

Attorney-General’s Department; and General 

Counsel positions at both the Australian 

Customs and Border Protection Service, 

and Comcare. 

Prior to her work in-house Janean was the 

Commercial Dispute Resolution Partner at 

Deacons Lawyers (now Norton Rose), and 

formerly Commonwealth Government 

Practice Partner at Dibbs Abbott Stillman 

(now DibbsBarker). 

Although Janean did a lot of due diligence 

before making the move in-house, it still felt 

like a huge leap into the unknown. Of her 

move Janean said: ‘I’d either love in-house 

practice or forever regret walking away from 

my partnership. The majority of my Partner’s 

also thought that I was making a big mistake.’ 

After a decade in private practice, and as 

the mother of (then) two young children, 

Janean began to look toward the public 

sector in the expectation that working 

in-house would provide more opportunity 

for work/life balance. 

However, Janean quickly discovered that 

busy people remain busy wherever they 

are! Work/life balance for a General Counsel 

would be equally (if not more) challenging to 

achieve. She found there were at least as many 

demands on your time as there are in private 

practice, and government, Minister’s Offices 

and the Parliament are no more flexible than 

the judiciary. 

But for Janean: “What did surprise me was how 

much I enjoyed practicing as an 

in-house lawyer.” The nature of the relationship 

Janean had with clients changed dramatically 

because she was no longer on the outside, 

and she quickly became hooked on 

working in-house. 

Janean spent 4 years as the General Counsel 

at Comcare, managing a large litigation 

and advising practice, before accepting the 

opportunity to move to into the General 

Counsel role in the Australian Customs 

and Border Protection Service. At Customs, 

Janean had responsibility for a smaller 

legislative, litigation and commercial practice 

in very large operational agency supporting 

management of Australia’s borders. Janean 

personally advised the Customs and 

Boarder Protection Internal Review into 

the Christmas Island tragedy (SIEV 221), 

and managed the Commonwealth’s 

representation at the commencement of the 

WA Coronial proceedings. 

Then Janean changed pace, taking on a legal 

policy role with the Office of Legal Services 

Coordination in the AttorneyGeneral’s 

Department. Here Janean worked on the 

major reform of the Commonwealth legal 

services procurement, the coordination 

of significant legal issues affecting the 

Commonwealth’s interests and she managed 

the Commonwealth’s legal representation 

before the Queensland Flood Commission of 

Inquiry into the 2010/2011 major flood event. 

The diversity of the work and the quality 

of the opportunities that working inhouse 

in government offers is what drives 

Janean. There is no shortage of work, the 

issues are dynamic, and Janean feels she is 

continually being challenged personally and 

professionally, learning all the time. 

In the two years Janean has been with 

DSS, the ‘general counsel’ role within the 

Department continues to evolve as trust and 

confidence between the Executive and the 

practice increases. She is extremely proud of 

what has been achieved at DSS in such a short 

time frame. 

The Department has taken steps to 

implement changes to the Chief Counsel’s 

role in governance of policy, programme and 

delivery functions. As a result the practice’s 

understanding of what the business is trying 

to achieve has dramatically improved and 

assisted the legal team to appreciate what’s 

on the horizon. 

As Janean explains: “The best part about 

this is that our legal role has become more 

rewarding because we can anticipate and 

mitigate legal risk in activities, rather than 

being called in to ‘mop up’.” 

In the last 12 months, Janean has 

commissioned an external review of the 

legal function, which confirmed that the 

services provided by the team are held in 

high regard by the Department. The legal 

team have also implemented a number of 

recommendations to improve matter and 

knowledge management, to ensure resources 

are aligned with key business priorities and 

support quality, consistent and efficient legal 

service delivery. 

For Janean, the biggest challenge faced by 

in-house is to be very clear about the nature 

of the role. “We cannot lose sight of the 

fact that we are providing an independent, 

albeit customer focused, professional legal 

service. That is not the same thing as being 

the decision maker in a process or the 

administrator of government policy, and we 

need to be very clear about our function. It is 

important to have processes and policies in 

place that protect the independence of the 

legal practitioner’s function in-house.” 

On receiving her award as the 2014 

Government Lawyer of the Year, Janean took 


acla.com.au 

the opportunity to thank her team for their 

dedication: “I’m very privileged to lead this 

Group of experienced and dedicated legal 

professionals. There is an amazing level of 

expertise within our Practice that takes a very 

long time to develop. In fact I felt it was an 

enormous responsibility to be trusted to lead 

it and contribute to its legacy.” 

Janean believes what is most special about 

her team is the culture. “The people are 

collaborative and supportive of one another. 

In addition to their professionalism and 

preparedness to ‘get the job done’, there is also 

a strong focus on continually improving the 

way we do things.” 

She believes good in-house teams are 

immersed in the business and have the 

opportunity to develop strong relationships 

with clients. For DSS being invested in the 

agency’s ability to achieve its’ objectives 

are critical. 

“A successful in-house legal team is one that 

its clients trust to engage early and openly, 

allowing their lawyers to be influential in 

the development of strategy. This level of 

trust requires a high degree of openness, 

communication and respect and takes time to 

develop,” Janean says. 

In addition to technical legal ability, Janean 

feels hard working team players who are 

customer focused, engaged and eager to 

contribute to the development of the practice 

is most important and one of the reasons why 

her team is so successful. 

And with a leader who reflects so positively on 

the whole legal practice, it is no surprise that 

the team is seen as a valued contributor to the 

overall success of the Department. 

WINNERS 2014 

IN-HOUSE LAWYER AWARDS 

The winners of the Australian Corporate Lawyers Association (ACLA) In-house Lawyer 

Awards 2014 were announced at the Annual Awards Dinner on Thursday 20 November 

at the National Wine Centre, Adelaide. 

Corporate Lawyer of the Year: 

Debra Tegoni, 

Executive General Manager 

– Legal & Regulatory Services, 

Crown Melbourne 

Legal Team of the Year - Small: 

Bayer Australia 

(Pictured: Emma Press, 

General Counsel) 

Government Lawyer of the Year: 

Janean Richards, 

Chief Legal Counsel & Group Manager, 

Department of Social Services 

Young Lawyer Achiever 

of the Year: 

Grant Pritchard, 

Legal Counsel, Telstra 

Legal Team of the Year- Large: 

Suncorp Group 

(Pictured: Fiona Thompson, 

Associate General Counsel) 

Excellence in Corporate 

Social Responsibility: 

Australian Government Solicitor 

(Pictured: Geetha Nair, 

Senior Executive Lawyer and 

National Pro Bono Manager) 

Nominations for the 2015 Awards will open in July. 


7


INNOVATE: DEVELOP A 

“POSSIBILITIES MINDSET” 

Dr Karina Butera 

Dr Karina Butera is a leading authority on 

understanding psycho-social dynamics in 

personal and organisational behaviour. 

Dr Butera is a cultural change specialist who 

has worked extensively in state and local 

government, healthcare and industry. 

Innovation is not traditionally associated 

with the legal profession, yet it is 

innovative lawyers who have challenged 

old precedents, formed new contracts, found 

the loopholes enabling better approaches and 

so much more. There is even more of a need 

for lawyers in the corporate sphere to foster 

innovative thinking as they assist in meeting 

shareholder expectations. 

At the 2014 ACLA National Conference, there 

was an overarching call for in-house counsel 

to shed the image of corporate lawyer as 

simply a contract proof-reader and dispute 

moderator, but to show deeper value to their 

organisation through participating in broader 

growth discussions at executive level. 

The prospect of being more innovative in 

your role may excite or unnerve you. You may 

want to take on the challenge, but struggle to 

think ‘outside of the square’. If you are naturally 

creative and idea-driven, you may be looking 

for ways to encourage and expand more 

innovative thinking within your team. Either 

way, this article will help you understand the 

mindset required to be innovative and provide 

you with practical tips on how to engage 

“possibility thinking”. 

Four dominant mind-sets 

Life and business present us with dilemmas 

on a regular basis, and when confronted with 

a puzzle of sorts, we tend to fall into one of 

four patterns of thinking. Depending on our 

personality type, we are likely to find ourselves 

automatically drawn to focusing on the 

problem, the solution, the opportunities or 

the possibilities. 

Problem focused individuals tend to have a 

critical and analytical mindset, they are natural 

risk managers and are able to find fault with 

almost all ideas or approaches. Focusing on 

the problem is an important part of problem 

solving as it ensures the scope of the dilemma 

is fully understood, due diligence is conducted 

and past mistakes are not repeated. However, 

problem focused individuals can often be 

seen by peers as pessimistic road-blockers, 

who deplete the energy in group-think and 

frustrate the process of innovation. 

Solution focused people are quick thinking 

and action oriented. They usually have the 

solution formulated and are drumming their 

fingers on the table before the problem has 

had a chance to be fully laid out. People with 

this fast acting mind are usually extremely 

sure of their approach and deliver it with great 

conviction, leaving little room for discussion or 

new ideas to be raised. When solution focused 

individuals dominate, it can often be that the 

most logical and obvious idea is implemented 

rather than the most robust, global and 

future-driven idea. 

Opportunity focused people are naturally 

optimistic people with a constant eye out for 

the next quick leap of progress. They thrive on 

change, seeing problems as an opportunity 

to leap-frog those who follow protocol or 

require certainty to take action. These people 

tend to be natural networkers and utilise their 

contacts to hear about new developments 

before others so they can be first in line for the 

best job, project or promotion. 

While each of these types of focus is useful, 

they can leave you either stuck or acting in an 

overly reactive or obvious way. They lack true 

creative and innovative power. They miss the 

breadth of possibilities. 

Possibility focused people are highly 

idealistic, yet natural rule-breakers. They do 

not look for what’s directly in front of them; 

rather they look above it, below it and all 

around it. Rather than asking ‘what should we 

do’ they ask ‘what could we do’. These people 

can make others around them uncomfortable 

Four Key Mindsets 

Problem Focused 

Thinking about the crisis at hand, 

detail, the obstacles, precedents 

and risks. 

Solution Focused 

Immediate attention to the obvious 

fix, wanting quick results and 

instant action. 

Opportunity Focused 

Alert to new doors opening, what’s 

next, who will help, what’s ‘coming 

up’ in front of me. 

Possibility Focused 

Observing the big picture, exploring 

what hasn’t been done in the past, 

testing new ideas, asking ‘why 

not … yet?’ 


acla.com.au 

and even irritated because they ask 

unexpected questions, tease ideas out and 

seem unmoved by the idea of risk. 

To help clarify the four mindsets, take the 

example of being unexpectedly retrenched. 

Someone with a problem mindset will fall 

into a world of turmoil as the uncertainty of 

their future envelopes them. They will focus 

on the myriad of obstacles ahead of them, 

worry obsessively, which will cause stress and 

anxiety. This will impact their health and limit 

their ability to move forward. They are likely to 

remain unemployed for some time due to the 

energy they will project in interviews. 

Someone with a solution mindset will 

immediately upgrade their CV, go straight to 

seek.com and apply for the first suitable job 

they see advertised. They are likely to find 

something quite quickly, but potentially end 

up in a position or organisation that brings 

little rewards or personal satisfaction. 

Someone with an opportunity mindset 

will firstly ask their manager what new 

roles might be available to them in the 

organisation. Failing that, they will work their 

networks, gaining access to information 

about upcoming job opportunities and 

gain the employment prior to the job ever 

being advertised. 

Someone with a possibilities mindset see the 

redundancy as an opportunity to take stock. 

They will take their time, sit back and reflect 

on what this may mean to their life. They will 

use the opportunity to review their values, 

overall goals and interests and explore what 

new paths could be taken. Perhaps they have 

a secret passion for a business they would like 

to start and use their redundancy money to 

either gain an additional qualification or seed 

the business idea. Their approach leads to a 

more ideal and authentic long-term solution 

that provides deep fulfillment. 

Tips to evoke the possibilities 

If it is outside of your normal thinking style to 

imagine the possibilities, you can adopt some 

of these habits to help you open your thinking 

and explore the full potential of a situation 

before committing to action. 

Allow time 

We operate in such a high paced world that 

we often rush our decision making processes, 

driven to hit deadlines and move to the 

next Andrew project. KleinHowever, 

the most innovative 

possibilities are not always the most obvious 

ones. They come out of idle time, daydreaming 

and pondering. Discipline yourself 

not to rush to the first suitable solution, 

but to take the time to allow all ideas to 

unfold before you as you patiently imagine 

the possibilities. 

Keep company with innovative thinkers 

Spend time with those who have a possibility 

mindset. Observe how they approach 

discussions. Notice the types of questions 

they ask and how their ideas germinate. When 

addressing a pressing problem, ask yourself 

how they would tackle it (or better still, ask 

them). You’ll find yourself eventually exploring 

problems in a broader way simply through 

their osmosis-effect. 

Start with the ideal outcome 

rather than the problem 

If you are naturally problem focused, rather 

than thinking about the past and all the 

potential risks, focus entirely on the ideal 

outcome. Visualise how it might look in the 

‘perfect world’ and while you ponder this 

notice all the things that could be happening 

around the outcome. Work back from there 

as to all the possible ways you might have 

arrived at that ideal place. 

Ask someone clueless 

You are likely to seek advice from an 

experienced and wiser person. This may 

be useful, however, to truly glean new and 

different ideas, seek counsel from someone 

who has absolutely no experience in your 

field or idea about the topic. People in your 

personal life (partners, children and friends) 

can be great inspiration. Yes, you may find the 

answers are too simple and naive, but they 

may just stimulate your thinking onto a new 

platform you had never considered before. 

Be a mentor 

Many people believe that in a mentoring 

partnership the mentor does all the giving and 

the mentee all the receiving, but the reverse 


9


can be the case. Spending time with younger 

people in your profession will naturally expose 

you to new ideas and approaches that you 

may not normally come across. You can help 

expand your mentee’s thinking by posing a 

dilemma to them and asking them to come 

back to you with three possible solutions (of 

course, make sure you give them due credit if 

your final solution is in part due to their ideas). 

Ignore limitations 

Often we allow guidelines, budgets and 

precedents to narrow our options. Lack of 

resources can be one great hindrance to 

innovation. Ask yourself the question: “if I had 

unlimited resources, what might I do?” Allow 

yourself to imagine the solution no matter 

how costly. You may realise that it is not as 

expensive as first imagined. The solution 

may also have such great benefits you could 

pitch it to the business and have additional 

expenditure approved. 

Collaborate 

Your own ideas are finite, your personal well 

of inspiration will eventually dry up, and then 

frustration will set in as you start playing 

the same thoughts over in your mind. Bring 

others into your thinking process. Ask extreme 

questions that allow others the permission to 

think to the wildest of their imaginations. Keep 

asking “what else might be possible?” You will 

find the ideas start bouncing from one person 

to the next and grow organically from the 

interaction with others. 

Adopt a thorough team thinking process 

Whether you use the methodology of the 

decision tree, PMI, ‘de Bono’s’ thinking hats or 

the next best problem solving and decision 

making technique, take on a systematic 

method of addressing dilemmas at work. A 

simple method could be ensuring your team 

works through the problem, the opportunities 

and the possibilities before developing a 

solution. Build silent reflection into meetings 

to allow imaginations to be engaged. Provide 

tools that encourage creativity (coloured 

markers, building blocks and craft materials) 

and stimulate the right side of the brain. 

Vary your surroundings 

If you tend to have the same discussions 

with the same people in the same place, 

you’ll continue to come up with the same 

conclusions. Take yourself or your team to 

a totally different setting. Choose a venue 

that is vibrant and has good air circulation. 

Absorb the atmosphere, take a less formal 

approach to discussions and see what new 

ideas flow. If budget allows, do a creative team 

activity, such as an art class, cooking class or 

rock climbing excursion, posing the dilemma 

at the commencement of the session, but 

encouraging the team not to feel the need 

to talk about it during the activities. Later, ask 

‘what can we learn from what we did today 

that might help us find a new way of dealing 

with this situation?’ 

Stride it out 

Many people pace when they think. It’s 

instinctual and can be quite distracting to the 

observer, but it actually has creative benefits. 

Recent research from Stanford University 

found that creative output is increased by an 

average of 60% when walking. 1 Interestingly 

walking does not have any links to improving 

focus – which is exactly what you want to 

avoid when exploring possibilities. Being too 

focused can be detrimental to innovative 

thinking. Walking in nature is a great way 

of thinking on a bigger scale. Taking in 

the majesty of your natural surrounds will 

stimulate a sense of wonder and will help you 

think in a more holistic manner. 

It takes courage and curiosity 

While there are clear benefits to cultivating 

a possibility mindset, there are challenges 

to expect. Those surrounding you may see 

you as too slow to make a decision. When 

you openly ponder on ideas and lofty 

ideals it can create a sense of insecurity, 

uncertainty and vulnerability for family and 

impacted colleagues. 

The history books are full of innovators who were 

doubted, ridiculed and underpaid throughout 

their creative process. 

There is great courage required to openly 

explore the possibilities. It takes asking 

questions that may seem foolish and putting 

forward ideas that may be immediately shot 

down. Unfortunately, even when there is no 

need to commit to a possible solution, many 

will not voice their ideas, as to do so could be 

too much of a gamble on their reputations. 

Often labeled dreamers, loose-canons or 

wishy-washy, possibility focused individuals 

are actually crucial to creating fresh new 

ways of operating; they help a team push the 

boundaries and explore the higher potential 

of any given venture. 

With self-belief, persistence and an 

understanding support network, it is possible 

to stand firmly in your space of possibilities. 

Eventually that nugget of the ideal solution 

will germinate and lead the way to lasting 

improvement and growth. 

Footnote 

1 May Wong, 2014, ‘Stanford study finds walking improves 

creativity’, Stanford Report, April 24, 2014: 

ACLA National Mentoring Program 

You create your own opportunity 

Get Involved 

Applications are open for the 2015 program, simply apply online via acla.com.au. 

“Since taking part in the program, my own career has benefited further. As a result of 

my own mentor’s guidance, I was able to clearly define my role at my organisation. 

Subsequently, this allowed me to expand my horizons and take on opportunities to work on 

global initiatives...” - ACLA Alumni Mentor 

This is your opportunity - if you’re a full ACLA member get on board and get ready to grow in your 

in-house role! 

Australian Corporate Lawyers Association ABN 97 003 186 767 


acla.com.au 

ACLA NEWS 

SA President 

Alicia Burgemeister 

News from SA 

“Exciting initiative”, “promising relationship” 

and “wealth of opportunity” were all 

comments being banded around at the SA 

Division Christmas drinks as a result of the 

news regarding ACLA joining the Association 

of Corporate Counsel (ACC). The SA Division 

Christmas drinks capped off an exciting year 

for ACLA in SA, with over 70 members eating, 

drinking and being merry at Pirie and Co bar. 

The mood was very upbeat and SA members 

are looking forward to the opportunities and 

resources ACC will bring to the ACLA network. 

There will not be a ACLA Corporate Counsel 

Day® held in SA this year due to the recent 

ACLA National Conference held in Adelaide. 

Instead to assist members to meet their CPD 

requirements, our state corporate alliance 

partner, Wallmans Lawyers, held a Professional 

Development Forum on 18th February 

covering the topics Workplace Surveillance: A 

practical guide for South Australian employers; 

Marketing – a practical legal examination; 

and of course an ethics session which was 

particularly useful for those who may have 

slept in (unintentionally of course) and missed 

the ethics seminar at the ACLA National 

Conference. The forum was booked out and 

concluded with drinks which gave members a 

chance to network with their peers. 

I encourage members to involve themselves 

in a range of events that we have planned for 

2015 and to take advantage of ACLA’s benefits 

which include access to a mentoring program 

and a range of in-house legal resources 

located on the ACLA website. 

Upcoming events in SA include our popular 

breakfast snapshots which will be held in late 

March and May, in what is shaping up to be 

another great year for ACLA. We hope to see 

all of our members soon at one of our events. 

TAS President 

Erica Clark 

News from TAS 

I’d like to begin by thanking all who celebrated 

2014 at our end of year celebrations at the 

beautiful Frank Restaurant and Bar, on Hobart’s 

Franklin Wharf. It was fantastic to have the 

opportunity to network with fellow 

in-house counsel. 

As we are going to print we are only days 

away from the Victorian ACLA Corporate 

Counsel Day®. If you can, I encourage you to 

attend to grow your networks, learn practical 

tips for success and of course, claim up to 6 

CPD points. 

A reminder that applications are open for the 

2015 ACLA mentoring program. ACLA attracts 

a pool of quality mentors and mentees who 

undergo a cohesive matching process based 

on their interests, expertise and development 

aspirations. Distance won’t be an issue for 

Tassie members as Program Facilitator, Dr 

Karina Butera, encourages engagement 

through video conference. 

For those who regularly travel to Victoria, a 

full CLE calendar plus brand new professional 

development workshops have been scheduled 

for the year. Visit the ACLA website for 

more information. 

Finally, if you would like to get involved in the 

Tas Committee or have any suggestions about 

networking events or CLE topics I encourage 

you to contact membership@acla.com.au. 

NSW President 

Justin Coss 

News from NSW 

Firstly a big thank you to all those who 

attended the ACLA NSW End of Year Christmas 

Cocktail Event at the House of Merivale. It was 

a fantastic way to end a successful year! 

We have started 2015 off with a bang 

following yet another highly successful 

NSW ACLA Corporate Counsel Day® (CCD). 

A highlight was the keynote presentation 

from Professor Gillian Triggs, President of the 

Australian Human Rights Commission. 

Other program highlights included the 

session ‘Performing Under Pressure’, presented 

by John Gelagin, Coach and Director of 

StepJump; and the highly engaging ‘Do’s and 

Don’ts of disabilities’ panel, moderated by Lori 

Middlehurst, Director of APJ Employment Law. 

The program was full of outstanding speakers 

unified by the theme ‘Divergent Thinking 

Thriving In-house’. Attendees gained not only 

essential legal knowledge but also the often 

overlooked soft skills for in-house. 

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 ACLA website as plenty 

of CLE/CPD seminars have been scheduled 

for the year ahead. Get in quick to register 

for brand new professional development 

sessions including ‘Management skills for 

in-house lawyers’ on 20 May and ‘Commercial 

and financial acumen workshop – Part 2’ on 

20 August. 

Best wishes for a great year ahead and I look 

forward to seeing you at our next event. 


11


BENCHMARKING LEGAL FUNCTION 

PERFORMANCE 

Or how to see the trees and the forest 

Trish Hyde 

Trish Hyde is the CEO of ACLA, having joined 

the association in 2010. Trish has over 15 years 

corporate leadership, communications and 

marketing experience across FMCG, telcos, 

aviation, retail, infrastructure, financial services, 

education and health. She has worked in some 

of the most issues-rich and stakeholder-diverse 

environments and ACLA is her second CEO 

not-for-profit role. 

For some the concept of benchmarking 

may conjure up images of winning; 

being best on show. In this context, it 

would be ideal to pick those you benchmark 

against wisely – as the old joke goes, if you 

want to look thin, hang around with larger 

framed people. This however, is not the 

converse point of benchmarking. At its core, 

benchmarking is taking a step back to see the 

big picture, the forest, and your trees within, to 

help you plan and grow. 

It can be argued that in-house counsel 

functions vary considerably – whether in size, 

structure, spend, or conceptually in regards to 

the value and influence a legal department 

can have on an organisation – and as such 

make comparison fruitless. We believe 

the alternate to be true. By knowing the 

differences in situation helps in interpreting 

the comparisons, and the similarities give 

insight into areas for improvement. 

Fortunately, we see great support for our view 

with over 350 organisations across Australia 

and New Zealand participating in the study 

for ACLA’s soon to be released 2015 

Benchmarks and Leading Practices Report; an 

in-depth investigation into the state of the 

in-house profession. 

Benchmarking 

Benchmarking is a practice best used as a tool 

to help the business evaluate opportunities 

for improvement and monitor performance. 

Benchmarks also provide an avenue for 

effectively managing change and identifying 

trends. Business Victoria has identified six steps 

to successful benchmarking: 

1. Identify what you’re going to benchmark 

2. Identify your competitors 

3. Look at trends 

4. Outline objectives 

5. Develop an action plan for your objectives 

6. Monitor your results and implement an 

action plan 

With in-house counsel under continuous 

pressure with heavy workloads, this can create 

a reactive state, with no time to reflect on 

how to: better manage the function; improve 

the value delivered by the function; measure 

and demonstrate the value delivered; or, 

importantly, obtain productivity efficiencies or 

additional resources required to break free of 

the reactive state. 

Despite the differences in legal functions, one 

thing is universal across all shapes and sizes – 

the pressure of workload and the 

need to demonstrate value. ACLA is playing 

a small part in assisting legal teams by 

identifying current trends to help you assess 

your function and set objectives – whether 

large or small – to foster improvements across 

the profession. 

Below we highlight three of the many areas 

explored in the 2015 Report which are 

reflective of the current state of the in-house 

profession and that can assist a function’s 

strategic planning. 

1. Work-life balance 

Many lawyers look for opportunities in inhouse 

roles seeking to eliminate timesheets 

and work shorter hours, with the perception 

that being in-house provides you with better 

work/life balance and more flexibility. 

The 2015 Report identified that flexible 

arrangements are definitely available, with 

91% of organisations having legal department 

staff on flexible work arrangements. However, 

this is only one variable and taken in context 

of other areas of work time, can be seen in a 

different light. 

While in-house legal functions do allow 

flexibility for employees, in-house counsel are 

still equally accountable and responsible to 

their workplace. The demands of 

the role often lead to unpaid overtime 

being performed, even for those with 

flexible arrangements. 

On average general counsel or equivalent 

work 33.3 hours of unpaid overtime per 

month, with senior in-house lawyers on 

average working 16 hours per month. As 

the 2015 Report shows, these figures vary 

according to factors such as the jurisdiction 

the function is responsible for, and the 

location of the head office. 

The average number of hours of unpaid 

overtime worked by the general counsel 

or equivalent by organisational structure is 

shown below: 

Organisation Structure 

Hours 

Privately Owned 27.1 

Publicly Listed 41.2 

Public Unlisted 62.1 

Government Department/Organisation 32.8 

Government Business Enterprise 22.9 

Other 22.9 


acla.com.au 

While unpaid overtime is not unique to the 

in-house profession, and something that 

their other work colleagues bear as well, it is 

possibly an under estimated value add of the 

in-house function. If measuring the cost of 

internal versus external resources, the elasticity 

in available non-chargeable hours within 

the in-house legal function is significant and 

stretches the internal spend. In addition, 

in-house legal teams, broadly speaking, are 

available on-demand. All of this adds to the 

value in-house deliver to their organisation, 

and should be considered in both the internal 

conversation about value delivery, and 

before jumping to an in-house role mistaking 

flexibility with lazy afternoons. 

What in-house legal work does offer is a 

variety of choice. Like many professionals 

working in organisations, in-house counsel 

have every possible combination of workplace 

style and role complexity to cover the 

multitude of different work/life balance needs 

and desires – some even have the occasional 

lazy afternoon. 

2. Growing in-house talent 

An often untouched benchmark in the 

profession is the estimated transitioning time 

for someone to come into an in-house role. 

In the 2015 Report, we sought respondents’ 

views on the average period required for 

a private practitioner to transition into an 

effective in-house counsel. 

The results show that the path to success as 

an in-house counsel is not a short one: 

• 62% of respondents indicated that 12 

months or more was required 

• 31% of respondents indicated 6 months 

was required 

• 7% of respondents indicated 3 months 

was required 

• No one felt the transition was immediate. 

These figures compliment the consensus that 

to be an effective in-house counsel, a lawyer 

requires more than just legal skills – with 

attributes such as influencing skills; strategic 

thinking; board business understanding and 

commercial nous also important for in-house 

counsel to be effective in the role. 

And while this is a clear recognition that 

the skills required in-house differ to those in 

private practice, the 2015 Report identified a 

gap in the market for nurturing new talent. 

Investing 12 months or more in a lawyer 

who is new to in-house, requires a significant 

level of time and resources. With many legal 

functions being smaller in size (teams of 1 – 

4 people) and with reduced legal spend, it 

makes sense to seek recruits with in-house 

experience. However, where will this talent 

come from when 38% of organisations 

have a junior lawyer in the team and 61% of 

organisations with a senior lawyer in the team. 

Furthermore, only 7% of organisations have 

graduates in the legal team completing a 

practical legal training course. 

With the flat nature of the profession, there 

are limited opportunities for young lawyers to 

enter the in-house arena, and the profession 

is in turn missing out on attracting talented 

young minds. Legal functions should consider 

the time they are investing in transitioning 

private practitioners into effective legal 

counsel and weigh this up against the 

investment of growing their own talent 

through a graduate program. 

3. Internal versus external spend 

One clear message from the 2015 Report is 

that in the 3 years since the last study there 

has been a shift of financial resources, with 

greater focus on internal resources and less 

legal spend externally. As a whole legal 

functions are spending a median of $500K 

internally, compared to a median external 

spend of $300K. While this internal average 

spend is on par with the 2012 Report, external 

spend has dropped by 20%. 

In the 2012 study, spend was measured over 

27 variables – of which 41% showed external 

spend as being greater than or on par with 

internal spend. Of those same 27 variables 

in the 2015 study, only 22% of them showed 

external spend to be greater than or on par 

with internal spend. 

This is a positive reinforcement that the value 

of in-sourcing is being recognised across all 

organisations. However, it does not mean 

external suppliers are not required. Rather, 

the change could also reflect better pricing 

negotiations and/or the use of lower cost 

alternative providers. 

It is important to note that financial resources 

are only part of the picture and it is the people 

within the legal function that create the value 

for the organisation. 

Where to from here 

While it can be tempting to simply benchmark 

your legal function against those in your 

industry or with a similar size of function, the 

reality is that insights come from looking at 

the whole forest and different trees within. 

The in-house legal profession has evolved 

rapidly in recent years and it shows no signs 

of slowing down. To ensure your function is 

continuously improving it is crucial to set aside 

time to reflect on your practice and consider 

learnings and insights from peers. 

ACLA thanks the 350+ participants of the 

study for providing a foundation of learning 

for the profession. 

Footnotes 

1 How to benchmark your business: http://www.business. 

vic.gov.au/marketing-sales-and-online/increasing-salesthrough-marketing/benchmark-your-business 

2 The median is calculated by finding the answer in the 

middle of all the respondents’’ answers. Whereas the mean is 

calculated by dividing the sum of the respondents’ answers 

by the number of respondents. 


13


ACLA GC100 LAUNCH: 

A new network for General Counsel of Australia’s 

ASX100 companies 

Carmel Mulhern, pictured, officially launching 

the ACLA GC100 in Sydney. 

On the 27 February, the ACLA GC100 

was officially launched by Carmel 

Mulhern, Group General Counsel, 

Telstra, at a meeting of 

the most senior legal officer from the 

ASX100 companies. In attendance at the 

invitation-only event in Sydney were 40 

ASX100 GCs, with those who were unable to 

attend the day expressing their support of 

the forum. 

The ACLA GC100 is an independent forum 

for the most senior legal officers of Australia’s 

largest companies. The concept was 

developed by five founding members and is 

based on two fundamental principles: 

• GCs in ASX100 and equivalent corporations 

face similar challenges and issues and, 

through collegial collaboration, may learn 

from each others’ experiences and provide 

thought-leadership for an increasingly 

important part of the legal profession; and 

• as the interface between law and 

the corporate world in high profile 

organisations, this group of GCs can 

make a unique contribution to Australian 

society through policy debate on the 

regulatory and legislative needs of an 

economically and socially sustainable 

business environment. 

Carmel Mulhern, Chair of the GC100, 

welcomed guests to the launch event and 

introduced her colleagues and the foundation 

Executive Committee comprising: Brian Salter, 

General Counsel & Company Secretary, AMP 

(ACLA GC100 Deputy Chair); Paul Meadows, 

formerly Group General Counsel, Wesfarmers 

Limited; Bob Santamaria, Group General 

Counsel, ANZ; and Kerry Willcock, Group 

General Counsel, Tabcorp. 

Along with providing a networking 

opportunity, the launch event gave the 

founding members a forum to speak 

directly to their peers about the objectives 

and vision for the group. Through an 

interactive session facilitated by Brian Salter 

and Kerry Willcock, the meeting identified 

several areas for the group to cover, ranging 

from practice management through to 

specific regulatory matters. These will now 

be reviewed and prioritised, with appropriate 

working groups established. 

The ACLA GC100 is constituted of peers 

who have significant experience and 

knowledge that can be shared to help the 

in-house counsel profession, and harnessed 

to contribute a unique practice-based legal 

voice to national policy debate. The work of 

the GC100 will benefit all in-house counsel 

as learnings and materials are shared and the 

voice of the profession bolstered by the might 

of the ASX100 companies and their peers. 

The ACLA GC100 is open to ACLA members 

who are the most senior legal officer of the 

ASX100 companies, and by invitation from the 

Executive Committee, their peers from other 

private enterprises. 

GCs from a number of ASX100 companies at the launch event. 


acla.com.au 

ACLA NEWS 

ACT President 

Jane Bates 

News from ACT 

The ACT Division is excited to be starting the 

new year with the announcement that ACLA 

and the Association of Corporate Counsel 

(ACC) are joining forces. This presents a 

fantastic opportunity for members to 

benefit from the advocacy, resources, 

education and networking opportunities of 

both organisations. 

In addition to a diverse range of continuing 

professional development seminars, the ACT 

Division is pleased to announce that it will 

be running a ‘soft skills’ program across the 

course of the year. With the assistance of 

Joanna Maxwell, career coach and founder 

of Work in Colour, these sessions will equip 

members with the skills to take control of their 

careers – including learning how to say no and 

mastering the elusive art of work/life balance. 

Keep your eye on the ACLA website and 

newsletter for further details. 

The ACT Division would also like to welcome 

Michael Bussing and Jane Young, lawyers from 

the Department of Industry, who have recently 

joined the Executive Committee. If you are 

looking for ways to get involved and support 

the in-house profession, please get in touch 

via membership@acla.com.au. We are always 

on the lookout for enthusiastic members to 

join the Committee and help us to make a 

difference for in-house lawyers in the ACT 

and surrounds. 

VIC President 

Mei Ramsay 

News from VIC 

Welcome back everyone! I hope you all 

had a great break over the holiday period. 

The VIC Committee is well and truly back 

into the swing of things, with the finishing 

touches being put in place for the 2015 ACLA 

Corporate Counsel Day® and the 2015 CLE 

program filling fast. 

The VIC ACLA Corporate Counsel Day® is 

planned for Thursday 19 March 2015. The 

theme for this year is ‘More Than a Lawyer 

– The Unique Value of In-House Counsel’. 

This theme was created by Lucy Sedgwick, a 

member of the ACLA Vic Division Committee 

and chair of our Corporate Counsel Day Sub- 

Committee. As many of you may have heard, 

Lucy passed away in January of this year. Lucy 

exemplified the “More than a Lawyer” theme, 

she was a great lawyer and a wonderful 

contributor beyond her workplace. Lucy was 

always full a great ideas and new challenges 

for the Committee to consider. She took on 

any task with enthusiasm and dedication, and 

the ACLA Corporate Counsel Day® program 

is a testament to Lucy’s hard work and 

insightfulness into what it takes to be a great 

in-house counsel. Lucy will be deeply missed 

by me and the Committee and the wider 

ACLA community. 

For the rest of 2015, the CLE Sub-Committee 

has planned both a mix of substantive law 

seminars, and soft skill seminars, with a few fun 

social events thrown in as well. 

Highlights from the CLE program to date 

include our Negotiations Skills series; the 

annual Capturing IP in your business seminar; 

and a new seminar focussing on getting 

your point across. We have also reintroduced 

our Commercial and Financial Acumen 

workshops, which are always well received by 

in-house lawyers looking for that extra bit of 

financial literacy. 

I look forward to seeing many of you at our 

ACLA Corporate Counsel Day® on Thursday 

19 March, or one of the many other events 

planned for 2015. 

WA President 

Amanda Davidson 

News from WA 

Here we are at the beginning of yet another 

busy year for ACLA! 

We’ve already co-hosted two fully booked free 

CPD seminars for our members – ‘What kind 

of Trade Marks are Registrable’ and ‘Ethics: 

Lessons from Breaking Bad’s Saul Goodman’. 

It was great to see everyone at these events 

catching up with fellow ACLA members. 

On 24 March 2015, top up your CPD points 

and learn to understand and influence the 

operational teams within your organisation 

at our Commercial and Financial Acumen 

workshops. A special rate of $195 is available 

for ACLA members for this half-day course. 

The WA ACLA Corporate Counsel Day® will 

be held on Thursday, 21 May 2015, with the 

Honourable Michael Kirby as the keynote 

speaker. We expect to have the highest 

number of attendees on record for an ACLA 

CCD due to WA’s solid membership base and a 

well thought out program tailored to Western 

Australia’s corporate and government lawyers. 

You have until 23 April 2015 to take advantage 

of Early Bird Registration rates for members. 

Please check out our dedicated ACLA 

Corporate Counsel Day® website at 

acla.com.au/wa-ccd-home for more details. 

I would like to thank our WA members and the 

committee for their support with the above 

events and look forward to seeing you and 

some fresh faces at an ACLA event soon. 


15


CLASS ACTION FUNDING: 

Can lawyers compete with third party funders? 

Ashley Wharton 

Ashley Wharton is a partner in Ashurst’s 

Melbourne disputes team, with particular 

expertise in corporations and financial services 

litigation and investigations. Ashley leads the 

team representing ANZ in the exception fees 

class action, Australia’s largest ever consumer 

class action, in which the High Court has 

redefined the doctrine of penalty. 

Mark Bradley 

Mark Bradley is a senior associate in Ashurst’s 

Melbourne office, specialising in commercial 

disputes. Mark has particular expertise in 

financial services and corporate regulatory 

disputes, disputes concerning contracts 

for the operation of transport and other 

infrastructure, and civil claims arising out of 

environmental incidents. 

Litigation funding has driven the 

development of class actions in Australia, 

and increasing the availability of funding 

has the potential to fuel further growth. 

Plaintiff lawyers have recently sought to move 

into litigation funding, establishing vehicles to 

fund claims in exchange for a percentage of 

any judgment or settlement, whilst also acting 

as lawyers in the proceedings. 

In Bolitho v Banksia Securities Limited [2014] VSC 

582, the Supreme Court of Victoria concluded 

that such an arrangement was impermissible, 

because of potential for conflict between 

the lawyers’ indirect financial interest in the 

litigation and their duties to the Court. 

The decision suggests that, under the current 

law, plaintiff lawyers will rarely, if ever, be 

able to indirectly fund a claim in exchange 

for a share of the proceeds. It also has 

important implications for the debate about 

contingency fees. 

Restrictions on lawyers’ 

fee arrangements 

There is ongoing controversy about 

whether to lift the ban on lawyers charging 

contingency fees based on a percentage of 

their clients’ recovery from any judgment or 

settlement. That would enable lawyers to 

compete with third party litigation funders, 

which commonly enter funding agreements 

under which they receive a percentage of the 

proceeds of litigation. 

The Productivity Commission recently 

recommended lifting the ban on contingency 

fees, 1 dismissing concerns about conflicts of 

interest between clients and their lawyers, and 

concluding that competition between lawyers 

and funders would be positive for plaintiffs. 

The recommendation is controversial and is 

likely to be further debated in 2015. 

Lawyers are currently restricted to charging 

conditional fees, which involve an uplift, 

generally of up to 25%, on their fees in the 

event of a successful outcome. 2 Conditional 

fees provide a reward which is proportionate 

to the value of the work done rather than 

the sum recovered. Whilst fee uplifts can be 

significant, the size of typical funded class 

action settlements mean that conditional fees 

are much less lucrative than contingency fees. 

Pushing the boundaries: 

alternative funding vehicles 

The restrictions on fee arrangements have 

led plaintiff lawyers to develop alternative 

funding structures in an attempt to benefit 

indirectly from a percentage of the proceeds 

of litigation. 

Maurice Blackburn established a trust for 

that purpose but, in early 2014, withdrew an 

application for court approval for a proposed 

funding arrangement, following criticism 

of the concept by the Commonwealth 

Attorney-General. 3 

A Melbourne solicitor, Mark Elliott (Elliott), put 

a similar arrangement to the test in Bolitho. 

The decision arose in the context of a class 

action against Banksia Securities Limited, its 

directors, officers and certain other advisors. 

The action was funded by BSL Litigation 

Partners Limited (BSL). Under the funding 

agreement with the plaintiff (Bolitho), BSL 

was entitled to 30% of the proceeds of any 

judgment or settlement. 

The main investors in BSL were: 

• A superannuation fund and another 

company controlled by Elliott, who also 

acted as Bolitho’s solicitor; and 

• A company controlled by the wife of 

Bolitho’s senior counsel. 

Elliott was also a director and secretary of BSL. 

Lawyers cannot fund 

their own litigation 

Ferguson JA held that the funding 

arrangements put Elliott and senior counsel 

in a position of conflict of interest and duty, 

such that they should be precluded from 

representing Bolitho. Her Honour reasoned 

that the Court had an inherent jurisdiction to 

restrain a lawyer from acting, to protect the 

integrity of the court process. 

In her Honour’s view, the arrangement was 

an attempt to skirt around the prohibition on 

contingency fees, which was “inimical to the 

appearance of justice”. The claim was a very 

large one and Bolitho’s solicitor and senior 

counsel stood to benefit indirectly from a 

large portion of any judgment or settlement. 

That gave rise to a concern about whether 

the lawyers could comply, or be seen to 

comply, with their obligations to the Court 

by conducting the litigation with an 

objective mind. 

Her Honour accepted that, to some extent, 

similar concerns arose in the common 

situations where lawyers acted on a no win-no 

fee or conditional fee basis. The risks were 

more significant in this case, however, because 

of the much greater financial interest of the 


acla.com.au 

lawyers – the claim was for more than $100m 

and BSL stood to gain 30% of any proceeds. 

These concerns were heightened because: 

• Elliott wore “a number of hats” as solicitor 

to Bolitho and investor in and officer of 

BSL, which increased the likelihood of a 

conflict; and 

• Both Bolitho’s solicitor and his senior 

counsel were connected with BSL, so 

there was no senior independent lawyer 

representing him. 

These concerns could not be overcome by 

Bolitho taking independent advice about any 

settlement – the need for lawyers to 

act objectively arose throughout litigation, 

not just at the point of settlement. Nor was 

it sufficient that Bolitho had taken 

independent advice and consented to the 

arrangement. The concern related to their 

duties to the court. 

Ferguson JA made clear that the issue was 

the perception of justice. Her Honour did 

not need to, and did not, find that Bolitho’s 

solicitor or senior counsel had breached 

any common law, statutory or professional 

conduct rules. 

Are lawyer funding vehicles 

unregistered managed 

investment schemes? 

Ferguson JA also questioned whether 

BSL could rely on the exemption from the 

requirement to register managed investment 

schemes under the Corporations Act 2001 (Cth). 

The exemption applies to “litigation funding 

schemes” as defined under the Corporations 

Regulations 2001 (Cth). One limb of the 

definition is that “the funder is not a lawyer 

or legal practice that provides a service 

for which some or all of the fees or 

disbursements, or both, are payable only on 

success”. 4 In her Honour’s view, even indirect 

funding by a lawyer might fall outside the 

definition and require registration, which 

would mean impracticable disclosure and 

licensing obligations. 

This appears to be contrary to ASIC’s view in 

Regulatory Guide 248 and, as ASIC was not 

represented, the judge did not reach a final 

view on the point. 

The future of lawyer 

funding of litigation 

The decision largely shuts the door, under the 

current law, on lawyers taking a significant 

percentage of damages for funding claims on 

which they act. Ferguson JA left open 

the possibility that it might be permissible for 

a lawyer acting on a case to have a “modest” 

interest in a funder, and noted that both 

Bolitho’s solicitor and senior counsel were 

interested in BSL. It may be that plaintiff 

lawyers will seek to develop alternative, 

permissible structures. Obstacles will 

remain, including: 

• As the judge pointed out, the use of 

lawyer-controlled funders subverts the 

regulation of lawyers’ fees, which only 

permits conditional fees up to prescribed 

limits. Any additional benefit from the 

proceeds of litigation arguably undermines 

that considered scheme of professional 

regulation, one purpose of which is to 

ensure that lawyers are not subject to 

inappropriate incentives to breach their 

ethical duties; and 

• The recent Victorian Court of Appeal 

decision in Treasury Wine Estates Ltd v 

Melbourne City Investments Pty Ltd [2014] 

VSCA 351. In this class action, the lead 

applicant was a company controlled by the 

same solicitor, Elliott, who was acting as 

solicitor on a no win-no fee basis. 

The action was struck out as an abuse 

of process because its purpose was to 

generate legal fees for Elliott. This continues 

a general trend towards judicial caution 

about novel lawyer-led business models in 

class actions. 

The Bolitho decision also makes an important 

contribution to the debate about contingency 

fee arrangements. Traditionally, a major 

objection to contingency fees has been the 

risk of conflicts of interest between lawyer 

and client. Bolitho highlights a different 

problem; the entitlement to a percentage of 

the proceeds, particularly in large class action 

claims, has the potential to cloud lawyers’ 

judgment and prevent them from properly 

fulfilling or being seen to fulfil their duties 

to the court. That concern arises at all stages 

of the litigation and cannot be cured by 

obtaining independent advice for the plaintiff. 

It applies as much to solicitors as to counsel, 

particularly under modern Australian civil 

procedure requirements which emphasise 

a more cooperative and “cards on the table” 

approach from the outset of litigation. 

Elliott’s attempt to circumvent the ban on 

contingency fees has thus highlighted an 

important reason for caution about reform in 

this area. 

Footnotes 

1 Productivity Commission, Access to Justice Arrangements 

(3 December 2014), Recommendation 18.1. 

2 NSW is introducing this regime but it is not yet in force. 

Presently, conditional fees are prohibited for 

damages claims. 

3 http://www.smh.com.au/business/road-to-courts-paved- 

with-gold-but-theres-a-crackdown-looming-20140725- 

3cku3.html 

4 Corporations Regulations 2001 (Cth), Reg 5C.11.01(1)(b)(vi). 


17


LEGAL PROFESSION UNIFORM LAW: 

Regulation of in-house lawyers is about to change 

Michael McGarvie, Legal Services Commissioner and CEO of the Legal Services Board Victoria discusses the 

changes in-house lawyers face in Victoria with the introduction of the Legal Profession Uniform Law. 

Michael McGarvie 

Michael McGarvie is the Legal Services 

Commissioner and CEO of the Legal Services Board. 

The Uniform Law creates some unique 

transitional issues for in-house lawyers. 

ACLA has recently made a number 

of submissions to the Legal Services 

Council seeking clarification and making 

recommendations on how these issues 

will be managed under the Legal 

Profession Uniform Rules. 

The submissions focus on the following 

aspects of the Uniform Law: 

• admission requirements (including the 

academic qualifications and practical 

legal training pre-requisites); 

• supervised legal practice requirements; 

• the licensing of foreign lawyers; and 

• the definition of “related entity”. 

These submissions can be found on the 

ACLA website at 

http://www.acla.com.au/resources/ 

consultation-papers. 

As in Victoria, NSW practitioners 

will continue to deal with their local 

regulatory body on admission and 

practising certificate matters under 

the Uniform Law. 

The most recent push for truly national 

legal profession regulation began 

before I was appointed Legal Services 

Commissioner in Victoria. The Council 

of Australian Governments added these 

reforms to its agenda in 2009 with the goal 

of establishing a single, Australian legal 

profession regulatory regime to simplify and 

improve the effectiveness of legal profession 

regulation. The benefits expected to flow 

from the reforms are enhanced consumer 

protection, reduced compliance costs 

for law firms and lawyers and simplified 

administration. Now, 5 years later, I am pleased 

to see this project coming to fruition. 

The reforms are not yet ‘national’ – only 

Victoria and NSW will be on board when 

the Legal Profession Uniform Law initially 

commences. I am however, optimistic that 

COAG’s goals will be largely achieved and I 

hope other jurisdictions will join when they 

see the benefits realised across our two states. 

With a mid-2015 commencement anticipated, 

the purpose of this article is to assist in-house 

lawyers in Victoria to prepare for legal practice 

under the Uniform Law by identifying what 

will change and what will stay the same for 

Victorian corporate and government lawyers. 

In-house lawyers in NSW should refer to 

their local regulator and the Legal Profession 

Uniform Law Application Act 2014 (NSW). This 

article is not an exhaustive guide to the new 

framework. Indeed, until the subordinate 

legislation (currently under development) 

is made, it is not possible to provide 

comprehensive guidance beyond the text of 

the Uniform Law. I encourage you to familiarise 

yourself with the new legislation and the 

draft subordinate legislation (Legal Profession 

Uniform Rules) and check the Victorian Legal 

Services Board and Commissioner’s website for 

the latest information. 

Uniform Rules may be made for any matter 

the Uniform Law requires or permits to be 

specified in the Uniform Rules, or that is 

necessary or convenient for carrying out or 

giving effect to the Uniform Law. 1 The breadth 

of that rule-making provision should be borne 

in mind when reading the Uniform Law and 

draft Uniform Rules. 

What Won’t Change for 

Victorian In-house Lawyers 

The Uniform Law includes transitional 

arrangements to minimise disruption caused 

when the Uniform Law commences. For 

example, practising certificates granted 

to in-house lawyers under current laws 

will continue to have effect. 2 Transitional 

arrangements for government lawyers are 

covered below. 

Beyond the transitional period, the Uniform 

Law re-affirms a number of the substantive 

legislative rights, responsibilities, approaches 

and objectives applied under current laws. 

Practising Certificates 

In-house lawyers will still lodge their practising 

certificate applications with the Victorian Board 

if Victoria is their principal place of practice. 3 

Conditions authorising a practising certificate 

holder to engage in legal practice under 

Victorian law as a corporate lawyer will be 

maintained. In some areas, such as government 

legal practice, conditions will be expanded. 4 

Professional Indemnity Insurance 

Generally, lawyers will still be prohibited from 

engaging in legal practice unless they hold 

or are covered by an approved professional 

indemnity insurance policy. 5 Corporate 

and government lawyers will likely remain 

exempted from this requirement (unless 

insurance is needed to cover volunteer work 

at a community legal service or other pro 

bono work). 6 Such an exemption is in the draft 

Uniform Rules being considered by the Legal 

Services Council. 7 

Fidelity Fund Contributions 

Government and corporate lawyers (as well as 

barristers and certain other lawyers) will still be 

exempt from the requirement to pay annual 

contributions to the fidelity fund set by the 

Victorian Board. 8 

Pro Bono Legal Work 

In-house lawyers holding practising 

certificates as government or corporate 

lawyers will remain entitled to engage in 

legal practice as volunteers with community 

legal services, or otherwise on a pro bono 

basis. 9 They will still need to be covered by an 

approved insurance policy to do so. 10 


acla.com.au 

What Will Change for Victorian 

In-house Lawyers 

Corporate Lawyers and Related Entities 

Under the Uniform Law, a corporate 

legal practitioner is “…an Australian legal 

practitioner who engages in legal practice 

only in the capacity of an in-house lawyer 

for his or her employer or a related entity…” 

(emphasis added). 11 This means corporate 

lawyers will be able to provide legal services 

to related entities of their employer without 

needing to obtain a principal practising 

certificate and register as a sole practitioner. 

In-house Lawyers and Privilege 

The Uniform Law clarifies that in-house 

lawyers who provide legal services as 

corporate or government lawyers do not lose 

the professional privileges of Australian legal 

practitioners. 12 Similarly, client legal privilege 

(and other legal professional privilege) is 

explicitly not excluded or otherwise affected 

because an Australian legal practitioner is 

acting as a corporate or government lawyer. 13 

Government Lawyers and Practising 

Certificates 

Government lawyers will generally have to 

hold practising certificates. 14 A government 

lawyer is a person who engages in legal 

practice only: 

• as an officer or employee of a government 

authority; or 

• as the holder of a statutory office of the 

Commonwealth or of a state or territory; or 

• in another category specified in the 

Uniform Rules. 15 

Unlike the Legal Profession Act 2004 (Vic), the 

Uniform Law will not automatically exempt 

government lawyers from the requirement 

to hold a practising certificate. Consequently, 

most government lawyers practising for 

government agencies and departments who 

do not currently hold a practising certificate 

will need to apply for one and pay the 

relevant fee. 


Certificates – Exceptions 

There are three exceptions to the 

requirement for government lawyers to 

hold practising certificates: 

1. those who are not engaging in legal 

practice. ‘Engage in legal practice’ is 

defined to not include engage in policy 

work (which, without limitation, includes 

developing and commenting on 

legal policy) 16 ; 

2. non-lawyers (that is, those who have not 

been admitted) who are permitted to 

engage in legal practice because of the 

exemption provided by Victorian law 17 , will 

continue to be allowed to do so under the 

Uniform Law. Those non-lawyers 

must, however, have been engaged 

in legal practice within the 12 months 

immediately before the commencement of 

the Uniform Law 18 ; 

3. people engaged in legal practice under the 

authority of a law of the Commonwealth 

or of a state or territory (other than the 

Uniform Law) may engage in legal practice 

without a practising certificate. 


Certificates – Supervised Legal Practice 

Government lawyers granted practising 

certificates under the Uniform Law will 

need to complete a period of supervised 

legal practice. 19 

Transitional allowances will, however, 

minimise the impact of the new requirement 

for government lawyers to hold certificates. 

Government lawyers who, before the Uniform 

Law commences, fell within the Victorian 

exemption noted above 20 , can count their 

prior legal practice towards the supervision 

period required of new certificate holders. 21 In 

many cases I expect the supervision period to 

be completely offset. 

The Next Steps 

As well as ensuring the Victorian Board 

and Commissioner are prepared for the 

commencement of the Uniform Law in Victoria, 

my staff and I are undertaking an educational 

campaign to engage with individuals and groups 

with an interest in the legal profession. This will 

be done in conjunction with the Courts and 

professional associations. This engagement 

will continue to develop into a collaborative 

process involving all areas of the Victorian legal 

profession and consumers of legal services across 

the State. 

The Victorian Board and Commissioner’s website 

will continue to be refreshed with detailed 

information on the Uniform Law, and bulletins 

and fact sheets will be published for barristers, 

solicitors and consumers explaining how the 

changes will affect them. We will continue to 

work closely with our NSW colleagues, the new 

inter-jurisdictional bodies and the professional 

associations to ensure that, as the Uniform 

Law and Rules are implemented, there will be 

minimal disruption to both your own practice 

and to client services. 

Once underway, we will all be responsible 

for making the new scheme work, deliver 

efficiencies and harmonise regulation. The early 

success we achieve in Victoria and NSW will 

provide the acid test for its perceived value to 

the rest of the country. Consumers and lawyers 

alike are entitled to hope that by this uniform 

scheme the goal of a single, nationwide system 

of regulating lawyers becomes a reality. 

Footnotes 

1 Legal Profession Uniform Law Application Act 2014 

sch 1 cl 419. 


sch 1 sch 4 cl 12. 

3 Legal Profession Uniform Law Application Act 2014 sch 1 cl 44. 



sch 1 cl 211. 

6 Explanatory Memorandum, Legal Profession Uniform Law 

Application Bill 2013 (Vic) 55. 

7 Legal Profession Uniform General Rules 2014, consultation 

draft r 76 (27/11/2014). 

8 Legal Profession Uniform Law Application Act 2014 s 73 

and sch 1 cl 225. 


sch 1 cl 47(5). 


sch 1 cl 211. 


sch 1 cl 6(1). 


sch 1 cl 38(1). 


sch 1 cl 38(2). 



sch 1 cl 6(1). 


sch 1 cl 6(1). 

17 Legal Profession Act 2004 (Vic) s 2.2.2(2)(g). 

18 Legal Profession Uniform Law Application Act 2014 s 169. 


sch 1 cl 49. 

20 Legal Profession Act 2004 (Vic) s 2.2.2(2)(g). 

21 Legal Profession Uniform Law Application Act 2014 s 169. 


19


ACLA NEWS 

QLD President 

Karen Grumley 

News from QLD 

Let me take this opportunity to introduce 

myself as the new Qld Division President. I 

have been a member of ACLA for 6 years and 

I am honoured that my fellow Qld Committee 

members thought fit to elevate me from Vice- 

President to President late last year. I hope 

that we are able to continue the growth in 

membership we have been experiencing – 

inevitably increasing our importance as the 

voice for in-house counsel in Queensland. 

I would like to thank our outgoing President, 

Lisa Lombardi, for her tireless effort over the 

past 12 months. Thanks Lisa! 

In Queensland we finished 2014 in style with 

a very well attended end of year member’s 

lunch at The Fix Restaurant, Port Office Hotel. 

It was a great occasion to celebrate the 

successes of 2014 and discuss with those in 

attendance our forecast for 2015 – including 

being able to provide a stronger local 

membership offering. 

We have an exciting CLE program unfolding 

for the year ahead – with upcoming sessions 

focusing on duties under the WHS Act; and 

addressing the emerging competition law risk 

for procurement and distribution strategies. 

Most notably, we are excited for the Qld 

ACLA Corporate Counsel Day® scheduled for 

30 April. We are holding the conference at 

the Novotel again this year and expect that 

the theme ‘The Many Hats of In-house’ will 

provide our members with sessions designed 

to give them the skills to manage their every 

expanding roles. Further information and 

registration details are available 

at acla.com.au/qld-ccd. 

In line with our desire to provide more events 

to our non-Brisbane based members, we 

welcome the ACLA National Conference and 

In-house Lawyer Awards to the Gold Coast 

in November. It is indeed ‘the game changer’, 

and we hope to see you there. 

If you have any ideas or burning desire for 

a particular issue to be addressed in our 

CLE program for 2015, please email us at 

membership@acla.com.au. We would love 

to hear from you! 


acla.com.au 

MY EXPERIENCE: NEW TO IN-HOUSE 

Samantha Redfern, Senior Corporate Lawyer, Origin Energy 

After spending my entire legal career 

working in private practice, I have 

found the move to an in-house role 

with Origin Energy to be a challenging, but 

refreshing, change. 

My purview as a Senior Corporate Lawyer 

helping to deliver the APLNG Project is 

broad. Involvement in such a substantial and 

dynamic project means that I service several 

commercial clients on a range of matters 

involved with the project. Every piece of work 

that I undertake is unique and stimulating – 

there is no monotony in the role. 

Legal issues touch on all aspects of the 

business, and the proximity to my clients 

ensures engagement on commercial 

arrangements from genesis to fruition. In 

private practice you are often removed from 

the commercial discussions that precede 

the legal work. It is gratifying to be included 

in the considerable phase dedicated to the 

commercial efforts before briefing external 

lawyers. I’m not sure that I appreciated the 

significance of these preliminary steps before 

moving in-house. I’m now fully aware of the 

substantial amount of time committed to 

the development stage of commercial 

proposals or projects, which in some cases 

are not progressed. 

The commercial environment within the 

segments of the business I service is energetic 

and fervent, given many are dedicated to 

ensuring the delivery of the project. This 

fast paced nature requires lots of stamina to 

stay on top of the evolving work streams. It 

also means that often you are not afforded 

long periods of time to complete legal tasks. 

Prioritising responsibilities is a constant 

challenge. The frequency of meetings during a 

day surprised me. Physically working adjacent 

to my clients, in most cases on the same 

floor, means meetings provide immediacy of 

contact. I believe this to be a great benefit. 

I now recognise that the way an in-house 

lawyer is expected to operate is vastly different 

from that of a lawyer in private practice. 

Adaptability and flexibility is important given 

the diverse range of work you are asked to 

deal with. I’m often confronted with issues 

or matters where I have no prior exposure. 

A move in-house typically means you are 

no longer expected to be a specialist in a 

particular area of law. My private practice 

experience has equipped me with the skills to 

undertake new matters confidently. Reliance 

on your gut feeling about issues becomes 

much more important in an in-house role. 

Sometimes you need to provide initial 

opinions swiftly before verification. These 

views always need to be qualified, but more 

often than not they prove to be accurate. 

An ability to make prompt decisions is an 

essential part of an in-house environment. 

Progress with commercial resolutions would 

otherwise be delayed. 

The foremost attribute for an in-house role is 

to bring commerciality to your legal practice. 

The business definitely values a lawyer who 

understands their commercial drivers and 

provides commercially focused solutions 

and advice. 

It is an interesting corollary that after years in 

private practice where, as a lawyer, so many 

others provide support to you as the core 

profit generator, as in-house counsel I am 

providing a support function for the business. 

Our legal team is quite large comparatively, 

and I have been struck by the collegiate nature 

of the team. There is a terrific culture within 

the legal team, and I have enjoyed working 

so collaboratively with the group. Certainly 

working in an open plan environment rather 

than an office promotes this. 

Working in-house has provided some insight 

into what commercial clients are looking for 

from its external lawyers. My main gripe is 

that advices need to be relevant, concise and 

commercial. I appreciate when a summary of 

the issues and recommendations is included. 

The business is not interested in a voluminous 

advice that analyses the concerns. It is 

frustrating to have to condense the external 

advice for the business. External providers 

also need to be prompt with legal work. 

Often a deadline is set by the upper echelons 

of the business, and the advice needs to be 

considered by several people in order to 

determine next activities. 

I have had the opportunity to work with some 

exceptional external lawyers since moving 

in-house. External lawyers that stand out are 

those that are cognisant of the challenges 

that I face as an internal lawyer, and make 

a noticeable effort to arm me as much as 

possible to tackle those tasks. 

Though I became interested in making a 

move to an in-house role several years ago, 

it was a process that required patience and 

perseverance. I had extensive banking and 

finance experience. To facilitate an in-house 

move I sought to broaden my experience to 

include energy and resources. The serendipity 

of being able to work on a ground breaking 

project at such a vibrant and reputable 

organisation is not lost on me. 

My move in-house has been rewarding. I 

have quickly been able to immerse myself in 

the business, ensuring that I am a relevant 

support. I relish working with a remarkable 

legal and commercial team on such a 

significant project. I would recommend the 

transition to an in-house role as an alternative 

option if you are keen to be an instrumental 

part of a business (and closer to the ‘action’) 

while continuing your legal practice. 

If you would like to share your 

experience moving in-house 

please contact Emma Langoulant 

emmalangoulant@acla.com.au 


21


RECENT DEVELOPMENTS 

IN TRADE MARK PRACTICE: 

The ins and outs of what makes a trade mark registrable 

Leanne Oitmaa 

Leanne Oitmaa is Special Counsel at 

Watermark, working both as a lawyer and 

patent and trade marks attorney. Leanne 

enjoys assisting companies protect and enforce 

their trade mark rights in Australia and around 

the world, devising trade mark protection 

strategies, conducting strategic portfolio 

reviews, and acting in contentious matters. 

Leanne’s extensive experience covers all aspects 

of trade marks, including filing and prosecution, 

oppositions, infringement and litigation, 

general advice, and drafting agreements 

and licenses. 

No doubt you would be familiar 

with receiving emails along the 

following lines: 

Dear Legal Team, Here are the details we have 

chosen for our new product line. We are ecstatic 

about the new name - it describes our new 

product line perfectly. We have already designed 

the artwork for our launch next week. Sincerely, 

Marketing Team. 

Our marketing colleagues have tremendous 

skills in creating names that will sell a product 

to a customer, but often protecting those 

names by a registered trade mark creates 

nothing but headaches for the legal team. 

Not only do checks need to be done to gauge 

the risk of trade mark infringement prior to 

launch, but an equally important and often 

overlooked consideration is whether the 

name is sufficiently distinctive to satisfy trade 

mark registrability rules and afford sufficient 

scope to keep competitors at bay. 

This article summarises the types of signs that 

satisfy trade mark registrability rules and the 

benefits of such a registration. A recent High 

Court of Australia decision on trade mark 

registrability has provided an revised test for 

assessing registrability of marks which may 

offer more scope to register trade marks, in 

particular those stemming from a foreign 

word. The impact of the decision will be 

particularly significant for businesses who 

deal in imported products that are labelled 

with words in languages other than English, 

and may open the door to the registration of 

many marks that would previously have been 

considered unregistrable. 

Trade Mark Registrability Rules 

– What Can Be Registered? 

The Trade Marks Act 1995 (Cth) defines a trade 

mark as a sign used, or intended to be used, 

to distinguish goods or services dealt with or 

provided in the course of trade by a person 

from goods or services so dealt with or 

provided by any other person 1 . A sign includes 

any letter, word, name, signature, numeral, 

device, brand, heading, label, ticket, aspect of 

packaging, shape, colour, sound or scent 2 . 

The first step when considering whether a 

sign can be registered as a trade mark is to ask 

whether the sign can act to distinguish goods 

or services from others. Is the mark a purely 

descriptive word that only has limited, if any, 

inherent capacity to distinguish one trader’s 

goods from another? As an example, trying 

to use the word ‘tasty’ to describe a new food 

product will likely be seen as describing an 

aspect of the food, rather than a distinctive 

trade mark or brand associated with the 

food, affording very little, if any, capacity to 

distinguish goods. 

Whether or not a sign can act to distinguish 

goods or services is one of the threshold 

requirements considered by IP Australia 

when assessing a trade mark for registration 3 . 

If, in the opinion of the assessment officer, 

the sign is not capable of distinguishing the 

goods or services from the goods or services 

of other persons, then the application must 

be rejected. 

Examples of Often Rejected Signs 

Examples of signs that are often rejected as 

not having sufficient inherent capacity to 

distinguish goods or services include: 

• Words describing the kind, quality, quantity, 

intended purpose, value, time of production 

of goods or services, for example WHOPPER 

for hamburgers was initially rejected, as was 

APP STORE for retail store services, or READY 

IN ONE HOUR for photo services. 

• Geographical names which have a 

connection to the goods/services, 

for example MICHIGAN for earth 

moving equipment. 

• Surnames with more than 750 entries on 

the electoral role, eg SMITH. 

• Combinations of everyday English words 

that have an inherent connection with the 

designated goods/services, for example 

ROACH FREE bug sprays. 

• Single letter and two letter signs, for 

example OJ. 

• Acronyms or abbreviations for common 

words, for example ATM. 

Overcoming IP Australia Rejections 

Being at the receiving end of a rejection from 

IP Australia may be deflating and make you 

wonder whether you made the right call 

approving the marketing team’s new name. 

But a rejection is far from the end of the 

road. In many cases assessment officers have 

misconceived views of the relevant industry. 

Words and signs that may be, in theory, 

everyday words may still act to distinguish 

goods or services in a specific industry. 


acla.com.au 

Providing arguments along these lines can 

often helpfully change the assessment 

officer’s opinion. 

Alternatively, if the sign has already been 

used to distinguish your company’s goods 

or services, or steps have already been taken 

for the sign to be so used, then providing the 

assessment officer with examples of that use 

(or intended use) is often helpful. Just ensure 

the examples that are provided show the 

sign being used to distinguish the goods or 

services, and not merely describing a feature of 

the goods or services. 

The Revised Registrability Test 

in Cantarella v Modena Trading 

On 3 December 2014 we were privileged to 

have the High Court of Australia clarify the 

test to be applied in determining whether 

a sign has the necessary distinguishing 

character for registrability in Cantarella Bros Pty 

Ltd v Modena Trading Pty Ltd 4 . [I say ‘privileged’ 

as Cantarella is the first High Court decision 

to consider this aspect of trade mark law 

since the enactment of the Trade Marks 

Act 1995 (Cth)]. 

Brief Facts 

The trade marks that were considered in this 

case were ORO and CINQUE STELLE, both 

used in relation to coffee. 

Cantarella had secured registration of its trade 

marks ORO and CINQUE STELLE for coffee and 

related products. Cantarella sued Modena 

for trade mark infringement after discovering 

Modena was using identical marks on its own 

imported coffee. 

Modena argued in its defence that ORO and 

CINQUE STELLE, translating from Italian to 

‘gold’ and ‘five stars’ in English, merely describe 

the quality of the coffee so did not pass the 

threshold ‘inherently capable of distinguishing’ 

requirement. Modena ultimately sought 

cancellation of Cantarella’s registrations. 

The High Court Registrability Test 

The High Court defined a two prong test for 

assessing whether a trade mark is inherently 

capable of distinguishing the designated 

goods or services: 

1. What is the ‘ordinary signification’ of the 

words proposed as trade marks to any 

person in Australia concerned with the 

relevant goods or services? 

2. Do, or will, other traders legitimately 

need to use the word in respect of their 

own goods? 

In assessing the first prong, the Court held, ‘If 

a foreign word contains an allusive reference to 

the relevant goods it is prima facie qualified 

for the grant of a monopoly. However, if the 

foreign word is understood by the target 

audience as having a directly descriptive 

meaning in relation to the relevant goods, 

then prima facie the proprietor is not entitled 

to a monopoly of it’ 5 . 

Applying the test to the facts in Cantarella, the 

High Court concluded that the words ORO 

and CINQUE STELLE did not convey a meaning 

or idea sufficiently tangible to anyone in 

Australia concerned with coffee goods as 

to be words having a direct reference to the 

character or quality of the goods. Surprisingly, 

this was despite Modena leading evidence 

that many other companies were in fact 

using the same words on their own coffee 

(in conjunction with their own brands). The 

marks ORO and CINQUE STELLE were found 

to be inherently capable of distinguishing 

Cantarella’s coffee from those of others. 

What Should We Do Now? 

Taken at face value, the High Court’s decision 

has lowered the bar for when a trade mark 

will be considered ‘inherently adapted to 

distinguish’ which is good news for brand 

owners. This is particularly the case for 

foreign language marks which may be highly 

descriptive in a foreign language, yet not 

have such a descriptive signification to an 

Australian user. A review of your company’s 

trade mark portfolio may uncover existing 

marks that have previously been rejected by 

IP Australia or not previously considered for 

registration, which could now be considered 

for registration. 

Securing a registered trade mark for your 

product lines is essential in any business IP 

strategy. Not only does a registration create 

a quantifiable business asset, a registration 

also serves as a warning to competitors to 

‘steer clear’ of your territory, results in the 

simplest cause of action to run against 

competitors encroaching on your rights, and 

provides a defence to an allegation of trade 

mark infringement. 

Cantarella is just one example of how 

registered marks can be successfully used to 

protect the economic output and reputation 

built up in signs and brands, even those 

that may appear, on first glance, to lack the 

required capacity to distinguish. 

On the flip side, companies also need to 

consider the possibility of an increased risk of 

infringement for imported products bearing 

foreign language terms. Terms might be 

in common use or non-distinctive in their 

country of origin but registrable in Australia. 

Cantarella also reinforces the need for freedom 

to operate searching to be undertaken before 

a new brand is launched to the market. 

Footnotes 

1 Section 17 Trade Marks Act 1995 (Cth) 



4 [2014] HCA 48 

5 At paragraph [71]. 


23


UPDATE FROM THE COURTS: 

Maintaining privilege in transactions and investigations. 

Lessons for 2015 

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. 

The following two cases offer salutary 

lessons about how conduct during 

the course of an investigation or 

transaction can optimise – or compromise – 

the protection that may be gained from legal 

professional privilege. 

Corporate investigations 

The Victorian Supreme Court has reiterated 

the need to look closely at surrounding 

circumstances and evidence for proof that 

documents created as a part of an internal 

investigation are privileged. 1 

Two and a half years after the tragic Black 

Saturday bush fires, the Police advised of a 

change in the focus of their investigations 

from fraud to the electrical assets of a power 

company. Soon after, the power company 

formed a board sub-committee, whose 

chair commissioned the production of 

reports to analyse the company’s electrical 

assets in the vicinity of the bushfires (the 

‘technical analysis documents’). 

In subsequent litigation, the company 

refused to produce the documents on the 

basis of privilege, arguing that the purpose 

of creating the documents was to instruct 

its lawyers for the provision of legal advice 

and representation. 

The Court’s reasoning 

The central issue occupying the Court’s 

attention was whether the company 

had proven that the technical analysis 

documents were created for the dominant 

purpose of instructing lawyers to obtain 

advice and receive representation. 

Central to this consideration were the 

circumstances in which the documents were 

created; who instructed their preparation 

and for what purpose, the role of the subcommittee, 

the duration of time taken to 

prepare the relevant documents, what other 

corporate purposes may have been served by 

their creation and what other evidence, not 

called by the company, may have cast light 

on these issues. 

The Court criticised the scant evidence 

in respect of these issues; there were no 

minutes of the sub- committee, the chair 

who instructed the preparation of the 

documents was not called, the dominant 

purpose was not addressed with sufficient 

specificity and there was no evidence as to 

what other uses may have been made of 

the documents. 

Importantly, the Court observed that one 

would expect, in the ordinary course of 

business, an investigation to occur into the 

performance of assets in such circumstances. 

Therefore, it was open to infer that there 

were non-privileged purposes for the 

preparation of the technical documents, 

including for example operational or statutory 

issues that required communication to the 

board or regulators. 

In these circumstances, the Court held that 

the company had not proven that 

the dominant purpose of the documents 

was privileged. 

What does this mean for you? 

To help sustain privilege: 

• Take a clear minute of the purpose of 

the establishment of a sub-committee, 

and the resolutions reached by 

that sub-committee. 

• Take a clear record of what the 

investigation relates to; if it is to assist 

lawyers to advise on an investigation, say 

that. If it is not for use in the ordinary 

course of business, say that. If there 

are multiple purposes, be prepared to 

explain why the privileged purpose is the 

predominant purpose. 

• Ask yourself if the one report is 

appropriate for multiple purposes; 

consider splitting a factual 

investigation from an assessment 

of liability. 

• Be prepared to prove your position 

with ‘focused and specific evidence’: for 

example, if the chair instructs a report, 

call the chair to give evidence; prove 

the role and the purpose of the subcommittee 

in supporting litigation; and 

address in evidence both privileged and 

non-privileged purposes. 

Third party advisers in a transaction 

The Federal Court has reminded lawyers 

and clients alike that the dominant 

purpose of transactional documents may 

well be for the transaction, and not for 

legal advice. 2 

Asahi Holdings (Asahi) commenced 

litigation concerning its purchase of 


acla.com.au 

a beverage company. Asahi objected 

to producing certain transactional 

documents on the basis that they were 

subject to legal professional privilege. 

The disputed documents were sent 

during the course of the transaction 

and comprised (amongst others): 

• emails between the lawyers for Asahi and 

Asahi’s financial advisers; and 

• internal emails between the financial 

advisers which allegedly related to advice 

from the lawyers. 

The Court’s reasoning 

The Court inspected each of the 

disputed documents ‘with considerable 

care’, and looked closely at whether 

Asahi had proven that each of the 

documents was created for the 

dominant purpose of obtaining or 

providing legal advice. For the most 

part, the Court was not persuaded. 

In so deciding, the Court looked closely at the 

evidence, making the following observations: 

• communications with a third party adviser 

to a client’s lawyer or to the client may be 

privileged, even without the third party 

being an agent of the client; 

• the purpose of communicating with 

commercial advisers is often for the purpose 

of commercial (non-legal) advice; 

• the ultimate inclusion of lawyers’ comments 

into draft documents does not of itself 

create a privileged draft; and 

• the mere act of a commercial adviser 

copying a lawyer on correspondence is 

not persuasive. 

What does this mean for you? 

To help sustain privilege in correspondence 

with third party advisers: 

• Consider whether the third party 

can properly be appointed as 

your agent; while the Federal 

Court has extended privilege to 

communications with third parties 

for the purposes of advice privilege, 

State courts do not consistently 

adopt this view. 

• Be aware in your communications 

with third party advisers; if the 

communication is for the purpose 

of commercial advice, as distinct 

from legal advice, it will not 

be privileged. 

• Be careful amending commercial 

advice prior to sending it to lawyers; the 

more you amend, the more likely the 

commercial advice will have been for 

your corporate purpose, rather than for 

the purpose of legal advice. 

• The mere inclusion of legal advice 

in a draft transactional document 

will not make the draft privileged; 

always consider the dominant 

purpose of the draft. 

• Exercise caution when forwarding 

legal advice to commercial advisers. 

Unless the dominant purpose of 

forwarding the email is to assist 

in obtaining advice, it is unlikely 

that the communication will be 

protected by privilege. 

• Merely copying a lawyer, whether in-house 

or external, into an email will not of itself 

attract legal professional privilege. 

Footnotes 

1 Ausnet Electricty Services Pty Ltd (formally SPI Electricity Pty 

Ltd) v Liesfield [2014] VSC 474. 

2 Asahi Holdings (Australia) Pty Ltd v Pacific Equity Partners 

Pty Limited (No 4) [2014] FCA 796. 

THE MANY 

HATS OF IN-HOUSE 

ACLA Corporate Counsel Day ® 

QLD 2015 

Thursday 30 April 2015 

Novotel 

Rowena McNally 


25


DO TRANSACTIONAL LAWYERS 

ACTUALLY ADD VALUE? 

A case for the transactional lawyer in an imperfect world 

Kate Koidl 

Kate is a Senior Associate at Minter Ellison 

who specialises in public and private M&A 

transactions. Kate has significant experience 

drafting and negotiating sale agreements and 

joint venture documentation. Kate advises on 

share buy-backs, capital reductions, directors’ 

duties, related party transactions and other 

aspects of the Corporations Act and the 

ASX Listing Rules. Kate is also experienced in 

proceedings of the Takeovers Panel. 

In a perfect market there are no 

transactions costs, information is costless, 

investors have homogenous expectations, 

investors are rational and therefore markets 

are efficient. 

In the real world, the perfect market 

assumptions underlying the efficient market 

hypothesis (EMH) do not hold. Following the 

relatively recent global financial crisis and 

systemic failure of the banking system in 

many key financial centres across the globe, 

it is clear that the failure of many of the 

perfect market assumptions and the presence 

of irrational investors, transaction costs, 

information asymmetries and heterogeneous 

expectations has lead to mispricing, price 

bubbles and the general undermining of 

the EMH. 

It is questionable whether or not transactional 

lawyers (as distinct from litigation lawyers) add 

value to commercial transactions by actually 

creating deal value. Skeptics would consider 

lawyers to be a necessary transaction cost at 

best and at worst an unfortunate obstruction. 

In a world where the central assumptions 

of the EMH held true, there would be few, if 

any, opportunities for transactional lawyers to 

generate value. Fortunately for transactional 

lawyers, we live in a world where the perfect 

market assumptions only exist in text 

books. The failure of these perfect market 

assumptions paves the way for transactional 

lawyers to create value by reducing 

transactions costs, acting as reputational 

intermediaries and reducing regulatory costs. 

The perfect market assumptions 

do not hold true in the real world 

The fundamental role of the capital markets 

is to efficiently allocate capital. In an ideal 

market, prices will reflect fundamental values. 

In a broad sense the EMH predicts that in a 

perfect market the prices of securities traded 

in capital markets fully reflect all information 

concerning those securities. 

It goes without saying that the perfect market 

assumptions, being the central assumptions of 

the EMH, do not hold true in the real world. 

Even if we accept there is evidence that 

prices adjust to reflect new information, for 

example a target company’s share price jumps 

upon the announcement of a takeover, how 

confident can we be that this change in price 

provides evidence that the market is efficient 

and that increase in share price is justified? 

Longer-term event studies have shown that 

investors fail to quickly and accurately assess 

the full impact of corporate announcements. 

Anomalies such as the “January 

effect” and the “Weekend Effect” 

are examples which have 

undermined the EMH. 

Empirical research has found persistent 

anomalies in predicted stock market returns 

which are inconsistent with the predictions of 

the EMH and serve to undermine its validity. 

Anomalies such as the “January effect” and 

the “Weekend Effect” which show evidence 

of persistent inflated returns in the first half 

of January to smaller firms and the negative 

abnormal returns over the weekends are two 

such examples. 

More recently, the financial crisis has called 

into question the philosophy that even if not 

all investors are rational, the market will act 

rationally because arbitrageurs will seek to 

make a profit by shorting overvalued stock 

and thereby correct mispricing. 

Arbitrageurs do not always act rationally 

either. Due to inherent costs and risks 

associated with arbitrage, professional traders 

are often more inclined to ride a bubble and 

cash out before it bursts than correct market 

mispricing. Further, regulatory restrictions on 

short selling combined with the reticence of 

mutual funds to endorse short selling in their 

charters, thwarts the effect of arbitrageurs in 

correcting market inefficiencies. 

Because the perfect market 

assumptions of the EMH do not hold 

in the real world, there is scope for 

transactional lawyers to add value. 

So, accepting that we live in an imperfect 

world, how does this provide an opportunity 

for the transactional lawyer and what exactly 

does the transactional lawyer do? Perhaps 

surprisingly, there is not a straightforward 

answer to the question of what is it that 

transactional lawyers actually do. 

The benchmark test for whether or not 

lawyers add value is whether a transaction 

is worth more (in terms of the return to the 

buyer or seller or both) as a result of the 


acla.com.au 

lawyer’s contribution to the transaction, 

taking into account the fees that he or she is 

to be paid. 

The failure of the perfect market assumptions 

creates an opportunity for transactional 

lawyers to innovate and thereby improve 

the efficiency of the market. The central 

assumptions of the EMH that do not hold and 

which create the most opportunity 

for transactional lawyers to add value are 

as follows: 

• there are no transaction costs; 

• all information is costlessly available to all 

investors; and 

• investors have homogeneous expectations. 

Provided that the costs of such innovation do 

not exceed the gains, value in the sense of 

increasing the size of the pie, may be created. 

Representations and warranties 

are one imperfect solution to the 

problem of information asymmetries 

between the buyer and the seller 

One of the main costs of a transaction is the 

cost of acquiring information. From the seller’s 

perspective, it is in the seller’s best interests 

to make information available to the buyer at 

the lowest possible cost because if the seller 

withholds information or makes it very costly 

for the buyer to obtain, the buyer will naturally 

assume that the information will have a 

negative impact on the buyer’s assessment 

of the value of the business and will therefore 

want to pay less for the business. 

In addition, if the buyer’s transaction costs are 

reduced there is more of the transaction pie 

left for the seller. There is an incentive for both 

parties to cooperate to reduce information 

asymmetries between them so as to reduce 

transaction costs to the extent possible. 

Acquisition agreements commonly stipulate 

ways in which the parties will cooperate with 

respect to information sharing, information 

transfer, and information production so as to 

minimise costs and avoid duplication. 

Representations and warranties are a neat 

legal solution to the problem of information 

asymmetries between the buyer and the 

seller. Further due diligence on behalf of the 

buyer and further information production, 

collection or procurement on behalf of the 

seller may unnecessarily increase transaction 

costs in circumstances where it may be more 

efficient for the seller to warrant the state 

of affairs of particular matters, qualified by 

disclosure and possibly knowledge. 

In devising the earn out or 

‘contingent consideration’ structure, 

the lawyer has created value by 

permitting the transaction to 

proceed by aligning the expectations 

of the parties 

If buyers and sellers had homogenous 

expectations about the current and future risk 

and return of a business, there would be no 

place for lawyers in negotiations, as the buyer 

and seller would automatically agree on price. 

The “earn out” or contingent consideration 

is one such response to the issue of 

heterogeneous expectations. The earn out 

reduces the heterogeneous expectations of 

the parties by removing the uncertainty of 

future earnings and making the purchase 

price contingent upon those future earnings 

such that the purchase price is paid over 

time. Typically, an upfront payment will be 

paid together with additional payments paid 

on the basis of an indicator of performance 

such as sales or the occurrence of a future 

extraneous event such as a favourable 

outcome on litigation or on an insurance 

claim or on the post-completion achievement 

by the target company of financial and/or 

non-financial hurdles. In devising the earn 

out structure, the lawyer has created value 

by permitting the transaction to proceed by 

aligning the expectations of the parties. 

Third party lawyers can offer their 

reputation as a form of verification 

A typical task for a transactional lawyer on a 

financing transaction and sometimes on a 

corporate transaction is the production and 

delivery of a legal opinion. A legal opinion 

is generic in form and covers relatively 

straightforward matters. However, it is a 

document of significance for both the client 

and the lawyer. 

The buyer of an asset must rely on information 

provided by the seller with respect to the 

asset. The seller has a natural incentive to 

cheat and the buyer knows this so the buyer 

will require some form of verification of the 

information. Verification by the buyer may be 

too costly, inefficient or just not effective given 

the nature of the asset. The buyer will always 

be aware that the seller may have cheated. 

This is where third party lawyers can offer 

their reputation as a form of verification. 

In the example of the legal opinion, the 

lawyer offers his reputation as a ‘bond’ for a 

client’s performance. 

Transactional lawyers also add 

value by reducing regulatory costs 

The role of ‘transaction cost engineer’ or 

‘reputational intermediary’ can arguably 

be performed to a large extent by other 

professionals such as investment bankers or 

accountants. Surely lawyers must actually add 

significant value in their capacity as lawyers? 

Transactional lawyers also add value by 

reducing regulatory costs. This expertise 

includes navigating complex regulatory 

regimes, efficient tax structuring, designing 

security structures that are effective, priority 

and subordination deeds that are enforceable, 

drafting to reduce the prospect of litigation, 

ensuring that legal entities are correctly 

established, that covenant protections are 

adequate and the like. 

Fortunately for lawyers, in the real world it 

would seem that transactional lawyers can 

and do create real value. 

To read the full paper on transactional lawyers 

value by Kate Koidl visit the ACLA website. 


27


DUTY OF CARE OF CORPORATIONS 

REGARDING PURE ECONOMIC LOSS 

The decision in Brookfield Multiplex Ltd v Owners Corporation Strata Plan No 61288 

[2014] HCA 36; (2014) 88 ALJR 911 

E G Romaniuk 

Mr Romaniuk SC commenced practice as a 

Barrister in 1995 and his practice includes 

appeals, administrative law, insurance, 

commercial disputes and liability of 

professionals and service providers. He also 

maintains an extensive common law practice. 

He is a member of Jack Shand Chambers. 

R D Glover 

Ross Glover commenced practice at the Bar in 

2010 and is a member of 9th Floor Wentworth 

Chambers. He has a varied commercial practice 

including complex commercial disputes, 

professional liability, insurance and consumer 

law/trade practices. He is also a member of the 

NSW Navy Reserve Legal Panel. 

The decision in Brookfield Multiplex 

Ltd v Owners Corporation Strata Plan 

No 61288 [2014] HCA 36; (2014) 88 

ALJR 911 (‘Brookfield’) considered whether 

the builder of premises used for a structured 

commercial investment owed a duty of care to 

a strata owners corporation to guard against 

reasonably foreseeable pure economic loss 

caused by the need to repair a number of 

latent defects in the common property. 

The builder designed and constructed 

the premises for the property owner and 

developer (Chelsea Apartments Pty Ltd) 

by a contractual arrangement in 1997. The 

property owner and developer leased the 

apartments to a management company (Park 

Hotel Management Pty Ltd), which operated 

the apartments as a ‘Holiday Inn’. When the 

owners corporation came into existence it 

was the statutory agent of the owner and 

developer and it was subject to the lease 

arrangements. The effect of that structure was 

that purchasers of individual apartments were 

effectively investors in the hotel venture. The 

owners corporation had a statutory obligation 

to maintain the common property. 

The builder and the owner and developer 

had also agreed specific contractual terms for 

completion and defects and the downstream 

arrangements, including the sale agreements 

for the purchaser of the individual apartments, 

were subject to those arrangements. The 

contractual arrangements provided a 

negotiated constraint to the builder’s 

obligations beyond the requirements of 

the contract. 

The trial judge (McDougall J) held that the 

builder did not owe that duty of care. The 

New South Wales Court of Appeal (Basten, 

Macfarlan and Leeming JJA) held that it did 

but only in respect of loss resulting from 

latent defects in the common property which 

were structural or constituted a danger to 

persons or property in the vicinity, or made 

the apartments uninhabitable. The High 

Court (French CJ, Hayne, Crennan, Kiefel, Bell, 

Gaegler and Keane JJ) held that it did not. 

The overall commercial structure was 

materially unique and the contractual and 

statutory matrix provided ‘an element of 

novelty not overcome by a straightforward 

application of precedent’ (Brookfield, [23]). 

In this sense, the outcome of the Brookfield 

decision does not translate as if by template 

to other disputes between builders and those 

with an interest in the building. 

Vulnerability 

The High Court applied and developed the 

principles regarding negligence claims for 

pure economic loss earlier considered by the 

High Court in the construction context (Bryan 

v Maloney (1985) 182 CLR 609 (‘Maloney’) 

and Woolcock Street Investments Pty Ltd v 

CDG Pty Ltd (2004) 216 CLR 515 (‘Woolcock’)). 

Notwithstanding that those three decisions 

generated 11 sets of separate reasons 

(Maloney, 3; Woolcock, 4; and Brookfield, 4), 

an important feature of Brookfield is that it 

confirms the significance of establishing the 

Plaintiff’s ‘vulnerability’ before a duty of care 

will arise and that reasonably foreseeability 

of pure economic loss, without vulnerability, 

is insufficient. 

Vulnerability, practically speaking, concerns 

the Plaintiff’s incapacity or limited capacity 

to take steps to protect itself, himself or 

herself from economic loss arising out of the 

Defendant’s conduct (Brookfield, [22] applying 

Perre v Apand Pty Ltd (1999) 198 CLR 180, [118]; 

see also Brookfield [23], [51], [130] and [185]). 

Whereas the New South Wales Court of 

Appeal had applied the test as to vulnerability 

and concluded that those with an interest 

in the owners corporation had been 

vulnerable, the High Court concluded that 

the commercial nature of the venture, 

including the contractual bargain, and the 

applying legislation as to role of the owners 

corporation meant that vulnerability had not 

been demonstrated. 

In the various reasons of the members of the 

High Court matters against vulnerability being 

established included the builder assuming 

no responsibility for pure economic loss for 

latent defects beyond those imposed by the 

contract, the sophistication of the parties 

and the fact of reliance on the builder to 

do its work properly was not sufficient to 

demonstrate vulnerability (Brookfield, [3] and 

[32]-[34]). The contractual arrangements as 

to quality of work were identified as being 

demonstrative of the ability to protect 

against any lack of care by the builder 

and deny vulnerability (Brookfield, [55]- 

[58]). More directly, it was observed that a 


acla.com.au 

subsequent purchaser of a building is not in 

a position of vulnerability with respect to that 

purchaser’s risk of making an unfavourable 

commercial bargain when purchasing, and 

it was suggested that beyond the situation 

of a residential dwelling house it should be 

acknowledged that a builder has no duty 

of care to avoid a subsequent purchaser 

incurring the cost of repairing latent defects in 

the building (Brookfield, [69] and [185]). 

The decision is a further example of the 

importance that the applicable statutory 

framework and contractual arrangements 

have in informing the in-principled 

determination of the existence of a duty 

of care. In Brookfield those matters had a 

primary role in the question of vulnerability, 

although the decision points the contractual 

and statutory matters having no set or 

prescribed importance. 

Loss suffered 

Brookfield also raised question as to the nature 

of the loss suffered. It was accepted that 

the owners corporation’s loss could only be 

economic loss in respect of the costs of repair. 

As the owners corporation had not paid 

anything for the builder, a question arose as 

to whether it could have suffered a loss (for 

example, Brookfield, [67]). 

However, more importantly, and feeding back 

into the question of vulnerability, was the 

recognition that as the owners corporation 

was in the position of a subsequent purchaser, 

the loss claimed could be seen as tantamount 

to reflecting ‘the consequences of what 

really is a bad bargain made by subsequent 

purchasers of the building’ (Brookfield, [69]). 

Whether the question of loss claimed to be 

suffered is considered in the more limited 

context of recoverable loss or damage, or 

whether it is part of the broader circumstances 

relating to the existence of a duty of care, 

Brookfield highlights the importance of not 

converting an informed commercial bargain, 

which turns out to be disappointing, into 

the foundation of a claim in negligence 

where the effect of the negligence claim is 

that the agreed contractual terms cease to 

have their constraint. 

The question of a duty 

of care to another 

As the owners corporation was not the first 

owner of the building, an issue arose as to 

whether the owners corporation needed to 

establish that the builder owed a similar duty 

of care to the prior owner. Brookfield does 

not make the existence of that anterior duty 

of care a requirement, but it is noted that 

the existence of that other duty of care is an 

‘important factor relevant to the existence of a 

duty of care in respect of pure economic loss 

to a subsequent purchaser’ (Brookfield, [28]). 

ACLA Corporate Counsel Day ® 

WA 2015 

Thursday 21 May 2015 

Crown Conference Centre 

The Hon Michael Kirby 


29


MOVING FROM LAWYER TO MANAGER 

John Gelagin 

John Gelagin is a former lawyer who spent 8 

years practising as a commercial lawyer with 

firms in Sydney and London before moving 

into management roles with an international 

publishing company. He is now a business coach 

and facilitator and has delivered hundreds of 

coaching and training programmes. 

Mark Hunyor 

Mark Hunyor started his career as a Chartered 

Accountant and then had an extensive corporate 

career before making a career change in 2010. He is 

now a coach and trainer, helping people to meet the 

challenges in their working lives. 

In May 2015, John Gelagin and 

Mark Hunyor will be delivering 

two comprehensive professional 

development workshops for in-house 

counsel who have taken on management 

responsibilities. Sydney: Wednesday 

20 May and Thursday 21 May; and 

Melbourne: Wednesday 27 and Thursday 

28 May. Visit the ACLA website for details. 

In the early years of your legal career, 

you develop the attributes of a good 

lawyer. Legal concepts are mastered, 

communication skills refined and the ability 

to be persuasive grows. As memory of your 

legal textbooks fades, your ability to deliver 

practical solutions based on commercial 

reality emerges. You gain (hopefully!) a sense 

of mastery of your world and power in your 

expert knowledge. Then the promotion to 

manager arrives. It is tempting not to change 

and to cling to the security of old behaviours 

and of being a doer of legal work. You can 

easily develop a set of beliefs to support that 

course – as a manager I will stay hands-on. 

I will lead by example. What has worked thus 

far can carry on working. 

But successful managers will tell you this is not 

likely to succeed. The first step is to accept the 

need for change. It is not a case of out with 

the old and in with the new. A better analogy 

would be Russian dolls. All that you are as 

a specialist lawyer will be retained - these 

behaviours will be useful and necessary in the 

future. But around that a new, bigger entity 

needs to be developed – that of the manager. 

Much of the managerial skill set is quite 

straightforward. Planning and organising the 

team’s work, consulting, problem solving and 

disseminating information are all managerial 

activities (in Gary Yukl’s extensively researched 

taxonomy) that should not be a stretch for 

experienced lawyers. 

However the managerial skill set includes 

some more mysterious arts which are 

extremely important yet the typical lawyer 

has no relevant training. Examples include 

motivating others and team building. There 

is an enormous body of research on the topic 

of motivation but rather than reaching for 

the text book, a useful place to start might be 

to think back to the best manager you have 

ever worked for. You are likely thinking of a 

manager who you found quite unobtrusive – 

there if you needed them but not overbearing 

or prescriptive. They understood you, knew 

what you were good at and had a knack of 

giving you work that you found challenging 

and energising. Then they stayed out of your 

way while you got on with it. It may not sound 

too hard but your favourite manager had a 

good understanding of intrinsic motivation. 

Researchers Deci and Ryan have spent years 

examining the conditions required for intrinsic 

motivation to flourish. They found that we 

all have three basic psychological needs: 

competence, autonomy and relatedness. 

- Competence refers to using your strengths 

to achieve valued goals. 

- Autonomy relates to feeling that you 

have chosen the work you do and have 

discretion in how the work is carried out 

(not micromanaged!). 

- Relatedness is about having a good 

appreciation of the people you 

interact with. 

So in making the transition from specialist to 

manager a crucial reorientation is required: 

from being the specialist who is a performer 

of work and has mastery and control, to being 

the manager who focuses on creating the 

conditions for others to flourish. 

Your favourite manager was getting some 

other things right. They knew what you were 

good at and what tasks energised you. This 

capability is known as strength spotting and 

it arises through practice, not by chance. The 

key to this skill is to look for the positive, not 

to focus on the deficits. Let’s take the case 

of Claire, a young lawyer turned manager 

who has a team of two, David and Jenny. 

Claire describes David in glowing terms: 

confident, commercial, persuasive and 

impressive in meetings. On the other hand, 

Jenny is indecisive, lacks presence and seems 

to get flustered in meetings. Asked when 

Jenny had been effective, after a long pause 

Claire described a time when a regional sales 

manager came up with an idea for a sales 

promotion. The idea was great but probably 

contravened the Trade Practices Act and could 

result in significant fines. Jenny volunteered 

to take it on. She locked herself in the library 

researching, consulted external lawyers and 

built relationships within the ACCC. Slowly 

but surely she worked out a way to do the 

promotion legally. Of course, it took David 

to do the road-show and get the business 

educated in how to do the promotion but 

Jenny’s dogged hard work behind the scenes 

made it all possible. Claire came to realise 

she had not a defective team member but a 

highly effective team. She could build a team 

around Jenny’s strengths with her introverted 

personality style and David’s strengths with his 

more extroverted style. 

In summary, a new manager looking to 

develop a positive leadership style could 

focus on these things: spot strengths and 

shape your team around them. Forget about 

controlling things – focus on giving your team 

members challenging work that energises 

them and then give them autonomy. If you 

create the right conditions, your team will 

deliver the results. 


acla.com.au 

DATA CRISIS MANAGEMENT: 

THE GOOD, THE BAD AND THE UGLY 

Crisis management is an integral part 

of business planning nowadays. 

Responses to high profile and high 

impact data breaches require particular 

care and integration of C-suite, legal and 

regulatory, public affairs and media teams. This 

article will examine how legal and regulatory 

counsel can facilitate this process, including 

by developing appropriate data management 

plans and strategies for engaging with 

relevant regulators such as privacy 

commissioners and prudential regulators. 

In our world of hyper-specialisation and 

lightning speed communications crisis 

management for businesses has become a 

consultancy practice in itself. A new breed 

of crisis management consultants assist 

businesses to address the new characteristics 

of corporate crises. Universal availability 

of instant, semi-personalised social media 

channels has led many members of the 

public to demand hyper-transparency 

from corporations, delivered at lightning 

speed. Senior executives are expected to 

enter a purportedly personal dialogue 

with consumers and other stakeholders 

without spin, demonstrating ownership of 

a problem and its resolution regardless of 

fault. Public critics and consumer advocates 

deploy the same social media tools and 

channels, necessitating quick positioning by 

the business in crisis, with rapid responses 

and clear messaging. Prudential and privacy 

regulators and equity markets also expect 

clarity and consistency in communications. 

Data crisis management in the social media 

age is a new area requiring novel ways of 

thinking about risk and plans for response. 

One way of stepping through the problem 

is outlined in the infographic accompanying 

this article. Many recent case studies illustrate 

two common shortcomings in data crisis 

management. The first is poor assessment 

and mitigation of risk before the crisis arises. 

The second is addressing a crisis with a 

narrow, technical compliance driven response, 

or delaying any meaningful response to a 

crisis while the business endeavours to fully 

dimension the public relations problem, 

calibrate its messaging, simplify complexity or 

consult regulators. Each shortcoming can be 

anticipated and addressed. 

Many corporations now anticipate hacking or 

other unauthorised intrusions into corporate 

databases and plan for a managed response. 

However, relatively few corporations properly 

integrate information security planning and 

management with effective and verifiable 

quarantining of personal information. 

This both facilitates data analytics using 

anonymised or de-identified transactional 

information and also mitigates the risks of 

hacking or other inadvertent disclosure of 

personal information. 

Good privacy risk management often 

enhances business value by liberating some 

uses of transactional information that is 

not personally identifying from uses and 

disclosures of personal information regulated 

by privacy law. Excessive dissemination of 

personal information within corporations also 

creates multiple points of vulnerability that 

can be exploited by outsiders. 

In addition, corporations increasingly 

interwork business processes and service 

delivery models with third parties such as 

cloud service providers, app and sensor 

device maintainers, payment agents, data 

analytics service providers and social media 

campaign managers and so on. As a result, 

the management of end-to-end risk becomes 

more complex and increasingly reliant upon 

effective implementation of safeguards 

by third parties. Yet the business risk of 

damage to trust that will occur through any 

data breach principally remains with the 

business servicing the consumer, regardless 

of how that business’ service contracts may 

seek to allocate that risk. It follows that 

end-to-end service delivery and process 

planning is essential for effective trust and 

reputation management of each consumer 

facing business, in addition to meeting the 

mandatory requirements of prudential and 

privacy regulators. 

A second common shortcoming is to initially 

address a data crisis with a wrong-footed 

response. This failure often arises where 

analysis supports the technical legality of 

an act or practice is permitted, but a more 

impartial and nuanced assessment that pays 

due regard to customer expectations or 

consumer sentiment suggests that the act 

or practice may not be good business. 

I sometimes call this the Daily Telegraph test: 

can the chief executive explain the business 

practice in terms that will be understood, 

and not sound spooky or creepy, when 

reported on page 3 or page 5 of a mainstream 

newspaper. Reliance upon technical legal 

Peter Leonard 

Peter Leonard heads Gilbert + Tobin’s data 

and privacy practice and is a director 

of international association of privacy 

professionals ANZ (iappANZ). His experience 

combines an understanding of privacy and 

data protection rules and norms and how 

to protect trade secrets and address other IP 

issues of dealing with data. 


31


analysis can make a business appear 

insensitive or out of touch with the sentiments 

of substantial segments of the community. 

Worse still, the business and its management 

may sound simply inauthentic and therefore 

untrustworthy. Often the swiftness and 

correctness of tone of the very first public 

response will determine the overall success 

in managing a data crisis and the extent of 

erosion of brand capital and consumer trust 

that flows from any widely reported data crisis. 

Two (of many) recent examples illustrate these 

two common shortcomings. 

In 2013, Bloomberg Financial was found to 

have been passing analyses of trades by 

traders using Bloomberg Financial terminals 

to Bloomberg News reporters. The issue 

surfaced when a reporter was said to have 

contacted a Wall Street bank, noted that a 

particular trader had not executed trades for 

some weeks and asked whether he had been 

sacked. When the story first broke, Bloomberg 

Financial denied this particular story but 

also defended its information sharing as 

unexceptional and in any event permitted 

by law. This brave defence was first made by 

an executive below the Bloomberg C-suite 

and apparently without also initiating any 

direct communication between Bloomberg 

Financial and the many investment banks and 

central banks that use Bloomberg terminals 

to conduct commercially sensitive trading or 

market monitoring activities. At least some 

banks expressed displeasure and belatedly, 

the editor-in-chief for Bloomberg News 

apologised. “Our clients are right”, he said. 

“Our reporters should not have had access 

to any data considered proprietary. I’m sorry 

they did. The error is inexcusable”. The CEO 

then blogged and tweeted, executive heads 

rolled, clients received individual emails from 

the CEO expressing contrition and providing 

assurances as to remediation and big brand 

name global lawyers were commissioned to 

write and publish an independent review 

and devise and oversee remedial programs 

and processes. 

The second example was in late 2014, and this 

time it was the exuberant headline grabber 

Uber. It was widely reported that individual 

Uber employees could access historical 

information as to the movements of particular 

people without their permission. It was then 

reported that so called ‘God View’ enabled 

display of movements of riders in real time to 

Uber executives. The flames of rumour were 

fanned when an Uber executive boasted, on a 

Friday evening Bloomberg News, that he could 

dig up information on ‘your personal lives, 

your families’ of journalists who wrote critically 

about Uber. Within days consumers and 

privacy advocates were posting to hashtag 

#ubergate, Buzzfeed and other social media 

channels in apparently incandescent rage. The 

next Tuesday the chief executive labelled his 

executive’s comments as “terrible”. Uber then 

blogged “Uber has a strict policy prohibiting 

all employees at every level from accessing a 

rider or driver’s data. The only exception to this 

policy is for a limited set of legitimate business 


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purposes”. Then came the active social media 

engagement in a fight-back to re-establish 

consumer trust – and, of course, the big brand 

name global lawyers with their independent 

review and remedial programs and processes. 

And so it goes. The Bloomberg Financial 

and Uber case studies illustrate both of the 

shortcomings discussed in this article – poor 

anticipation of consumer sentiment and 

privacy management before the crisis and 

initially wrong footed response after the crisis. 

Almost all prominent data crisis case studies 

expose at least one of those two failings. 

Privacy risk management must be in place 

before the event, must address consumer 

expectations and sensitivities and be designed 

to nurture brand and trust. Information 

security management is necessary but not 

sufficient and often info security planning 

does not properly address privacy and trust 

risk. A data roadmap and risk management 

strategy can and often will unlock business 

value through early design-in of appropriate 

and optional privacy settings (avoiding after 

the event costly retrofit) and enabling privacy 

protective data analytics. 

After the event data crisis management 

requires forethought and planning, but not 

only as to privacy law, information security 

and media management. In-house counsel 

need to think creatively about how and where 

vulnerabilities may arise and drive the C-suite 

to implement appropriate risk management 

and planning for a data crisis. Good processes 

and planning should enable a swift and righttoned 

response and stakeholder and regulator 

engagement from first break of a data crisis. 

Practical Guidance ACLA 

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With comprehensive overviews and guidance notes on 14 essential in-house topics, Practical Guidance ACLA is free for ACLA 

members. This fast and easy research tool provides access to trusted legal content and resources for your in-house practice. 

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33


THE COST OF WORKPLACE 

BULLYING - $733,723 

Tracy Caspersz 

Tracy Caspersz is a counsel in the Perth office of 

Corrs Chambers Westgarth. He has been a litigator 

for more than 25 years, in general litigation 

and workplace relations, including as counsel 

appearing on behalf of substantial corporations 

and organisations before Western Australian and 

Federal courts and industrial tribunals. 

Workplace bullying can expose an 

employer to a number of different 

actions including for: 

• orders of the Fair Work Commission; 

• civil penalties and compensation for 

unlawful adverse action and discrimination; 

• penalties for contravention of occupational 

health and safety laws; 

• damages for breach of the duty under the 

contract of employment to provide a safe 

workplace and/or negligence; 

• unfair dismissal if an employee is dismissed 

for alleged bullying, or an employee ‘resigns’ 

because of bullying; and 

• workers’ compensation claims for injury 

suffered by an employee as a result 

of bullying. 

An employer can suffer reputational damage 

from litigation. The uncertainty, expense and 

adverse impact of litigation on management 

and employees can be profound. And, 

monetary awards and penalties are on 

the increase. 

Trolan 

The recent decision of the District Court 

of New South Wales in Trolan v WD Gelle 

Insurance and Finance Brokers Pty Ltd 1 

graphically illustrates how an employer 

should not deal with workplace bullying. It 

concerned an employee (Trolan) who suffered 

workplace bullying and sexual harassment by 

her boss (Gelle), who was the mind, will and 

embodiment of the employer. 2 The cumulative 

effect of Gelle’s unwelcome behaviour, and 

the employer’s failure to act to protect Trolan 

by curtailing that behaviour, had a lasting and 

permanent deleterious effect on her ability to 

lead a normal life. 

Trolan lost her home because she could 

not keep up the mortgage payments. 3 She 

became agoraphobic, and suffered from 

post-traumatic stress disorder, depression, 

anxiety, and a chronic adjustment and major 

depressive disorder. Her disabilities included 

difficulties in sleeping, concentrating, 

cognition and motivation problems, and a 

nihilistic perspective on life with a need of 

ongoing psychiatric treatment. 4 

The litigation 

On 1 March 2009, Trolan lodged a workers’ 

compensation claim alleging sexual 

harassment and inappropriate touching by 

her employer (through Gelle’s conduct) “many 

times” and that she had, as a result, suffered 

stress and anxiety. The workers’ compensation 

insurer paid her expenses and weekly 

compensation for a prolonged period but 

then stopped doing so because of her nonattendance 

at counselling sessions. 

Trolan sued her (by then former) employer 

for negligence, seeking damages for 

psychological injury. 5 The insurer defended 

the claim on the grounds that, if it occurred, 

Gelle’s conduct was his intentional actions 

that, consequently, did not create a liability 

in the employer under the relevant workers’ 

compensation legislation. 6 The court (Levy SC 

DCJ) had little sympathy for this argument. 

Alleged bullying and 

sexual harassment 

Gelle’s alleged conduct included 

the following: 7 

• Soon after Trolan first started, Gelle 

positioned himself behind her whilst she 

was standing in the kitchen area, pressed 

his belly against her, and through his 

clothing, started to press and rub his penis 

against her clothed buttocks or the small 

of her back. 

• Subsequently, in his own work area, Gelle 

placed his hand up under Trolan’s shirt, 

down her bra strap, and then grabbed 

her breast. 

• On about 20 September 2008, Gelle placed 

his hand up the back of Trolan’s dress and 

squeezed her on the bottom. 

• Following this, Trolan saw her doctor who 

gave her a certificate for 3 days sick leave. 

• During this sick leave, Anna Gelle, another 

director of the employer and the wife of 

Gelle, rang Trolan and asked her why she 

was not at work. That conversation was 

recounted as follows: 

I said to Anna, “I’m not at work because 

Warren put his hand up the back of my dress 

and squeezed my bottom”, and she said to 

me, “Don’t worry about it. I’ll sort it out.” 

• Following her return from sick leave, Gelle’s 

unwelcome conduct continued. Once, Gelle 

sat down beside Trolan at her desk and 

started sliding his hands up and down her 

trouser leg. 

• In October 2008, Gelle approached Trolan, 

pinned her hands by her side, held her 

hands behind her back restraining her, and 

forced her face into a position where he was 

able to place his lips onto hers, as he tried to 

kiss her. 


acla.com.au 

• On some 7 or 8 further occasions, Gelle 

would use the pretext of wanting to show 

Trolan something on the computer and 

then make a grab for her, deliberately 

touching her breasts. On some four 

occasions, he touched her vagina through 

her clothing. 

• Another time Gelle told Trolan that he 

wanted to make love to her, and that he 

thought she needed a baby. 

• On 12 December 2008, whilst Trolan was 

sitting at her desk, Gelle approached her 

from behind and placed a pencil down the 

back of her trousers and lodged it between 

her buttocks. 

Court’s findings 

Levy SC DCJ was satisfied that Trolan’s 

psychological illness was caused by Gelle’s 

offensive and sexually harassing behaviour. 8 

This was contributed to by his bullying and 

intimidatory behaviour. Trolan’s resultant 

psychiatric condition was materially 

contributed to by the employer’s inaction 

in response to the plaintiff’s complaint. But 

for Gelle’s conduct, Trolan would not have 

incurred the psychiatric illness in question. 9 

Levy SC DCJ held that the employer: 

• failed to provide Trolan with a safe place 

of work; 

• failed to take reasonable steps to care for 

Trolan’s psychological wellbeing; and 

• exposed Trolan to the peril of Gelle’s 

repeated sexual harassment, bullying 

and intimidation. 10 

As the controlling will and embodiment of 

the employer, Gelle ought to have reasonably 

foreseen from Trolan’s firm rebuffs of his 

behaviour that his conduct was likely to be 

detrimental to her wellbeing. 

Once Anna Gelle had been made aware of the 

problem, it ought to have been reasonably 

foreseeable to her that any continuation of 

Gelle’s aberrant behaviour was likely to be 

psychologically damaging to Trolan. Her 

failure to sort out the complaints about Gelle’s 

harassing behaviour, and his failure to desist 

from his unwelcome conduct, ultimately 

weakened Trolan’s ability to tolerate his 

behaviour, to the point that she was certified 

as being medically unfit to continue in her 

work, a situation that remained constant since 

she left work on 12 December 2008 due to her 

psychiatric illness. 11 

The insurer’s adverse view of Trolan’s nonattendance 

at counselling sessions was 

groundless. It failed to reflect the realities 

of her agoraphobia, feelings of dread, the 

difficulties she had been experiencing in 

leaving her home, and her upset at having 

to repeatedly go over the events in the 

clinical setting. 12 

What does Trolan mean 

for in-house counsel? 

Workplace bullying costs: Trolan’s former 

employer was ordered to pay damages in an 

amount of $733,723, calculated as follows: 13 

(a) Past economic loss of wages $ 285,000 

(b) Past loss of superannuation $ 31,350 

(c) Future economic loss $ 353,812 

(d) Future loss of superannuation $ 49,710 

(e) tax paid on workers comp $ 13,851 

Total $ 733,723 

The employer was also ordered to pay costs. 

As at the date of writing, it is unknown 

whether Trolan will be appealed. However, 

the significant award of damages in this 

case reflects an increasing acknowledgement 

by the courts of the adverse impact of 

workplace bullying. 

In-house counsel need to be vigilant to ensure 

that their client/employer does not pay the 

cost of workplace bullying. In Trolan, Levy 

SC DCJ observed that the remedial steps 

required to avoid harm were quite simple 

and non-problematic. Gelle ought to have 

been counseled to desist from his behaviour 

following Trolan’s complaints to his wife. The 

employer ought to have arranged for Gelle 

to receive appropriate remedial counselling 

from a skilled professional person in order 

to help him to realise that his behaviour was 

wrong, inappropriate, and should cease. At the 

very least, a facilitated workplace conciliation 

or a mediation should have been convened 

between Gelle, his wife and Trolan, with 

proper support made available to Trolan. 14 

In-house counsel need to ensure that their 

employer has a transparent and effective 

complaints procedure to ensure that proper 

remedial steps are taken if workplace bullying 

occurs. Of course, prevention is better than 

the cure. To this end, in-house counsel should 

be vigilant to ensure that: 

• workplace bullying and anti-discrimination 

policies are carefully drafted and 

regularly reviewed; 

• all management and other employees 

receive regular training in such policies; and 

• management employees promptly 

and carefully deal with complaints in 

accordance with policies to avoid liability 

for any failure in that regard as well. 15 

Footnotes 

1 Trolan v WD Gelle Insurance and Finance Brokers Pty Ltd 

[2014] NSWDC 185 (4 November 2014) 

2 Ibid at [2]. 

3 Ibid at [191]. 

4 Ibid at [192]. 

5 Ibid at [1] and [9]. 

6 Ibid at [10]. 

7 Ibid at [127]-[148]. 

8 Ibid at [228]. 

9 Ibid at [229]. 

10 Ibid at [223]. 

11 Ibid at [188]. 

12 Ibid at [190]. 

13 Ibid at [304]-[307]. 

14 Ibid at [234]-[237]. 

15 Compare, for instance, Romero v Farstad Shipping (Indian 

Pacific) Pty Ltd [2014] FCAFC 177 in which the Full Court of 

the Federal Court held that a workplace policy formed part 

of a contract of employment, and the employer breached it 

in the manner in which it acted on receipt of a complaint by 

an employee. 


35


MEDIATION – THE USE OF EVIDENCE 

TO ACHIEVE THE BEST OUTCOME 

An interview with John-Henry Eversgerd and Andrew Moffat 

John-Henry Eversgerd a Forensic Partner from McGrathNicol, and Andrew Moffat a Commercial Mediator at 

Constructive Accord, share their thoughts on the best use of evidence to achieve a positive outcome through 

litigation or mediation. 

John-Henry Eversgerd 

John-Henry Eversgerd, a Forensic Partner at 

McGrathNicol, prepares commercial forensic evidence 

for court, mediation and arbitration. He prepares 

clear and concise evidence for court proceedings 

and also on a consulting basis to help to both sides 

of a disagreement better understand the potential 

quantum of damages in commercial disputes. 

Andrew Moffat 

Andrew Moffat, of Constructive Accord, is a 

Commercial Mediator who draws upon his former 

life as an investment banker and commercial 

banker to help parties resolve disputes before 

commencing potentially lengthy, expensive, and 

risky court proceedings. 

What are your thoughts 

on the recent growth of 

commercial mediation? 

Eversgerd: It is no surprise there is increasing 

reluctance to take matters to court. Clearly, 

mediation can save significant time and 

money in many situations. But due to the 

‘human factor’ the best strategies to achieve 

a good outcome in mediation can be very 

different to the best strategies to win a 

court case. 

Moffat: Mediation has evolved rapidly, from 

being an interesting “alternative” to traditional 

court-based dispute resolution, to an integral 

and unavoidable stage of almost all disputes – 

mandated by legislation, ordered by court, or 

contractually required. But not all participants 

have fully adjusted to this, and many still 

conduct themselves as they would in formal 

litigation, depriving themselves of the 

opportunities that mediation creates. 

Why do litigation and mediation 

require different approaches? 

Eversgerd: We certainly see a real difference in 

the use of expert evidence, including forensic 

accounting work. When it comes to the maths 

and calculating the financial component of 

a settlement, the most logical and accurate 

quantitative analysis and the “right” answer 

– the information needed for trial – isn’t 

necessarily what the parties need to make the 

best decisions in mediation. 

Moffat: The decision making process is 

very different. In court, the task is simply to 

convince the judge. Mediation has additional 

complexity; a party needs their expert 

evidence to fulfil potentially four distinct roles: 

1. Allow themselves to make an informed 

assessment of the likely outcome of trial 

(quantum and likelihood) 

2. Create doubt in the other side so that 

they are motivated to agree to a 

favourable settlement 

3. Provide clarity on the underlying situation 

so they know their own 

financial parameters 

4. Articulate the commercial justification for 

the other side to agree a “fair” settlement 

How do these two paths differ? 

Eversgerd: The parties present at mediation 

are likely to include business people who 

are very close to the matter, and emotionally 

invested in the outcome. So, it is necessary 

to analyse what the financial outcome would 

likely be if the matter ultimately ends up 

in court, but those calculations should be 

presented quite differently when used for 

mediation, keeping the audience and their 

perspectives in mind. In essence, the key 

function of expert evidence is guiding the 

parties to best understand their own risks, as 

well as reminding the other side of the risk 

they might face if resolution is not achieved. 

But what if mediation doesn’t 

result in a settlement? 

Moffat: Whilst the logic for aiming to settle 

at mediation is compelling, there will often 

be such a divergence of views that parties 

will not be able to find common ground, at 

least at first. Mediation is not about finding a 

perfect answer, but merely one which is better 

than the alternative – and the alternative is 

usually litigation. So not reaching a settlement 

should not necessarily be seen as a “failure”, 

but an acceptance that expectations may be 

too far apart. In that case, the expert evidence 

already prepared should usually be suitable for 

use at trial, or easily adapted so that it can be. 

So practically, what differences 

would disputants expect to see? 

Eversgerd: I recommend not necessarily 

providing all of your claim analysis up front. 

If the quantum is significantly different from 

what the other party expects or wants it has 

the risk of putting them on the defensive early. 

Strategically consider beforehand what would 

be most effective convincing you if you were in 

their shoes. One strategy is to focus initially on 

the independence and expertise of the expert 

you have engaged to perform the analysis. 

Before jumping to the numbers, explain 

what questions the specialist was asked to 

objectively answer. This will paint a picture 

of what the outcome might be from a court 

judgement. In other words, demonstrate 

what the cost may be if they don’t negotiate 


acla.com.au 

in earnest. Again, the use of evidence in 

mediation can be more powerful if one 

doesn’t jump to the technicalities right away 

unless the conversation naturally goes there. 

The evidence will be more powerful if it is 

presented using the following rules: 

1. Present the evidence in a summarised, 

succinct manner 

2. Utilise graphical illustrations of the key 

findings and a range of possible outcomes 

3. If the evidence is technical in nature, use a 

consulting expert to assist and hold a dress 

rehearsal in advance of the mediation with 

enough time to adjust the presentation 

Is there anything else to keep in mind 

to improve mediation outcomes? 

Moffat: Mediation allows flexibility that 

doesn’t exist in most other stages of the 

dispute resolution process, so this flexibility 

shouldn’t be wasted. Other observations: 

1. Thoughtful decisions on the timing of 

mediation can improve the chances of a 

good outcome – rather than just waiting 

for Directions from the court. 

2. Disputes may formally arise between two 

organisations, but in fact the key decision 

makers will be individuals with their own 

thoughts, perspectives and KPIs, so time 

spent understanding these can yield 

valuable insights. 

3. Even financial disputes are rarely just 

about money, so understanding the nonmonetary 

drives to the dispute will avoid 

wasting money. 

4. Newton’s Third Law always applies – one 

side acting aggressively will always provoke 

an aggressive response, so be moderate in 

tone unless aggression is tactically helpful. 

Eversgerd: Just a few more recommendations 

when it comes to expert witness evidence. 

1. Do a run through of your opening 

statement with your experts ahead of the 

mediation and hold back on content that 

will fall on deaf ears, no matter how accurate 

and convincing it would be in court. 

2. Have the detail of your evidence handy, 

in an easily digestible format, in case it 

is needed. 

3. Understand whether the other side’s 

evidence is from an independent expert 

who has a duty to the court or from a 

consulting expert who can instead act 

as an advocate. 

Mediation is no longer just a stage in 

the litigation process, but often the key 

dispute resolution mechanism – and this 

is increasingly becoming understood by 

litigants and their advisors. So we expect 

to see growing sophistication from experts 

and those who retain them, in ensuring that 

the way they use expert witness evidence is 

optimised for mediation. Those who don’t 

understand and appreciate the differences 

will fail to make the most effective use of the 

expertise at their disposal, and will be less 

likely to achieve a good outcome early. 

IN-HOUSE INSIGHTS 

Coming soon: The 2015 Benchmarks and Leading Practices Report 

The only Report of its kind in Australia, the 

2015 Benchmarks and Leading Practices Report 

will be released in the coming weeks. 

No matter the shape or size of your organisation or legal 

function - a sole in-house counsel or large legal team - this 

Report contains essential material for everyone. 

With benchmarking data, tips and insights the Report aims 

to assist any in-house legal function demonstrate and 

achieve value. 

The 2015 Report is bigger than any previous study and has 

been produced by in-house counsel, for in-house counsel. 

Register your interest: email membership@acla.com.au 

to ensure you are one of the first to be notified once the 

Report’s released. 

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37


WHAT YOU NEED TO KNOW 

An update on a number significant developments 

in administrative law 

Greg Wrobel 

Greg is a partner in Holding Redlich’s Dispute 

Resolution and Litigation group in the Sydney 

office. He has extensive expertise in regulatory 

litigation and administrative law, and regularly 

acts for both Government and private sectors 

clients in disputes relating to decisions made by 

Government officials, departments and agencies. 

The past 12 months saw a number 

of significant developments in 

administrative law. Some of the key 

developments in the Commonwealth and the 

NSW jurisdictions are outlined below. 

Amalgamation of Commonwealth 

merits review tribunals 

In May 2014, the Commonwealth Government 

announced its intention to streamline and 

simplify Australia’s external merits review 

system. The reforms are intended to remove 

unnecessary layers of bureaucracy and 

deliver an improved and simplified merits 

review system. 

From 1 July 2015, key Commonwealth 

external merits review agencies will be 

amalgamated—namely, the Administrative 

Appeals Tribunal (AAT), Migration Review 

Tribunal (MRT) and Refugee Review Tribunal, 

Social Security Appeals Tribunal and the 

Classification Review Board. Merits review 

of Freedom of Information (FOI) matters, 

currently undertaken by the Office of the 

Australian Information Commissioner (OAIC), 

will also be transferred to the AAT from 1 

January 2015. Under the new arrangements, 

the Office of the Privacy Commissioner will be 

established as a separate statutory office and 

will continue to be responsible for the exercise 

of statutory functions under the Privacy Act 

1988 (Cth) and related legislation. 

Developments in the concept 

of ‘unreasonableness’ 

Several cases in the Federal Court of 

Australia dealt with the (evolving) concept of 

unreasonableness in the exercise of statutory 

discretion (which is the ground most relied 

upon as a basis for judicial review). 

In 2013, the High Court of Australia handed 

down its landmark decision in Minister for 

Immigration and Citizenship v Li (2013) 249 

CLR 332, where the majority held that the 

legislature is generally taken to have intended 

that a statutory discretion is to be exercised 

reasonably and that the legal standard of 

reasonableness is not limited to what is 

known as Wednesbury unreasonableness 

(which adopts a very high threshold; namely, 

that a decision be ‘so unreasonable that no 

reasonable authority could ever come to it’). 

According to the majority, taking irrelevant 

considerations into account, failing to 

take relevant considerations into account, 

bad faith, disregard of public policy and 

misdirecting oneself as to the operation 

of the statute are all relevant to the 

question of whether the discretion was 

exercised reasonably. 

The decision of the Full Court of the Federal 

Court of Australia in Minister for Immigration 

and Border Protection v Singh (2014) 308 ALR 

280, like Li, concerned the unreasonableness 

of a decision of the MRT to adjourn a review 

application to allow an applicant to attend to 

matters the might satisfy the criteria for the 

grant of a visa. Subsequent Federal Court of 

Australia cases have extended the concept 

of legal unreasonableness in other contexts: 

see Fiorentino v Companies Auditors and 

Liquidators Disciplinary Board [2014] FCA 641 

(adjournment applications); CZBH v Minister for 

Immigration and Border Protection [2014] FCA 

1023 (taking witness evidence); Jones v Office 

of the Australian Information Commissioner 

[2014] FCA 285 (merits of a decision). 

High Court of Australia 

cases to follow 

A High Court of Australia case to follow 

is Australian Communications and Media 

Authority v Today FM (Sydney) Pty Ltd (S225 

of 2014), which is an appeal from a decision 

of the Full Court of the Federal Court of 

Australia (Today FM (Sydney) Pty Ltd v Australian 

Communications and Media Authority 

(2014) 307 ALR 1). 

Broadly speaking, the case relates to 

a determination by the ACMA in an 

investigation report that Today FM, a 

commercial radio broadcasting licensee, 

breached the Surveillance Devices Act 2007 

(NSW) and thereby also a standard condition 

of its commercial radio broadcasting licence 

under the Broadcasting Services Act 1992 (Cth) 

(BSA). The relevant licence condition provides 

that ‘the licensee will not use the broadcasting 

service in the commission of an offence against 

another Act or a law of a State or Territory’. 

The Full Court decided that the determination 

of whether or not person had committed 

a criminal offence was vested in courts 

exercising criminal jurisdiction, and not 

persons or bodies exercising executive power. 

Although the case involves the scope of 

the ACMA’s investigative powers under the 

BSA, it is likely to have broader implications 

for Commonwealth and State Government 


acla.com.au 

agencies. The High Court of Australia heard 

the ACMA’s appeal in November 2014 and a 

decision is pending. 

Another High Court of Australia case to 

follow is Independent Commission Against 

Corruption v Cunneen & Ors (S304 of 2014), 

which is listed before the Full Court on 4 

March 2015 for hearing of a special leave 

application and appeal by the ICAC from 

the judgment of the NSW Court of Appeal 

delivered on 5 December 2014 in Cunneen v 

ICAC [2014] NSWCA 421. The NSW Court of 

Appeal decision followed an unsuccessful 

application for declaratory and injunctive 

relief in the Court below in respect of an 

ICAC investigation. 

Broadly speaking, the appeal concerns 

the meaning of ‘corrupt conduct’ and the 

interpretation of s8(2) of the Independent 

Commission Against Corruption Act 1988 

(NSW). The case is significant as the ICAC has 

announced that the NSW Court of Appeal’s 

decision fundamentally alters the basis of its 

powers with respect to significant parts of 

two current investigations and, pending the 

outcome of the High Court of Australia appeal, 

it will not complete its reports in respect of 

those investigations. 

NSW developments 

On 1 January 2014, a major overhaul of the 

NSW tribunal system saw the consolidation 

of 23 tribunals (including the Consumer, 

Trader and Tenancy Tribunal (CTTT)) and the 

Administrative Decisions Tribunal (ADT)) to 

form NSW’s first ‘super tribunal’, the NSW Civil 

and Administrative Tribunal (NCAT). The work 

of the Administrative and Equal Opportunity 

Division within NCAT includes the review 

of administrative decisions made by NSW 

Government agencies and the resolution of 

discrimination matters. This Division takes up 

some of the work of the former ADT. 

In June 2014, a report was published by the 

Information Commissioner on the operation 

of the Government Information (Public Access) 

Act 2009 (NSW) (GIPA Act), which establishes 

a comprehensive system for public access 

to government information. The report 

covered the period 2010 to 2013 and, broadly 

speaking, found that NSW Government 

agencies appear to be ‘adopting the (GIPA) Act’s 

operation and strategic intent’. 

The NSW Attorney General is currently 

conducting a review of the GIPA Act, the 

purpose of which is to consider whether its 

policy objectives remain valid and whether 

its terms are appropriate for securing those 

objectives. The review is also considering the 

relationship between the GIPA Act and the 

Privacy and Personal Information Protection 

Act 1998 (NSW), which allows individuals to 

obtain access to, and to apply for amendment 

of, information held about them by NSW 

government agencies. 

A number of administrative law cases were 

decided by the NSW Court of Appeal. Many of 

these cases dealt with alleged failure to afford 

procedural fairness as a ground for judicial 

review: see Reznitsky v DPP (NSW) [2014] 

NSWCA 79; Frost v Kourouche (2014) 

86 NSWLR 214 and Warkworth Mining Ltd v 

Bulga Milbrodale Progress Association Inc (2014) 

307 ALR 262. 

A repeated theme in the cases is that 

procedural fairness is intended to avoid 

‘practical injustice’. Another decision of note 

was Public Service Association and Professional 

Officers’ Association Amalgamated Union of 

New South Wales v Secretary of the Treasury 

[2014] NSWCA 112, which considered the duty 

to give reasons. 


39


AN AUSTRALIAN EXPAT 

DISCUSSES HER CAREER 

The following article is an excerpt from the ACC Docket – the ACC’s leading publication distributed to more 

than 36,000 readers worldwide. Written by Joshua H. Shields. 

Anneliese Reinhold 

Anneliese Reinhold had a simple 

dream growing up: “I wanted to 

live in a Victorian terraced house, 

which are common in Australia, with the 

wrought-iron veranda and balcony. I wanted 

to have a Citroen car. This was my aspiration: 

the terraced house, the Citroen and to be 

a l aw ye r.” 

As general counsel for Emirates 

Integrated Telecommunications Company 

PJSC, (commonly known as “du”) a 

telecommunications firm based in Dubai, 

United Arab Emirates, she has fulfilled one of 

her childhood goals. How did she go from 

dreaming of an upper-middle class suburban 

life in Australia to being a globe-spanning 

executive based in the Middle East? 

Reinhold was born in the small town of 

Cessnock, in the verdant, wine-growing 

Hunter Valley region in New South Wales, 

Australia. Reinhold’s father was a geologist 

before going back to university to obtain 

his commerce degree. After working in the 

coal industry, he worked for the government 

overseeing the exportation of Australian coal 

to Southeast Asian countries. Her mother was 

an executive assistant to psychologists and 

medical professionals during a time when 

women were not encouraged to finish school. 

Reinhold divided her childhood between 

Sydney and Melbourne, where she finished 

her schooling and graduated from the 

University of Melbourne with degrees in law 

and commerce. Her heart is fond of Sydney, 

a “very seductive” city, where she spent most 

of her formative years. 

Her first job after university was as a solicitor 

for the law firm of Blake Dawson Waldron 

(now Ashurst) in Melbourne. While there, 

some older colleagues recounted their time 

working overseas to her. Her first impressions 

from her colleagues of living and working 

overseas were not positive. “I actually thought 

that was all a bit pretentious, and I was not 

very enthusiastic,” she remembers. But after 

a couple years at the firm, she had saved up 

enough money and leave to go backpacking 

for seven weeks with a friend. 

She went to Europe. “As soon as I got to 

London, which was the first place I arrived, I 

thought ‘Oh my goodness, this is my spiritual 

home. This is really me.’ Suddenly everything 

fell into place that I was probably somebody 

who should leave Australia and go live 

else-where,” she says. 

After that initial trip overseas, she knew she 

wanted to live and work abroad. Her goal was 

hindered by a serious global recession that 

drove down demand for legal talent. It also 

took her several years before she developed 

enough skills to market herself. 

Reinhold moved in-house to a Cable & 

Wireless plc subsidiary in Sydney where 

she served in various senior legal and 

regulatory roles. She knew experience in 

telecommunications regulatory matters 

was transferable and would make it easier 

to secure work abroad. Her degree in 

commerce, along with more experience in 

economics and accounting, contributed to 

her marketability. 

After nearly four years working in-house, 

she decided it was time to work overseas. 

Reinhold had a couple of advantages working 

in her favor. Her employer’s parent company 

at the time, Cable & Wireless, was based in 

the United Kingdom and would help with the 

transfer there. She was able to obtain a UK 

Ancestry visa because her grandmother, who 

moved to Australia before World War I, was 

born in the United Kingdom. 

The special visa gave Reinhold a degree of 

flexibility uncommon for overseas workers 

in the United Kingdom. Her partner at the 

time (now husband), for example, had to be 

specifically sponsored by his company, and 

his visa was tied to that job, which made the 

transition more difficult for him. 

Reinhold stayed with Cable & Wireless for 

two years in London. During that time, she 

noticed that there was a gap in the market for 

highly skilled regulatory policy lawyers, so 

she decided to make the uncommon 

transition from in-house counsel back into 

private practice. 

“I felt that there was this opening and why 

don’t I go ahead and try to set something 

up that was similar to those practices that I 

found so valuable in Australia,” Reinhold says. 

She joined boutique telecom practice Kemp 

Little LLP, where she came on as a partner. 

From 2000 until 2003, she oversaw the 

communications regulatory practice. 

Always keenly aware of external fluctuations 

in the market, Reinhold watched the dotcom 


acla.com.au 

boom and crash. “It was really quite evident 

that the European telecom sector, and the 

United States, was going through a real 

contraction,” she remembers. It was time for 

her next move. 

Reinhold saw the explosive growth in the 

Middle East and wanted to be part of it. 

Some of her colleagues thought she was 

“completely mental” for considering a move to 

Doha, Qatar, she says. But she knew she could 

handle it: “I remember when I moved cities in 

Australia, I was terribly nervous. Then when I 

moved countries to the United Kingdom, it 

was daunting but not quite that bad. Then, 

moving from the United Kingdom to the 

Middle East felt like an old habit.” 

She accepted a position as group legal 

counsel for Qatar Telecom (Qtel; now 

Ooredoo), where she was part of the 

new executive team brought in to lay the 

foundations for the company’s transformation 

from a domestic monopolist to competitive 

and diversified international player. She did 

all the legal and regulatory work for Qtel’s 

first bid for an international mobile licence in 

the Sultanate of Oman. Qtel’s bid won, so she 

then also did all the legal and regulatory work 

for the establishment of their new Omani 

subsidiary, Nawras Telecom, as well as being 

the initial board secretary. It was an intense 

period, and Reinhold worked at least six days a 

week, but she enjoyed Oman. 

The move wasn’t without its challenges 

though. The culture shock didn’t hit her in 

typical ways. She wasn’t surprised by seeing 

women wearing the hijab (a traditional Islamic 

women’s head covering) or abaya (a black 

women’s cloak common in the Gulf region) on 

the street. Rather, it was superficial things like 

finding a hairdresser who could cut and style 

short hair for women or buying a woman’s suit 

that gave her the most trouble. She was also 

one of the few native English-speakers at the 

company and felt her vocabulary diminish as 

a result. 

The business culture of the Middle East is 

surprisingly welcoming to women. “Contrary 

to what you may expect,” she says, “[t]here 

is not really as much of a macho business 

culture as you might find in other parts of 

the world. Women are treated with a lot 

of respect. It has actually been a better 

experience than working inside the United 

Kingdom or Australia.” 

Reinhold was in Qatar over two years before 

she moved across the Gulf to the United Arab 

Emirates, where she became general counsel 

and senior vice president for du in late 2005. 

The combination of the job and location 

was too much to pass up. The United Arab 

Emirates is significantly larger than Qatar, both 

in size and population, with two major cities 

offering more amenities for both residents 

and tourists. Reinhold saw Dubai and Abu 

Dhabi as cities striving to become more 

important globally. 

She also relished the opportunity to transform 

a startup into a mature company. Over the 

past nine years, she has guided the company 

and its legal department into a more forwardthinking 

and proactive strategic mode. The 

main goals for her department include talent 

retention, which is always a challenge in 

the Middle East due to its transient nature. 

Rein- hold is also always trying to give her 

legal team broader exposure to the business. 

She says: “Without being able to give them 

necessarily a pay rise or a promotion, how can 

we give them opportunities where they feel 

they are being continuously challenged?” 

In a region that has seen blistering 

development, which can result in cut 

corners, it is important that things are done 

correctly in the legal department. Reinhold 

is proud that du received the Law Society of 

England & Wales’ Lexcel practice management 

accreditation earlier this year. “In an emerging 

market like this, it is important to be able to 

show people what good looks like,” she says. 

“We were the first in-house legal department 

of a national company in the Middle East and 

North Africa to actually get this accreditation. 

We are operating our team in line with 

international best practice. It is external 

validation of what we are doing.” 

Reinhold has seen du grow and prosper 

since she joined the company. She has also 

seen cities rise from the desert over the past 

decade. She wants to see ACC membership 

and activities in the Middle East expand as 

well. Practicing in-house in the Middle East 

can be professionally isolating, particularly 

when you are just starting out, she says. The 

ACC Middle East group, initially founded in 

Dubai in 2006, is growing and expanding 

to other countries in the region, including 

Bahrain, Qatar and Kuwait. 

Reinhold says her moves around the world 

would “make my younger self’s head spin” but 

she wouldn’t trade it for anything. The expat 

life can get difficult, she admits. Losing touch 

with friends has been regretful. However, her 

experiences – from diving in the Maldives to 

visiting China – have made it an exciting life, 

with more adventures on the horizon. 

From 1 July, ACLA full members will have access 

to the ACC Docket: monthly e-magazine for the 

in-house profession. 


41


ACLA WOULD LIKE TO WELCOME 

The following new members to the association who joined in the 3 months to 1 February 2015 

AUSTRALIAN CAPITAL TERRITORY 

Timothy Clulow Department of Communications 

Farhana Islam 

Department of Health 

Annabel Joske 

Department of Communications 

Stuart Kerr 


Amy McCudden The Australian National University 

Scott Moloney 

Moray & Agnew 

Nathan Moy 

Clayton Utz 

Alison Pratt 

Icon Water LimitedT 

Jeustelle Staver Department of Communications 

Kate Stewart 

Airservices 

Emma Vautin 

Clayton Utz 

Jennifer Wyborn Clayton Utz 

INTERNATIONAL 

Eamonn Kennedy RTE 

David Motameni VCE Company, LLCl 

NEW SOUTH WALES 

Pauline O’Connor Health Professional Council Authority 

Johanna O’Rourke QBE Insurance Group Limited 

Gavin Robertson M+K Lawyers 

Floyd Robichaux Pegasystems Pty Ltd 

Carolyne Rodger The George Institute 

Peter Ryan 

Carmichael Fisher 

Michelle Segaert Squire Patton Boggs 

Lawrence Shim Resmed Limited 

Gretchen Shipman Commonwealth Bank of Australia 

Roy Siciliano 

Bankwest 

Steven Spencer BOC Limited 

Annerly Squires Hills Limited 

Tanem Taskin 

Glad Group 

Sean Tully 

Goodman Fielder 

Emma Wartski-Coonan Tyco Australia Pty Ltd 

Matthew Williams 

Kenneth Wong Boral Limited 

Rebecca Zoppetti Laubi IBM Australia Limited 

QUEENSLAND 

Denisha Anbu 

Sydney Water Corporation 

Donna Bartlett 

M+K Lawyers 

David Blair 

Commonwealth Bank of Australia 

Kristin Brown 

Dell Australia Pty Limited 

Kate Cabot 


Angela Cook 

British American Tobacco Australia Limited 

Andrew Copping Thales Australia 

David Crompton Church & Grace 

Peter Downie 

Greenfriars Pty Ltd 

Trisha Du 

Oracle Corporation Australia 

Ki Hoon Han 

Briar Hirst 

Deloitte Touche Tohmatsu 

Dominique Hogan-Doran 6 St James’ Hall Chambers 

Justin Hogan-Doran 7 Wentworth Selborne 

Sukhdeep Johal Rimini Street 

Martina Kann 


Gregory King 

Broadcast Australia 

Catherine King Huninn Mesh Operations Pty Ltd 

Jane Lamming CIMB 

Aviva Levine 

Digital Alchemy 

Berlina Lian 

Austrade 

Bob Liang 

HD Mining Pty Limited 

Thao Mai 

Michael Page International (Australia) Pty Ltd 

Samantha Manassa 

Gordon McDowall British American Tobacco Australia Limited 

Duncan McEwin 

Daniel Meyerowitz-Katz Levitt Robinson Solicitors 

Melody Ng 

Telstra 

Ngoc Nguyen 


Louise Nield 


Amanda Bull 

Denise Burloff 

Philip Davis 

Nadine Eccleston 

Matthew Gold 

Richard Groom 

Kalyn Hunley 

Peter Jans 

Shannon McDermott 

Alexa Omany 

James Rigby 

Cassandra Watts 

SOUTH AUSTRALIA 

Daniella Cappelluti 

Chris Gray 

John Kavanagh 

Kerry Morrow 

Jodie Newton 

TASMANIA 

Zoe Yates 

VICTORIA 

Natasha Bakshi 

Georgia Brandi 

Cameron Burke 

Joshua Busuttil 

The Clean Energy Finance Corporation 

Thiess Pty Ltd 

ERM Power Limited 

Ferrier Hodgson 

Brisbane Airport Corporation 

ERM Power Limited 

Mineralogy Pty Ltd 

UPG 

AdventBalance 

University of South Australia 

Crown Solicitor’s Office 

Power Networks 

Laity Morrow 

Santos 

Page Seager 

CSL Limited 

Delaware North Companies 

KDR Victoria Pty Ltd 


acla.com.au 

Michael Coleman 

Anna Cormack 

Catherine Curtain 

Sabrina den Braber 

Steven Donegan 

Milan Draskovic 

Jason Georgallis 

Heather Graham 

Leigh Gratzer 

Sven Gsponer 

Michael Guilday 

Judith Hancock 

Tegan Hart 

Elizabeth Henderson 

Pamela Khoo 

Jessica Leigh 

Belinda London 

Phillipa MacDonald 

Sarah Manning 

Terrie Morgan 

Matthew Nicholas 

Tamara O’Gorman 

Nilesh Patel 

Lachlan Pfeiffer 

Joseph Reid 

Telstra Corporation Limited 

AdventBalance 

Equip Super 

Servier Laboratories (Aust) Pty Ltd 

Employment Services Holdings Pty Ltd 

Origin Energy Limited 

SingTel Optus 

Cardno Emerging Markets 

Spotlight Group Holdings 

United Super Pty Ltd 

Respond Blue Nurses 

Probuild Constructions (Aust) Pty Ltd 

OZ Minerals 

Southern States Group 

Jemena 

Service Stream 

Mercedes-Benz Australia/Pacific 

Cargill 

Tennis Australia Ltd 

Department of State Development, Business 

and Innovation 

Viva Energy Australia Limited 

Dun and Bradstreet 

Simone Stainwall 

Zoran Talevski 

Matthew Thornton 

Donna Wardle 

Belinda Wilson 

Dianne Wilson 

Lydia Wong 

WESTERN AUSTRALIA 

Prachi Aggarwal 

Alessandra Cardi 

Sandra Chivilo-Goode 

Jamie Erceg 

Catherine Garde 

Christopher Harrison 

Chelsea Herman 

Elizabeth Hollingdale 

Maureen O’Connell 

Bronwyn Peters 

Clare Pope 

Simon Rear 

Daisy Rowe 

Catherine Scott 

John Traicos 

Jason Wang 

Probuild Constructions (Aust) Pty Ltd 

United Technologies Corporation 

Bayside City Council 

Central Gippsland Region Water Corporation 

Port Phillip Bay Scallops 

The Just Group 

Department of State Development, Business 

and Innovation 

Department of Commerce 

Metropolitan Redevelopment Authority 

T.F.S. Corporation Ltd 

WesTrac Pty Ltd 

Francis Burt Chambers 

Alcoa of Australia Limited 

Eni Australia Ltd 

Pool Controls Pty Ltd 

RSPCA WA (Inc.) 

Department of Health 

Squire Patton Boggs 

Squire Patton Boggs 

Wright Propsecting 

Department of Commerce 

MZI Resources Ltd 

ACLA CORPORATE ALLIANCE PARTNERS 


43

Australian Corporate Lawyer - Autumn 2015

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