FEDERAL COURT OF AUSTRALIA

Mintel International Group Limited v Mintel (Australia) Pty Ltd

[2000] FCA 1410

LEGAL PRACTITIONERS– settlement of proceeding by terms of settlement, consent orders and undertakings – junior counsel for applicant retained five years earlier on behalf of respondent in unrelated litigation – alleged conversation five months earlier as to proposed retainer for present proceeding – whether settlement should be set aside – whether conflict of interest – whether unconscionable conduct – nature of alleged confidential information – acquisition of knowledge  by counsel as to client’s personal characteristics – “getting to know you”

WORDS AND PHRASES – “getting to know you”

Deputy Commissioner of Taxation v Chamberlain (1990) 26 FCR 221 at 230  applied

Huddersfield Banking Co Ltd v Henry Lister & Son Ltd [1895] 2 Ch 273 applied

Adam P Brown Male Fashions Pty Ltd v Philip Morris Inc (1981) 148 CLR 170 mentioned

Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 mentioned

Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47 mentioned

Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167  mentioned

O’Brien v Komesaroff (1982) 150 CLR 310 at 325-326 mentioned

Yunghanns and Ors v Elfic Ltd, Victorian Supreme Court, unreported, 3 July 1998 distinguished

D & J Constructions Pty Ltd v Head (1987) 9 NSWLR 118 at 123 distinguished

McVeigh & Anor v Linen House Pty Ltd & Ors, Victorian Court of Appeal, unreported, 3 September 1999 distinguished

Wan v McDonald (1992) 33 FCR 491 at 512-513 distinguished

MINTEL INTERNATIONAL GROUP LIMITED v MINTEL (AUSTRALIA) PTY LTD & ORS

NO.  V 185 OF 2000

HEEREY J

29 SEPTEMBER 2000

MELBOURNE

THE COURT ORDERS THAT:

1.                The respondent’s motion by notice dated 26 September 2000 is dismissed.

2.                The question of costs is adjourned to a date to be fixed.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     In this proceeding the applicant Mintel International Group Limited, a United Kingdom company, alleged that the respondents Mintel Australia Pty Ltd and Dr Brent Hughes infringed its Australian trade mark Mintel (Australia) (the mark in suit).  The trial commenced before me on 31 July 2000 and was adjourned part heard to the following day.  It was then announced that the matter had been settled.  Consent orders were made and undertakings given to the Court.  By a notice of motion filed 26 September 2000 the respondents seek to be released from their undertakings.  Orders are sought that the consent orders be set aside and the associated terms of settlement rescinded.

2                     In broad terms the grounds on which these orders are sought concern the conduct of Mr Peter Collinson of counsel who appeared with Dr J McL Emmerson QC for the applicant at the trial.  It is said that in so acting Mr Collinson was in a conflict of interest in that he had formerly acted Dr Hughes in litigation with Westpac Banking Corporation in 1995 and had in January and February 2000 engaged in discussions with Dr Hughes concerning the subject matter of the present proceeding.  As a consequence it is said that the agreement underlying the consent orders should be set aside as being obtained by unconscionable conduct.

Dealings with the mark in suit

3                     The mark in suit was registered on 26 November 1981 by a company called Market Services International Pty Ltd (MSI) which was engaged in the business of market research.  At the time Dr Hughes was a director and the secretary of MSI.  By a licence agreement dated 12 June 1996 MSI granted to the first respondent a licence to use certain intellectual property including the mark in suit.  On 4 February 1998 the Supreme Court of Victoria ordered that MSI be wound up on the grounds of insolvency.  There was default in payment by the first respondent of licence fees due under the licence agreement.  On 23 September 1999 MSI’s liquidators gave notice of that default to the first respondent.  The default was not remedied and on 3 November 1999 MSI’s liquidators served notice of termination on the first respondent.

4                     A term of the licence agreement had the effect that upon service of the notice of termination on the first respondent it was to cease using the mark in suit and forthwith procure a change of its corporate name to a name which did not include the word Mintel.  Subsequently the liquidators of MSI caused it to assign to the applicant all rights to the mark in suit and certain related foreign marks.

The present proceeding

5                     On 29 March 2000 the applicant commenced this proceeding against the respondents alleging that the first respondent had infringed the mark in suit by carrying on the business of providing market research services from an address in Melbourne by reference to the corporate name Mintel (Australia) Pty Ltd.  Dr Hughes was alleged to have aided and abetted that conduct.  Injunctions and damages were sought.

6                     An appearance was entered on behalf of the first respondent.  Dr Hughes at that stage did not appear.  Various procedural hearings were held.  There was substantial delay by the respondents in complying with procedural directions.  The defence of the first respondent in substance was that the licence agreement was wrongly terminated because in truth no licence fees were unpaid.  This was said to result from an implied right of the first respondent to set off against licence fees costs and expenses it had incurred in maintaining the goodwill of the intellectual property the subject of the agreement. 

7                     As I have mentioned, the trial of the matter commenced before me on 31 July.  Dr Emmerson QC and Mr Collinson appeared on behalf of the applicant instructed by Minter Ellison and Mr Rod Randall of counsel appeared on behalf of the first respondent instructed by Madgwicks.  Dr Hughes was not represented and was not present at the court.  At the end of the day the trial was adjourned to the following day.  On being resumed the matter was stood down for counsel to continue negotiations. 

8                     At about 11 am counsel informed me that the matter had been settled.  At this stage Mr Randall announced that he also appeared for Dr Hughes.  On behalf of the respondents Mr Randall gave certain undertakings to the Court.  In substance these were as follows:  (a) the first respondent undertook as from 30 September 2000 not to sell or supply market research services under or by reference to the name Mintel (Australia); (b) Dr Hughes gave the same undertaking and also undertook he would not aid, abet, counsel, induce or procure the first respondent or any other party to sell or supply such services; (c) the first respondent undertook to change its corporate name to a name which did not include the words Mintel (Australia) or Mintel by 30 September 2000; (d) the respondents undertook to deliver up on oath to the applicant business documents, electronic records and the like containing the words Mintel (Australia) or Mintel; (e) the respondents undertook to transfer the domain name as acquired by the first respondent to the applicant and close the first respondent's web site accessed through Mintel (Australia) or Mintel on or before 30 September 2000; (f) the respondents undertook to refrain from challenging the validity of various trademarks listed in the schedule or aiding or abetting others to do so.  As well as the mark in suit, those marks consisted of or included the word Mintel and were registered in France, Germany, the United States, Japan, Hong Kong and the United Kingdom.

9                     The consent orders made were that the proceeding be dismissed and that the first respondent pay to the applicant the sum of $100,000 on account of the legal costs and expenses of the applicant, but such sum was not payable by the first respondent unless it breached any of the undertakings or clauses 6, 7 or 8 of terms of settlement dated 1 August 2000.  The terms of settlement included a provision that the parties consent to the orders mentioned and that they release each other from all claims relating directly or indirectly to the proceeding, including claims arising out of, or matters alleged, in a proposed cross‑claim against the liquidators of MSI or relating to other circumstances related to the subject matters of the proceeding or which were or could have been known to the parties at the date of the settlement arising from the proceeding or the circumstances or allegations giving rise to or referred to in the proceeding.  Clauses 6, 7, 8  in the terms of settlement deal with the change of the corporate name of the first respondent.

Westpac’s litigation with Dr Hughes

10                  By action no 6067 of 1994 in the Supreme Court of Victoria Westpac and Chase Manhattan Bank Australia Ltd sued MSI and Dr  and Mrs Hughes for amounts due in respect of certain loans and other financial accommodation.  Chase was the original lender and had assigned its rights to Westpac.  Dr and Mrs Hughes were guarantors.  The claim was $5.6 million.  The matter was fixed for trial in March 1996.  On 2 November 1995 a mediation took place before Sir Laurence Street.  Mr Collinson was briefed by Molomby and Molomby to appear at the mediation on behalf of the defendants.  In his brief Mr Collinson received certain documents.  These included the pleadings in the action and various letters and bank documents, most of which appear to have been dated in 1990 and 1992 although there were four in 1994.

11                  On the day before the mediation Mr Collinson had a conference with Dr and Mrs Hughes and a solicitor from Molombys.  There may have been more than one conference but it seems that this was the substantial one.  Subsequently the solicitor sent to Dr and Mrs Hughes a memorandum approved by Mr Collinson recording the advice given by him at the conference.   From that memorandum it appears that the parameters of the matter were as follows.  MSI admitted liability for $2.3 million, together with 6 per cent interest from the date of commencement of the proceeding.  There was a counterclaim against Westpac amounting to approximately $1.8 million.  According to Mr Collinson, many of the items in the counterclaim were "not particularly strong”.  On his estimate, assuming that MSI was successful in proving each of the items of loss and damage, a liability would remain to Westpac for a sum in excess of $1 million.  In Mr Collinson’s opinion, this was not a case which MSI should take to trial.

12                  The mediation took place the following day.  It lasted from approximately 9 am until about 5.30 pm.  Offers and counter-offers were made but the mediation was not successful.  The main sticking point was that Westpac insisted that Dr and Mrs Hughes sell or make available to the bank their family home in Avoca Street, South Yarra.  Dr Hughes would not agree to this.  In particular he wanted the property retained as security for further loans for the conduct of MSI's business.  The evidence before me does not indicate in much detail at all what defences were proposed to be mounted at the trial.  In general terms however I understand it was alleged that there were various agreements made with Westpac which would have restricted its right to enforce its claims.

13                  Mr Collinson was cross‑examined extensively about his conference with Dr and Mrs Hughes and the conduct of the mediation.  One of the matters put to him was that he obtained in the course of the conference and mediation knowledge about MSI’s business and the way it carried on that business and also information about the company’s future prospects.  I accept Mr Collinson’s evidence that there was no more than a passing reference in that he merely asked what was the nature of the company’s business and Dr Hughes told him that it was market research.  As well as finding Mr Collinson an impressive and credible witness, I think this is inherently more likely.  The dispute with Westpac, as far as I can see, did not have anything to do with MSI's internal business affairs or its dealings with customers; rather it dealt with various contractual claims of its banker Westpac and the correspondence and the conversations alleged to provide a defence or counterclaim against the bank.  In that setting the nature of MSI's business was really no more than a background fact of no great significance for the litigation.  Nor do I think it likely, as was suggested, that at the conference Mr Collinson went into any detail at all as to Dr Hughes’ future plans for the business.  True it is of course that Mr Collinson would want to know what the present or likely future resources of Dr and Mrs Hughes were for the purpose of formulating offers at the mediation.  But there was an accountant present and the defendants’ financial details, actual and prospective, were really outside Mr Collinson's province.

14                  Mr Collinson found that Dr Hughes was an intelligent and educated man.  He accepted, as any barrister would, that in a litigation of this kind Dr Hughes’ credibility was likely to be an important factor, and that he formed some assessment of his client.  But I do not get the impression that Mr Collinson gained any special insight into Dr Hughes’ psychological make-up.  The hard arithmetic of the situation was that even if Dr Hughes proved the most brilliant and convincing witness, the defendants were likely on the best possible view still to be down to the extent of $1 million.

15                  Shortly after the mediation it appeared that Mr Collinson would be unable to appear at the trial.   He informed Dr Hughes accordingly.  I do not doubt that, as the latter says, he was very satisfied with Mr Collinson’s services and was anxious to retain him for the trial and that Mr Collinson was aware that his client held that view of him.  There were two telephone calls from Dr Hughes to Mr Collinson between the mediation and the trial.  In these Dr Hughes attempted to raise legal issues concerning the trial.  Mr Collinson made it clear that he did not want to engage in such conversations and referred Dr Hughes to his solicitors.  The trial went on for some 17 days in March 1996 and resulted in judgment in favour of Westpac.  An appeal was unsuccessful.

Conversations in January and February 2000

16                  Dr Hughes says that on 24 January 2000 he met Mr Collinson by chance at the swimming pool at the Royal South Yarra Lawn Tennis Club.  For about 10 minutes they discussed general matters, including the Westpac proceeding and its outcome and the present business of the first respondent.  At the end of the conversation Mr Collinson told Dr Hughes that if he should ever have any problems he should not hesitate to call him.  Over the next few days Dr Hughes thought about what Mr Collinson had said.   On 2 February Dr Hughes telephoned Mr Collinson and discussed with him and “outlined at length” litigation then proposed by the present first respondent against MSI, its liquidators and the present applicant relating to the termination of the licence agreement.

17                  Dr Hughes says the telephone discussion lasted for about 30 minutes.  He asked Mr Collinson if he was interested in acting for the present first respondent in the proposed litigation.  Mr Collinson said he was.   Dr Hughes suggested that he meet with him to present all the papers.  Mr Collinson advised him to get the company’s solicitors to brief him.  Dr Hughes says that the information he provided to and discussed with Mr Collinson was clearly confidential and directly relevant to the issues in dispute in the present proceeding.  Dr Hughes says that he made a diary record of this conversation as follows:

“Phone call 2 Feb 2000 and brief:

Told him that MINTEL business still going and new action that I thought would be up his alley.   Said I thought it was fairly simple HA [the statement being ironic]  Involved liquidation and licence agreement that Madgwicks had drawn after I was loosing [sic] staff to give profit share opportunity.  Said that Deloittes had claimed we have not paid fees yet they had already breached by appointing liquidator. (a condition implicit in the agreement).   Said that we had to incur charges to maintain the research data base along with trade marks we were effectively licensed to use.   Said they then had sold the marks after winding up the contract on us to New owners of the UK group and it was they that had started the action.   This is because he asked if Deloittes had done anything further.   Told him that this was serious as it was our life blood (didn’t us [sic] those words but something to that effect).  Asked if he was interested in the case.  He said yes I said that before we went further, could I brief him fully and could he get back to me?  I wanted to come in and show him documents and let him review them.  He said, No, not the way he wanted to work.   He wanted me to get Madgwicks to brief him to get an opinion and charge for that.   Was strict would not budge.   I said that I was still seeking feed back from Madgwicks and If I wanted to proceed with him I would recommend him to Madgwicks.   We did not leave on the best note.”  

18                  This exhibit is a separate sheet of paper.  It does not appear to have come from any bound book or other continuous record. 

19                  Mr Collinson's version of these events is as follows.  He says that the conversation at the  tennis club never occurred.  On 24 January he was on an aircraft returning from a holiday in the United States.  He agrees that on about 2 February Dr Hughes did telephone him.  He denies that anything like the detail contained in Dr Hughes’ alleged diary note was mentioned.  Mr Collinson says the conversation was very brief.  He recalls that Dr Hughes had left a number of telephone messages for him to telephone him.  He says that Dr Hughes asked whether he would be interested in acting for him in relation to "another matter".  He did not provide any details whatsoever about the nature of the matter.  Mr Collinson told Mr Hughes that the proper way to proceed would be to retain solicitors who would then brief him to act.  Dr Hughes said that he preferred to come to Mr Collinson in chambers for a preliminary meeting.  He said he wished to show Mr Collinson some documents.  Mr Collinson said he was not prepared to act in this way and insisted that he needed to be retained by solicitors.   The conversation ended on the basis that Dr Hughes would consider whether he wished to proceed in this way.

20                  I think Mr Collinson’s account in respect of both these alleged conversations is the more likely.  He produced documentary evidence in the form of his travel itinerary to show that he did not arrive back in Melbourne until 8.30 am on Tuesday 25 January.  Dr Hughes did not really provide any satisfactory explanation of why he was initially able to assert so confidently that the conversation occurred on the 24th.  More important, however, is the conversation which it is common ground did occur on 2 February.  I thought Mr Collinson was more persuasive as to his version of what was said.   I was particularly influenced by the reasons he gave for not going into any detail and for declining Dr Hughes’ request for the two of them to meet and discuss the proposed litigation. 

21                  First, Mr Collinson said that it was not his practice to act for a client personally without the intervention of an instructing solicitor.  This is in accordance with the Victorian Bar Rules, r110(a).  There are various exceptions such as counsel advising patent attorneys or accountants in non-litigious matters.  Also, direct retainer by the lay client of counsel acting in  pro bono schemes is permitted.   But in major commercial litigation of the kind with which are concerned the Bar Rules would require that the practice described by Mr Collinson be followed by counsel at the Victorian Bar.

22                  Secondly, Mr Collinson said that whilst he was conscious of the cab rank rule which obliges counsel to accept briefs at a proper fee in jurisdictions where they practise, whether or not they like the case or the client, he was not “enthusiastic about getting involved in this matter”.  He was heavily booked for two large commercial cases in February.  Moreover, there had been an unsatisfactory history with payment of his fees in the Westpac matter and in the end at least some of his fees were borne by his instructing solicitors.  So Mr Collinson gives rational reasons why he did not want to enter into any prolonged discussion with Dr Hughes about his proposed case. 

The trial and the settlement

23                  On 20 July Mr Collinson was retained by Mr Ian Pascarl of Minter Ellison to appear with Dr Emmerson QC at the trial.   Mr Collinson told Mr Pascarl that about five years ago he attended a mediation on behalf of interests associated with Dr Hughes.   Mr Collinson told Mr. Pascarl that the mediation concerned a dispute with a bank and that he had not received any information which could possibly give rise to a conflict of interest.

24                  As I have said, the trial commenced on 31 July with  Dr Hughes was not present.   Dr Hughes says that at approximately 9.15 am on the following day he attended a conference with Mr Peter Kennedy of Madgwicks and Mr Randall in Mr Randall’s chambers.  Mr Randall told Dr Hughes that the applicant had, on the previous night, put an offer on the basis that the first respondent would stop using the mark in suit by 30 September 2000.  By 7 October 2000 all material with that name would be delivered to the applicant for destruction and an undertaking would be given to the Federal Court “not to promote Mintel (Australia)”.  The terms of settlement would be confidential and there was to be a release from damages and no costs. 

25                  Dr Hughes says that he told Mr Randall and Mr Kennedy that he was not going to accept that offer and that he wanted to proceed.  I interpolate the comment that Dr Hughes seems to have been operating as the de facto controller of the first respondent.    There was nobody else present on the second day of the hearing to give instructions to that company’s solicitors and counsel.  Dr Hughes says that after further discussions between the three of them Mr Kennedy said to Mr Randall that the “applicants would settle”.  (I take it Dr Hughes means the present respondents, the applicants in the motion.)  Mr Randall then “rushed off to court”.  Dr Hughes says he had not given any instructions to Kennedy or Randall to settle. 

26                  At about 11 am during an adjournment of the hearing Dr Hughes met with Mr Kennedy and Mr Randall outside the courtroom  Mr Randall gave him a document which he said contained terms of settlement prepared on behalf of the applicant.  Mr Kennedy and Mr Randall told him that he must sign the document.  Mr Randall said to him that the applicants (again, I think this means the respondents)

“could not make any changes to the documents because the other side knew me and would not allow any negotiations.”

27                  Mr Randall said that this was the applicant’s final offer.  Dr Hughes told Mr Kennedy and Mr Randall that he did not want to sign the document and that the trial should proceed.  Both Mr Kennedy and Mr Randall said that he had to sign and they sat him down in an anteroom outside the court.   Dr Hughes felt “under enormous pressure to sign” and put his signature on the document where they showed him.   Mr Kennedy then signed the document on behalf of the first respondent. 

28                  After Dr Hughes signed the document he says he entered the courtroom and sat at the front behind Mr Randall.  This was the first time he had been in the courtroom.  The judge had not yet returned after the adjournment.  Dr Hughes saw Mr Randall talking to the applicant’s barristers.  One of them turned around and Dr Hughes saw that it was Mr Collinson.  This was the first time he was aware that Mr Collinson was acting for the applicant.  He says:

“I was greatly distressed by this because Collinson had previously acted for MSI and me.  I immediately rushed up to Randall and told him to stop everything, meaning he must not deliver the document which I had signed to the other side because Mr Collinson should not be acting for the applicant.  At this time the judge had still not returned to the courtroom.  I told Randall that I had briefed Collinson on this case.” 

29                  Dr Hughes then says that Mr Randall went across the room and talked to Mr Collinson after which Kennedy, Randall and Collinson walked out of the courtroom.  Then Mr Randall and Mr Kennedy came back into the courtroom.    Mr Collinson returned to his colleagues and sat down.  Dr Hughes told Mr Randall and Mr Kennedy to tell the judge about Collinson's involvement.  Mr Kennedy then said to Dr Hughes that there was nothing they could do; the case must go on and that his only redress was to report Collinson to the Bar Council after the hearing, and the Bar Council would take disciplinary action. 

30                  Dr Hughes said, “No, I want the case stopped”.  Mr Randall said the case could not be stopped and that he, Dr Hughes, should sit down.  Mr Randall instructed Kate Reidy from Madgwicks, who had been assisting him, to sit beside Dr Hughes.  The judge returned to the courtroom shortly afterwards and the hearing continued.  Mr Randall gave the undertakings  already mentioned. 

31                  Dr Hughes says that if he had known that Mr Collinson was acting for the applicant prior to the time he entered the courtroom on 1 August he would have instructed his legal advisers to obtain an injunction restraining Mr Collinson and Dr Emmerson from acting for the applicant and not have agreed to settle the proceeding in accordance with the document presented to him by Mr Randall, or at all.

32                  Dr Hughes said in evidence before me that he did not complain to me at the time because it would involve “showing disrespect to the court and creating a scene”.  It would have been “entirely inappropriate and inexcusable to leap up onto the bench and scream – attempt to attract attention.”  He was also “shell‑shocked”.  He felt “highly stressed and dumbfounded”.  Mr Randall, Mr Kennedy and Ms Reidy were not called by either side.   

33                  I do not accept Dr Hughes’ claim that Mr Randall told him “the other side knew me and would not allow any negotiations”.   Nor do I accept that Dr Hughes told Mr Randall and Mr Kennedy that he would not agree to the terms of settlement.   It is a serious thing to allege that both counsel and solicitor wilfully disobeyed their instructions and, in the case of counsel, announced to the Court, in the presence of the client, a settlement which on Dr Hughes’ version counsel knew was contrary to his instructions.   Moreover, on the sequence given by Dr Hughes this ignoring of his instructions came before, and was quite unconnected with, Dr Hughes’ discovery that Mr Collinson was appearing for the applicant.

34                  Insofar as there is any other conflict in the evidence, I accept Mr Collinson’s version as to the sequence of events.  He says that at various times in the course of negotiating the settlement he had discussions outside the court with Mr Kennedy and Mr Randall.  At no time was it ever suggested to him by Mr Kennedy or Mr Randall that Dr Hughes had given instructions to either of them to the effect that he (Collinson) had earlier been briefed to act on behalf of the respondents.  During one of the conversations, according to Mr Collinson, Mr Kennedy mentioned that he was aware of his previous involvement in acting on behalf of interests associated with Dr Hughes in the Westpac proceeding.  This observation was made by Mr Kennedy prior to the execution of terms of settlement.  Mr Collinson deposed:

“At no time did either Mr Kennedy or Mr Randall suggest that by reason of my involvement in the Westpac proceeding I had a conflict of interest in acting on behalf of the applicant in proceeding no. V185 of 2000 or that  for any other reason it was inappropriate that I act on behalf of the applicant in proceeding no. V185 of 2000.” 

Jurisdiction

35                  It was not disputed that a Court may set aside an order made by consent, and intended to carry out an agreement between the parties, upon any ground on which the agreement may be set aside: Deputy Commissioner of Taxation v Chamberlain (1990) 26 FCR 221 at 230 per Wilcox J citing Huddersfield Banking Co Ltd v Henry Lister & Son Ltd [1895] 2 Ch 273.   One of the grounds on which an agreement can bet set aside is unconscionable conduct.   Where an agreement founding a consent order is set aside the Court may release the innocent party from associated undertakings:   Adam P Brown Male Fashions Pty Ltd v Philip Morris Inc (1981) 148 CLR 170.

The respondent’s case

36                  Senior counsel for the respondents did not rely on the misuse by Mr Collinson – and hence the applicant – of some specific confidential information in the sense in which that concept is defined by authorities such as Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37, Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47 and Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167.  (As to the requirement for specificity as to information said to be confidential see O’Brien v Komesaroff (1982) 150 CLR 310 at 325-326.)    Rather it was said that Mr Collinson’s acting for the applicant involved a conflict of interest arising from the former’s personal experience of Dr Hughes and knowledge of his personal characteristics which amounted to conduct which was unconscionable and which the Court should not tolerate as affecting the administration of justice.

37                  Senior counsel referred to a number of authorities which discuss the obligations of legal practitioners to respect the confidence of clients and not "change sides".  These are conveniently collected, as senior counsel said, in the decision of Gillard J in the Supreme Court of Victoria in Yunghanns and Ors v Elfic Ltd (unreported, 3 July 1998).  In that case, his Honour granted an injunction to restrain the solicitors Corrs Chambers Westgarth from acting on behalf of a client against Mr Peter Yunghanns.

38                  Mr Yunghanns had an association with Corrs going back to 1960.   He first worked for the firm as an employee solicitor for six years.   Then, in Gillard J’s words, Mr Yunghanns “turned his hand to commerce” and the firm acted for him in many transactions.   The firm had “many opportunities to form opinions as to Mr. Yunghanns’ modus operandi in business and legal work”.   The instant litigation arose out of agreements in 1991 between the Elders Group and Mr Yunghanns which he claimed should be set aside on grounds of unconscionability and economic duress.   The firm had acted for both parties in joint ventures between 1984 and 1988.   Events in those years were relevant to the circumstances in which the 1991 agreements were made.   Further, Corrs had returned some 140 files to Mr Yunghanns but retained a number of documents which he asserted contained confidential information.   The firm claimed that the retained documents were not confidential, but did not reveal what was in them.

39                  In this setting Gillard J discussed the jurisdiction to restrain former solicitors from acting against a client. His Honour said (at 7):

“…as a general rule it is necessary to identify and establish that there was some confidential information provided (see Bricheno v Thorp (1833) 2 Cr and M 183, 149 ER 725.)  But the degree of particularity of the confidential information must depend upon all the circumstances.   Often it cannot be identified for fear of disclosure.   In considering this factor it must be borne in mind that a solicitor makes notes, forms views and opinions of clients and observes things that the client may have forgotten or overlooked.   In some cases the circumstances of the retainer and the nature of the legal work will be sufficient to establish the nature of the confidential information.   In this regard the relationship between solicitor and client may be such that the solicitor learns a great deal about his client, his strengths, his weaknesses, his honesty or lack thereof, his reaction to crisis, pressure or tension, his attitude to litigation and settling cases and his tactics.   These are factors which I would call the “getting to know you” factors.   The overall opinion formed by a solicitor of his client as a result of his contact may in the circumstances amount to confidential information that should not be disclosed or used against the client.”

40                  Gillard J referred to a number of authorities.    In D & J Constructions Pty Ltd v Head (1987) 9 NSWLR 118 at 123, Bryson J noted, inter alia, that

“… the spectacle or the appearance that a lawyer can readily change sides is very subversive of the appearance that justice is being done.   The appearance which matters is the appearance presented to a reasonable observer who knows and is prepared to understand the facts…”.

41                  In McVeigh & Anor v Linen House Pty Ltd & Ors,  Victorian Court of Appeal, unreported, 3 September 1999, Batt JA said:

“… authority has established that a court will restrain a solicitor from acting for a litigant not only in order to prevent disclosure of confidence of a client or a former client, but also to ensure that the solicitor’s duty of loyalty to the former client is respected, notwithstanding termination of the retainer, and to uphold as a matter of public policy the special relationship of solicitor and client …”

42                  In Wan v McDonald (1992) 33 FCR 491 at 512-513, Burchett J said:

“The emphasis in the judgments was placed on the solicitor’s duty to safeguard confidential information of his client.   But there are at least two other aspects of the problem to which attention has more recently been drawn: a solicitor’s duty of loyalty, which cannot be treated as extinguished by the mere termination of the period of this retainer, and the important consideration of public policy which gives a special quality to the relationship of solicitor and client that the law will not generally permit to be stained by the appearance of disloyalty …”.

43                  While I respectfully accept as good law the authorities which have been mentioned (all of which concerned solicitors rather than counsel), these principles of course have to be applied in the particular context of the present case.  The brief summary of the complex facts in  Yunghanns is sufficient to show how different it is from the present case.   In the abstract, it may be understandable that there is criticism of lawyers who "change sides".  But that cannot literally mean that once a lawyer, be it solicitor or barrister, has acted professionally for a particular client, the lawyer is forever after prevented from opposing that client in subsequent litigation.

44                  Insofar as reliance is placed on the “getting to know you” principle, a moment's consideration of the way that litigation is conducted in Australia shows that this cannot be accepted too literally, especially in relation to counsel.  There are many bodies such as Commonwealth and State government entities, banks, insurers, media companies and many others which are constantly engaged in litigation.   Counsel retained to act on behalf of such  bodies inevitably acquire information, not confidential information in the strict sense, but experience as to the corporate culture of the clients, their internal policies, the way they deal with litigation, tactics, the personalities of important decision-makers and so forth.  I do not accept that general experience of that kind would impose what presumably on the respondent’s argument would be lifetime restraints on counsel from acting against such a body.    Indeed it is a feature of an independent Bar that counsel might appear one day on behalf of such a body and the next day against it.    While perhaps strange to observers from countries where the legal profession is organised differently, this freedom enhances the independence of counsel and their capacity to give objective and sometimes unwelcome advice.   The  cab rank rule works both ways.   The driver is obliged to accept the fare, but the fare does not buy the service of the driver beyond the stipulated journey.

45                  Turning to the facts of the present case, I am quite satisfied that in relation to the Westpac litigation there was no confidential information disclosed by Dr Hughes to Mr Collinson   which had any relevance or potential relevance to the present proceeding.  As for the “getting to know you” principle, this amounts to no more than Mr Collinson meeting with Dr Hughes and forming the impression that he was an intelligent and educated man who, in the course of the mediation showed some originality in proposing settlement ideas.  That, to my mind, falls far short of imposing the kind of restriction contended for.

46                  As to the conversations in the earlier part of this year, as I have said, I am not satisfied that the first meeting at the tennis club occurred at all, and as to the second conversation, I have found that it was, as Mr Collinson said, no more than an inquiry as to the possibility of his acting.  No information relevant to the present proceeding was imparted.  Although it is therefore not strictly necessary to say this, I would observe that even if the version advanced by Dr Hughes were correct, what he was conveying to Mr Collinson was not confidential.  It was not information conveyed in confidence to a legal practitioner.  On the contrary, it was information conveyed to a practitioner whom it was hoped might accept a retainer but did not.  The reason that there was no retainer was that Dr Hughes did not proceed with Mr Collinson's obviously proper stipulation that he had to be briefed by solicitors.

47                  If it were enough to do what Dr Hughes says to have the effect of preventing counsel from acting against a person, it would be unnecessary to incur the expense of giving special retainers.  The litigant could simply telephone counsel and say that there was an interesting case which was very important and involved such‑and‑such issues.  Counsel would no doubt say that the person should retain a solicitor to send a brief.  The litigant would then go on to another counsel and repeat the process.  So it would be possible to effectively immunise an indefinite number of counsel from ever acting on the other side.

48                  The motion by notice dated 26 September 2000 will be dismissed.   At the request of counsel I shall adjourn the question of costs to a date to be fixed.

Associate:

Dated:              13 October 2000