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What do you get when you are granted an exclusive territory

This case is a franchising case, but it explores the legal consequences of granting an exclusive territory and so should be of interest to IP practitioners too.

Some facts

Spanline carries on a business of providing home additions and extensions such as awnings and patios. It operates nationally through a network of franchisees and sub-franchisees.

In 2001, Spanline appointed RPR as its exclusive franchisee for the South Coast of NSW. RPR was based in Nowra, but its territory also included the Illawarra region and the Southern Highlands. The Southern Highlands were about an hour’s drive from Nowra, but much closer to the Illawarra region.

In 2004, RPR granted Marmax a sub-franchise for the Illawarra region. That was in anticipation of events which finally took place in 2005. In 2005, RPR sold its business in the Illawarra region to Marmax and Spanline granted a new, exclusive franchise over the Illawarra region to Marmax.

In 2007, Marmax began selling to customers in the Southern Highlands. The first time RPR complained to Spanline, Spanline did nothing. It said it could find nothing amiss although, if it had conducted even a cursory search of its database, it would have found that Marmax was indeed selling in RPR’s territory.

Spanline met with Marmax in July 2009 and orally approved Marmax continuing to service customers from the Southern Highlands. Spanline considered this was in its commercial interests as RPR refused to open an office in the Southern Highlands and Spanline was concerned business from potential customers in the Southern Highlands would be lost because they would not travel to Nowra.

After yet further complaints from RPR, Spanline sent Marmax a letter in September 2009 telling it not to sell in RPR’s territory. But Marmax’ subsequent telephone call left Marmax with the understanding that it could continue in line with the July 2009 oral permission.

An attempt to negotiate a co-existence arrangement over the Southern Highlands failed as RPR would not agree to the proposed reduction in its exclusivity and Spanline authorised Marmax to continue.

The result

The trial judge had awarded RPR damages from both Spanline and Marmax: Spanline for breach of the exclusivity arrangements in the franchise agreement; Marmax for breach of the terms of the sale of business agreement.

The Full Court allowed Marmax’s appeal. The Full Court also partially allowed Spanline’s appeal, finding it liable to pay damages only for sales by Marmax in RPR’s territory after Spanline gave Marmax oral permission to continue selling in the Southern Highlands.

What kind of exclusivity was the exclusive territory

Spanline first argued that the grant of the exclusive right “to conduct the Franchised Business in the [Franchised] Territory” was just a promise to be the only franchisee located in the territory and not directed to the location of customers. The Full Court agreed with the trial judge that the exclusivity extended to the customers. The definition of Franchised Business extended to installation of the products. Also, the nature of the business was supplying and installing products in retail customers’ homes.

What did the promise of exclusivity mean

The trial judge had found Spanline in breach of its obligations to RPR implied by the grant of exclusivity both by failing to undertake even the most rudimentary investigation of RPR’s initial complaints as well as by failing to stop Marmax from selling into RPR’s territory, both before and after Spanline gave Marmax oral permission to sell to customers in the Southern Highlands and authorising Marmax to sell in RPR’s exclusive territory.

The promise of exclusivity imported with it implied terms of good faith and fair dealing and an implied term to co-operate: to do all things necessary to ensue each party got the benefit of its bargain. In doing so, the trial judge had relied on Far Horizons Pty Ltd v McDonald’s Australia Ltd [2000] VSC 310 and similar cases.

The Full Court did not disagree that those terms should be implied. Instead, it disagreed about their content. In essence, the Full Court held that the grant of an exclusive territory required Spanline only to refrain from taking positive steps to derogate from the grant of exclusivity or to authorise someone else to invade the territory. The Full Court said:

[139] …. In our view, the content of the obligation to do all things necessary to give the other party the benefit of the contract required Spanline to refrain from taking positive steps that would infringe upon or cause a third party to infringe upon the exclusive franchise granted to RPR. To require Spanline to do more, such as to take positive steps to investigate possible incursions by Marmax upon the rights of RPR, would exceed the requirement of necessity. It could not be said that the absence of a requirement to investigate such conduct would render the RPR Franchise agreement nugatory, worthless or seriously undermined.

[140] For the same reasons, we also do not accept RPR’s contention that Spanline was under an obligation to take steps to enforce its contractual rights against Marmax for the benefit of RPR.

At [150], the Full Court held that the implied duty to act in good faith did not require anything more than the implied duty to co-operate.

What did this mean? First, Spanline had no obligation to do anything to protect RPR or to try to stop Marmax invading RPR’s territory. (Any of us who might have thought that setting up a network of exclusive territories might have implied such an obligation would apparently be wrong.)

As already noted, therefore, Spanline was only liable to RPR for damages on sales[1] made by Marmax in RPR’s territory after Spanline gave Marmax permission to carry on. Spanline was not liable for sales while it was just “sitting on its hands”.

If you were acting for a franchisee, or an exclusive licensee, of a territory which did not extend to the whole of Australia, you would want to consider bargaining for a term requiring the franchisor (or licensor) to do “something”.

In this connection, the Full Court expressed an additional concern about implying a term that Spanline take reasonable steps to ensure RPR’s territory remained exclusive. It was likely to be uncertain in scope:

[141] …. The mere fact that the term operates by reference to a criterion of reasonableness is not the problem: it is that the contract does not supply any means for determining what is reasonable in the circumstances. It was argued that Spanline’s obligation to RPR could extend to termination of the contractual relationship between Spanline and Marmax. How the interests of Spanline and Marmax would be taken into account in determining whether such a step would be “reasonable” was not explored.

Something rather explicit would seem to be required

Why didn’t Marmax have to pay damages

RPR argued that Marmax was also in breach of both the original sub-franchise agreement and the sale of business agreement.

The Full Court held that the initial sub-franchise agreement between RPR and Marmax had been terminated once RPR and Marmax entered into the sale of business agreement and Spanline granted exclusivity over the Illawarra region to Marmax (with RPR’s knowledge and consent).

The Full Court accepted that a restraint on Marmax selling in RPR’s (retained) territory would not have been an unreasonable restraint of trade. However, the restraints imposed in the sale of business agreement did not extend to Marmax’ activities.

The sale of business agreement did include a restraint clause which seems fairly typical:

Except as permitted by clause 3.10, Marmax must not, and must ensure that each of its affiliates does not, during each restraint period in the South Coast Franchise Area:

(a) promote, participate in, finance, operate or engage in (whether on its own account or in partnership or by joint-venture); or

(b) be concerned or interested (directly or indirectly, or through any interposed body corporate, trust, principal, agent, shareholder, beneficiary, or as an independent contract, consultant or in any other capacity) in,

any of the Restrained Businesses.

For this purpose, “Restrained Business” was defined to mean:

a business, or operation:

(i) similar to the Spanline franchise businesses such as the Business; or

(ii) competitive with the Spanline franchise businesses such as the Business; or

(iii) supplying similar products and services to the Spanline franchise businesses such as the Business.

As best I can make out, this clause did not provide any protection to RPR because Marmax was conducting a Spanline franchise business, not a competing or similar business. There was also a “non-interference” clause:

On and from the Completion Date, [RPR] must not, and must ensure that each of its affiliates does not, during each restraint period:

a) Solicit, canvas or secure the custom of a person who is at the Completion Date, or was within 1 year before the Adjustment Date, a customer of the Business or [RPR] in connection with the Business;

b) Represent itself as being in any way connected with, interested in or associated with the Business (except as its proprietor before the Completion Date) or any business conduct by Marmax; or

c) Solicit, employ or engage the services of any transferring employee or any other person who becomes an employee of Marmax in connection with the Business.

The remarkable feature about the non-interference clause is that it was one way. There was no reciprocal obligation on Marmax not to interfere with RPR’s continuing business.

As a result, Marmax was not in breach of any contractual obligations it owed to RPR and the award of damages for making sales in RPR’s territories could not be sustained.

Marmax Investments Pty Ltd v RPR Maintenance Pty Ltd [2015] FCAFC 127 (Middleton, Foster and Gleeson JJ)


  1. Strictly speaking, damages for the loss of the opportunity to make those sales.  ?

An arbitration clause means arbitrate

The Irelands were Subway franchisees.

Their franchise agreement with Subway included an arbitration clause:

10. DISPUTE RESOLUTION. The parties want to settle all issues quickly, amicably, and in the most cost effective fashion. To accomplish these goals, the parties agree to the following provisions that will apply to resolve any dispute or claim arising out of or relating to this Agreement, or any other Franchise Agreement the parties have with each other (a ‘Dispute’):

c. The parties will arbitrate the Dispute if the mediation clause in Subparagraph 10.a. is not enforceable, or the parties do not settle the Dispute under the informal discussion and mediation procedures above, or the Dispute is one which this Agreement provides will be submitted directly to arbitration, except as provided in this Agreement. The arbitration will be held in accordance with the United Nations Commission on International Trade Regulations and Law (UNCITRAL) Arbitration Rules administered by an arbitration association, such as the American Arbitration Association or the Institute of Arbitrators or Mediators Australia, at a hearing to be held in Queensland. The arbitration will be conducted in English and decided by a single arbitrator unless the law of Australia requires three (3) arbitrators. Any court having jurisdiction may enter judgment on the arbitrator’s award. Except as provided in this Agreement, a party must commence and pursue informal discussions, mediation, and arbitration to resolve Disputes before commencing legal action.

The Irelands, however, commenced proceedings against Subway in the Victorian Civil and Administrative Tribunal (VCAT) alleging breaches of the franchise agreement, negligence and misleading or deceptive conduct.

Subway applied to VCAT to have the proceeding referred to arbitration pursuant to clause 10. VCAT refused. The Supreme Court dismissed Subway’s appeal. The Court of Appeal, Maxwell P and Beach JA, Kyrou J dissenting, have allowed Subway’s further appeal and sent the matter to arbitration.

Section 8 of the Commercial Arbitration Act 2011 (Vic) provides:

8            Arbitration agreement and substantive claim before court (cf Model Law Art 8)

(1)  A court before which an action is brought in a matter which is the subject of an arbitration agreement must, if a party so requests not later than when submitting the party’s first statement on the substance of the dispute, refer the parties to arbitration unless it finds that the agreement is null and void, inoperative or incapable of being performed.

As the heading indicates, this provision is part of a national scheme to implement the UNCITRAL Model Law on commercial arbitration.

The “problem” was that reference to “court”. While it was not a defined term in the Act, there are any number of court rulings declaring in no uncertain terms that VCAT is not a court – it is an administrative tribunal.

Maxwell P and Beach JA standing back and looking at the big (international) picture, however, held that for the purposes of the Act – a law designed to promote commercial arbitration as a dispute resolution mechanism – VCAT qualifies as a “court”. Maxwell P and Beach JA took somewhat different routes to reach that conclusion but it is perhaps best encapsulated in Maxwell P’s observation:

The clear policy of the Act (and of the model law which it enacts) is that, when parties have agreed to have disputes between them determined by private arbitration, neither party is at liberty to litigate the matter in dispute through the adjudicative mechanisms of the State. For this statutory purpose, in this statutory context, the Tribunal is indistinguishable from those other adjudicative bodies of the State which bear the title ‘court’.

I don’t know if other States or Territories operate under regimes similar to VCAT in, er, parallel to the court system but, as Croft J noted at first instance, Parliament set up VCAT to provide a speedy and inexpensive, low cost, accessible, efficient means of dispute resolution and, apparently, it handles the vast bulk of legal disputes here. But not disputes between franchisors and franchisees (where there is an arbitration clause).

Subway Systems Australia Pty Ltd v Ireland [2014] VSCA 142

ACTA coming a little bit more out of the shadows

Michael Geist has a link to the leaked EU comments on the chapter for third party liability on the internet – being drafted by the USA.

The Guardian has weighed into the debate.

Kim Weatherall has emerged from her self-imposed seclusion to comment here, here and here.

DFAT’s must recent summary and overview of key elements. Anondyne USTR statement.

Damages for breach of franchise agreement

Howard’s Storage World (HSW) granted Haviv a franchise to operate an Howard’s Storage World retail outlet at Burwood in Sydney. The terms of the franchise included a grant of an exclusive territory for a radius of 5km.

Subsequently, HSW granted someone else an franchise to operate an Howard’s Storage World franchise at a new shopping centre at Rhodes, approximately 4,840m from Haviv’s Burwood store.

The breach of the contractual exclusivity promise was found, but claims for breach of TPA by misleading or deceptive conduct were rejected.

Jagot J explores the basis on which the damages payable to Haviv should be calculated in Haviv Holdings Pty Limited v Howards Storage World Pty Ltd [2009] FCA 242.

Her Honour considered the nature of the grant of exclusivity – it did not extend as Haviv contended, to a right to be offered the franchise for Rhodes. Nor did it preclude the opening of another store with a territory radius of 5km which overlapped with the territory within 5km of the Burwood store.

On the calculation of damages, her Honour considered the following issues:

  1. Was Haviv entitled to claim damages on the scenario that, if the third party had not been granted the Rhodes franchise, Haviv would have been – No
  2. Did Haviv prove that the breach of the exclusivity promise caused it loss – Yes
  3. How to assess that damage on the basis of loss of net profits
  4. The extent to which damages should be calculated for the period after Haviv closed the Burwood store in 2007 – damages would be payable until the expiry of the last option for renewal period – 2022
  5. The date the loss should be assessed at
  6. What discount rate should be adopted and how should it be applied
  7. What gross profit percentage should be used
  8. How should fixed costs including rent and refurbishment costs be treated?

At [110] her Honour summarised her findings:

 (1) Mr Halligan’s “alternative C” period of assessment should be used (that is, with damages assessed until the end of the option period, being 17 July 2022).

(2) The benchmark group should comprise Hornsby, East Gardens, Macquarie and Bondi Junction stores.

(3) The discount rates applied should be 28% for losses to the date of judgment and 30% for losses thereafter.

(4) The rent increase should reflect the true position where known (that is, $138,490.56 per annum for seven months from 1 September 2007 and an annual rental of $187,000 from 1 April 2008 to the end of the current lease on 31 March 2013 with appropriate adjustments thereafter from that base).

(5) The figure of 50.3% should be used as the gross profit percentage for the 2007 financial year onwards.

(6) The refurbishment costs should be $40,000 in July 2007, $155,000 in July 2012 and $40,000 in July 2017 and subject to mid-period discounting. 

The parties were sent away to have their experts recalculate their reports on the basis of her Honour’s findings.