High Court refuses broad discovery of all defendant documents since 2005 in trademark infringement case due to speculative relevance.

Neutral Citation Number: [2011] IEHC 509

THE HIGH COURT

2010 11125 P

BETWEEN

BAYERISCHE MOTEREN WERKE AKTIENGESELLSCHAFT

PLAINTIFF

AND

EDWARD RONAYNE T/A BMWCARE

DEFENDANT

JUDGMENT of Mr. Justice Gilligan delivered on the 14th day of December, 2011

1. These proceedings relate primarily to an allegation that the defendant has infringed a number of the plaintiff’s trademarks and the

plaintiff seeks an order pursuant to s. 18 of the Trademarks Act 1996 (as amended) and/or Article 102 of the Council Regulations

207/2009 restraining the defendant or persons acting on his behalf from infringing the plaintiff’s community trademarks.

2. I have had the benefit of reading and considering the pleadings herein and the various notices for particulars and replies thereto.

3. The particular aspect before the court at this stage is a notice of motion seeking five categories of discovery and in this regard

three categories identified as (b)(c) and (e) have been agreed.

4. The documents in dispute comprise category (a) being:-

“All documents evidencing the defendant’s use of the name BMWCare and/or the Plaintiff’s Trade Marks by the Defendant

in Ireland since 2005 (the alleged time when the Defendant began to trade as BMWCare.”

and category (d) being:-

“All documents and audio recordings relating the defendant’s radio campaign which it was pleaded by the defendant in his

defence and counterclaim was scheduled for broadcast in November, 2010 and or any other documents and audio

recordings relating to advertising campaigns of any sort whether in the past or intended in the future for promotion of the

defendant’s business.”

5. In my view, the legal principles as set out in Schneider (Europe GmbH) v. Conor Medsystems Ireland Limited [2007] IEHC 63, and

Medtronic Inc. and Others v. Guidant Corporation and Others [2007] IEHC 37 apply. Order 31, r. 12 of the Rules of the Superior

Courts sets out that an applicant for discovery has to demonstrate that the documents sought are both relevant and necessary for

the fair disposal of the case or to save costs. Further, the onus of establishing relevance and necessity for the purposes mentioned in

the rule is on the moving party and the general principles applicable to discovery apply as in any other case to patent and trademark

actions. The only dispute between the parties hereto is as to the proper application of the principles to the present proceedings and

the documents sought in categories (a) and (d).

6. As regards category (a) it is contended on the plaintiff’s behalf that at para. 5(c) of the defendant’s defence he alleges lawful use

of the BMW roundel device mark (in the course of his trade providing specialist BMW maintenance and repair services including such

use on his website, stationery and invoices). Furthermore, the defendant relies upon s. 15(2) of the Trademarks Act 1996, at para. 6

of this defence, being the defence of honest practice in industrial and commercial matters. Specifically it is contended that the

plaintiff’s states that its use of the plaintiff’s trademarks are “combined with express denials of affiliation and/or statements or

independence from the plaintiff’s business”.

7. It is contended on the plaintiff’s behalf that this category of documents as sought is principally important to the issue of

infringement at trial given that the defendant accepts that it used the plaintiff’s iconic roundel mark but refuses to accept that it was

unlawful use.

8. Furthermore, it is contended that the defendant alleges at para. 2 of his defence that he has established substantial good will in

the BMWCare mark since commencing trading in 2005 and further alleges that the plaintiff, it servants or agents have acquiesced in

the defendant’s use of the said mark and it is “unconscionable that plaintiff maintains these proceedings against the defendant”.

9. In essence, the plaintiff contends that it needs to know the extent of the documentation upon which no express denials of

affiliation or statement of independence from the plaintiff’s business was set out, notwithstanding that in category (c) which has

been agreed, the defendant is to make discovery of all documentation where an express denial of affiliation with or statements of

independence from the plaintiff’s business are set out.

10. It is contended on the defendant’s behalf that the plaintiff’s application in respect of category (a) is a speculative claim, not

particularised and is in essence, a fishing expedition.

11. In the plaintiff’s solicitor’s letter of the 3rd August, 2011, reference is made to category 1 and to the defendant’s solicitor’s

characterisation that the category is too broad. In essence, the plaintiff maintains that the defendant has been using both the name

BMWCare and the plaintiff’s trademarks on, amongst other things, his envelopes and “with compliments slips”, and so it is not

unreasonable for the plaintiff’s to be concerned that the defendant may also have extended such use to other documents (whether

trivial or not) related to his business and as such, this aspect is very relevant to the plaintiff’s case to establish the extent as well as

the mere fact of such use of the name BMWCare and of the plaintiff’s trademarks and it is contended that this directly relevant to the

question of the quantum of damages and hence, should be available to the plaintiffs in the present circumstances.

12. It is contended on the defendant’s behalf that the other categories of discovery as agreed including category (d) will adequately

deal with the discovery aspect and that, in essence, the fulfilment of discovery of category (a) documentation would place a very

serious burden on the defendant who is a sole trader in a small way of business, against the background where the defendant

accepts that he has used the trademarks concerned but alleges that he has not done so unlawfully.

13. I am inclined to the view in the overall context of the case as pleaded and the defence and counterclaim as delivered thereto

that the situation herein is somewhat analogous to the situation that arose in Framus Ltd v. CRH Plc [2004] 2 I.R. 20 as per Murray J.

at p. 40 wherein, in the course of discussing the subject matter of discovery he states:-

“The plaintiffs complain that they effectively put out of business by the abuse of a dominant position on the relevant

markets by the defendant and in particular by their concerted action in relation to such matters and the terms and

condition of sale of the products in question to buyers of those products. The fact is that they have been in a position to

plead specific contracts and projects which were the subject of these alleged anti-competitive practices and which

affected their businesses. However, what the plaintiffs in fact seek in this context is access to all documents concerning

all transactions within the relevant periods for the relevant markets because they believe that among them that they will

find evidence of anti-competitive practices of which they suspect the defendants. Apart from its speculative element this

particular application is more akin to an investigative process rather than a discovery process and perhaps more

appropriate to, as the High Court Judge pointed out, the exercise of a public investigatory power by a competent

authority.”

14. I accept that clearly each application for discovery must turn on the particular circumstances of the case in question. Taking into

account the fact that there will be discovery of categories (b), (c), (d) and (e) and further the reasoning for discovery of category

(a) as advanced in particular the concern as expressed that the plaintiff may also have extended such use to other documents is

very relevant to the plaintiff’s case to establish the extent of such use and that this aspect is directly relevant to the question of the

quantum of damages against the background where the plaintiff concedes his use of the subject matter of the plaintiff’s alleged

trademarks is, in my view, speculative, too broad and would place too great an onus on the plaintiff in respect of compliance with any

such order from 2005 to date.

15. Accordingly, I refuse the application in respect of category (a).

16. As regards category (b) there is, in essence, no real difficulty, the defendant only being concerned to exclude unsolicited

marketing material as received from agencies by way of promotional literature and thus, I will accede to the request for discovery of

category (d) and make the appropriate order in respect of all documents and audio recordings (excluding unsolicited marketing

material received by the defendant) relating to the defendant’s radio campaign which it was pleaded by the defendant in his defence

and counterclaim was scheduled for broadcast in November, 2010 and/or any other documents and audio recordings (excluding

unsolicited marketing material received by the defendant) relating to advertising campaigns or any sort whether in the past or

intended in the future for promotion of the defendant’s business.