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Discovery Principles Revisited
A recent High Court decision has reiterated the principles underpinning discovery in Irish plenary actions in the context of a trademark dispute. InBayerishe Moteren Werke AG v. Edward Ronayne t/a BMWCare , Judge Gilligan dealt with proceedings seeking an order pursuant to s.18 of the Trademarks Act 1996 (as amended) and/or Article 102 of Council Regulation 207/2009 restraining the defendant, or persons acting on his behalf, from infringing the plaintiff’s community trademarks. In the context of disputed discovery categories, the court was faced with deciding whether certain documentation should properly be discovered.
The parties had progressed through the pleadings stage of the proceedings, where they had set out their respective positions in formal legal documents, such as the Statement of Claim and Defence. The proceedings had reached the discovery stage, where each party may request of the other that discovery be made voluntarily of specified categories of documentation which pertain to the matters in dispute between the parties. If a party refuses to make discovery of one or more of the categories sought, then a motion may issue and the court will determine whether discovery should properly made of the category or categories refused.
In this case, some five categories were the subject of a motion issued by the plaintiff. Three of the five had been agreed before the hearing, which meant that two categories remained for the Court to consider. The disputed categories were (a) and (d), which requested respectively:
“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.”
“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.”
Judge Gilligan referred to Order 31, rule 12 of the Rules of the Superior Courts which provides that the discovery to be sought must be both relevant and necessary either for disposing fairly of the cause or matter or for saving costs. He also identified that the legal principles were set out in Medtronic Inc. and Others v. Guidant Corporation and Others  by Judge Kelly where he had considered both touchstones – relevance and necessity – in some detail. Judge Gilligan also referred to the applicable principles from Schneider (Europe GmbH) v. Conor Medsystems Ireland Limited , where Judge Fennelly in Cooper Flynn v. Radio Telefís Éireann  was cited to the effect that “The public interest in the proper administration of justice is not confined to the relentless search for perfect truth. The just and proper conduct of litigation also encompasses the objectives of expedition and economy.” Judge Gilligan further confirmed that the onus of establishing relevance and necessity for the purposes mentioned in Order 31, rule 12 was on the moving party. Moreover, despite the fact that this was a trademark action, the same principles were applicable to discovery as in any other case. In the current matter, the parties disputed the proper application of those principles to the present proceedings and categories (a) and (d) of the documentation sought.
In respect of category (a), the Court noted that, in seeking such documentation, the plaintiff relied on a plea in the Defence that the defendant alleged lawful use of the BMW roundel device in providing specialist BMW maintenance and repair services, including on his website, stationery and invoices. The defendant further relied on s. 15(2) of the Trademarks Act 1996 in alleging that he was engaged in an honest practice in industrial and commercial matters by expressly denying affiliation and/or stating independence from the plaintiff’s business. In essence, the defendant accepted that it used the plaintiff’s roundel mark, but refused to accept that this was unlawful. The defendant had also asserted that he had developed goodwill in the BMWCare mark since 2005 and that the plaintiff had acquiesced in the defendant’s use of the mark.
In seeking the documentation in category (a), the plaintiff stated that it needed to know the extent of the documentation where no express denials of affiliation or statements of independence were set out. The defendant resisted it on the basis that it was a speculative claim, not particularised and was, essentially, a fishing expedition. This had previously been the tenor of prior correspondence between the respective solicitors.
In the overall context of the case, Judge Gilligan found the category requested was speculative, too broad and would place too great an onus in respect of compliance with any such order for discovery. Indeed, he cited from Framus Ltd v. CRH plc  , which he considered to be “somewhat analogous”, to the effect that “[a]part from its speculative element this particular application is more akin to an investigative process rather than a discovery process…” It is important to understand, however, that in coming to that conclusion, and refusing the category, the Court was cognisant of the fact that, in respect of category (c) (which was agreed), the defendant was to make discovery of all documentation where an express denial of affiliation with, or statements of independence from, the plaintiff’s business are detailed, and that, overall, the other discovery categories would adequately deal with this aspect, especially where the defendant conceded that he had used the trademarks.
In respect of category (d), the Court felt that the category itself was not objectionable, but noted that the defendant was keen to exclude unsolicited marketing materials received from agencies by way of promotional material. Such qualification was reasonable and he approved the category as sought, save that he excluded from the scope of the discovery order unsolicited marketing material received by the defendant.
It is important for those engaging in plenary proceedings in Ireland to understand the scope of discovery that might be sought. General disclosure is not available, as it may be in other jurisdictions, and in seeking documentation from other parties to litigation in Ireland, requests should be carefully cast. The categories of documentation to be sought should be relevant and necessary to matters in dispute, which should be determined by reference to the formal pleadings. The extent to which a category is strictly relevant and necessary to matters in dispute will, as recognised by Judge Gilligan, “turn on the particular circumstances of the case in question.” Whilst overlap of categories is permissible, one should be careful to ensure that in formatting the request for one category that one does not trespass too much upon another, leading to exclusion of one.
 -  IEHC 509
 -  IEHC 37
 -  IEHC 63
 -  3 I.R. 344
 -  2 IR 20