Carlton & United Breweries Ltd v Hahn Brewing Co P/L

[1994] FCA 201

CARLTON AND UNITED BREWERIES LIMITED v. HAHN BREWING CO PTY LTD
No. VG505 of 1993
FED No. 201/94
Number of pages - 7
Practice

COURT

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
OLNEY J

CATCHWORDS

Practice - discovery - passing off action - fraudulent intent not pleaded in statement of claim - application for particular discovery - whether question of intention to deceive is relevant for the purpose of discovery.

Trade Practices Act, s 52.

Federal Court Rules, O 15, rr 8, 2(2), O 12, rr 2, 3

Angelides v James Stedman Hendersons Sweets Ltd (1927) 40 CLR 43

Reddaway v Barham (1896) AC 199

Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302

Australian Woollen Mills Ltd v J.S. Walton and Co Ltd (1937) 58 CLR 641

Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd 89 ALR 48

B.M. Auto Sales Pty Ltd v Budget Rent a Car System Pty Ltd 12 ALR 363.

HEARING

MELBOURNE, 24 Feburary 1994
#DATE 6:4:1994

Mr P. Jopling (instructed by Holding Redlich) appeared for the applicant.

Mr P. Anastassiou (instructed by Mallesons Stephen Jaques) appeared for the respondent.

ORDER

THE COURT ORDERS THAT:
1. The respondent on or before 4.00pm on 26 April 1994 file and serve an affidavit making further discovery of the following documents and classes of documents relative to the matters in question in the proceeding which are in its possession custody or power:

A. THE FOLLOWING DOCUMENTS:

(i) All designs, sketches and art work prepared by or on behalf of the respondent prior to 15 October 1993, relating to the development of a label or labels for the Hahn ice beer or Project Cube;

(ii) All documents relating to the design brief, including any and all preliminary designs, sketches, art work and colour selections, prepared by the respondent for the purposes of briefing any designers to prepare a label for Hahn ice beer or Project Cube;

(iii) All documents relating to colour and art work selections conducted by the respondent prior to selecting the labels that presently appear on the Hahn ice beer;

(iv) All documents relating to the decision to select a label bearing the design and get up of the label that presently appears on the Hahn ice beer including market and product research documentation commissioned for the purposes of the launch of the Hahn ice beer;

(v) All documents relating to the Respondent's decision not to use a neck label on the Hahn ice beer;

(vi) Original labels showing the printing referred to and the "computer driven layout of the back label copy" referred to in the Tooheys Ltd Marketing Department memorandum dated 29 October 1993 from John Batistich to Steve Bryant which is Document 8 in Schedule 1, Part 1 of the Respondent's Verified List of Documents dated 10 February 1994;

(vii) Draft copy for advertisements placed by or on behalf of the Respondent in the November 1993 issue of the magazine Australian Hotelier/Liquor Retailer and the December 1993 issue of National Liquor News referred to in the Tooheys Ltd facsimile letter dated 10 November 1993 from Scott Armstrong to J. Cullen and others which is Document 12 in Schedule 1, Part 1 of the Respondent's Verified List of Documents dated 10 February 1994;

(viii) Any and all correspondence passing between the Respondent and Clemenger Sydney Pty Ltd and/or Clemenger Melbourne Pty Ltd ("Clemenger") relating to Clemenger's retainer to act for the Respondent of and in connection with the marketing and promotion of Hahn ice beer and/or Project Cube;

(ix) All design and artwork prepared by Clemenger of and in connection with the marketing and promotion of Hahn ice beer and/or Project Cube including art work, design and/or creative work associated with any labels to be displayed on each bottle of Hahn ice beer together with any art work prepared by Clemenger of and in connection with Hahn ice beer or its code name "Project Cube";

(x) All documents relating to the obtaining of instructions by Clemenger to produce a video for or on behalf of the Respondent for use at a press conference held in relation to "Project Cube" on 16 November 1993, including all draft scripts, story boards, instructions to film production companies and like documents;

(xi) All documents relating to the design, commissioning and production of polo shirts, Hahn ice pens, Hahn ice shirts and any other promotional materials;

(xii) All documents concerning or in any way relating to the development of the Hahn ice beer and/or Project Cube over the period of "nearly 12 months" referred to in the "Presentation by Steve Dillon" annexed to the facsimile letter of Tooheys Ltd dated 15 November 1993 from John Kingsley-Jones to Daryl McGraw which is Document 15 in Schedule 1, Part 1 of the Respondent's Verified List of Documents dated 10 February 1994;

(xiii) All documents relating to the development of the Hahn ice beer "specifically for Australian drinking tastes and the local climate" referred to in the "Presentation by Steve Dillon" annexed to the facsimile letter of Tooheys Ltd dated 15 November 1993 from John Kingsley-Jones to Daryl McGraw which is Document 15 in Schedule 1, Part 1 of the Respondent's Verified List of Documents dated 10 February 1994;

(xiv) All documents relating to any television advertising campaign embarked upon by the Respondents;

(xv) All documents in the possession of Mr Marc Coakley, Brand Manager relating to work undertaken by the Respondent or any of its servants or agents of or in connection with the design of a label or labels for Hahn ice beer and/or Project Cube;

(xvi) All documents relating to the research undertaken by the Respondent prior to the public launch of the Hahn ice beer;

(xvii) All documents relating to the preparation of earlier versions of the Hahn ice labels referred to in the Tooheys Ltd memorandum dated 19 November 1993 from R. Molla to J. Batistich which is Document 19 in Schedule 1, Part 1 of the Respondent's Verified List of Documents dated 10 February 1994;

(xviii) All documents including draft art works, designs and sketches prepared by the Respondent its servants or agents prior to the bottle top specification which is Document 26 in the Respondent's Verified List of Documents dated 10 February 1994, coming into existence prior to this document and resulting in its existence coming into existence.

(xix) With regard to the documents listed in Confidential Schedule A to the Respondent's Verified List of Documents dated 10 February 1994: Document C104

(1) All documents concerning or in any way relating to the planning of the launch of the Respondent's Ice Beer brand "for the period of over a year" referred to in Document C104 in the Confidential Schedule A;

(2) In respect of the table headed "Hahn Ice Beer" with the three columns headed respectively "Feature", "Benefit" and "Proof":

(a) under the feature "Brand Hahn" all original research documentation in support of benefits there claimed;

(b) under the feature "Produce Ice Brewed" the AC Nielson research there referred to;

(c) under the feature "Contemporary Packaging" the research there referred to.

(3) All documents upon which the answer to the question "Its a me-too to Carlton Cold?" question therein contained is based. Document C105

(1) All documents comprising the original brief to Clemenger including draft art work, designs, sketches and the creative concepts prepared by the Respondent, its servants or agents;

(2) All documents relating to the "Order Requirements" referred to under the heading "4. Merchandising and Leisurewear";

(3) All "creative concepts" with which Clemenger were "re-briefed" as referred to under the heading "5. Media". Document C106

(1) All documents, including all research documents comprising the "Consumer Research" referred to in the facsimile letter from G. McDowell to J. O'Mahony and others dated 4 November 1993 which is Document C106 in the said Confidential Schedule A;

(2) All documents relating to the planning of the launch of the Respondent's product for the period of "over a year" referred to in the draft letter to Hahn staff;

(3) All documents relating to the development of the Hahn Ice Beer

"specifically for Australian Drinking Tastes and the Local Climate" referred to in the document entitled "Key Messages for Hahn Ice - to the Process";

(4) All research documents referred to in the answer to the question "Where do you expect to get drinkers. Will you cannibalise your own brands, or do you expect to hurt Carlton Cold or VB?";

(5) All research documents referred to in the answer to the question "Surely there are enough beers and hype already. It is a declining market so won't you be merely introducing another "fashionable" beer which will cannibalise the existing brands for a while?".

Document C108

(1) All research documents (including briefing documents from the Respondent to any market research or advertising agencies) in support of the statement, "Our research in Australia shows clearly that ice beer has the potential to be a major mainstream beer";

(2) All documents relating to any television advertising campaign embarked upon or to be embarked upon by the Respondent;

(3) All research documents referred to in the answer to the question "What market share do you expect to achieve". B. THE FOLLOWING CLASSES OF DOCUMENTS:

(i) All correspondence passing between the Respondent and Clemenger relating to the creation and/or bringing into existence of all documents in connection with the marketing and/or promotion of Hahn ice beer and/or the design of:

(a) Any labels proposed or intended to be affixed to each bottle of Hahn ice beer;

(b) Any packaging for the said product including but not limited to boxes, cartons and any other packaging materials;

(c) Any advertising and promotion of the said product in print media or print form including but not limited to newspaper advertisements, magazine advertisements, circulars, point-of- sale advertising and all other like materials;

(d) Any television advertising and promotion including but not limited to draft scripts, storyboards and memoranda in relation thereto;

(e) Any video produced in relation to the product for the purposes of the public launch of the product or any other purpose whatsoever.

(ii) All design and art work prepared by Clemenger of and in connection with the marketing and promotion of Hahn ice beer including art work and design work associated with any labels proposed or intended to be affixed to each bottle of Hahn ice beer, together with any art work prepared by Clemenger of and in connection with Hahn ice beer or its code name "Project Cube".

(iii) All correspondence passing between Tooheys Ltd and Clemenger and in connection with the marketing and promotion of Hahn ice beer and the design of any label for the purposes of display to be displayed on each bottle of Hahn ice beer;

(iv) All design and art work prepared by Clemenger of and in connection with the marketing and promotion of Hahn ice beer including art work and design work associated with any labels to be displayed on any bottles of Hahn ice beer, together with any art work prepared by Clemengers of and in connection with Hahn ice beer or its code name "Project Cube" on behalf of Tooheys Ltd.

2. The costs of the notion of motion filed 21 February 1994 be in the cause.

3. The question of liability be tried separately from and before any other question in the proceeding.

4. Save with the leave of the Court or by consent of the parties no party shall except in cross-examination adduce from any witness at the trial of the proceeding any evidence unless the party shall have filed and served an affidavit of the witness in accordance with this order.

5. The applicant file and serve any affidavit material upon which it intends to rely at the hearing of this proceeding on or before 13 May 1994.

6. The respondent file and serve any affidavit material upon which it intends to rely at the hearing of this proceeding on or before 3 June 1994.

7. The applicant file and serve any affidavits in reply to the respondent's affidavits on or before 17 June 1994.

8. The directions hearing be adjourned to 24 June 1994.

1. Costs of this day be reserved.
   NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

OLNEY J The applicant seeks an order pursuant to Order 15 rule 8 of the Federal Court Rules requiring the respondent to give discovery of particular documents and classes of documents identified in the notice of motion.

1. The applicant's statement of claim was filed on 30 November 1993. An amended statement of claim was filed on 12 January 1994. Omitting formal parts and paragraphs not presently relevant the amended statement of claim alleges the following:
   

1. . . .

2. . . .

3. The applicant carries on and has at all material times carried on the business of, inter alia, manufacturing, distributing, supplying, offering for sale, selling, marketing and promoting beer throughout Australia.

4. Since 9 June 1993 the applicant has manufactured, distributed, supplied, offered for sale, sold, marketed and promoted throughout Australia the beer called Carlton Cold Filtered Bitter (the "Cold Filtered beer").

5. Since 9 June 1993 the applicant has manufactured, distributed, supplied, offered for sale, sold, marketed and promoted the Cold Filtered beer in:

(a) a clear glass mid-neck bottle;

(b) a bottle with a label in the colours dark blue, light blue, gold and white;

(c) a bottle with a bottle top in the colours dark blue, light blue, gold and white;

(d) a bottle with a label bearing a "cracked ice" background in colours of light blue and white;

(e) a bottle with a neck label in the colours light blue, gold and white with the word "Cold Filtered Bitter" printed in bold lettering thereon; and

(f) a bottle which bears a label on whose rear side words are printed and which are visibly identifiable through the bottle.

6. Since 9 June 1993 the applicant has been unable to satisfy public demand throughout Australia for the purchase of the Cold Filtered beer.

7. By reason of the matters aforesaid the applicant has acquired a substantial and valuable reputation and goodwill for the Cold Filtered beer.

8. By reason of the matters aforesaid the Cold Filtered beer has become amongst the public of Australia:

(a) a beer with characteristics very well and favourably known solely in connection with the applicant under its business and no other;

(b) a beer with characteristics exclusively and distinctively indicating the applicant and/or its business and no other.

9. Since 9 June 1993 members of the Australian public who wish to purchase a Cold Filtered beer that closely resembles the Cold Filtered beer and its characteristics expect and intend to purchase a beer manufactured by or on behalf of the applicant.

10. Continuously since 16 November 1993 the respondent has manufactured, distributed, supplied, offered for sale, sold marketed and promoted throughout Australia a beer (the "Hahn ice beer") in:

(a) a clear glass mid-neck bottle;

(b) a bottle with a label in the colours dark blue, light blue, gold and white;

(c) a bottle with a bottle top in the colours dark blue, light blue, gold and white;

(d) a bottle with a label bearing a cracked ice background in colours of light blue and white - ("the Hahn characteristics").

10A. Since a date after 16 November 1993 the precise date of which the applicant is unable to identify until after discovery and inspection the respondent has manufactured distributed supplied offered for sale sold marketed and promoted throughout Australia the Hahn ice beer in a bottle which bears a label on whose rear side words are printed and which are visibly identifiable throughout the bottle ("the additional Hahn characteristic").

11. In manufacturing, distributing, supplying, offering for sale,

selling, marketing and promoting the Hahn ice beer with the Hahn characteristics and the additional Hahn characteristic, the respondent has manufactured, distributed, supplied, offered for sale, sold, marketed and promoted the same:

(a) in such a way as to bear a striking resemblance to the Cold Filtered beer and the characteristics of the Cold Filtered beer;

(b) with characteristics which consumers of beer products are likely to associate with those of the Cold Filtered beer.

12. The aforesaid acts by the respondent are calculated to and will:

(a) mislead and deceive members of the public throughout Australia into the belief that the Hahn ice beer manufactured, distributed, supplied, offered for sale, sold, marketed and promoted by the respondent is the Cold Filtered beer of the applicant, or is associated with, or has the characteristics which are associated with, the Cold Filtered beer of the applicant;

(b) injure the reputation, goodwill and credit of the applicant.

13. By reason of the aforesaid acts the respondent in trade and commerce:

(a) has engaged in conduct that is misleading and deceptive;

(b) has engaged in conduct that is likely to mislead and/or deceive;

and has thereby contravened section 52 of the Act.

14. Further by reason of the aforesaid acts the respondent in trade and commerce in connection with the supply or possible supply of Hahn ice beer or in connection with the promotion by any means of the supply of Hahn ice beer has represented that Hahn ice beer has sponsorship, approval and benefits that it does not have and has thereby contravened section 53(c) of the Act.

16. Further by reason of the aforesaid acts the respondent in trade or commerce in connection with the supply or possible supply of Hahn ice beer or in connection with the promotion by any means of the supply of Hahn ice beer has represented that the respondent has a sponsorship, approval or affiliation that it does not have and has thereby contravened section 53(d) of the Act.

17. Further, by reason of the aforesaid acts the respondent has passed

off its Hahn ice beer as and for beer of or supplied by the applicant or on its behalf and/or associated with and/or connected in the course of trade with the applicant and the Cold Filtered beer and/or approved by the applicant.

(There is no paragraph 15 in the pleading).

1. The only changes made by the amended statement of claim were the inclusion of subparagraph 5(f) and paragraph 10A, as well as the reference in paragraph 11 to "the additional Hahn characteristic".

2. By letter dated 9 December 1993 the respondent's solicitors sought further particulars of the amended statement of claim, including the following request:
   

In paragraph 14, 16 and 17 of the statement of claim reference is made to our client having "represented" or "passed off" Hahn Ice. In respect of each of these paragraphs, please state whether it is alleged that such representation or passing off occurred by means only of "the Hahn characteristics". If not, please specify the other means alleged.

1. The applicant's solicitors replied by letter dated 16 December 1993 in which they said (relevant to the above request):
   

The allegations contained in paragraphs 14, 16 and 17 occurred by means of "the aforesaid acts" i.e. those acts referred to paragraphs 10 and 11 of the Statement of Claim.

1. This exchange took place before the amended statement of claim was filed on 12 January 1994.

2. The respondent filed a list of documents on 11 February 1994. The earliest document disclosed in the list is dated 15 October 1993.

3. The documents and classes of documents of which the applicant seeks discovery are particularised in some detail in the notice of motion. In fact they occupy some 5 pages of typing. In general, what is sought is discovery of documents relating to the designing of the get-up of Hahn ice beer, the instructions given by the respondent in relation thereto and the various recommendations and decisions which preceded the final adoption of the get-up ultimately used. The documents sought for the most part, if not entirely, predate 15 October 1993.

4. The respondent has not discovered documents relating to the formulation of the design of the label and get-up of Hahn ice beer. In his submissions on the hearing of the notice of motion, counsel for the applicant said:
   

"... the principal issue is that it is our contention that the respondents have failed to discover any of their instructions to brief any advertising agencies, any material that might have been provided to those advertising agencies, any research work conducted by the respondent about its packaging and get-up, its colours and logos, and any material relating to its consideration of that research work or that advertising work".

(T p 4)

And further (at T p 6):

Put simply, your Honour, it is my submission that the respondent's discovery is incomplete. They concede they have design work and research work that we have asked for, but they simply contend it is irrelevant or not germane to the matters in issue. We contend they are. We contend that in order for the court ultimately to make a ruling as to whether or not there has been a breach of section 52, or a passing off, it will be relevant for the court to make a ruling on the way that our friends have devised their mark and get-up. To that extent it will be relevant for the court to know what proposals, we would submit, the respondent rejected, what instructions it gave other departments, either internally or externally, and advertising agencies, and to that extent proof of deliberate copying we say will be relevant. Now, your Honour is well-versed with the provisions of section 52. In my submission we say the word, misleading, involves the motion of deceit, the notion of cheating, and that the court when considering whether a party has breached section 52 will be vigilant in its inquiries to look at the role of the intent of the offender in determining whether its conduct infringes section 52. Further, your Honour, we say that the conduct in relation to alternative designs and get-ups could constitute an admission to pass the product off as our product. This is, if it has rejected, that is, something that is distinctively different, and they opted for the current label, you might be able to infer that it was a passing off of our product. ...

1. For the respondent it is said that the documents of which discovery is now sought fall into a class of documents which could only be relevant if it were alleged that the respondent fraudulently intended to copy the applicant's label design and get-up or fraudulently intended to pass off its product as the applicant's product. As no such intention has been alleged, these documents have not been discovered, but rather discovery has been limited to documents relevant to the facts pleaded namely, documents relating to the actual label used for Hahn ice beer and documents relating to the actual advertising and marketing of Hahn ice beer.

2. It is central to the respondent's argument that discovery of documents going to the issue of fraudulent intention should not be ordered unless the applicant has alleged fraud.

3. Order 15 r 2(2) of the Federal Court Rules provides that a party required to give discovery of documents must file and serve on the party giving notice a list of documents (in the required form) "relating to any matter in question between him and the party giving the notice of discovery".

4. How then was the respondent required to reply to the applicant's notice of discovery in this proceeding? Given that Order 12 r 2 requires that a party pleading shall give particulars of any fraud on which he relies, and Order 12 r 3 requires that a party pleading any condition of mind (which includes any fraudulent intent) shall give particulars of the facts on which he relies, can it be said that in responding to the applicant's notice of discovery, the respondent was obliged to anticipate that the respondent's intention was a matter in issue between the parties? I think not. The question of fraudulent intent is not raised in the amended statement of claim. In my opinion the respondent's attitude to discovery was appropriate in the circumstances. But that is not necessarily the end of the matter.

5. Although fraudulent intention is not one of the elements necessary to establish a cause of action for passing off, evidence of a fraudulent intent may be tendered. The High Court decision in Angelides v James Stedman Hendersons Sweets Ltd (1927) 40 CLR 43 is relied upon in Australia as authority for the proposition that in an action for passing off fraud may be relied upon by the plaintiff although not specifically pleaded. At p 82 of the report Rich and Starke JJ quoted with approval the following passage from the English House of Lords decision in Reddaway v Barham (1896) AC 199 at 219:
   

It is quite true that the word 'fraud' is not to be found in the statement of claim. But the whole gist of the action was that the defendants were endeavouring to palm off their goods as the goods of the plaintiffs by selling them under a designation which would . . . deceive customers. . . . That is, as it seems to me, a charge of dishonesty, and I must say I think the charge was established.

1. In Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 Lockhart J said at p 345:
   

Evidence of fraud is still tendered in passing-off cases because evidence that the defendant had a fraudulent intent may assist in establishing the requisite misrepresentation, as the court "will not be astute to find the defendant has failed in his nefarious design".

1. But it seems that in Conagra the applicant had pleaded that the respondent intended to pass off its goods as the applicant's. At p 305 Lockhart J said:
   

In its statement of claim the appellant alleged, amongst other things, that the respondent had adopted the name and get-up of the appellant's frozen food products with the intention of passing off the respondent's products as those of the appellant.

1. In Australian Woollen Mills Ltd v J.S. Walton and Co Ltd (1937) 58 CLR 641, in an action involving claims of infringement of a trade mark and passing off, Dixon and McTiernan JJ said at p 657:
   

But the examination made of the respondent's motives and good faith seems to us to leave the question of infringement and passing off very much in the same position as it stood in without it. The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency.

1. This passage was referred to by Wilcox and Einfeld JJ in Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd 89 ALR 48 at p 69 where their Honours said:
   

As I (sic) have already observed, proof of the fact that a trader has deliberately copied the name or "get-up" of a rival does not itself establish a contravention of s 52 or a passing off of goods. The proof has evidentiary value only. But the evidentiary value is significant. The courts have long recognised that traders best know their trade.

1. In B.M. Auto Sales Pty Ltd v Budget Rent a Car System Pty Ltd 12 ALR 363, an appeal to the High Court from a decision of the Supreme Court of the Northern Territory in an action for passing off in which nominal damages were awarded, Gibbs J said (at p 370 - 1):
   

It was further argued on behalf of the appellants that the award of damages could not be sustained because fraud was neither sufficiently alleged nor proved. It is unnecessary to consider whether proof of fraud was necessary to support the recovery of nominal damages. It is enough to say that fraud, for the purposes of an action of this kind, "is not necessarily such as would support an action of deceit, but would be constituted by persistence after notice": Turner v General Motors

(Australia) Pty Ltd, per Isaacs J (42 CLR at 362). The evidence in the present case left no doubt that the appellants persisted in the use of the name with full knowledge that it had become distinctive of the respondent's business and that the use of the name was calculated to deceive. Although this was not expressly alleged in the statement of claim, the respondent's case on this issue was clearly made out by evidence to which the appellants did not object at the trial. It is trite law that fraud should be distinctly and clearly alleged, and no relaxation of that requirement should be encouraged, but in an action of passing off, where fraud is not a necessary ingredient of the cause of action, it is not an inflexible rule that the court cannot find fraud unless it has been pleaded: Midland Counties Dairy Ltd v Midland Dairies Ltd (1948) 65 RPC 429; John Walker and Sons Ltd v Henry Ost and Co Ltd (1970 RPC 489.

1. Although it was said in argument that the English Court of Appeal has since disapproved of the two authorities cited by Gibbs J, no Australian authority to that effect has been referred to.

2. The present application seeks the exercise of the Court's authority under O 15 r 8 of the Federal Court Rules. The rule provides:
   

Where, at any stage of the proceeding, it appears to the Court from evidence or from the nature or circumstances of the case or from any document filed in the proceeding that there are grounds for a belief that some document or class of document relating to any matter in question in the proceeding may be or may have been in the possession, custody or power of a party, the Court may order that party:

(a) to file any affidavit stating whether that document or any document of that class is or has been in his possession, custody or power and, if it has been but is not then in his possession, custody or power, when he parted with it and what has become of it; and

(b) to serve the affidavit on any other party.

1. Order 15 r 8 may in some circumstances be resorted to as an aid to ensuring that an opposite party has properly discharged his obligations to give a full discovery of documents, but its scope is much wider than that. The rule not only enables a party to provide evidence to support a claim that documents (or classes of documents) which have not been discovered do, or may, exist, but further it provides the opportunity for a party to give evidence of the facts and circumstances of the case in order to explain the context in which the allegations contained in the pleadings have been made, and thus identify more precisely the matters in question between the parties.

2. On the affidavit evidence put before the Court and from the nature and circumstances of the case (as to which there is no relevant issue between the parties) I am satisfied that there are grounds for a belief that documents and classes of documents of the type identified in the notice of motion may be in the possession custody or power of the respondent. Whether or not an order can be made pursuant to O 15 r 8 depends upon whether those documents relate to any matter in question in the proceeding.

3. On the authorities it is beyond doubt that the applicant is not required to prove a fraudulent intent on the respondent's part in order to succeed either in respect of the s 52 claim or in the action for passing off, but there is equally compelling authority for the proposition that the question of whether or not the respondent's conduct was fraudulent in the sense that it chose the get-up of Hahn ice beer in the hope or expectation of deriving a benefit from its resemblance to the applicant's product, could be relevant in the proceeding notwithstanding that fraudulent intent has not been pleaded. If proved, the fraudulent intent may assist in establishing the requisite misrepresentation to support the applicant's case both in relation to s 52 of the Trade Practices Act, and passing off. It may also be relevant to the question of the relief to which the applicant is entitled in the event of either claim succeeding.

4. The evidence and other material put to the Court on the notice of motion exposes sufficient of the applicant's case to alert the respondent to the fact that the applicant asserts that the respondent's choice of get-up for its product was deliberate. The respondent's intention is therefore a matter in question in the proceedings. That being so, the respondent should be required to give discovery of documents which are relevant to the question of its decision in relation to the get-up of Hahn ice beer.

5. I propose to make an order in terms of O 15 r 8 but will first invite the parties to confer with a view to agreeing to the precise terms of the order.