Levi Strauss & Co. v Mark Coulton

[1992] FCA 1027

Re: LEVI STRAUSS AND CO. and LEVI STRAUSS (AUSTRALIA) PTY LTD
And: MARK COULTON and ERIC MATZEN
No. N G218 of 1992
FED No. 1027
Number of pages - 5
Practice and Procedure
(1992) 25 IPR 312

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Gummow J.(1)

CATCHWORDS

Practice and Procedure - Anton Piller order - information disclosed on affidavit - application for leave to use that information for purposes of proceedings in foreign jurisdiction - principles applicable.

Trade Marks Act 1955

R. and A. Bailey and Co. Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701

Crest Homes PLC v Marks (1987) AC 829

Holpitt Pty Ltd v Varimu Pty Limited (1991) 29 FCR 576, applied.

HEARING

SYDNEY

#DATE 22:12:1992

Counsel and solicitors Mr R.J. Webb instructed
for the Applicants: by Baker and McKenzie.

Counsel and solicitors Mr B. Slowgrove instructed
for the Second Respondent: by Dennis and Co.

ORDER

THE COURT ORDERS THAT:

The motion filed 15 December 1992 be dismissed, with costs.

JUDGE1

GUMMOW J. In this matter, the first respondent swore an affidavit on 26 August 1992 which, with the annexures, disclosed the direct or indirect source of what, it is not disputed, were goods to which trade marks which in Australia are registered property of one or other of the applicants had been applied without the licence or consent of the applicants. Two sources were disclosed. The first was a corporation in the People's Republic of China named China Trading Service Company Limited and the other a corporation apparently conducting a business in the State of California in the United States of America under the name West Coast Wholesalers Incorporated. The affidavit was sworn in compliance with an order of the Court, but a claim was made relying upon the privilege against self-incrimination.

1. The principal proceeding is, as I have already indicated, based upon registered trade mark infringement. There are some 10 registered trade marks involved, some in Part A and the others in Part B of the register under the Australian Trade Marks Act 1955. The Australian registrations are territorial in nature; see R. and A. Bailey and Co. Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701 at 709-710. By a motion filed 15 December 1992, but amended this morning, the applicants now seek leave in the following terms.

2. Leave is sought by the applicants to use, first, the affidavit of the first respondent sworn on 26 August 1992 and, secondly, any information contained in any of the documents referred to in that affidavit:
   

for the purpose of investigating possible infringements of the registered trademarks, copies of which are annexed to the application (the marks), possible infringements in

jurisdictions outside Australia of registered trademarks

which are the same as or substantially identical to the

marks and the infringement of any rights which the first

applicant or any of its subsidiary corporations might have in unregistered marks the same as or substantially identical to the marks by any of the following persons: one, West

Coast Wholesalers Inc. and, two, China Trading Service Co Limited and, if so advised, preparing for, commencing and conducting proceedings in respect of any such infringements by the said corporations.

1. The application is opposed by the respondents, for whom Mr Slowgrove appears. The affidavit in support of Mr Russell sworn 14 December 1992 explains that the affidavit in question of the first respondent was served at the conclusion of a hearing of a contested claim on the privilege asserted against self-incrimination by the first respondent. The annexures had been handed to the Court in a sealed envelope at the time when the claim for privilege had first been made. Access to those documents was then obtained on 4 December 1992 after the privilege claim had been resolved.

2. The principles applicable to the present motion are explained in the United Kingdom by the House of Lords in Crest Homes PLC v Marks (1987) AC 829, and in Australia in the judgment in this Court of Burchett J. in Holpitt Pty Ltd v Varimu Pty Limited (1991) 29 FCR 576. Each of those cases concerned the use sought to be put to documents provided on discovery. That is not so here, and the present situation is analogous to that which arises upon compliance with an Anton Piller order. But as Lord Oliver points out in the passage I will shortly read, the two categories are relevantly sui generis.

3. In Crest Homes, the use to which it was sought to put the documents was a use in contempt proceedings. Thus, the purpose was closely related to the principal suit in which the discovery had been given. At page 860, Lord Oliver said:
   

"Your Lordships have been referred to a number of reported cases in which application has been made for the use of

documents obtained under Anton Piller orders or on general discovery for the purpose of proceedings other than those in which the order was made. Examples were Halcon

International Inc. v Shell Transport and Trading Co. (1979) RPC 97 and Sybron Corporation v Barclays Bank Plc (1985)

Ch 299. I do not, for my part, think it would be helpful to review these authorities for they are no more than

examples and they illustrate no general principle beyond

this, that the court will not release or modify the implied undertaking given on discovery save in special circumstances and where the release or modification will not occasion

injustice to the person giving discovery."

The application before Burchett J. was made in a proceeding in which, as Mr Slowgrove points out, the relaxation was sought in aid of other proceedings in this Court. His Honour emphasised (at 579) that the word "special" takes its meaning from the context and that the duty of the Court is to consider whether the applicant for the variation of the discovery order has shown some circumstance which takes the matter out of the ordinary course, and, if so, whether an exercise of the Court's discretion in favour of the application would be in the interests of justice.

1. In Holpitt, of course, the relevant interests of justice were (as they had been in the English case) the interests of justice as administered by the municipal court, not a tribunal in another country. The position appears to be that there has to date been no reported case where an order of the nature made on those two authorities has permitted use of the discovered material in relation to inquiries outside the jurisdiction and in relation to contemplated proceedings in other countries for the breach of proprietary rights which exist under the law of those other jurisdictions. It may be that the Court, as Mr Slowgrove suggests, would very rarely, if ever, make an order of that nature.

2. But I prefer to decide this application on the footing that, as a matter of power, such an order might be made in an appropriate case, and without ruling upon Mr Slowgrove's submission.

3. Upon the present motion, there is lacking specific information as to the particular foreign jurisdictions in which the use is proposed of the information. The nature of the contemplated proceedings, with reference to the particular laws in question, and to the civil or criminal or quasi-criminal nature of any such proceedings, is not disclosed. Nor is there identification of the particular foreign trade mark rights, though it is indicated that the rights in question include unregistered rights. Nor is there material which would indicate the vital nature of this information to those inquiries and the inadequacy of other avenues to pursue inquiries against what is said to be the sale in various countries of "pirate" products.

4. In all the circumstances, the material that presently stands before me on the application is not such as to satisfy me that the principles which I have referred to in the decided cases have been sufficiently enlivened by the applicants; cf Bibby Bulk Carriers Ltd v Cansulex Ltd (1989) Q.B. 155 at 168. It may be that if further material were provided in support of a fresh application with greater forethought to its preparation, a different result might follow. I say nothing about that. As the matter stands at present, I would not make an order in terms of the amended order 2 of the notice of motion, and the motion filed 15 December 1992 is accordingly dismissed.

5. The applicants on the motion should pay the costs of the respondents on the motion.