Sunlec International Pty Ltd v Wiremarkers Australia Pty Ltd
[2022] WASC 57
JURISDICTION : SUPREME COURT OF WESTERN AUSTRALIA
CITATION: SUNLEC INTERNATIONAL PTY LTD -v- WIREMARKERS AUSTRALIA PTY LTD [2022] WASC 57
CORAM: LE MIERE J
HEARD: ON THE PAPERS
DELIVERED : 24 FEBRUARY 2022
FILE NO/S: CIV 1577 of 2020
BETWEEN: SUNLEC INTERNATIONAL PTY LTD
Applicant
AND
WIREMARKERS AUSTRALIA PTY LTD
First Contemnor
DARRYL PETER CRAMPTON
Second Contemnor
Catchwords:
Practice and procedure - Pleadings - Originating motion - Leave to amend
Practice and procedure - Discovery - Documents - Relevance
Legislation:
Rules of the Supreme Court 1971 (WA)
Result:
Leave to amend Originating Motion granted
Application for discovery granted
Category: B
Representation:
Counsel:
| Applicant | : | No appearance |
| First Contemnor | : | No appearance |
| Second Contemnor | : | No appearance |
Solicitors:
| Applicant | : | Bruce Legal Consultants (Perth) |
| First Contemnor | : | Porter Davies |
| Second Contemnor | : | Porter Davies |
Case(s) referred to in decision(s):
Hammond v Aboudi [2005] WASC 204; (2005) 31 WAR 533
LE MIERE J:
Summary
The applicant, Sunlec International Pty Ltd (Sunlec), has brought proceedings in which it alleges that Wiremarkers Australia Pty Ltd (Wiremarkers) and Darryl Crampton, together the alleged contemnors, are guilty of contempt by failing to comply with an order of the court.
Sunlec has applied for interlocutory orders for leave to amend its Originating Motion, that Wiremarkers answer specified interrogatories and give discovery of specified categories of documents.
For the reasons which follow, I will give Sunlec leave to amend its Originating Motion in terms of its minute of amended originating motion filed 8 December 2020. Further, I will order Wiremarkers to give discovery verified by affidavit of documents containing or evidencing change history information of all settings applicable to the word 'Grafoplast' in Wiremarkers' Google AdWords account during the period 16 April 2020 ‑ 29 April 2020. I decline to order Wiremarkers to answer the proposed interrogatories and decline to order that Wiremarkers give discovery of the other categories of documents sought by Sunlec.
Procedural history
On 18 May 2020, Sunlec by Originating Motion commenced proceedings against Wiremarkers and Mr Crampton. Sunlec alleged that Winemakers is guilty of contempt by reason of its failure to comply with Order 1 of Orders for Judgment by Consent I made on 24 March 2016 in CIV 2449 of 2014 (proceedings between the Sunlec as plaintiff and Wiremarkers as defendant) (Judgment). I will refer to the order as the Judgment Order. Mr Crampton is alleged to be guilty of contempt by reason of the conduct of Wiremarkers, and his position as an officer of Wiremarkers.
On 25 June 2020, John Ellard, a director of Sunlec, swore an affidavit in support of Sunlec's originating motion to punish for contempt.
On 29 June 2020, Wiremarkers and Mr Crampton filed a memorandum of appearance.
On 6 July 2020, Karl Friman swore an affidavit annexing correspondence between the parties. In the correspondence, the alleged contemnors' solicitors denied that they had breached the Judgment Order.
Directions hearings were adjourned. A mediation was vacated, and the mediation terminated.
On 16 November 2020, Sunlec filed a minute of proposed interrogatories for answer by Wiremarkers.
On 17 November 2020, I made orders for conferral and the filing of submissions in relation to Sunlec's proposed interrogatories and ordered that the matter be determined on the papers.
On 1 December 2020, Sunlec filed an affidavit sworn by Mr Ellard.
On 8 December 2020, Sunlec filed a minute of amended originating motion. Also on 8 December 2020, Sunlec filed submissions seeking orders for:
(1)leave to amend its originating motion filed 18 May 2020 to narrow the dates of the alleged infringing conduct to the period 17 – 28 April 2020; and
(2)answers to interrogatories and the disclosure of documents from Wiremarkers in the terms set out in Sunlec's Amended Minute of Proposed Orders filed 8 December 2020.
Also on 8 December 2020, Sunlec filed an amended minute of proposed orders for discovery and answers to interrogatories in which it sought orders that it have leave to amend its originating motion in terms of its minute of amended originating motion filed 8 December 2020, Wiremarkers answer interrogatories and give discovery of three categories of documents.
On 15 December 2020, I made orders by consent varying the directions made on 17 November 2020 to extend the time for the filing of submissions and affidavits in opposition to Sunlec's application for orders for discovery and interrogatories and for Sunlec to file any submissions in reply.
On 18 December 2020, the alleged contemnors filed submissions in opposition to Sunlec's applications for orders for discovery and answers to interrogatories. The same day, the alleged contemnors also filed an affidavit sworn by Rodney Lawson, a solicitor with the carriage of the matter on behalf of the alleged contemnors, annexing correspondence between the parties.
On 24 December 2020, Sunlec filed submissions in reply to the alleged contemnors' submissions.
Amendment of originating motion
The originating motion alleges that Wiremarkers did not comply with the Judgment Order in that, during the period 24 March 2016 to 7 May 2020, Wiremarkers used or caused to be used Google AdWords containing the word 'Grafoplast' in relation to products and services other than genuine Grafoplast products and services. It alleges that Wiremarkers caused Google AdWords to display advertising to Wiremarkers' website ( when, at all material times, no genuine Grafoplast products or services were referred to or advertised for sale at that website and the advertising copy did not otherwise refer to genuine Grafoplast products or services.
The proposed amendment is to narrow the period during which Wiremarkers allegedly did not comply with the Judgment Order to the period from 17 April 2020 to 28 April 2020.
The effect of the proposed amendment is to withdraw the charge that Wiremarkers did not comply with the Judgment Order between 24 March 2016 and 16 April 2017 and between 29 April 2020 and 7 May 2020. The applicant should have leave to make an amendment which, in effect, withdraws part of the charge unless there is good reason to the contrary.
The alleged contemnors oppose Sunlec being given leave to amend the Originating Motion on the following grounds. First, the proposed amendment has been the subject of very limited conferral. That argument has no merit. Sunlec's solicitor, Mr Bruce, informed the alleged contemnors' solicitors on 1 December 2020 that he was instructed to amend the particulars in accordance with the proposed amendment. On 11 December 2020, Mr Bruce, with the concurrence of the alleged contemnors' solicitors, informed the court that
Mr Lawson [co-counsel for the alleged contemnors] advises that [the alleged contemnors] do not have any objection to the Court granting leave to amend the originating motion in terms of the minute.
Secondly, the alleged contemnors submit that no amendments to the Originating Motion should be allowed unless and until the applicant establishes that it has standing to bring the proceedings and corrects alleged defects in the Originating Motion. The assertion that the applicant lacks standing was raised for the first time in the alleged contemnors' submissions in opposition to the applicant's application to amend the Originating Motion and for disclosure orders which were filed on 18 December 2020. It is not appropriate for the court to determine whether the applicant has standing to bring the contempt motion on an application by the applicant to amend its Originating Motion to, in effect, withdraw part of the charge.
The defect in the Originating Motion alleged by the alleged contemnors is that the Originating Motion does not plead sufficient information and details to comply with O 55 r 5(1) of the Rules of the Supreme Court 1971 (RSC). That would be a relevant consideration if the applicant sought to amend the Originating Motion to add particulars of the alleged contempt but not where the proposed amendment is to, in effect, withdraw part of the charge.
The alleged contemnors further say that 'the proceedings are being maintained in circumstances that hint to an ulterior purpose'. It is not appropriate to consider that matter on an application to amend the Originating Motion by withdrawing part of the charge.
If the alleged contemnors wish to strike out, permanently stay or summarily dismiss the Originating Motion they should bring an application to do so or, as in Hammond v Aboudi,[1] raise those matters on the hearing of the Originating Motion.
[1] Hammond v Aboudi [2005] WASC 204; (2005) 31 WAR 533.
I will grant leave to Sunlec to amend its Originating Motion in accordance with its minute of amended Originating Motion filed 8 December 2020.
If the alleged contemnors maintain that the applicant lacks standing, or that the Originating Motion is defective, they should bring an application or applications to that effect. The granting to Sunlec of leave to amend its Originating Motion is without prejudice to the right of the alleged contemnors to apply to strike out, stay, or summarily dismiss the Originating Motion on those grounds, or for the alleged contemnors to defend the Originating Motion on those grounds.
Application for answers to interrogatories
The applicant seeks an order that Wiremarkers answer the following interrogatories:
a.At any time in the period 16 April 2020 – 29 April 2020 did you (Wiremarkers Australia Pty Ltd) have available for sale genuine Grafoplast products or services?
If so:
b.At any time during that period were those products or services advertised for sale? If so, on what date(s) and by what means were the products or services advertised.
c.What were the products or services?
Sunlec submits that the information is necessary for it to make out its case.
The alleged contemnors oppose the order on a number of grounds. First, they submit interrogatories are unnecessary in that they seek answers from Wiremarkers to questions that Sunlec has long been aware of the answer. That is not a reason for refusing the interrogatories. Sunlec seeks the information in the form of answers to interrogatories so that it may employ the answers in evidence to prove its case.
The alleged contemnors submit that Wiremarkers is not aware of what the reference to 'genuine Grafoplast products and services' is. Sunlec says that that claim contradicts Wiremarkers' assertions in correspondence that at all times material to the allegations, it held, sold, and displayed 'genuine Grafoplast products'. The applicant refers to a letter of 30 November 2020 from Wiremarkers' solicitor to Mr Bruce in which they state that Wiremarkers 'held stock of genuine Grafoplast products', 'sold genuine Grafoplast products' and 'displayed genuine Grafoplast products on its website for sale, albeit, marketed under the name Smartmark'.
There is a dispute whether 'Smartmark' products or other products referred to on Wiremarkers' website are genuine Grafoplast products. In his affidavit sworn 1 December 2020, Mr Ellard said:
I do not accept the proposition that any of the 'Smartmark' products (or any other products) referred to on [Wiremarkers'] website are genuine Grafoplast products. [Wiremarkers] makes that assertion, but in making the assertion [Wiremarkers] has not identified which of the many hundreds of products advertised for sale on its website during that period of time it says were genuine Grafoplast products.
Mr Ellard swears that he was told by a staff member that he had received a phone call from a client who said that Wiremarkers' sales representative had told him (the client) that 'Wiremarkers got better sleeves now, made in the same factory as Brady gets theirs from'. Further, Mr Ellard swears:
I know from my involvement in the industry that Brady is an American Corporation which has previously sourced wire marking sleeves from Grafoplast, under what I understand from discussions with Grafoplast representatives is or was a contract packaging arrangement. 'Brady' product is branded 'Durasleeve' and is not and has never been genuine Grafoplast product, despite the product being manufactured in Italy by Grafoplast. I am aware from my 35 or more years in the industry in both the United States and Australia that other international companies such as Phoenix Contact and ARB among others commonly source their product under contract packaging arrangements, packaged under their own branding and labelling (with no reference to 'Grafoplast' packaging or labelling).
Thus, there appears to be a dispute whether products manufactured by Grafoplast with a label other than Grafoplast are 'genuine Grafoplast products'. It is not appropriate to require a Wiremarkers officer to answer on oath whether Wiremarkers had 'genuine Grafoplast products or services' available for sale without defining 'genuine Grafoplast products'. To do so requires the officer to form a judgement as to what is a 'genuine Grafoplast product' at risk of swearing a false affidavit if the court should consider the officer is wrong in that judgement.
I refuse the application that Wiremarkers answer the proposed interrogatories.
Application for discovery
The applicant seeks discovery of documents within the following categories:
a.any advertising referred to in answer to interrogatory b;
b.change history information of all settings applicable to the word 'Grafoplast' in Wiremarkers Google AdWord account during the period 16 April 2020 ‑ 29 April 2020;
c.'in house' import files of the type referred to in paragraph 12 of the second affidavit of John Douglas Ellard sworn 1 December 2020 for Grafoplast products and services available for sale by Wiremarkers during the period 16 April 2020 ‑ 29 April 2020.
I am satisfied that the court should order Wiremarkers to give discovery of relevant documents appropriately identified by category. However, the form of the categories a and c proposed by Sunlec is inappropriate. Category a depends on answers to interrogatories which I have declined to require Wiremarkers to answer. Category c defines the category by reference to 'Grafoplast products and services'. As I have said, there is a dispute about what 'Grafoplast products and services' are.
I will order Wiremarkers to give discovery of category b.
I do not consider the alleged contemnors' assertions of defects in the Originating Motion, or their assertion that Sunlec lacks standing to bring the application for contempt, to be reasons for refusing to order discovery. It is not appropriate to consider such assertions on a discovery application. If the alleged contemnors maintain that the applicant lacks standing or that the Originating Motion is defective, they should bring an application or applications to that effect or oppose the Originating Motion on those grounds.
Costs
I consider that both parties had a measure of success and failure on these applications. My provisional view is that the appropriate order is that costs be in the cause of the Originating Motion.
I certify that the preceding paragraph(s) comprise the reasons for decision of the Supreme Court of Western Australia.
CR
Associate to the Honourable Justice Le Miere
24 FEBRUARY 2022
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