Titan Home Improvements Pty Ltd v Ultimate Shutter Pty Ltd
[2022] FedCFamC2G 1004
Federal Circuit and Family Court of Australia
(DIVISION 2)
Titan Home Improvements Pty Ltd v Ultimate Shutter Pty Ltd [2022] FedCFamC2G 1004
File number(s): MLG 1593 of 2021 Judgment of: JUDGE FORBES Date of judgment: 11 November 2022 Catchwords: PRACTICE AND PROCEDURE - application for orders for discovery – whether discovery in the interests of justice – whether documents relevant to causes of action – case management principles and overarching purpose – limited discovery allowed Legislation: Competition and Consumer Act 2010 (Cth) sch 2
Federal Circuit and Family Court Act 2021 (Cth) s 176, 190
Cases cited: Los Carnales Pty Ltd, in the matter of Cartel Del Taco Pty Ltd [2022] FCA 1053
Russel v Macquarie Bank Ltd [2020] FCA 1332
Division: Division 2 General Federal Law Number of paragraphs: 63 Date of hearing: 10 November 2022 Place: Melbourne Counsel for the Applicant: Ms Spies of Counsel Solicitor for the Applicant: Actuate IP Counsel for the Respondents: Dr Rothnie of Counsel Solicitor for the Respondents: FSC Law ORDERS
MLG1593 of 2021 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: TITAN HOME IMPROVEMENTS PTY LTD
Applicant and First Cross-Respondent
AND: ULTIMATE SHUTTER PTY LTD
Respondent and Cross-Claimant
VINCAM INVESTMENTS PTY LTD
Second Cross-Respondent
order made by:
JUDGE FORBES
DATE OF ORDER:
11 NOVEMBER 2022
THE COURT DECLARES THAT:
1.Pursuant to s 176(2) of the Federal Circuit and Family Court of Australia Act 2021 (Cth) (the Act), it is appropriate to allow discovery in this proceeding in the interests of justice.
THE COURT ORDERS THAT:
2.Paragraphs 4 to 6 of the Orders made by Judge Forbes on 13 September 2022 be vacated.
3.By 4:00pm on 28 November 2022, the Applicant and Second Cross-Respondent each give discovery of the documents in the categories 5 to 13 set out in Annexure A to these Orders of which they are aware after a reasonable search, that are or have been in their possession, custody or control.
4.By 4:00pm on 28 November 2022, the Respondent make discovery of the documents in the categories set out in Annexure B to these Orders of which it is aware after a reasonable search, that are or have been in its possession, custody or control.
5.By 4:00pm on 12 December 2022, the Applicant and Second Cross-Respondent each give discovery of the documents in the categories 1 to 4 set out in Annexure A to these Orders of which they are aware after a reasonable search, that are or have been in their possession, custody or control.
6.The parties provide inspection of their discovered documents (save for documents over which privilege is claimed) as soon as practicable and in any event no later than 4 days after discovery is given.
7.Until further order, inspection of documents produced by the Applicant in response to categories 9 and 10 of Annexure A shall be undertaken only by the Respondent’s external lawyers and subject to officers of the Respondent giving a written undertaking not to take or copy or disseminate the documents, the documents may be shown to them for the purpose of lawyers taking instructions and preparing evidence in answer or reply.
8.By 4:00pm on 21 December 2022:
(a)The Respondent file and serve any evidence in answer on which it intends to rely in relation to all issues of liability in the main claim; and
(b)The Cross-Respondents file and serve any evidence in answer on which they intend to rely in relation to all issues of liability in the cross-claim.
9.By 4:00 pm on 20 January 2023:
(a)The Applicant file and serve any evidence in reply on which it intends to rely in relation to all issues of liability in the main claim; and
(b)The Cross-Claimant file and serve any evidence in reply on which it intends to rely in relation to all issues of liability in the cross-claim.
10.The parties have liberty to apply.
11.Costs of this application for discovery including the parties’ costs of 10 and 11 November 2022 shall be reserved.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
EX TEMPORE REASONS FOR JUDGMENT
(revised from transcript)Judge Forbes
These are ex tempore reasons for orders which permits discovery of various categories of documents which each party seeks from the other. I am giving these reasons now because they may assist her Honour the trial judge to understand the orders I have made. These reasons may also assist the parties to resolve any ambiguity in the orders.
Background
This proceeding was commenced by the applicant by way of an application and statement of claim filed on 7 July 2021.
The applicant claims to have a reputation throughout Australia in respect of the trade mark “TITAN SHUTTERS” in respect of roller shutter products and services. The applicant alleges that the promotion, offering for sale and sale of TITAN roller shutters by the respondent contravened provisions of the Australian Consumer Law (ACL) and involved the tort of passing off. The relief sought by the applicant includes declarations that the respondent has been engaged in misleading and deceptive conduct or made false representations, declarations as to the respondent's use of the TITAN trade mark, injunctions restraining the respondent in respect of its use of relevant marks and damages.
The respondent admits that it promotes, offers for sale and sells roller shutters by reference to TITAN but it denies any contravention of the ACL on the basis that it has been continuously using its trade mark since before the applicant was incorporated. The respondent has cross-claimed against the applicant and the second cross respondent for contraventions of the ACL. It too seeks declarations, injunctions, damages or an account of profits and other remedies.
These proceedings have been docketed to her Honour Judge CE Kirton KC and the matter is currently listed for trial before her Honour on 4 to 6 February 2023. Various directions have been made by her Honour to prepare this matter for trial, including requiring the parties to file evidence by way of affidavit. Affidavits in chief have been filed and at least one of those, an affidavit of the applicant’s sole director Mr Spottiswood affirmed 29 August 2022, is peripherally relevant to the matter presently before me.
In orders made by her Honour on 22 August 2022, directions were made for the parties to notify each other of any categories of documents in respect of which they sought discovery in relation to issues of liability. The parties were directed to endeavour to resolve any issues regarding the categories of documents and then to provide discovery of agreed categories. Following this staged process, it was envisaged that the parties would then file and serve any evidence in answer to the liability issues arising in the main claim and the cross-claim. I refer to orders 4 to 7 made by her Honour on 22 August 2022.
On 13 September 2022, due to her Honour's unavailability, I made orders by consent that orders 4 to 8 of the orders made by her Honour on 22 August 2020 be vacated. That these orders were sought by the parties to give them additional time to negotiate the categories of documents in respect of which each was seeking discovery.
In the orders I made on 13 September 2022 the Court ordered, among other things, that:
·on or before 4.00pm on 22 September 2022, the parties notify each other of any categories of documents for which they seek discovery in relation to all issues of liability;
·on or before 4.00pm on 30 September 2022, the parties endeavour to resolve any issues regarding the categories of documents for which discovery is sought; and
·on or before 4.00pm on 17 October 2022, the parties provide discovery of agreed categories .
By reason of these changes to the timetable, orders were also made for the filing and serving of reply evidence to be pushed back until 28 October and 21 November 2022 respectively, still comfortably distant from the February 2023 trial date. The parties were granted liberty to apply.
The parties have been unable to resolve all their differences in relation to discovery. Having read the various annexures to an affidavit filed by the respondent's solicitor dated 28 October 2022, I note that there has been substantial correspondence between the parties seeking to come to an agreement as to the various categories of documents for which each party should make discovery. That correspondence between the parties included exchanges of various draft lists of categories, marked up to show the path of their negotiations and the various concessions made along the way.
It is not necessary for me to go into that material, save to observe that agreement has been reached as to the categories of documents to be discovered by the respondent. There are four categories in that list and I take it that the respondent will consent to an order that they make discovery of those categories. I will make that order and those categories will be identified in an annexure to the orders I make today.
The matter which comes before the Court today is an application by the respondent, exercising its liberty to apply, to seek orders that the applicant make discovery of some 26 categories of documents set out in Annexure 2 to the respondent's outline of submissions dated 8 November 2022.
The applicant, for various reasons, opposes the respondent's proposed list. Some of those reasons, which include the alleged oppressive nature of the request, the unavailability of or destruction of documents which might have fallen within the categories and the relevance of categories to the issues in dispute have been addressed in an affidavit of David Spottiswood, the applicant's director, affirmed on 9 November 2022. That affidavit has been read.
At the Court's invitation, each of the parties have filed a brief outline of submissions in relation to their respective positions on the respondent's discovery request. I indicate that I have read and considered those written submissions and the affidavits of Mr Spottiswood and the respondent's solicitor.
Immediately prior to the hearing yesterday, I received further material from the parties. That included a further affidavit from the respondent’s solicitor which contained a link to an instructional video relevant to its request that the applicant produce various Google reports (categories 14 and 15). I also received competing proposed minutes of orders and a table from the applicant which set out in summary form the basis of its objection to the categories still being pressed by the respondent. In that table, the applicant identified where it opposed certain categories, agreed with them or identified where it was prepared to accommodate a request for discovery on a more limited basis - for example by offering a summary of data contained in documents or representative examples of documents.
Finally, in terms of the matters that I have considered, I heard oral submissions from counsel yesterday in support of their respective positions on outstanding issues. I do not intend to rehearse the detail of those submissions except as necessary.
RELEVANT FRAMEWORK
Section 176(2) of the Federal Circuit and Family Court Act 2021 (Cth) (the Act) provides that interrogatories and discovery are not allowed in relation to proceedings of this type in Division 2, unless the Court declares that it is appropriate in the interests of the administration of justice to allow discovery. That provision also mandates the Court, in deciding whether to make a declaration, to have regard to whether allowing discovery would likely contribute to the fair and expeditious conduct of the proceedings and any other such matters as the Court considers relevant.
In considering the exercise of its discretion under the Act, the fair and expeditious conduct of the proceedings is a weighty consideration. The focus of that consideration is reinforced by the overarching purpose of civil practice and procedure provisions set out in section 190 of the Act. The overarching purpose requires the just resolution of disputes according to law as quickly, inexpensively and efficiently as possible. That in turn embraces the objective of the just determination of all proceedings, the efficient use of the Court's time, efficient disposal of the Court's case load, disposal of proceedings in a timely manner and, perhaps most importantly, resolution of disputes at a cost that is proportionate to the importance and complexity of the matters in dispute. Suffice to say, the Act requires rulings and directions to be made and exercised and carried out in a way which best promotes that overarching purpose.
I have been referred to various authorities by counsel, and I will not go to them in detail. Suffice to say the observations of Thawley J in Russell v Macquarie Bank [2020] FCA 1332 in dealing with a similar dispute to this are quite instructive. I refer in particular to paragraph [50] where the Court cites with approval the observations of Lander J in Devine Marine Group v Fair Work Ombudsman [2013] FCA 442 in respect to the legislative scheme as it applied in this Court prior to its amalgamation last year.
I agree with the submission of the applicant that the starting point is that discovery is not allowed in relation to proceedings but discovery may be permitted where the Court is persuaded that it is appropriate and in the interests of administration of justice to do so. I have already set out the matters I should consider in making such a declaration.
ISSUES IN DISPUTE
I now turn to the nature of this litigation and the issues which are said to be in dispute. Based on the respective parties' short written submissions, it appears to be common ground that the question of where the reputation of TITAN resides and when that reputation was acquired, what I will call the when and where questions, are central to the Court's determination of the dispute. At a more granular level, I accept the respondent's contention that the key issues in the proceeding will include what reputation, if any, the parties had and from when and where each party started the conduct alleged by the other to be in contravention of the ACL. So the issues in relation to reputation in TITAN include the what, when and where.
The respondent submits it is open to the Court to infer reputation from, among other things, a high volume of sales, substantial advertising and other promotional activity. That framework is consistent with authorities to which I have been taken including the recent decision of Goodman J in Los Carnales Pty Ltd, in the matter of Cartel Del Taco Pty Ltd (2022) FCA 1053. The Court there confirmed, among other things and citing previous authority, that reputation is a matter of fact and typically reputation is and can be established through evidence relating to the volume of sales, the extent and nature of advertising, marketing and promotional activities and the length of time and geographical area in which those activities have taken place. I refer particularly to his Honour’s reference to McCormick & Co v McCormick [2000] FCA 1335 at [85] to [87].
The Respondent submits that the issue of when the applicant commenced operation in relation to the trademark TITAN was, to use counsel’s words, a “red-hot issue”. The respondent submits that when the conduct commenced and how the conduct has developed over time to be of a sufficient scale to assume reputation is central to the litigation, whether it is viewed from either party's perspective. In that context, the respondent also sought to emphasise to the Court that the applicant is the aggressor in this litigation and that it (the respondent) is on the receiving end of an application which seeks to injunct its use of a mark which it claims to have used for about 20 years. I do not make any comment about the merit of that allegation other than to acknowledge that what is described as the “red-hot issue” clearly is an appropriate foundation for submissions about relevance.
Relevance of documents to a dispute, whilst a fundamental consideration, is not the only consideration. In exercising the Court's discretion and having regard to the legislative scheme, which presumes against discovery, relevance should be perhaps even more tightly constrained. Documents sought by way of discovery should be centrally relevant, perhaps even being to the point of being crucial, to ensure the fair and expeditious and timely conduct of the proceedings. Accordingly I accept the applicant’s submission that relevance is insufficient on its own to warrant a departure from the presumption that discovery is not usually necessary.
There are other considerations, beyond relevance. Proposed categories of documents - which describe or seek documents which do not exist - should not be ordered because there is no utility in making such an order.
Similarly, the process of discovery does not require a party to create documents which do not presently exist and there is no warrant for the Court to exercise its discretion to require a party to assemble or create information in a form which pleases the other side. That said, there may be occasion, and this might be one of them, where information or data which is in the possession, power or control of a party could be more efficiently and cost-effectively presented in a manner which obviates the need for discovery of an entire data set.
The Court also obviously must have regard to the efficient use of resources and cost and time considerations. In respect of those matters, I have taken Mr Spottiswood's affidavit into account, including his evidence about the oppressive nature of some of the respondent’s requests.
DISCOVERY IN THIS CASE
First, I am satisfied and I will declare that it is appropriate in the interests of the administration of justice to allow discovery. I will make that declaration.
Secondly, I will also make an order that the respondent make discovery of the four categories of documents which are set out in annexure B to the applicant's proposed minute of order.
I now turn to the disputed categories of document sought by the respondent from the applicant. I will deal with these in the same way that they were addressed by counsel yesterday, which is in groups.
Categories 1, 2 and 3 are the documents which record all quotations and invoices given by or on behalf of the applicant for the supply of the applicant's roller shutter goods in Melbourne between January 2018 and 30 June 2019. Category 4 seeks invoices for the supply of the applicant's plantation shutters for the same period and the same geographic location.
The applicant has opposed discovery of these documents on the basis that it says they are only tangentially relevant to the issues in dispute and, relying upon Mr Spottiswood's affidavit, says that the request is onerous, although I note that the applicant has indicated that it could prepare a representative sample of those documents.
The respondent says that these documents are vitally relevant to the issues in dispute. It submits that the request is narrowly confined in time to a period of 18 months, it is geographically confined and also contends, consistent with the authorities that I referred to earlier, that they are the very sort of documents that will be probative on the issue of when the conduct started and also the trajectory of the conduct as it built over time. The respondent referred to a confidential exhibit, DS42 to Mr Spottiswood's first affidavit, and said that it is clear that the applicant has been deriving substantial income and spends substantial sums on marketing and promotional activity. These, it is submitted, are all matters that go directly to the issue of reputation. I agree with the respondent's submission regarding the relevance of these documents to the issues in dispute and I am satisfied that the documents are necessary for the just resolution of the litigation.
I am not satisfied that average figures or a representative sample of documents as offered by the applicant is sufficient to address the issue. The trajectory of the conduct and its scale relevant to earlier points in time is relevant to reputation. To that end, I do note that the applicant has given some evidence regarding enquiries and estimates and installations, quotes and the like. That suggests that there are records or data in existence which must have informed that evidence. Contemporaneous documents will be the best evidence and will be the most probative.
I have taken into account the applicant's evidence regarding the availability of hard copy and electronic records for the 18-month period. I have also given consideration to Mr Spottiswood's evidence about the storage of documents and the considerable time it might take him to retrieve and access those documents. There will, no doubt, be inconvenience and cost but that is a fact of life in litigation of this type. It is not a reason, in my view, not to order discovery where it is otherwise necessary or appropriate.
Notwithstanding Mr Spottiswood's evidence, I am not convinced that the administrative task of collating the documents cannot be undertaken more speedily by involving someone other than himself or that it would be as onerous and as slow as he says. Law clerks and document management firms regularly undertake this kind of work and with some simple direction from Mr Spottiswood, perhaps another administrative employee or a law clerk or another assistant can assist. It does not strike me as oppressive. The time it may take may be relevant to the time allowed for compliance but that is a separate matter.
In relation to these categories, if there are documents which no longer exist or gaps in the material, that will become apparent as the process unfolds. Discovery cannot be ordered for documents that do not exist, but it is incumbent on the applicant to do the best it can to produce the documents which do fall within that category which are within its possession, power and control. I will permit discovery of 1, 2 and 4. I accept, based on Mr Spottiswood’s sworn evidence, that there are no documents which fall within category 3.
Category 6 seeks an order for all the invoices and receipts given by or on behalf of the applicant for the supply in Melbourne of the applicant's shutter services for the same period. It is not necessary for me to rehearse the submissions in relation to category 6 because the parties have agreed that category 6 will rise or fall on my ruling in relation to 1, 2 and 4. By reason of my ruling in relation to those categories, I have determined that the applicant should make discovery of the category 6 invoices for supply of shutter services for the relevant period.
Categories 7, 11, 12 and 13 are agreed. I will simply record that, in relation to category 11, the applicant's agreement is given on the assumption that the “presentation folder” refers to the folder itself, not its contents, other than the customer information pack. In the event there is any subsequent dispute between the parties about compliance with category 11, the parties can refer to the caveat I have just given.
By categories 14 and 15 the respondent seeks the applicant’s monthly Google Ad reports for various keywords, including “roller” and ‘shutter”. The dispute in relation to these categories raises some different issues. The respondent says that its request is based on evidence that the bulk of the applicant's advertising is via paid advertisements on Google and Facebook and the respondent relies on paragraph 90 of Mr Spottiswood's affidavit which deposes to the total average advertising expenditure since October 2018.
The respondent submits that the applicant has access to data on its Google server from which it can extract relevant information about its advertising activity in a report format, depending on the fields set. The respondent says that the applicant has already produced at least one such report. Furthermore, to assist the applicant, the respondent filed an affidavit from his solicitor yesterday which attached a hyperlink to an instructional video which explains the “how to” of how to prepare summary reports from already available and accessible data.
The applicant's opposition to these categories turns on a number of matters. First, it contends that there are no documents which currently exist which conform to the request. The applicant submits that while it might be able to produce reports, it is not the function of discovery to require a party to create documents which do not already exist. That is a sound proposition. Furthermore, while conceding that such reports can be prepared, the applicant contends that it would be onerous and unreasonable to require it to do so, particularly monthly reports. Counsel for the applicant, Ms Spies, argued that it would be more reasonable for it to be required to produce five annual reports for each category rather than monthly which might amount to 36 or 48 separate reports.
On that point, the respondent says that, effectively, all it is asking is for the applicant to extract easily accessible reports from data which is currently in its possession, power and control. The respondent submits that the process would involve little more than accessing the data and then requesting production of reports for selected date ranges.
Although, as I observed earlier, it is not the function of discovery to require a party to produce documents which do not presently exist, a more pragmatic and nuanced approach should be taken where it is possible for a party to produce documents which are in its possession, power or control but in a format which expediently circumvents the need for discovery of the entire data set. The Court should only order discovery of what is necessary and the Court must be mindful of the proportionality of time and cost of producing documents relative to the issues in dispute. The Court could, for example, if it were minded to or thought it was appropriate, order production of the entire data set of the applicant’s Google advertising information– a process which might be complex which is likely to produce a huge unstructured volume of material, some relevant and some not. However, I am satisfied on the evidence that reports can be produced which are likely to be more targeted and probative on the central issue of reputation. Indeed, it is conceded by the applicant that such reports can be prepared and I accept from what I have heard that it will involve the process of inputting data fields and ranges which will extract, in report format, information from data which already exists. Creating reports based on 36 or 48 monthly date ranges will take some more time than requesting reports for five date ranges but it really should be within the capability of someone with basic administrative skills. I propose to make orders in the terms of categories 14 and 15.
There is the further issue of whether documents produced pursuant to this category should be made available to officers of the respondent. Counsel for the applicant, Ms Spies, contended that the report of Google Ad activity should be limited to external counsel only, or at least until further order. It is common ground that the applicant and respondent are keen competitors in the same marketplace and the applicant contends that reports of the type produced in categories 14 and 15 will disclose marketing information which is highly confidential. Counsel for the applicant added that the usual Harman obligation might not be enough to address her client's concerns and she submitted that if discovery is to be ordered a further level of rigour should be imposed.
Dr Rothnie informed the Court that there is a regime in place whereby directors of the respondent have already executed confidentiality undertakings in relation to disclosure of documents and he submitted that that should be sufficient.
For present purposes, I am of the view that a cautious approach should be taken here and I propose that until further order documents to be produced pursuant to these categories should be marked confidential and made available only to the respondent's external lawyers. However, subject to an undertaking from officers of the respondent that they will not take, receive or copy the discovered documents or disseminate them, they should be permitted to view those documents for the purpose of instructing their external lawyers and preparing affidavit material in reply. If that regime proves to be unworkable, my orders will grant liberty to apply and an application can be made as necessary.
I now turn to categories 17 and 18. Category 17 seeks copies of all invoices and receipts for Google Ads and by category 18 the respondent seeks copies of invoices and receipts for Facebook Ads. Dr Rothnie for the respondent argued that this information is necessary because it will be probative of the when question, in particular, when the Court can infer that the applicant’s conduct was of such a scale that reputation in TITAN developed, if at all. Ms Spies on the other hand said that this more granular information is excessive and unnecessary. She also contended that the Google Ads invoices and receipts include information which is highly confidential and commercially sensitive.
Based on the submissions of both parties, including the applicant's offer to prepare a summary, I infer that documents in these categories exist and can be accessed. In my view, category 17 and 18 should be discovered, however only insofar as they reveal the amounts paid for the purchase of advertising from Google or Facebook. Any information of a strategic nature regarding the advertising should be redacted from the relevant invoices or receipts. I am satisfied that subject to those redactions the documents produced might be probative on the issue of when the applicant’s conduct commenced and, as I have described it, the trajectory of its scale over time.
Category 19 is agreed.
Categories 20 to 22, relate to a request for various documents including agreements, arrangements, understandings, invoices, receipts and the like which evidence a relationship between the applicant and an external marketing agency, Impressive Digital, regarding the services supplied by that agency including search engine optimisation, online marketing, website traffic and performance analysis. Ms Spies on behalf of the applicant opposed the disclosure of these categories on the basis that they are irrelevant, commercially sensitive and discovery would be onerous.
I accept the applicant’s submissions. In my view, these documents fall well outside what is necessary and appropriate to justly determine the issues in dispute. The information sought, in my view, is not directly probative of when the conduct commenced or its scale. I am also reminded of the orders that I have already made regarding other categories and, in that context, I regard this category as unnecessary. I also accept that the information likely to be contained in those documents is most probably of a highly confidential nature and the potential prejudice to the applicant from disclosure outweighs any benefit of disclosure. I will not permit discovery of categories 20 to 22.
Categories 23 to 25, describe documents which relate to the TITAN extruded profile products. Here the respondent seeks copies of quotations provided by the applicant and invoices and receipts for the sale of those products and other documents. The respondent submits that the basis for the request and issues are similar to those raised in relation to categories 1, 2, 4 and 6 but simply relate to a different product line. The request differs, however, in the sense that it is not limited to a particular time period although that may well be because the respondent is unable to narrow the timeframe.
I accept, for present purposes, that the applicant’s extruded profile product is directly competitive with one of the respondent's products and that the issue of when the applicant commenced producing its product might be relevant to the issue of reputation in TITAN. That said, I am mindful of the applicant’s evidence (and I refer to paragraphs 41 to 43 of the Spottiswood affidavit of 9 November) that the additional layer of enquiry necessary to identify the profile of products within the range of roller shutters which have been sold or installed might significantly add to the time and effort required to comply with the orders for disclosure of documents in categories 1 and 2. Furthermore, based on the evidence as I comprehend it, it seems that the profile of a particular shutter sold or installed is not necessarily broken down in each invoice or contract. It is likely that the relevant documents falling in this category may well be swept up in categories 1 and 2 in any event.
On balance, having regard to the looming trial date and the need for the parties to prepare and file answering material, the cost and time of complying with categories 23 to 25 in light of the orders I have already made, I am not satisfied that that will serve the overarching objectives of the Act. Accordingly, I will not order discovery of categories 23 to 25.
I can briefly deal with category 26. It seeks discovery of all of the applicant’s documents which refer to the respondent or any of the respondent’s products. It is too broad, it is too vague and it would be impossible for the applicant to know where to start and finish and what searches it should be undertaking.
DISPOSITION
It will be necessary to amend the orders of the Court to make provision for discovery and for the filing of reply material. I am not going to move the trial date as that is ultimately a matter for her Honour the trial judge.
Having heard from the parties I will order that by 4.00pm on 28 November the applicant and second cross-respondent give discovery of the documents I have allowed other than those in categories 1, 2, 4 and 6. The applicant and second respondent shall give discovery of categories 1, 2, 4 and 6 two weeks after that.
I will order that inspection be within four days of the appropriate discovery step. I will also make an order that until further order inspection of the documents produced in response to categories 14 and 15 shall be undertaken only by the respondent's external lawyers and, subject to officers of the respondent giving a written undertaking not to take, copy or disseminate those documents, the documents may be shown to them for the purpose of lawyers taking instructions and preparing evidence in answer.
That then leaves the evidence in answer which I think the parties should be able to prepare and file before the Christmas break. I propose 21 December 2022 for the respondent to file and serve any evidence in answer and the cross-respondent to file and serve any evidence in answer.
Evidence in reply is to be filed by 20 January 2023.
I will grant liberty to apply.
As there has been a measure of success by both parties in relation to the discovery issue, I am minded to reserve the costs of this application and the hearing.
I certify that the preceding sixty-three (63) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Forbes. Associate:
Dated: 11 November 2022
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