How Solutions Limited (fka Ho Wiles Limited) v Bar's Products International Limited
[2025] NZHC 2645
•11 September 2025
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE
CIV-2021-404-991
[2025] NZHC 2645
UNDER the Contractual Remedies Act 1979 the Fair Trading Act 1986
the Trade Marks Act 2002
BETWEEN
HOW SOLUTIONS LIMITED (formerly HO WILES LIMITED)
First Plaintiff
BARS LEAKS NZ LIMITED
Second PlaintiffBAR’S LEAKS (AUSTRALIA) PTY LIMITED
Third Plaintiff
BAR’S LEAKS AUSTRALIA LP
Fourth PlaintiffAND
BAR’S PRODUCTS INTERNATIONAL LIMITED
Defendant
Hearing: 20 August 2025 (by AVL) Counsel:
C L Elliott KC and C R Fu for Plaintiffs L Carter for Defendant
Judgment:
11 September 2025
JUDGMENT OF ASSOCIATE JUDGE LESTER
(in respect of interrogatory disputes)
HOW SOLUTIONS LIMITED v BAR’S PRODUCTS INTERNATIONAL LIMITED [2025] NZHC 2645
[11 September 2025]
Introduction
[1] Each party disputes the adequacy of answers provided to requests for interrogatories.
[2]I take from my judgment of 22 May 2024,1 a brief summary of the background.
[1] This is a dispute over trademarks. The plaintiffs, collectively referred to as “HOW”, say they own the BAR’S BUGS trademark.
[2] The defendant, BAR’S Products International Limited [(BPI)], says it owns that trademark along with BAR’S LEAKS. [BPI’s] counterclaims are for what it says are HOW’s misuse of the BAR’S BUGS trademark and HOW failing to comply with its obligations in its Licence Agreement with [BPI] to promote BAR’S LEAKS.
[3] HOW and [BPI’s] (or their predecessors) have been in business together for approximately 50 years. The Licence Agreement between them dates from 1979 and it is common ground that in many respects, the Licence Agreement is outdated, including that the range of products the Licence Agreement covers, has been overtaken. The products sold under the above trademarks are automotive maintenance or cosmetic products.
[4] At its most basic, HOW says that, by what it calls the “security agreement”, [BPI] agreed to transfer the BAR’S BUGS trademark to it on a specified event which has now occurred. HOW, in the alternative, says [BPI] is estopped from denying HOW is entitled to the BAR’S BUG trademark.
[5] [BPI] says the Licence Agreement is at an end ... On [BPI’s] case, HOW’s continued use of the BAR’S BUGS trademark is a breach of [BPI’s] rights and [BPI] says further that because HOW acted as if it owned BAR’S BUGS trademark, it neglected the BAR’S LEAKS trademark—indeed [BPI] asserts HOW actively repressed the BAR’S LEAKS trademark. [BPI] raises a clean hands defence in relation to the estoppel claim.
Principles applying to interrogatories
[3] In Tourplan Pacific Ltd v Australian Tours Management Pty Ltd, the Court said: “It is correct that it is not permissible to ask for what amounts to evidence of facts in dispute.2
1 HO Wiles Ltd v BAR’s Products International Ltd [2024] NZHC 1281.
2 Tourplan Pacific Ltd v Australian Tours Management Pty Ltd [2017] NZHC 2210 at [44] (footnote omitted).
[4]In BNZ v Gardner, Master Hansen observed:3
In my view, merely because interrogatories seek to obtain an admission of fact which could be proved by a witness at trial, one can no longer say, in the context of the New Zealand rule, that the interrogatory is unnecessary. Depending on the circumstances it may well be that an interrogatory will limit the scope of a witness’s evidence, thus saving time and expense. It may go even further and make it unnecessary for certain witnesses to be called. It seems to me that within the context of the New Zealand rules there must be added to the four objects of interrogatories, listed by Lockhart J in W A Pines Ltd v Bannerman … the aim and object of the rules generally and especially relating to interrogatories mentioned by Barker J at p 4 of Sunde, i.e.
(1)The aim of the rules is to arrive at the truth.
(2)The rules are designed to assist the parties in coming to a recognition of the proper issues.
(3)Through that recognition to a settlement of disputes.
[5] Quite clearly, some answers that might ordinarily be referred to as evidence at trial will fall within the appropriate scope of an interrogatory. The question is one of degree. Evidence is that which tends to provide a fact, or that which may demonstrate a fact’s existence. In Westpac Banking Corp v Hart, Tipping J held that interrogatories should not require answers on the basis of a disputed assumption of fact.4 Such answers would amount to evidence of disputed facts rather than primary facts.
[6] Questions aimed at “part of the facts” in issue which a party needs to prove are permissible, provided the question is not aimed at learning “mere evidence of the facts in dispute”.5 However, the distinction between the two is not always easy to make.6
[7]Accordingly, interrogatories:
(a)must be relevant;
(b)must not assume disputed facts; and
3 BNZ v Gardner (1980) 2 PRNZ 278 (HC) at 281 (footnotes omitted).
4 Westpac Banking Corp v Hart (1987) 1 PRNZ 719 (HC) at 726-728.
5 Evans v Harris (1991) 6 PRNZ 329 (HC) at 5 citing Marriott v Chamberlain (1886) 17 QBD 154, 163.
6 Leishman v Levie [2018] NZHC 2122; [2018] NZAR 1276 at [44].
(c)may include questions that may indirectly prove the key facts relied on.7 They must relate to material facts rather than evidence,8 although the distinction may not involve a bright line.
[8] It is a legitimate purpose of interrogatories to obtain admissions of facts which support the case of the interrogatory party or, damage the case of the party being interrogated:9
“Necessary” does not mean as is suggested in some of the submissions … that the questions relate to facts crucial to the interrogating party proving its case. The threshold is not that high. Rather, necessary questions can include questions that may indirectly prove the key facts relied on. They may establish or form a step in establishing the allegations made.
[9] That the interrogatory may overlap with what the responding party would include in their brief of evidence or cross-examination does not of itself invalidate the interrogatory. As set out above in the passage from Tourplan, some answers might ordinarily be matters that would be included in evidence at trial but may still fall within the appropriate scope of an interrogatory.10 The question is one of degree. As the Court in Commerce Commission v Air New Zealand Ltd (No 6) stated:11
The Court’s determination of whether the interrogatory questions are sufficiently germane to the material facts must in the end turn on an analysis of the relevant issues, and the importance of the questions and their degree or connection to the core facts that must be proven.
[10] There is no bright-line between permissible and impermissible questions that may cover material the responding party would include in their brief of evidence. Open questions that call for lengthy explanations or, need to cover significant background to give context to an answer, tend not to be permitted.12 Focused closed questions have been permitted. As I set out in Body Corporate 389593 v Vero Insurance New Zealand Ltd:13
7 Commerce Commission v Air New Zealand Ltd (No 6) [2012] NZHC 2113 at [18].
8 Commerce Commission v Air New Zealand Ltd (No 6), above n 7 at [17].
9 Commerce Commission v Air New Zealand Ltd (No 6), above n 7 at [18] (footnotes omitted).
10 Tourplan Pacific Ltd v Australian Tours Management Pty Ltd, above n 2.
11 Commerce Commission v Air New Zealand Ltd (No 6), above n 7, at [20].
12 For example, Sealegs International Ltd v Zhang [2017] NZHC 1789 at [52] where questions to the defendants that they “specify the steps they took in the product development” were ruled out.
13 Body Corporate 389593 v Vero Insurance New Zealand Ltd [2019] NZHC 2807 at [20] (footnotes omitted).
(a)The answers must be specific and substantial. They must also be complete in themselves.
(b)The answer must not be perfunctory or evasive.
(c)The interrogatories themselves must not be oppressive.
(d)To require a party to answer an interrogatory question about the accuracy of a written statement prepared by others is oppressive.
[11] The learned authors of McGechan on Procedure record that a specific interrogatory requires a specific answer.14 An answer which generally refers to certain books, affidavits or documents does not conform to the requirements of the rules. But a qualification or explanation may be added to an answer if it would otherwise be misleading but, nonetheless, the answer must still be specific and substantial. If it is not possible to answer an interrogatory with complete precision, a proper attempt should nevertheless be made to provide the answer as accurately as possible.15
[12] An answering party must seek the information he or she is required to give. If enquiries have been made from others, the answer should state that enquiries have been made and what belief he or she holds as a result.16
The interrogatories asked by HOW
Question 2
[13]Question 2 is as follows:
In relation to each of the products referred to in paragraph 1 above, did BPI itself develop the products and conduct R&D product development, and testing/trialing for each product?
[14] The reference to “paragraph 1” is to products pleaded by BPI at paragraph 261 of BPI’s counterclaims as being products that BPI alleges HOW:
… displayed no enthusiasm for selling various other [BPI] and/or BAR’S LEAKS products in New Zealand or Australia, and have taken no active steps towards obtaining compliance for, promoting, or selling these products.
14 Jessica Gorman and others McGechan on Procedure (online ed Thomson Reuters) at [HR8.39.01].
15 Henwood v Radio New Zealand (1993) 7 PRNZ 160 (HC).
16 Jessica Gorman and others, above n 14, at [HR8.39.04].
[15] The pleading then lists the products offered to HOW said to have been “neglected”. Of those products, 17 are listed in BPI’s first answer to the interrogatories. Accordingly, Question 2 (set out in [13] above) refers to 17 products. BPI’s answer was as follows:
Each of these products were variously:
1. sourced from Bar’s USA,
2. purchased through a third party, and/or
3. formulated by BPI.
In relation to testing/trialling, many products had existed and been offered by BPI in the market for many decades. Some newer products already existed in the marketplace (being sold by other entities) and/or utilized known standard ingredients, so only required verification of the ingredient claims and the final formulation. For other product formulations, refinement was performed through trial and error. I cannot locate any documentation or records of the refinement or testing/trialling done for each of the products.
[16] Mr Elliott KC, counsel for HOW, described this as a “patchwork answer” and as being evasive. The products pleaded, which covers products offered to HOW from as early as the late 1990’s, with it being pleaded the offers remained open over time (albeit that time is not specified), Mr Elliott submitted this pleading creates an impression that BPI had offered products to HOW over an extended period which were systematically ignored or neglected by HOW. Mr Elliott submitted the questions asked in this context were aimed at undermining the pleading that was aimed at creating the impression of a “stable of products” rejected by HOW. The questions were designed to undermine the idea that HOW had a history of refusal to take products developed by BPI.
[17] BPI’s counterclaim relates to cl 13 of the 1979 Licence Agreement which provides:17
13.Bar’s Leaks agrees to diligently devote its time in the development of the sales of Bar’s Products above stated, in accordance with good business standards and to use its best efforts to distribute, procure, and promote sales and create a demand for Bar’s Products, and agrees further to endeavour to show a proportionate increase in sales within the territory being developed over each preceding year as comparable to the average increase of other territories assigned in the world.
17 Emphasis added.
[18] While in the 1979 Licence Agreement, “Bar’s Products” appears to be used as a defined term, it is not defined in the Licence Agreement. The terms used in cl 5 of the Licence Agreement are as follows:
BPI agrees to sell to Bar’s Leaks and Bar’s Leaks agrees to buy from BPI the Bar’s Products and concentrate necessary to manufacture… [there are then listed a number of products].
[19] The use of BPI’s products in this context might be read as BPI’s products being ingredients rather than a finished retail product.
[20] Just what “Bar’s products” means is likely to be subject to the dispute of the proceeding.
[21]On that basis, I find the question asked by HOW is an appropriate one.
[22] Depending on what a “Bar’s product” is, it may or may not include only products developed and manufactured by BPI. The short point is that with the meaning of the term in cl 13 of the 1979 Licence Agreement being opaque, the question asked is appropriate and the answer is evasive.
Direction for Question 2
[23] I direct that BPI is to, in respect of each of the 17 products listed in its answer (in para 1 of its answers), answer Question 2.
[24] Ms Carter, counsel for BPI, submitted BPI’s primary response was that whether the products were manufactured by BPI or sourced from a third party does not go to whether the products were a viable product, that is, a product that could, and should on BPI’s case, have been taken up by HOW. However, BPI did not decline to answer Question 2 on the ground of relevance. Mr Elliott submitted the crux of the question is, which products did BPI itself develop. Ms Carter submitted BPI may be unable to answer some of the questions—if that is the case, it can say so.
Question 5
[25]Question 5 is as follows:
5. Did BPI itself manufacture each of the products?
[26]BPI’s answer was:
BPI was designated as the manufacturer of all offered products, although as noted below, sometimes the products included ingredients purchased from 3rd parties, and sometimes part of the manufacturing processes were outsourced.
Direction for Question 5
[27] The reference to being “designated as the manufacturer” is ambiguous. For the reasons referred to in respect of Question 2, I direct BPI is to specify whether, in respect of each of the products, it manufactured the products itself.
Questions 7, 8 and 10
[28]I deal with Questions 7, 8 and 10 together. These Questions ask:
7.Does BPI itself still manufacture each of the products, and if so, which products?
8.Does BPI still supply any of the above products to any of its customers, licensees or distributors, and if so, which products and to whom?
10. If BPI no longer supplies any of the products above to any of its customers, licensees or distributors, when was the last sale of the product to that entity?
[29] BPI declined to answer these three questions on the basis that they did not relate to a matter in issue.
[30] BPI, in its submissions, identified a list of products that it no longer supplied. However, it does not give the dates on which the products were no longer supplied. The date range during which the products said to have been neglected by HOW were available, is relevant. If the product was only available for a short time then it suggests either HOW may have been justified in not taking up the product, as the product may not have been viable, or HOW’s failure to take up a product was of no consequence.
However, Questions 7, 8 and 10 are wider than seeking the date range for which the “neglected products” were available.
Direction for Questions 7, 8 and 10
[31] I direct in respect of each of the products outlined at [82] of BPI’s submissions, in para 1 of BPI’s answer, BPI is to provide the date range that it was able to supply the products to HOW but I decline to direct the remaining questions to be answered.
Question 11(b)
[32]Question 11(b) deals with a different topic.
11(b) For each quarter, what royalties were paid to BPI pursuant to its settlement agreement with Bar’s USA for the period of 1 January 2019 to 31 December 2023?
[33] The settlement agreement referred to in Question 11(b) is known as the Rislone Settlement Agreement (the Rislone Agreement).
[34] The Rislone Agreement has been the subject of earlier disputes between the parties. Of the Rislone Agreement, I said in a previous judgment between the parties:18
[52] BPI separated from what became BAR’S USA many years ago. BAR’S USA retained the United States and Canadian markets while BPI retained the rest of the world. BAR’S USA was the manufacturer of the products, or at least controlled their manufacture. BPI sourced products or ingredients from BAR’s USA until 2004.
[53] In 2004, a dispute arose between BPI and BAR’S USA arising from BAR’S USA selling BAR’S products labelled “Rislone” into the Australian market. That dispute was resolved in a settlement agreement reached in 2018
…
[54] HOW sold BAR’S labelled products into Australia and accordingly BAR’S USA selling the same products under the Rislone name on the market impacted on HOW.
[55] HOW sought a copy of the settlement agreement reached between BPI and BAR’S USA on the basis it would “…directly inform the extent to which, if at all [BPI] exercised any control over the trademarks”.
[56] Because the counterclaim alleges that HOW failed to “show a proportionate increase in sales”, Mr Elliott submitted in the May 2024
18 Ho Wiles Ltd v Bar’s Products International Ltd [2024] NZHC 3338.
hearing that any arrangements made between BPI and BAR’S USA in respect of the Australian market would be relevant to BPI’s counterclaim discussed above because if BPI allowed a major competitor to remain in the Australian market, that could not be ignored in assessing HOW’S increase in sales.
…
[58] There is a wider context to the settlement agreement. HOW alleges that in 2014 it reached the agreement with BPI, [the security agreement], under which BPI agreed to transfer the BAR’S BUGS’ trademark to HOW. Mr Elliott submits that one of the reasons for that agreement being reached in the first place was because of the adverse effect of the Rislone products being sold by BAR’S USA in the Australasian market. Mr Elliott submits under the settlement agreement BPI benefits from royalty provisions related to the success of a substantial direct competitor to its exclusive licensee, HOW.
[59] I accept Mr Elliott’s submission that the document is significant to a number of aspects to the case. BPI alleges in its claims that there is an implied duty of good faith in the licensing agreement. If that is right, the duty is owed by both parties. Mr Elliott points out that under the settlement agreement with BAR’S USA, BPI permitted a direct competitor to HOW to sell BAR’S products labelled as Rislone products into the Australasian market while now claiming HOW breached the licensing agreement by failing to achieve a “proportionate increase in sales”.
[60] These factors are also relevant to HOW’s first cause of action against BPI that it acted unconscionably and inconsistently with the licensing agreement.
[35] Here, under Question 11(b), HOW sought further discovery of the royalties paid to BPI under the Rislone Agreement. BPI’s position was that royalties were paid as a lump sum covering a number of territories for which a fee was payable and the royalty was not broken down in a way that would identify those royalties relating to the Rislone Agreement. A direction was made that BPI was to list with particularity the privileged documents it holds in relation to the Rislone Agreement and to address its ability to obtain information from its counterparty to the Rislone Agreement in relation to the royalty payments.
[36] BPI maintains it does not have relevant documents, hence HOW’s interrogatory Question 11(b).
[37] Mr Elliott’s submission was in substance that if the only information available in respect of the royalties is the lump sum then that is what will have to be provided and the parties and the Court will have to do the best they can with that information. Ms Carter submitted there was no basis for saying that the lump sum would provide
relevant information and there was no basis from which any useful information could be extrapolated from it.
[38] The information to be provided will be confidential. I have already commented in the above extract from my earlier judgment, about the significance of the Rislone Agreement. In a sense, it is surprising that BPI has no idea how royalty payments it receives were made up. However, it is BPI’s position that it does not have a breakdown.
Direction for Question 11(b)
[39] As noted above, permissible questions include those which may indirectly prove facts relied on. Here, the only information available to HOW on an important issue is the lump sum figure. Given BPI is responsible for not being able to provide any other detail, I direct BPI is to answer Question 11(b).
[40] At the hearing on 20 August 2025, Mr Elliott advised that the next group, Questions 27-35, had been answered and he would not be pursuing Questions 36-41.
Questions 47-49
[41] The final group of Questions for which HOW seeks answers are Questions 47-49.
47.If the answer to question 46 is yes, on what specific facts or circumstances is it alleged that the products and constituent parts are proprietary and/or confidential?
48.What existing accreditation(s), approval(s) or endorsement(s) does BPI, as opposed to any product developer or supplier of any raw materials or ingredients, including active ingredients, have over the TEC and PAL products or their constituent parts?
49.Does BPI currently sell or supply the TEC and PAL raw materials to any other licensee, distributor, or customer?
[42] Mr Elliott explained that Questions 47-49 are designed at learning whether, what are known as the “TEC and PAL” products, are within the definition of “products” in the first recital to the 1979 Licence Agreement which provides:
WHEREAS, BPI is a company existing under Articles filed in the State of Michigan and is the owner of the trade-marks, BAR’S LEAKS, BAR’S RUST, REACTOR, INSEALATOR, BAR’S BUGS, ‘7ON, AND NO’VERHEAT for
use on preparations covered by patents in various countries of the world, and …
[43] In relation to Question 47, the answer was: “The formulations were developed by BPI, and are confidential to BPI.”
[44]There is a disagreement as to what the above recital means.
[45] As I have said, Mr Elliott submits the questions are aimed at determining whether the TEC and PAL products fall within the recital.
[46]In my view, Questions 47-49 are not well framed to achieve that purpose.
[47] As I understand it, HOW says the recited clause should be construed narrowly, that is, the reference to “preparations covered by patents” limits its scope. It is common ground that the TEC and PAL products are not covered by patents. HOW does not need an interrogatory to confirm that—it was acknowledged by Ms Carter at the hearing on 20 August 2025 and, as I understand it, has been common ground for some time.
[48] If HOW’s position is the TEC and PAL products are not covered by the clause even if BPI’s interpretation of the recital is accepted, then the Question will need to be reframed.
Direction in relation to Questions 47-49
[49]I decline to order that BPI answer Questions 47, 48 and 49.
The interrogatories BPI wants answered
Questions (1)-(4)
(1)On which date did the plaintiffs first discuss with Bar’s Products, Inc and/or its predecessors (together, Bar’s USA) the possibility of the plaintiffs selling Bar’s USA’s products in New Zealand and Australia?
(2)On which other dates did the plaintiffs and Bar’s USA discuss the possibility of the plaintiffs selling Bar’s USA products in New Zealand an Australia?
(3)Was HOW aware in around 2003 and/or 2004 that Bar’s USA was trying to acquire trade mark rights form BPI? If so, when/how did HOW become aware of that?
(4)Did HOW advise Bar’s USA that it was seeking to acquire trade mark rights form BPI? If so, when?
[50] Questions (1)-(4) asked by BPI relate to HOW’S relationship with BAR’S USA. HOW considers these questions irrelevant.
[51]In the fourth amended statement of claim, HOW pleads that it:
… declined other commercial opportunities with agencies in the car care area that might have potentially have competed with the BAR’S BUGS windscreen cleaning preparation and/or Said Preparations, namely Invisible Glass, blue Coral, NonoX and Mothers.
[52] BPI submits that HOW has previously given evidence that BAR’S USA was one of those opportunities. Accordingly, BPI submits details of this interaction are relevant.
[53] HOW’S pleading is that from 2016, in reliance upon the security contract, it developed a range of new products for sale under the BAR’s BUGS brand. The new products are defined by reference to products developed from 2016. The context arising from paragraph 41 of the statement of claim is of HOW declining other commercial opportunities after 2016, or at the very least, after the “2014 Security Contract”.
[54]I cannot see how events in 2003 and 2004 can be relevant to this pleading.
[55] The alternative argument advanced is that HOW pleads that BPI knew by 2011/2012 that the introduction of BAR’s USA’s Rislone products would have detrimental effect on HOW. BPI says:
If, however, the plaintiffs were in fact negotiating with Bar’s USA to distribute its products, there would potentially be no such detriment.
[56] I do not accept this submission. If HOW had reached a commercial arrangement with BAR’S USA to distribute the Rislone or other products in New Zealand, then it would have the benefit of that contract even if its marketing of Rislone products had a negative effect on its other sales. As it is, HOW submits it has had that negative effect without the benefit of being able to distribute Rislone products itself. The whole point of its complaint about the Rislone Agreement is that HOW lost out on that business or its business was harmed by the Rislone products entering the territory.
Direction for Questions (1) to (4)
[57]The application that HOW be required to answer interrogatories (1) to (4) is
declined.
Question (9)
[58] Next is Question 9 which refers to the Supercheap Auto Coolant Range Review dated May 2009.
(9)The Supercheap Auto Coolant Range Review dated May 2009 said, “We are currently investigating? sourcing and costings [sic] of raw materials etc for unique products to introduce into the Australasian Market. What were these products and what investigations, sourcing and costings were carried out?
[59] The Range Review is a document prepared by HOW and is effectively a brochure of products offered to its customers. The Range Review said:
We are currently investigating? sourcing and costings [sic] of raw materials etc for unique products to introduce into the Australasian Market.
[60] Question (9) asks what those products were and what investigation, sourcing and costings were carried out?
[61] HOW submitted the question was not relevant. BPI’s response is that HOW pleads they developed a range of products in reliance on the 2014 Security Contract. BPI submits, and I find to be correct:
Accordingly, any steps taken by the plaintiffs in relation to the development of new products that occurred before the date of the alleged security contract
are relevant. Any steps taken prior to the alleged security contract could not have been in reliance on it.
[62] During the hearing I acknowledged that if HOW had commenced developing a product before the 2014 Security Contract, and had committed such resources to that development, that HOW was in effect committed to continuing the development then that would be relevant to the reliance issue. If after the 2014 Security Contract, development of that product continued, it could not be said that work was in reliance on the Security Contract as HOW was already essentially committed to continuing the development.
[63]Identifying such products, that is a different question to the one asked.
Direction for Question (9)
[64] I decline to order the answering of Question (9) as it is framed. Given the range of factors that would have to be considered before it could be said that HOW was, in practical terms, committed to continuing to develop a product after the 2014 Security Contract because of pre-existing work, it would be hard to frame a question aimed at identifying such products. In any event, the fact that the Security Contract was obtained may well have been a factor that prompted HOW to continue the development of a product, where development had commenced before the Security Contract. Ultimately, this is a question that requires too much context and background to be susceptible to an interrogatory, albeit it is a potentially valid issue for BPI to explore.
[65] The pleading is that: “From in or about 2016 in reliance upon the Security Contract” the new products were developed. The real issue is when did development of the new products commence as opposed to from when it continued.
[66] I therefore direct HOW is to identify if development of any of the new products it relies on commenced before 2016 and if so, when development commenced.
Question (45)
[67]The next Question is:
(45) Are there any other BAR’S LEAKS products on which HOW has not paid royalties to BPI?
[68] BPI submitted HOW’s answer was that Question (45) was ambiguous and unclear. HOW submits it does not pay royalties on BAR’S LEAKS products as it buys the raw materials. How submits Question (45) was unclear as to “what ‘other BAR’S LEAKS products’ are being referred to.”
[69] In my view, Question (45) is an unduly wide-open question. It has no date range and, in my view, is ultimately a question relevant to quantum. I agree it is also ambiguous because it assumes knowledge of what “any other products” are.
Direction on question (45)
[70]I decline to order that HOW answer Question (45).
Question (53)
[71]This Question is as follows:
(53) Have the plaintiffs ever used the BAR’S BUGS or BAR’S LEAKS trade marks in relation to its alternative PAL formulation? If so, how and when?
[72]HOW initially answered that it:
… removed the relevant mark for the PAL products when or shortly after BPI requested that it do so: i.e., shortly after the receipt of BPI’s letter dated 14 November 2022.
[73]BPI sought clarification and said that:
New labels for PAL were introduced on or about 20 March 2023. These new labels, minus the “BAR’S LEAKS” logo, were used for the alternative PAL formulation bottles. However, it is possible that during this changeover period, some of the existing (old) labels might have been used.
[74] BPI seeks inventory records to enable it to know when the label changeover happened, to provide clarity on this issue. It says HOW should be able to identify the number of bottles/cans carrying BPI’s product labels were applied to products not supplied by BPI.
Direction for Question (53)
[75] This is ultimately a quantum issue as it goes to the extent of breach (if any) by HOW. This issue can be revisited if and when quantum becomes relevant.
[76]I decline to order that HOW answer Question (53).
Questions (57) to (60)
[77]I deal with these questions together. They are:
(57)On 2 October 2014, the plaintiffs advised BPI that they had been waiting for information to be received from various regulatory agencies. Which regulatory agencies did the plaintiffs contact at that time?
(58)How was such contact made with those agencies (e.g. emails/letters)?
(59)What information was sought from each agency?
(60)What was the response from each agency?
[78] HOW replied that the Questions (57) to (60) were not relevant and subsequently said that the document in issue, being an email of 2 October 2014, “sets out the information received from the regulatory agencies”.
[79] However, Questions (58), (59) and (60) are not specifically answered by HOW. The document dated 2 October 2014 is a compilation of material received from different Government agencies.
[80] As noted at [11] above, an answer that generally refers to certain books, affidavits or documents does not conform to the High Court Rules 2016 (the Rules). The answer provided by HOW is not “specific and substantial”.
Directions for Questions (57) to (60)
[81] I direct that the specifics of Questions (57), (58), (59) and (60) are to be answered.
[82] Further, it is not obvious to me which Australian regulatory agency was contacted and this should be clarified.
Questions (65) and (66)
[83]These Questions are as follows:
(65)Does the MOTOR CLUB Glass Cleaner product have the same formulation as the BAR’S BUGS Glass Cleaner product?
(66)Does the MOTOR CLUB Tyre Shine product have the same formulation as the BAR’S BUGS Tyre Shine product?
[84] Questions (65) and (66) were about a product called MOTOR CLUB Glass Cleaner and MOTOR CLUB Tyre Shine and asked if those products had the same formulation as the BAR’S BUGS equivalent. The answer in each case began: “No, my understanding is…”. This answer is criticised on the basis that the information sought is within HOW’s knowledge and a definitive answer should be provided. As noted at [12] above, the answering party must seek the information he or she is required to give. If enquiries have been made of others, the answer should state that enquiries have been made and what belief he or she holds as the result.
Directions for Questions (65) and (66)
[85] With regard to the principles in [11] and [12] above, I direct HOW is to provide a further answer in respect Questions (54) and (66).
Question (69)
[86]In the final Question (69), BPI asked:
(69) What changes were made to the product labels and/or safety data sheet(s) referred to in HOW.00970 and why were those changes made?
[87]HOW said the answer was “not relevant”.
[88]BPI submitted:
This document appears to be relevant both to the changes [HOW] made to the Bar’s Bugs formulation, and to [HOW]’s claim that it could not take on new products that did not have regulatory approval.
[89] I have been provided with a copy of document HOW.00970. The document does not record that a change was made. The final advice from HOW’s chemist begins: “I don’t think that your label actually needs to change…”
[90]Question (69) is open-ended as to time.
[91]BPI’s explanation of relevance assumes that a change was made.
Direction for Question (69)
[92] I direct that HOW is to answer Question (6) if a label change actually occurred as a result of the matters in document HOW.00970. I do not have the full context of document HOW.00970 to know if the discussion recorded in that document continued. However, if no change was made, as appears to be the advice from the chemist, then HOW should say so and that will close out Question (69). If changes were made to the labels, then the matters recorded in document HOW.00970 in respect of packaging and safety issues are sufficiently relevant to HOW’s claim that it could not take on new products because of regulatory approval, such that BPI’s Question (69) should be answered by HOW. Document HOW.00970 suggests HOW engaged on such issues and took advice from its chemist, at least in respect of labelling. But from the way the question is framed, if no changes were made then that will be a sufficient answer.
Costs
[93] Counsel were not heard on costs. In my view, HOW has had greater success in this application. My inclination is that HOW should be awarded costs on a 2B basis in respect of the application, reduced by one-third to reflect the success by BPI in respect of its application.
[94] If counsel cannot agree on costs, brief memoranda of not more than four pages may be filed within 10 working days.
Associate Judge Lester
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