How Solutions Limited fka Ho Wiles Limited v Bar's Products International Limited

[2025] NZHC 1998

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2021-404-991 [2025] NZHC 1998

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 Plaintiff

BAR’S LEAKS (AUSTRALIA) PTY LIMITED

Third Plaintiff

BAR’S LEAKS AUSTRALIA LP

Fourth Plaintiff

AND

BAR’S PRODUCTS INTERNATIONAL LIMITED

Defendant

Hearing:	(On the papers)
Counsel:	C L Elliott KC and C R Fu for Plaintiffs J M Glover and L Carter for Defendant
Judgment:	18 July 2025

JUDGMENT OF ASSOCIATE JUDGE LESTER

This judgment was delivered by me on 18 July 2023 at 3.30pm

pursuant to Rule 11.5 of the High Court Rules

Registrar/Deputy Registrar

HOW SOLUTIONS LIMITED v BAR’S PRODUCTS INTERNATIONAL LIMITED [2025] NZHC 1998 [18 July 2025]

[1]    My judgment of 21 November 2024 (the November 21 judgment) dealt with challenges to confidentiality and disputed redactions.1 The judgment took the form of an initial discussion of the principles relating to confidentiality, noting the need for the Court to understand the context in which confidentiality was claimed, and the need for the Court to know the significance of a document and how it might be used in the proceeding.

[2]    The individual documents in issue were then dealt with in a schedule to the November 21 judgment which set out the parties’ positions in respect of the document and my ruling.

[3]    Some residual issues remained as a result of my ruling which were the subject of further submissions. This judgment deals with those residual issues. I regret the time it has taken me to deal with those matters.

Document HOW.01200

[4]    The first document is HOW.01200. This is a copy of minutes of a meeting of HOW Solutions Limited’s (formerly HO Wiles Limited) (HOW) board of directors in March 2019. Most of the document is irrelevant apart from four discussion items which relate to HOW’s product line strategy, margin mix across product lines and the future of HOW and BAR’S BUGS products lines and business. This document has been released to counsel for the defendants, Ms Glover, on a counsel-only basis.

[5]    HOW does not intend to rely on the document at trial, however BAR’S Products International Limited (BPI) does. HOW maintains that the document is highly sensitive and contains top level planning and strategic thinking.

[6]    BPI submits that the document is highly relevant to the question of HOW’s promotion of the BAR’S LEAKS line relative to BAR’S BUGS, and the competing incentives for HOW regarding that promotion.

1      HO Wiles Ltd v BAR’s Products International Ltd [2024] NZHC 3493.

[7]    BPI says the document is also relevant to HOW’s subjective understanding of the ownership of the BAR’S BUGS brand. BPI says it is entitled to see the document on a non-confidential basis.

[8]    Mr Elliott, counsel for the plaintiffs, submits that the status quo should be sufficient for BPI’s purposes, that is, the document is available counsel-to-counsel and he submits any issue BPI considers significant can be raised by way of cross-examination. Mr Elliott submits it  is  not  clear  what, if anything, disclosure of the document to BPI itself would add, and that confidentiality should be maintained.

[9]    Ms Glover, counsel for the defendant, in her reply memorandum, has set out four extracts from the document she considers relevant. The extract given at 14(a) of Ms Glover’s memorandum of 20 February 2025 refers to  the  risks that  promotion of one item over another may reduce profitability, for example, where a retailer has limited shelf allocation it may be better not to push for some items to be displayed where shelf space is limited. In my view, this is an observation of “retail common sense”, not an observation private to HOW.

[10]   The extract at 14(b) notes that some items are being sold to the detriment of items with a higher profit margin. This is not a private matter, but an obvious commercial conclusion that it is more profitable to maximise sales of high margin items.

[11]   The same observation applies in relation to extract 14(c) which talks about the maximisation of profit and that it may be better to focus solely on selling BAR’S BUGS’ products to maximise return.

[12]   Extracts 14(a), (b) and (c) reflect the type of commercial debate one would expect of the board of a wholesaler, independent of the type of products being distributed, that is, how to maximise profit and which products to focus on in order to do so given potential restrictions at retailer level. These extracts do not reflect confidential matters.

[13]   The final item, extract 14(d), refers to the possibility of HOW investigating selling the BAR’S BUGS business and that they cannot sell without securing the intellectual property (IP) rights to BAR’S BUGS.

[14]   By the time of the minutes in March 2019, at the very least, HOW knew that Mr Robert Omoto of BPI was seeking, as it is put in HOW’s second amended statement of claim dated 19 October 2020, “to reinterpret and renegotiate” the agreement HOW believed it had in relation to the IP of BAR’S BUGS. Even on HOW’s case, the basis of HOW’s rights was a relatively informal arrangement, referred to in the statement of claim as the Security Agreement. HOW believed it had the right to sell the IP rights but recognised it had to formalise the IP rights to BAR’s BUGS, that is, they would have to be “secured” (to use the expression in the minutes). However, the reality is no buyer of such rights would accept the informal arrangements that HOW says existed. That would be the case even if the dispute about the IP rights had not arisen.

[15]   Accordingly, I do not accept that the confidentiality asserted for extract 14(d) is such as to prevent the material being seen by BPI. Again, extract 14(d) only recognises that any buyer of IP would require those rights to be formally recorded.

Decision on document HOW.01200

[16]   Accordingly, the counsel-to-counsel only status of this document is removed to the extent of the four extracts referred to in Ms Glover’s memorandum.

HOW’s redactions to documents HOW.01242 and HOW.01243

[17]   These are documents from the HOW’s industrial chemists, Grayson Wagner, in February 2018 and April 2020 respectively.

[18]   Document HOW.01242 concerns spray-on fast wax polish and document HOW.01243 concerns a compatibility trial of fuel-additive bottles. HOW had engaged Grayson Wagner to develop and assess these products.

[19]   Mr Elliott maintains that the redactions are for irrelevant material, relating to highly technical and formulation information and manufacturing methods.

[20]   In  the  past,  redacted  material   had   been   made  available   by  HOW   on a counsel-to-counsel basis for the redaction to be assessed. It is Ms Glover’s preference that the practice of both redacted and unredacted documents being provided counsel-to-counsel be reintroduced. Her concern in this regard is not restricted to documents HOW.01242 and HOW.01243, although these are referred to by way of example, as that process was not followed for those documents. Mr Elliott’s preference is for that to occur on a case-by-case basis.

[21]   Ms Glover does not suggest a basis upon which it could be concluded the redactions in the two example documents are incorrectly applied, rather, as I have said, this issue being raised is more an expression of concern about the change of the prior practice of unredacted documents being provided.

[22]   As mentioned, Mr Elliott has advised that the redactions relate to highly technical and formulation information. Redactions of this character have been upheld before, for example, document HOW.00587 referred to in the schedule to the November 21 judgment, and the comment made about documents HOW.00697 to HOW.00699 that the detail of testing recorded in those documents would not be relevant and similarly, discussions starting at HOW.))862 as to whether ingredients were novel or not.

Decision on documents HOW.01242 and HOW.01243

[23]The redactions of those documents is not overturned.

BPI’s request for information regarding HOW.01440

[24]   Document HOW.01440  is  a  table  of  the  plaintiffs’  production  reports. Ms Glover submits that without further information such as what products are referred to by the various product codes, what quantities were produced, and by when, the material provided is largely meaningless.

[25]   I had noted in a judgment issued on 14 November 2024 (the November 14 judgment) that when the costs were incurred would be relevant and would need to be discovered.2

[26]   Mr Elliott acknowledged that product codes need to be provided, and I expect that has been completed by now. HOW was also considering whether it may be helpful to provide a bill of materials for each product to identify the bottles, contents and labels.

[27]   These production records are relevant to the plaintiffs’ claim that it relied on representations by the defendant. The period of reasonable reliance is said to have ended in March 2015 or July 2017.

[28]   I recorded in my November 14 judgment that Mr Elliott accepted that the timing of production expenditure was important and would be disclosed.3 Mr Elliott accepted that aggregated production figures were relevant and would be provided. The figures had been supplied on an annual basis between 2015 to 2017.

[29]   Ms Glover seeks a breakdown  on a  month-by-month  basis in the  form  of “a summary that allows BPE to fully identify what products it provided and when”.

[30]   The examination of whether there was reasonable reliance on the representations relied on will not be as granular as Ms Glover’s request for month-by-month reports suggests.

Decision on document HOW.01440

[31]   I assume the further information contemplated by Mr Elliott’s paragraph 18 of his memorandum of 19 February 2025, has been provided. On that basis I do not consider any further order is required in respect of Document HOW.01440.

2      HO Wiles Ltd v BAR’S Products International Ltd [2024] NZHC 3378 at [96].

3 At [96].

BPI’s request for information regarding HOW.01441

[32]   Document HOW.01441 is a product list. HOW was ordered  in  the November 14 judgment to set out which products it sold from 2014 onwards and which bore trademarks associated with BPI and, in respect of each product, to identify what trademarks were on those products.4

[33]   Ms Glover complains that the information provided does not explain whether the trademarks were stylised and if so, which stylisation which used, how big they were, and whether they were used with other trademarks and so forth.

[34]   HOW was directed to set out which products it sold from 2014 onwards which bear one of the trademarks BPI asserts that it owns, or the products otherwise associated with BPI, manufactured by BPI, or contained ingredients supplied by BPI, and, in respect of each product, identify what trademarks were on those products and the period each product was on the market.

[35]   Document HOW.01441 lists about 90 products that used the relevant trademark. HOW has identified the product descriptions which includes other brand names on the products, for example, the brand of a car company KIA, the quantity of the product in millilitres and the description of the product.

Decision on document HOW.01441

[36]   I do not consider further discovery on this issue to be proportionate. The issue is whether the trademarks were used and if so, whether that use was improper rather than whether they were stylised and in what size. Whether those further matters become relevant to quantum is another issue.

[37]   Ms Glover submits that the product list is incomplete as it does not feature BAR’S REACTOR, BAR’S LEAKS RUST or the Subaru brake cleaner product which featured the BAR’S LEAKS trademark. This particular allegation is not addressed in

4 Above n 2 at [92].

Mr Elliott’s submissions. If it remains the case that the list does not address those then Mr Elliott is to either update the list or explain why they are not included.

Subaru correspondence

[38]   Mr Elliott refers to BPI’s request for correspondence between HOW and Subaru. BPI refers to the removal of the BAR’S LEAKS logo from the upper engine cleaner  and  fuel addictive in April  or May 2023.    BPI  therefore  suggests  that as a result, correspondence between Subaru and HOW would be relevant. Mr Elliott notes it is not disputed that HOW removed the BAR’S LEAKS’ mark from the TEC and PAL products in May 2023, and will provide before and after copies of the labels to confirm this. He submits any correspondence with Subaru is therefore irrelevant.

[39]   It is hard to see what correspondence with Subaru might add, given that acknowledgment.

Decision on Subaru correspondence

[40]   I decline to order further discovery in respect of the Subaru correspondence on the basis that its relevance, if any, is marginal. I also decline on the grounds of proportionality, given that the interlocutory skirmishing on discovery needs to be brought to an end, as I have repeated in earlier judgments. For present purposes, the issue is what BPI says was the unauthorised use of its IP. Given it is not in dispute that HOW used the IP in connection with Subaru, BPI does not need the Subaru correspondence to prove that.

BPI’s undertakings regarding contacting third parties

[41]   In the November 14 judgment, I observed that the distrust between the parties was driving unsustainable claims for confidentiality and redactions on both sides. The principals of each of the parties were directed to  provide  written  undertakings to the Court confirming they would only use information obtained through the discovery process for the purposes of this proceeding. Written undertakings have been provided.

[42]   HOW seeks an order that BPI provide an undertaking that, in the event it contacts a new third party, BPI will before trial, provide an affidavit setting out the

relevant third parties it has contacted and confirming that those third parties were not contacted using information from HOW’s discovery.

[43]   I decline to make the order requested. There is no prohibition on a party using discovery to contact a third party for the purposes of a proceeding. A party may learn the identity of a potential witness or a person who might otherwise assist with the proceeding, from discovery. However, that contact may only be for the purposes of the litigation.

[44]   The parties have committed in undertakings to the Court only to use the discovery information for the purposes of the proceeding. That in itself was an unusual step. Mere distrust on the part of HOW is not enough to warrant the affidavit sought, there being no evidence that the undertakings have not been complied with.

BPI’s claim for confidentiality over aspects of its international licensee spreadsheet

[45]   BPI was ordered to disclose on a confidential basis a spreadsheet containing information relating to businesses with its international licensees. The spreadsheet had redacted the price, cost of goods, profit/unit and profit and margin columns.

[46]   BPI accepts that HOW’s counsel can share with HOW the names of the licensees, however, the rest of the spreadsheet remains confidential.

[47]   I understand that on a counsel-to-counsel basis, an unredacted version has been disclosed.

[48]   I held that HOW was entitled to know the identity of the defendant’s overseas licensees, their scale and professionalism as part of assessing the usefulness otherwise of comparing the plaintiffs’ performance against other licensees of the defendant.

[49]   In the November 14 judgment, I referred to my earlier May 2024 judgment,5 where this information was ordered to be disclosed.  In the November 14 judgment,  I said the intent of the May 2024 order was that BPI was to provide discovery of

5 HO Wiles Ltd v BAR’s Products International Ltd [2024] NZHC 1281.

material that would permit HOW to compare its sales performance with BPI’s other territories around the world.6 The order was that BPI was to provide unredacted copies of the documents, save to the extent that those documents record the profits made by those licensees and distributors.7

[50]   I accept Mr Elliott’s submission that the order requires the full document to be disclosed, except for profit/unit, profit and margin percentage columns to be disclosed.

Decision on BPI’s claim for confidentiality over aspects of its international licensee spreadsheet

[51]   There is an order that the information in spreadsheet BPI.1147 is to be disclosed except for profit/unit, profit and margin percentage columns.

Rislone documents

[52]   Ms Glover, in her memorandum of 20 February 2025, records that BPI will provide a further discovery affidavit as to why the relevant documents do not exist and why.

[53]   I note that the February memoranda recorded that counsel were still working through further issues. If not resolved, such issues can be discussed at a further telephone conference.

Associate Judge Lester

Solicitors:

McVeagh Fleming, Auckland (for Plaintiffs) Woodroffe Lawyers, Auckland (for Defendant)

Copy to counsel:

C Elliott KC, Barrister, Auckland (for Plaintiffs) J M Glover, Barrister, Auckland (for Defendant)

6 At [41].

7 At [42].