How Solutions Limited's (fka Ho Wiles Limited) v BAR's Products International Limited

[2025] NZHC 2655

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2021-404-991

[2025] NZHC 2655

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 for Defendant
Judgment:	12 September 2025

JUDGMENT OF ASSOCIATE JUDGE LESTER

(in respect of legal advice privilege)

HOW SOLUTIONS LIMITED v BAR’S PRODUCTS INTERNATIONAL LIMITED [2025] NZHC 2655

[12 September 2025]

Introduction

[1]                 BAR’s  Products  International   Limited   (BPI)   challenges   HOW Solutions Limited’s (formerly HO Wiles Limited) (HOW) claim to privilege in relation to legal advice HOW received from its registered patent attorney. The advice is referred to in two emails sent by HOW to BPI as follows:

First email:The legal advice referred to in HOW.00333  (email to BPI   dated 8 August 2017: “… we have sought legal advice on making sure we don’t do anything to undermine our current agreement”);

Second email: The legal advice referred to in BPI.0816 (email to BPI dated 17 May 2018:   “Our advice is that BPI has either entered     a binding agreement or is now subject to promissory estoppel…”).

(together, “the emails”)

[2]                 BPI submitted that if legal advice privilege is properly claimed, then it was waived through the advice being referred to in the emails.

[3]                 The emails require context. This proceeding concerns ownership of the BAR’S BUGS trade mark. HOW says it owns the trade mark pursuant to what it calls the “security agreement” made on 20 November 2014 (the security agreement).

[4]                 Under the security agreement, HOW says BPI agreed to transfer to it the BAR’S BUGS trade mark on the death of Arthur Omoto, a director of BPI. Arthur Omoto died in October 2016.

[5]                 HOW and BPI have a long trading history which, between them or their predecessors, lasted nearly 50 years. There was a licence agreement between them from 1979 which covered automative maintenance or car grooming products (the licence agreement).

[6]                 HOW’s position is, as BPI had agreed to transfer the BAR’S BUGS trade mark on Arthur Omoto’s death, it was entitled to register the BAR’S BUGS trade mark in New Zealand in respect of new products it says it developed on the strength of the

security agreement. It is in the context of HOW telling BPI about that registration, that the first email was sent.

The 2017 events — a little more detail

[7]Mr Elliott KC, counsel for HOW, submitted the context was as follows.1

[8]                 On  1 March 2017,  Mr Humphries  of  BPI  emailed  Mr Wiles  of   HOW. Mr Elliott says that in the 2017 email, BPI reassured HOW that it intended to adhere to the security agreement saying:

I want to assure you we are still planning on making this plan happen with Bar’s Bugs. I have been bringing the family up to speed on the agreement we have made orally with Australia regarding the two issues: Expanding the Ranges and the rights to Bar’s Bugs transfer”.

[9]On 17 May 2017, Mr Wiles emailed Mr Humphries advising that HOW had:

filed trade mark applications for BAR’S BUGS in New Zealand and Australia covering an expanded product range on the basis that BPI had already promised to effect the BAR’S BUGS transfer.

[10]             Mr Elliott  says  that  advice  prompted   a   change   in   tone   from   BPI.  Mr Humphries replied on the same day (17 May 2017), advising Mr Wiles that he was concerned about what he described as the “unilateral move against BPI’s rights” in registering the trade marks but that he had instructed BPI’s counsel “not to take any defensive measures” to oppose the registration “as a show of our good faith to consummate the deal.”

[11]             On 26 May 2017, BPI’s counsel emailed Mr Wiles stating that “negotiations of the financial terms of the assignment were never consummated.”

[12]             On 9 June 2017, Mr Wiles responded to BPI’s counsel saying that HOW had made it:

… very clear to [BPI] that without the promise of security of ownership, [HOW] would not invest in the development of new products for the brand at all.

1      Ms Glover for BPI did not suggest there was other material communications at the time that should also be considered.

[13]Mr Wiles said that “[HOW] relied on the promise made …”.

[14]             On 15 July 2017, Mr Humphries told Mr Wiles that any communications regarding BAR’S BUGS trade marks were “void of any of the necessary contractual language” and that BPI “NEVER intend[ed] to negotiate its rights in the BAR’S BUGS trade mark.”   He said BPI  was “strongly considering” serving HOW with     a notice of breach and a demand to cure the unauthorised registration of the BAR’S BUGS trade mark “and taking it all off the table”.

[15] It is in reply to this last email of 15 July 2017, that Mr Wiles sent the first email dated 8 August 2017, identifying the passage referred to at [1] above. Mr Wiles again expressed surprise at the aggressive tone adopted by HOW. Mr Wiles’ email begins:

There is no big conspiracy here to undermine the Bar’s Leaks brand or BPI’s business. That is simply not in our best interest! Neither have we acted recklessly or covertly, we have sought specialised legal advice along the way, acted compassionately under the circumstances and made our request and intentions very clear both with Arthur and in recent time with you.

I note that the reference to “compassionately” is the triggering event of the death of Arthur Omoto.

[16]             Mr Wiles went on to say that BPI was still recorded as the owner of “NZ Trade Mark Registration No. 177390 BAR’S BUGS Logo in class 3” and that “[n]othing had changed there, other than we are now asking you to make good on the promises made” by the late Arthur Omoto that BPI would transfer the BAR’S BUGS trade mark to HOW as security for HOW’s investment in developing a new range of BAR’S BUGS products. Mr Wiles said:

We have done our part and developed those products. We have registered the BAR’S BUGS brand in relation to those new products and in classes associated with similar products as a defensive mechanism against trade mark predators.

[17]             There then appears the passage referred to in [1] above, “… we have sought legal advice on making sure we don’t do anything to undermine our current agreement.”

[18]             It is clear from the full context of the email that the “current agreement” is the one just referred to by Mr Wiles — the security agreement which Mr Wiles was calling upon BPI to honour.

[19]In the next paragraph of his email, Mr Wiles said:

In any event, due to the promises made and the fact we’ve altered our position by investing in a new range, we now have a legal right to have the old registration transferred to us.

[20] The second email, set out at [1] above, was sent by Mr Wiles to Robert Omoto (son of the late Arthur Omoto) of BPI on 17 May 2018. It is a reply to two emails from Robert Omoto — the first dated 4 March 2018 and the second, 21 April 2018.

[21]             In the 4 March 2018 email, Robert Omoto refers to Mr Wiles having sent “the 2014 communications”, which I take to be a reference to the security agreement, with Robert Omoto saying “At this time, we hold the position that terms were not satisfied”.

[22]             In the 21 April 2018 email, Robert Omoto says he “want[s] to follow up with our last communications” and says “As of current standing, the registration of the Bar’s Bugs mark is in violation.” He concludes “We are consulting with counsel regarding steps to enforce”.

[23]             Mr Wiles replies in a longer email dated 17 May 2018. He refers to the background to the security agreement and quotes some of the emails at the time with reference to an email from the late Arthur Omoto. Mr Wiles says to Robert Omoto:

… we again ask that you please honour this statement [your father] previously made in good faith so we can all move on without further legal involvement. Our advice is that BPI has either entered a binding agreement or is now subject to promissory estoppel and cannot resile from the agreed transfer of the Bar’s Bugs Trade Mark on Arthur[’s] passing, given the fact we have in good faith relied on the promise and altered our position based on it (by investing in developing the new products and buying a new factory to make them in).

Legal advice by a registered patent attorney: when is it privileged?

[24]             The legal advice in question was given to HOW by a registered patent attorney. Section 51(1) of the Evidence Act 2006 (the Act) includes a registered patent attorney within the definition of “legal advisor”.

[25]Section 54 of the Act provides:

54       Privilege for communications with legal advisers

(1)A person who requests or obtains professional  legal services from   a legal adviser has a privilege in respect of any communication between the person and the legal adviser if the communication was—

(a)intended to be confidential; and

(b)made in the course of and for the purpose of—

(i)the person requesting or obtaining professional legal services from the legal adviser; or

(ii)the legal adviser giving such services to the person.

…

(2)In this section, professional legal services  means, in the case of     a registered patent attorney or an overseas practitioner whose functions wholly or partly correspond to those of a registered patent attorney, requesting or obtaining or giving information or advice concerning intellectual property.

(3)In subsection (2), intellectual property means 1 or more of the following matters:

(a)literary, artistic, and scientific works, and copyright:

(b)performances of performing artists, phonograms, and broadcasts:

(c)inventions in all fields of human endeavour:

(d)scientific discoveries:

(e)geographical indications:

(f)patents, plant varieties, registered designs, registered and unregistered trade marks, service marks, commercial names and designations, and industrial designs:

(g)protection against unfair competition:

(h)circuit layouts and semiconductor chip products:

(i)confidential information:

(j)all other rights resulting from intellectual activity in the industrial, scientific, literary, or artistic fields.

[26] Ms Glover submitted the emails in question do not attract s 54 privilege as the nature of the advice, suggested by the extracts from the emails set out at [1] above, is

that it did not relate to HOW’s intellectual property. Ms Glover submitted that advice given by patent attorneys enjoys a more limited scope of protection than general legal advice privilege.

[27]             Ms Glover submitted that it does not follow from the mere fact that the underlying subject matter of the alleged contract or estoppel was a trade mark that the legal/equitable advice “concerned” intellectual property. Ms Glover submitted the advice concerned the existence and/or enforceability of the Security Agreement or the alleged estoppel, not intellectual property.

[28]             Ms Glover submitted the distinction is important when considering the underlying purpose of the privilege. She submitted the privilege conferred in s 54 of the Act is in recognition of patent attorneys’ specific area of expertise. She submitted that expertise is the subject matter of the intellectual property itself as opposed to broader concepts such as contract law and estoppel. She submitted that unless they also happen to be solicitors, patent attorneys will not have had legal training in such matters.

Discussion

[29]             In order for advice given by a patent attorney to be “professional legal services” it must be advice concerning intellectual property.2 As set out above, intellectual property is widely defined. It includes in s 54(3)(f) “registered and unregistered trade marks”. The dispute here concerns trade marks. In order to determine if the advice concerned the trade marks in issue (the BAR’S BUGS mark), it is necessary to examine what was involved in giving advice about trade mark registration.

[30]             “Concerning” is a wide term that can encompass matters incidental or ancillary to the other matters that make up the definition of “intellectual property”.

2      Evidence Act 2006, s 54(2).

[31]             In the context of a trust dispute, “concerning” was held to be synonymous with affecting.3 “Concern” is defined in the Oxford English Dictionary online edition as: “To refer or relate to; to be about.”.

[32]             How then are the words “advice concerning intellectual property” to be approached?4

[33]             Kόs J in Red Bull GmbH v Manhaas Industries Ltd said in the context of      a challenge to legal advice privilege by a patent attorney:5

[39] … It is in the interests of an ordered society that people may obtain legal advice (including from a patent attorney — that is expressly provided for in s 54) so they may understand their rights, and act accordingly, without fear that what they say to the lawyer, and what the lawyer says to them, will then be served up on a plate in litigation disclosure. It is a rule of common efficiency as much as it is a rule protecting individual civil rights. Society should be better ordered, with less disruption by unlawful acts, if such advice is able to be taken and the participants in the advisory process are to be candid with one another.

[34]             Mr Elliott submitted that the advice in issue was requested for the purpose of ascertaining the correctness of HOW registering the trade marks pursuant to the Security Contract. The first email has the subject line “Re: Moving forward/TM registration issue” and it refers to trade mark issues on several occasions.

[35]             The second email had attachments for assignments of the trade marks in Australia and New Zealand held by BPI and referred to BPI’s stance, that suggested HOW was “in violation on registering a trade mark on a new product range” and referred to HOW’s position that BPI could not resile from the “agreed transfer of the BAR’s BUGS Trade Mark on Arthur’s passing…”.

[36]             Is the patent attorney’s advice to HOW on whether it could register the challenged trade marks, that is whether HOW had sufficient interest to register the trade mark advice “concerning intellectual property”? I am satisfied that it was.

3      Boscawen v Wyndham [1921] 1 Ch. 257 at 267.

4      Evidence Act, s 54(2).

5      Red Bull GmbH v Manhaas Industries Ltd HC Wellington CIV-2010-485-1866, 29 July 2011.

[37]Section 32 of the Trade Marks Act 2002 provides:

(1)A person claiming to be the owner of a trade mark or series of trade marks may, on payment of the prescribed fee (if any), apply in the prescribed manner (if any) for the registration of the trade mark or series of trade marks used or proposed to be used …

[38]As noted by the learned authors of Intellectual Property Law in New Zealand:6

In Chettleburgh [v Seduce Group Australia Pty Ltd], Woodhouse J held at [33] that a claim to ownership under s 32(1) is not just a formal requirement that could be met by a statement in a trade mark application that the person filing the application asserts to be the owner, without further inquiry to the merits of such a claim. Rather, a claim to ownership must be one of substance that can be objectively established as valid. Thus, it is not sufficient if the applicant subjectively and genuinely believes that it can validly claim to be the owner.

[39]             Whether a patent attorney can properly register a trade mark for a client is     a matter that concerns the trade mark. A person seeking advice on whether they can register a trade mark can expect their patent attorney to explore with them the basis upon which they claim to be an owner. “Ownership” can be established in a number of ways,7 but nonetheless, it is a requirement to be satisfied before a registration application can be made. In my view, a responsible registered patent attorney will address this issue with their client, and in doing so, give advice concerning how ownership is claimed by their client in order to be satisfied a registration application can properly be made.

[40]             Looked at in another way, a registered patent attorney would fail their client in not addressing the central requirement of s 32 of the Trade Marks Act 2002 and expose their client to challenge if they did not address the ownership requirement with their client.

[41]             It follows I am satisfied that advice concerning the ownership of a trade mark is advice concerning intellectual property.

6      Intellectual Property Law (online ed, LexisNexis) at [TM32.5], citing Chettleburgh v Seduce Group Australia Pty Ltd NZHC 2563, (2012) 98 IPR 306.

7      Ian Finch (ed) James and Wells Intellectual Property Law in New Zealand (3rd ed, Thomson Reuters, Wellington, 2017) at [7.4.1(2)]

Does the advice in question here concern ownership?

[42]             Ms Glover submitted that where the email of 8 August 2017 refers to “our current agreement” it is referring to the licence agreement.

[43] As addressed at [18] above, the context of the 8 August 2017 email shows that it was not the licence agreement being referred to. The context shows the “current agreement” is the security agreement.

[44]             HOW’s email of 8 August 2017 was in reply to an assertion by BPI that HOW had no concluded rights to BAR’S BUGS trade mark, and HOW’s registration was unlawful. In context, the advice HOW referred to concerned whether it was entitled to register BAR’S BUGS trade mark, being advice I find concerned a trade mark including ownership.

[45]             As to the second email of 17 May 2018, the reference to “a binding agreement” or “to promissory estoppel” again does not relate to the licence agreement dating from 1979 but to the security agreement of 20 November 2014 which HOW was asserting gave it the right to register the trade mark. Facing a threat from BPI to enforce its rights, that is to challenge HOW’s trade mark registration advice that the registration was justified is a matter concerning a trade mark including ownership.

[46]             Accordingly, I am satisfied that both emails concerned advice as to the ownership of the trade mark, and therefore was advice concerning intellectual property and is privileged.

Litigation privilege

[47]             Having held that the emails referred to in [1] above are protected by legal advice privilege, I comment only briefly about litigation privilege.

[48]             I have my doubts as to whether litigation privilege applies. The current litigation was not commenced until February 2022, nearly four years after the last email. While there is what might be called some testiness in the correspondence, there

is also a conciliatory tone running through the correspondence. Both parties were asserting their respective positions, but litigation was not imminent.

Has privilege been waived?

[49]Sections 65(2) and 65(3)(a) of the Act provide:

(2)A person who has a privilege waives the privilege if that person, or anyone with the authority of that person, voluntarily produces or discloses, or consents to the production or disclosure of, any significant part of the privileged communication, information, opinion, or document in circumstances that are inconsistent with      a claim of confidentiality.

(3)A person who has a privilege waives the privilege if the person—

(a)acts so as to put the privileged communication, information, opinion, or document in issue in a proceeding; or

…

[50]Ms Glover relies on s 65(2) of the Act.

[51]             Whether a significant part of a privileged communication has been disclosed depends on the substance rather  than  the  quantity  of  what  is  being  disclosed.  Ms Glover submitted:

The test to be applied is whether in all the circumstances the conduct is inconsistent with maintaining the confidentiality of the privileged material if the privilege is upheld.8 The issue is one of fairness: is it unfair to allow the discloser to prevent the other party from checking whether the document says what is claimed. The claimant cannot have the benefit of reliance upon the substance of the advice and still seek to shield that advice from disclosure to the other side.

[52]             I   accept   Mr Elliott’s   submission   relying   on    Body    Corporate  207624 v Grimshaw & Co that “mere reference to the contents of [an] opinion is insufficient to waive privilege”.9

[53]             The high point is that HOW’s emails summarised the legal advice at the highest of levels — in short, HOW asserted it had a legal right to the BAR’S BUGS trade

8      Ophthalmological Society of New Zealand Inc v Commerce Commission  [2003] 2 NZLR 145 at [30].

9      Body Corporate 207624 v Grimshaw & Co [2022] NZHC 1315 at [21] and [26].

mark based on advice, or that the security agreement was binding or an estoppel had arisen.

[54]             As noted, s 65(3) of the Act is not relied on by Ms Glover. Had s 65(3)(a) been relied on, I would have accepted Mr Elliott’s submission as follows:

31.  The first document,  HOW.00333, simply notes that HOW did seek  legal advice, without in any way commenting on the specific nature of that advice. That is the complete opposite of relying on the content of the advice. The second document, BPI.0816, simply asserts that HOW believes it has     a strong legal case. This is not in any respect unusual and does not waive privilege.  For  example,  in  Cory-Wright  &   Salmon   Ltd  (in  rec   and  liq) v KPMG Peat Warwick, the High Court was asked to consider whether privilege over legal advice had been waived due to the inclusion in the notice of opposition of the statement “[t]he proceeding is brought bona fide by the second plaintiff having received advice form counsel.”10 Gallen J held that there is “nothing intrinsically unfair in saying ‘I have brought these proceedings because I have obtained legal advice to support such action’.

That must apply in almost every case.11

[55]             Mr Wiles said in the first email, HOW had sought legal advice to make sure HOW did not do anything “to undermine our current agreement”. The email does not refer to what that legal advice was, just that it had been taken — by implication the conclusion of that advice was that HOW’s actions were consistent with the security agreement.

[56]             The 17 May 2018 email repeats HOW’s advice that BPI had entered into a binding agreement or was estopped. The email therefore repeats the conclusion of that advice, but how that opinion was reached is absent from the email.

[57]            I note Rodney Hansen J in Bete Fog Nozzle Inc v Delavan Ltd, commented it was at least arguable that the reference to bare conclusion reached in a legal opinion is a significant part of that advice, even though nothing is said about the reasoning.12 His   Honour   also   referred   to   Ophthalmological   Society   of   New Zealand   Inc v Commerce Commission.

10   Cory-Wright and Salmon Ltd (in receivership and liquidation) v KPMG Peat Marwick  (1992)    5 PRNZ 518, approved by the Court of Appeal in  Ophthalmological Society of New Zealand  Inc v Commerce Commission, above n 8 at [27].

11 At 522.

12 Bete Fog Nozzle Inc v Delavan Ltd (2008) 19 PRNZ 439 at [23].

[58]             The test is whether HOW’s reference to its legal advice is so inconsistent with maintaining the confidentiality of that privileged material that it could lead to injustice if the privilege is upheld.13

[59]             Here, the legal advice referred to reflects the very issues the Court in the substantive hearing will have to determine, that is whether the Security Agreement  is binding or whether BPI is estopped from denying that the Security Agreement is binding. That determination will be made on the strength of the evidence and legal arguments advanced at trial. BPI did not, and does not, accept the legal conclusion summarised in the 17 May 2018 email. BPI has done nothing in reliance on that opinion. As I have said, BPI rejected it.

[60] I can see no detriment to BPI in the privilege being maintained. In other words, I do not see HOW’s reference to the legal advice (such as it is in the 8 August 2017 email) is inconsistent with HOW maintaining privilege. Again, legal proceedings did not eventuate for nearly four years after the 17 May 2018 email. The importance of privilege noted at [33] above and the absence of any identified unfairness to BPI from privilege being maintained, means I am satisfied that no waiver of privilege has occurred by HOW, particularly in the 17 May 2018 email, referring to the conclusion of the advice received.

[61]             Accordingly, BPI’s challenge to the existence of privilege and its claim that privilege, if established, was waived, is dismissed.

Costs

[62]             HOW is entitled to costs on a 2B basis together with disbursements as fixed by the Registrar in relation to the application.

13     Ophthalmological Society of New Zealand Inc v Commerce Commission, above n 8 at [38].

[63]            I add that the judgment of 18 July 202514 is hereby recalled and will not be reissued.

Associate Judge Lester

Solicitors:

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

Copy to counsel:

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

14     HOW Solutions Ltd v BAR’s Products International Ltd [2025] NZHC 1998.