NSK Ltd v General Equipment Co Ltd - [2015] NZHC 1979

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2014-404-1899 [2015] NZHC 1979

BETWEEN
NSK LIMITED

First Plaintiff

NSK NEW ZEALAND LIMITED Second Plaintiff

AND

GENERAL EQUIPMENT CO LIMITED Defendant

Hearing: 23 July 2015

Appearances:

Mr Z Kennedy and Ms H Jaques for Plaintiffs
Mr Elliott QC and Ms Neville for Defendant

Judgment:

20 August 2015

JUDGMENT OF ASSOCIATE JUDGE J P DOOGUE

This judgment was delivered by me on
20.08.15 at 4 pm, pursuant to

Rule 11.5 of the High Court Rules.

Registrar/Deputy Registrar

Date……………

NSK LIMITED & ANOR v GENERAL EQUIPMENT CO LIMITED [2015] NZHC 1979 [20 August 2015]

Table of Contents

Introduction ................................................................................................................ 3

Background................................................................................................................. 3

Plaintiffs’ applications ............................................................................................... 5

Issues ............................................................................................................................ 5

Principles..................................................................................................................... 7

Analysis of plaintiffs’ application ........................................................................... 10

Category one: emails from GE’s overseas-based suppliers ................................... 10

Category two: missing supplier invoices ............................................................... 12

Category three: customer names and details in invoices to its customers............. 14

Defendant’s applications.......................................................................................... 17

Background ................................................................................................................ 17

Analysis of defendant’s application ........................................................................ 21

Conclusions on category one ................................................................................. 25

Category two: exchanges between the plaintiffs and the WBA .............................. 28

Submissions on the privilege point............................................................................. 29

Discussion on privilege point..................................................................................... 30

Conclusions ............................................................................................................... 35

Costs .......................................................................................................................... 36

Introduction

[1] The first plaintiff, NSK Ltd, is a large multi-national company based in Japan that manufactures and distributes various ball and roller bearings for use across a broad range of industries. The second plaintiff, NSK New Zealand Ltd, is a related entity of the first plaintiff that imports and distributes NSK-manufactured and branded bearings. I shall refer to the plaintiffs as “NSK”.

[2] The defendant, General Equipment Co Ltd (“GE”), is an Auckland-based company that imports and distributes various industrial products, including ball and roller bearings, from overseas suppliers.

[3] The plaintiffs’ position is that at various times, including from 10 July 2009 to 4 October 2012, the defendant purchased and imported counterfeit NSK-branded ball and roller bearings. This, the plaintiffs say, infringes NSK registered trademarks, breaches the Fair Trading Act 1986 and constitutes the tort of passing off. As well, the plaintiffs’ case is that the defendant misrepresented to its customers that the bearings were genuine, NSK-manufactured bearings.

[4] The defendant denies any wrongdoing.

[5] The parties have each brought applications pursuant to the High Court Rules

(Rules) seeking orders that the other provide particular discovery.

Background

[6] The plaintiffs allege the defendant’s suppliers include, but are not limited to, entities known as XRT-Sinda Development Ltd (“XRT”) and Barton Bearings Ltd (“Barton”).

[7] The plaintiffs say that, at this point, they are unable to particularise every GE customer which may have purchased the counterfeit bearings but that NSK only knows the names of two of GE’s customers to whom the defendant sold counterfeit

bearings, namely Travel Motors Direct Ltd (Travel Motors) and Donovans Trade

Supplies 2005 Ltd (“Donovans”).

[8] The plaintiffs say that the defendant imported approximately 2650 of the alleged counterfeit bearings, of which some 2469 have been sold. This is consistent…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read NSK Ltd v General Equipment Co Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2015] NZHC 1979
Decision Date: 20 August 2015

CaseChat Overview and Summary

- Parties:
The parties involved in the case are NSK Limited, NSK New Zealand Limited, and General Equipment Co Ltd.

- Nature of the dispute:
The dispute revolves around allegations of trademark infringement, passing off, and misrepresentation of counterfeit NSK-branded ball and roller bearings by General Equipment Co Ltd. NSK Limited and NSK New Zealand Limited are seeking damages for the alleged infringement of their trademarks, passing off, and misrepresentation.

- Court:
The case is being heard in the High Court of New Zealand, Auckland Registry.

- Legal issues:
The legal issues in the case include the extent to which General Equipment Co Ltd imported and sold counterfeit NSK-branded ball and roller bearings, whether the defendant misrepresented that counterfeit bearings were genuine, and the proper value of NSK's claim.

- Court's reasoning and outcome:
The court declined to make an order for particular discovery in relation to the first category of documents sought by the plaintiffs, which included emails from General Equipment Co Ltd's overseas-based suppliers. The court found that the plaintiffs' pleading did not set out distinct causes of action founded on separate and distinct facts, and that the plaintiffs were essentially fishing for documents.

The court dismissed the application in relation to the second category of documents, which included invoices from suppliers to General Equipment Co Ltd for NSK-labelled product. The court found that the defendant was required to give discovery of documents that related to the dates and suppliers mentioned in the plaintiffs' pleading.

The court dismissed the application in relation to the third category of documents, which included customer names and details in invoices from General Equipment Co Ltd to its customers. The court found that the information sought did not possess the degree of relevance required for discovery under a standard discovery order.

The court dismissed the application in relation to the fourth category of documents, which related to the redaction of customer names in the defendant's list of documents. The court found that there was no basis for concluding that the defendant had not given the required level of discovery relating to the documents in question.

- Final orders:
The court did not make any specific final orders in the judgment provided. The parties were expected to agree on the matter of costs, and if they could not, they were instructed to file memorandums within 10 days for a hearing to resolve the issue.

Orders