Tasman Insulation New Zealand Limited v Knauf Insulation Limited

[2014] NZHC 2239

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2011-404-8141 [2013] NZHC 2239

UNDER

The Trade Marks Act 2002

IN THE MATTER OF

Infringement of New Zealand trade mark registration number 105507

BETWEEN

TASMAN INSULATION NEW ZEALAND LIMITED

Plaintiff

AND

KNAUF INSULATION LIMITED First Defendant

AND

ECO INSULATION LIMITED Second Defendant

AND

BUILDFORENXTGEN LIMITED Third Defendant

Conference:	29 August 2013
Counsel:	J G Miles QC and K W McLeod for the Plaintiff C L Elliott QC and J A Hazel for the Defendants
Judgment:	30 August 2013

JUDGMENT OF BROWN J

[On defendants’ application for adjournment of fixture]

This judgment was delivered by me on 30 August 2013 at 11 am, pursuant to r 11.5 of the High Court Rules

Registrar/Deputy Registrar

Solicitors:      A J Park, Auckland

James & Wells Solicitors, Auckland

Counsel:       J G Miles QC, Auckland

C L Elliott QC, Auckland

TASMAN INSULATION NZ LTD v KNAUF INSULATION LTD [2013] NZHC 2239 [30 August 2013]

[1]      On 28 August 2013 a memorandum of the defendants was received by the

Court seeking an adjournment of the trial scheduled to commence next Monday

2 September 2013.   Without  wishing to  understate the defendants’ concerns the thrust of the memorandum was that their preparations had been seriously compromised by not only the late provision of the plaintiff’s survey evidence but also receipt of other late evidence and difficulties arising from the plaintiff ’s alleged on-going failure to discover relevant documents.

[2]      The defendants stated that they do not wish to have an adjournment but that, having done everything practicable and reasonable under the circumstances in an effort to retain the fixture, they find themselves in a position where it was simply untenable for them to proceed.

[3]      A memorandum from the plaintiff dated 28 August 2013 in response rejected the defendants’ criticisms and suggested that the defendants’ difficulties were simply the result of the fact that they had taken no steps to retain a survey expert for some considerable time after becoming aware of the plaintiff’s proposed evidence on 12

June 2013.   A further memorandum for the defendants received by the Court on Thursday 29 August both responded to the plaintiff’s memorandum and also explained  in  some  detail  the  nature  of  the  further  documentation  which  the defendants had been seeking from the plaintiff concerning the survey data.

[4]      A telephone conference was convened at 9.15 am on Thursday 29 August where the parties’ positions were briefly canvassed and the permutations of outcome identified.   I indicated that I would hear counsel in person on the adjournment application at 3.45 pm on Thursday 29 August.

[5]      In preparation for the argument and in response to my request counsel for both sides prepared schedules which reviewed the chronology of events since the issues conference, listed the several briefs served to date and the dates of service and explained the relevance of the further information sought for the various causes of action.

[6]      Mr Elliott QC referred in some detail to the survey data material which had only been provided by the plaintiff that Thursday afternoon, namely the “unmassaged” raw survey data and the data dictionary.   He explained that the defendants wish to analyse the raw data in order to ascertain, for example, whether the presentation of the five images in the BATTS internal survey was the subject of random re-ordering.  His concern was that it may take the defendants’ market survey expert several days to analyse this material, particularly the material relating to the BATTS survey which he said was vital for both the plaintiff’s and the defendants’ case on the genericism counter-claim.

[7]     He also suggested that the plaintiff must have in its possession more documentation relating to the surveys, particularly in relation to the design and objectives of the surveys.

[8]      Mr Miles QC was dismissive of how long it was suggested would be required to analyse the recently provided raw data but said that the defendants’ difficulties were of their own making, they having failed to engage a market survey expert after disclosure of the summary of the survey results in the ‘without prejudice’ communications in June which were traversed in my judgment of 23 August 2013. He contended that the defendants were simply under-prepared but that that was no justification to grant a late adjournment.

[9]      In  reply  Mr  Elliott  agreed  that  the  defendants  were  under-prepared  but explained that the reason for that was the ambush at the last minute by the release of the market survey evidence from the plaintiff’s prior claim of legal professional privilege.

[10]     It is apparent to me from my experience of this litigation already, in particular the issues conference on 30 July and the hearing as to the admissibility of survey evidence on 21 August, that the parties have a good understanding of the issues in dispute and those issues have not changed.   Nor is this a case where witnesses or counsel have suddenly become unavailable although it is only fair to acknowledge that, as I understand it, both senior counsel, and in particular Mr Elliott, have only comparatively recently become engaged in the matter.

[11]     I   appreciate   that   the   defendants   find   themselves   under   some   not inconsiderable pressure in considering their response to the market survey evidence which the plaintiff has deployed in its briefs of evidence.  However for the reasons recorded in my judgment of 23 August 2013 they were alerted to  the fact and summary conclusions of that survey evidence as long ago as June 2013.  There is some validity in Mr Miles’ point that the adjournment application is to some extent an attempt to relitigate the issues argued last week.

[12]     So far as further discoverable documentation is concerned, as I understand it, the plaintiff says that there is none.  In those circumstances I suggested to Mr Elliott that an adjournment of the trial was unlikely to advance that matter but that the only practical course was for him to pursue that question with the plaintiff’s witnesses in cross-examination.  If it transpires that there is relevant documentation which has not been discovered then, as I have previously indicated, the admissibility of the survey evidence may very well be imperilled.

[13]     I consider that the trial should proceed.  However the Court is in a position to provide some accommodation to the defendants by postponing the commencement of the trial for one week until 9 September 2013.  That course becomes available by utilising for the third week of the trial a week which had been allocated for judgment writing purposes.

[14]     While an extension of one week may not provide a perfect solution for the defendants, I consider that, given that the plaintiff will commence the trial with its opening and factual evidence and that, as Mr Miles indicated, any market survey evidence would not be led until late in the week of 9 September at the earliest, the defendants should have a reasonable additional amount of time in which to complete their trial preparations.

[15]     The proceeding was launched in December 2011.   Indeed it was in fact preceded by the defendants’ originating application for revocation of Trade Mark No 105507 (which was consolidated with this proceeding by the order of Potter J on

3 February 2012).   If the hearing was to be adjourned now and the 2 September

fixture vacated there is a real prospect that the matter may not be eligible for a further fixture until 2015.

[16]     Furthermore while the interests  of the parties are  obviously important,  a number of cases have recognised the fact of the public interest in connection with the state of the Trade Marks Register which can be relevant to the way in which such litigation is conducted.1   There is also an element of public interest in ensuring that allegations of contravention of the Fair Trading Act are heard and disposed of with reasonable despatch.

[17]     Having taken into account the full history of this matter, the nature of the case, the amount of effort that has already been expended in preparation and my perception of the states of preparedness of the parties I consider that the just course is  to  decline  the  adjournment  application  (that  granting  of  which  would  mean vacating the fixture) but to postpone the commencement of the trial for one week. While from the defendants’ position (and no doubt the plaintiff’s as well) this may not be the perfect solution I consider that it is the fair outcome in all the circumstances.

[18]     The fixture is postponed to commence on Monday 9 September 2013.  The

plaintiff’s opening address and chronology is to be served by 5 pm on Wednesday

4 September  2013.     I  do  not  make  any  specific  timetable  directions  for  the completion of outstanding briefs of evidence but I request the parties to complete and serve these at the earliest possible date.

[19]     I understand that preparation of the common bundle has been completed by the plaintiff.  If the common bundle has not yet been served on the defendants then it is to be served on Friday 30 August 2013.

[20]     Finally I record that the parties are willing, in the interests of expediting the hearing, for the Court to have access to the briefs and common bundle in advance of

1      Pioneer Hi-Bred Corn Company v Hy-Line Chicks Ltd [1978] 2 NZLR 50; Daimler AG v SANY Group Co Ltd HC Wellington CIV-2008-485-2333, 22 April 2009 at [6].

the hearing.  I would appreciate receiving those if possible by Tuesday 3 September

2013.

[21]     Costs are reserved.

Brown J