Zespri Group Limited v Baker PVR Limited

[2025] NZHC 496

IN THE HIGH COURT OF NEW ZEALAND TAURANGA REGISTRY

I TE KŌTI MATUA O AOTEAROA TAURANGA MOANA ROHE

CIV-2024-470-000191

[2025] NZHC 496

UNDER

Parts 7 and 19 of the High Court Rules 2016 and the inherent jurisdiction of the Court

IN THE MATTER OF

An application for an order by ZESPRI GROUP LIMITED that certain information held by BAKER PVR LIMITED and RUSSELL ARTHUR BAKER be disclosed to it under the jurisdiction of the Court

BETWEEN

ZESPRI GROUP LIMITED

Applicant

AND

BAKER PVR LIMITED

First Respondent

RUSSELL ARTHUR BAKER

Second Respondent

Hearing:	4 February 2025
Appearances:	G F Arthur KC, L C Sizer and Z P Sinclair for Applicant C Elliott KC and J Calvert for Respondents
Judgment:	14 March 2025

JUDGMENT OF ANDREW J

This judgment was delivered by Justice Andrew on 14 March 2025 at 2.00 pm

pursuant to r 11.5 of the High Court Rules 2016 Registrar / Deputy Registrar

Date ……………………………………

ZESPRI GROUP LTD v BAKER PVR LTD [2025] NZHC 496 [14 March 2025]

Introduction

[1]    The applicant, Zespri Group Ltd (Zespri), is a “single desk”1 exporter of kiwifruit from New Zealand (other than to Australia) under the Kiwifruit Industry Restructuring Act 1999 and Kiwifruit Export Regulations 1999.

[2]The respondents operate a small kiwifruit breeding programme in Te Puke.2

[3]    Zespri seeks urgent Norwich Pharmacal orders (NPOs) requiring the respondents to disclose the identity and details of third parties said to be infringing Zespri’s plant variety rights (PVR) in its golden kiwifruit variety Zesy002 (known as Gold3 or G3). It also seeks information and documents from the respondents relevant to the supplies from the respondents to the third parties.

[4]    This Court’s equitable jurisdiction, as recognised in Norwich Pharmacal Co v Customs and Excise Commissioners,3 allows a prospective claimant to obtain information to seek redress for an arguable wrong. Zespri says that a kiwifruit variety bred by the respondents and called “E2” is in fact G3 or indistinct from it. Zespri seeks information in relation to E2 to  aid  potential  legal  proceedings  in  both  New Zealand and other jurisdictions.

[5]    In May 2021, the first respondent, Baker PVR Ltd, applied for a PVR grant for E2. That application is still pending.

[6] In opposing the orders sought, the respondents deny involvement in any wrongdoing. They say they are exercising legitimate breeding rights under the Plant Variety Rights Act 1987 (the PVR Act 1987).4 They also challenge the jurisdiction of the Court to make the orders sough

1      Also known as Single Point of Entry.

2      In a joint memorandum dated 21 February 2025 (i.e. subsequent to the hearing), the parties advise that Mr Russell Baker, the first respondent, passed away on 12 February 2025. In that joint memorandum, the parties acknowledge that under r 4.49 of the High Court Rules 2016 a proceeding does not come to an  end by reason of the death of a party.   However, in light of    Mr Baker’s passing, the parties respectfully propose that if the Court is minded to issue relief, that relief is issued against the first defendant, Baker PVR, only.

3      Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133 (HL).

4      The Plant Variety Rights Act 1987 was replaced by the Plant Variety Rights Act 2022.

[7]    The respondents further contend there is no urgency or exceptional circumstances justifying the extraordinary remedies sought; the application is an abuse of process because it undermines the statutory PVR grant process; Zespri’s substantive claim is a weak one and the overall balance of convenience/interests of justice clearly favour the dismissal of Zespri’s application.

Factual background

[8]    In  2009,  Zespri’s   G3  PVR  application  was   filed.    It  was  granted  on   6 September 2016. Zespri has equivalent PVR rights granted in many countries. Those countries have PVR laws generally equivalent to the PVR Act 1987 or the Plant Variety Rights Act 2022 (PVR Act 2022).

[9]    G3 is a valuable and successful golden kiwifruit variety. In the last financial year, it contributed $90.4 million to Zespri’s revenue from New Zealand fruit sales and $207.5 million from licensing fees.

[10]   Mr Russell Baker, the second respondent, says that he cultivated the E2 variety during the period 2012–2014.

[11]   In December 2019, Mr Baker emailed Zespri about a new plant variety he said he had produced which had “some similar characteristics to G3”.

[12]   In March 2020, employees of Zespri visited Mr Baker’s property and observed selections of E2.  At that time, E2 was referred  to as Clone E and a G3 seedling.   Mr Baker told the Zespri employees that he had exported E2 to South Africa to potentially license it to South African growers (although the seedling was still in quarantine at that time).

[13]   Later in 2020, Zespri and Mr Baker exchanged email correspondence about evaluating Mr Baker’s plant variety. Mr Baker acknowledged that “[s]ome aspects of the evolution of ‘E2’ from the mother ‘E1’ are  a little strange”.  Zespri  informed  Mr Baker that the most likely explanation for this was a budwood mix-up.

[14]   In May 2021, the first respondent, Baker PVR Ltd, filed its PVR application for E2. It claimed that E2 had been bred by “open pollination of G3”, with the “seed extracted from G3 fruit and germinated” and that E2 had been “raised from seed”. The characteristics of E2 listed in the application included “low number of side flowers (doubles and trebles)”. Under the heading “Similar varieties and differences from these varieties”, the application referred to G3. It also noted that the harvest maturity was “2–3 weeks before G3”.

[15]   In September 2021, Mr Baker emailed the Plants Variety Commissioner (the PVR Commissioner) to amend Baker PVR’s application. Mr Baker claimed that E2 was a mutation or sport of E1.

[16]   In December 2021, employees of Zespri visited Mr Baker’s property to discuss a potential evaluation of Mr Baker’s cultivars, including E2. During this visit, the Zespri employees say that they observed E2 and E1 and noted that E2 looked very similar to G3. On that occasion, Mr Baker told the Zespri employees he was talking to a range of people about “E2’s commercial potential” and was also getting the E2 cultivar to offshore sites for testing because he was “looking to sell offshore rights.” Mr Baker also provided Zespri with one fruit sample from each E2 and E1.

[17]   In January 2022, Zespri made an Official Information Act request to the PVR Commissioner for the breeding information in Baker PVR’s PVR application about the genetic percentage of E2. Mr Baker consented to Zespri being provided with the information.

[18]   In January 2022, Zespri couriered the fruit samples of E2 and E1 to the    New Zealand Institute for Plant and Food Research (PFR) for DNA testing.

[19]   On 27 January 2022, employees of Zespri again visited Mr Baker’s property with a view to further discussing trialling E2 in another cultivar. Zespri again raised its concern with Mr Baker that there had been a budwood mix-up and that E2 was G3. This was denied by Mr Baker. Mr Baker agreed to provide Zespri with further samples for DNA testing. He told Zespri that he was in discussions with an “overseas cultivar company” which was looking to commercialise E2 outside of New Zealand and China.

[20]   In March 2022, PFR provided Zespri with the preliminary results of the E1 and E2 DNA fingerprinting tests. The tests suggested that E1 was different to E2 and that E1 was also different to G3. The preliminary results also concluded that it was more likely that E2 was derived from G3 than E1.

[21]   In August 2022, Mr Baker emailed Zespri and said that he had discussed E2 with his business partners and it “was decided that E2 should just follow the DUS [distinct uniform stable] process of the PVR application in respect of it and we should not involve any third parties in the interim.” Mr Baker advised that this meant he would not provide Zespri samples for further DNA testing.

[22]   In May 2024, Zespri became aware that E2 fruit were being exported and made available for sale in the Sydney wholesale market in Australia. Zespri subsequently arranged for the purchase of E2 fruit from the Sydney markets. It also arranged for E2’s DNA to be extracted from the fruit and then provided to PFR for testing.

[23]   In mid-2024, Zespri says that it received reports of E2 plant material being sold to growers in other overseas jurisdictions.

[24]   Also in May 2024, Zespri raised an objection with the PVR Commissioner to Baker PVR’s PVR application on the basis that Zespri had doubts that E2 was distinct from G3 and doubts as to E2’s parentage.

[25]   In June 2024, E2 completed its first year of DUS testing as part of the PVR application process.

[26]   In August 2024, an employee from Zespri met Mr Baker to discuss G3 and the development of E2. Mr Baker said he was not “keen” for Zespri to take any plant material for DNA testing and said that Zespri should await the outcome of Baker PVR’s application.

[27]   In September 2024, employees of Zespri again met with Mr Baker. Mr Baker confirmed that he had sold E2 into Australia as a sales trial. When asked about whether

he had exported E2 to other countries or licensed it anywhere else he said he would “prefer not to answer”.

[28]   In September 2024, PFR finalised its DNA test results using the Australian E2 fruit sample. The report concluded that E2 was highly likely to be G3.

[29]In October 2024, Zespri commenced these proceedings.

[30]   In November 2024, Mr Baker emailed the New Zealand PVR office to state that the open pollination of the G3 mother plant of the E seed was uncertain.

[31]   Later in November 2024, Mr Baker provided undertakings to Zespri that the respondents would not commercialise E2 in New Zealand until the PVR application was determined and that they would use reasonable endeavours to facilitate the provision of appropriate undertakings from Baker PVR’s associates overseas.

[32]   Zespri says that in November 2024, and upon receipt of Mr Baker’s affidavit, it came to learn that the respondents had engaged a Netherlands incorporated company, KiwiKo BV (KiwiKo) (which has both South African and New Zealand-based directors) to manage E2. Mr Baker’s affidavit also confirms that E2 is now present in eight different jurisdictions: New Zealand, Australia, South Africa, the United States, the European Union, South Korea, Japan, and Chile. Zespri has PVR rights for G3 in each of those jurisdictions apart from Chile.

Legal principles — Norwich Pharmacal orders

[33]The scope of the disclosure order sought was described by Lord Reid in

Norwich Pharmacal as follows:5

… if through no fault of his own a person gets mixed up in the tortious acts of others so as to facilitate their wrongdoing he may incur no personal liability but he comes under a duty to assist the person who has been wronged by giving him full information and disclosing the identity of the wrongdoers. I do not think that it matters whether he became so mixed up by voluntary action on his part or because it was his duty to do what he did. It may be that if this causes him expense the person seeking the information ought to reimburse

5      Norwich Pharmacal Co v Customs and Excise Commissioners, above n 3.

him. But justice requires that he should co-operate in righting the wrong if he unwittingly facilitated its perpetration.

[34]The conditions for the grant of an NPO have been summarised as follows:6

(a)Arguable wrong condition: the applicant has to demonstrate a good arguable case that a form of legally recognised wrong (no longer confined only to tort)7 has been committed against them by a person.

(b)Mixed up in condition: the respondent to the applicant must be mixed up in the wrongful activities so as to have facilitated the wrongdoing.

(c)Possession condition: the respondent to the application must be able, or likely to be able, to provide the information or documents necessary to enable the ultimate wrongdoer to be pursued.

(d)Overall justice condition: requiring disclosure from the respondent is an appropriate and proportionate response in all the circumstances of the case, bearing in mind the exceptional but flexible nature of the jurisdiction.

[35]   The jurisdiction is discretionary and flexible8 and an order must be necessary and proportionate in all the circumstances.9 The essential purpose of the remedy is to do justice and a broad range of factors may be relevant.10

6      Collier v Bennett [2020] EWHC 1884, [2020] 4 WLR 116 at [35], cited with approved in Stanford Asset Holdings Ltd v Affrasa Bank Ltd [2023] UKPC 35, [2024] 1 WLR 1118 at [36]; see also John Katz “Norwich Pharmacal orders in aid of pursuing property rights and other remedies – a An update” (2021) 9 NZIPJ 189 at 191–192.

7      Taua v Tahi Enterprises Ltd [2020] NZCA 639 at [55]; P v T Ltd [1997] 4 All ER 200 at 1318; and

Carlton Film Distributors v VCI Plc [2003] EWHC 616, [2003] FSR 47 at [16].

8      Rugby Football Union v Consolidated Information Services Ltd [2012] UKSC 55, [2012] 1 WLR 3333 at [15].

9      Rugby Football Union v Consolidated Information Services Ltd, above n 8, at [16].

10     Rugby Football Union v Consolidated Information Services Ltd, above n 8, at [17].

The statutory scheme

The UPOV Convention and PVR Act 1987

[36]   The PVR Act 1987 came into force in June 1988. It is based on the 1978 revision of the International Convention for the Protection of New Varieties of Plants (UPOV 1978). New Zealand ratified the International Convention for the Protection of New Varieties of Plants (UPOV Convention) in 1978 and has been a member of the International Union for the Protection of New Varieties of Plants (UPOV) since 1981. The UPOV Convention was revised again in March 1991 (UPOV 1991).

[37]   On 19 November 2022, the PVR Act 2022 received Royal Assent. That Act was intended, amongst other things, to implement the 1991 revisions to the UPOV Convention. The PVR Act 1987 continues to apply to Zespri’s rights in G3.

[38]   The object of the UPOV Convention is to provide for a system of plant variety protection, with the aim of encouraging the development of new varieties of plant. PVRs provide plant breeders with the exclusive right to sell seed or reproductive material of their new varieties. This gives plant breeders an opportunity to make a return on their investment in breeding new varieties and provides an incentive for such investment.11 The UPOV Convention contemplates that PVR rights exist as a form of intellectual property rights which are territorial in nature.12

The grant of PVRs

[39]   PVRs in New Zealand are granted by the Plant Varieties Office after an examination process which may take many years. Under s 10 of the PVR Act 1987, an applicant is only entitled to a grant if (among other things) the Commissioner of Plant Variety Rights is satisfied that the:

11  Gao v Zespri Group Ltd  [2021] NZCA 442, [2022] NZLR 219 at [7]; also see Laila Harré and Paul Swain Review of the Plant Variety Rights Act 1987: A discussion paper (Ministry of Economic Development, March 2002) at 1. See also: Ian Finch (ed) James and Wells Intellectual Property Law in New Zealand (online looseleaf ed, Thomson Reuters) at [3.1], referring to the second reading of the Plant Variety Rights Bill 1985, per the Minister of Science and Technology.

12 Gao v Zespri Group Ltd, above n 11, at [109].

(a)applicant is the “owner” of that variety (s 10(2)(b)). The owner in relation to any variety, means the person who bred or discovered that variety and includes the successor of that person (s 2); and

(b)variety is new, distinct, homogenous, and stable (also known as the DUS test):13

(i)A variety is new if there has been no sale of that variety with the agreement of any relevant owner of that variety in New Zealand for more than 12 months before the application, or overseas for more than six years (s 10(4)(a)).

(ii)A variety is distinctive if it is distinguishable by one or more characteristics from any other variety whose existence was a matter of common knowledge when the application concerned was made (s 10(4)(b):

(1)Characteristics by which a variety may be distinct from others may be morphological, physiological, or of any other kind or description so long as those characteristics are  capable  of  precise  description  and  recognition  (s 10(8)).

(iii)In determining whether a variety is homogenous, the Commissioner shall have regard to the particular features of its sexual reproduction or vegetative propagation (whichever is applicable to it) (s 10(5)).

(iv)A variety is stable if it remains true to its description: (i) where the applicant concerned has described particular cycles of reproduction and multiplication for that variety, at the end of

13     The “U” in DUS stands for “uniform” (as a synonym for “homogenous”), which is commonly used in the laws of other UPOV Convention countries.

such cycle; and (ii) in every other case, after repeated propagation and reproduction (s 10(4)(c)).

[40]   Under s 9 of the PVR Act 1987, provisional protection applies from the day an application is made. A PVR lasts for 23 years from the date of grant of the PVR in the case of woody plants or their root stocks (including kiwifruit varieties), and for      20 years for all other plant varieties.14

Scope of exclusive rights and exceptions

[41]   The exclusive rights given to grantees in UPOV countries are generally consistent.

[42]The PVR Act 1987 provides the grantee the exclusive rights to:

(a)produce for sale, and to sell, reproductive material of the variety concerned.15 “Sale” is broadly defined in s 2 as including “any disposition for valuable consideration and any offer for sale”;

(b)propagate the variety for the purposes of the commercial production of fruit, flowers, or other products, of that variety (s 17(1)(b));

(c)authorise any other person  or  persons  to  do  any  of  those  things  (s 17(1)(c)); and

(d)authorise the importation of reproductive materials (s 17(5)) and produce of a protected variety (s 17(6)).

[43]The PVR Act 1987 also provides the following relevant exceptions:

(a)Non-commercial purposes: any person may propagate, grow, or use a protected variety for non-commercial purposes (s 18(a)).

14     Plant Varieties Act 1987, s 14.

15     Plant Varieties Act 1987, s17(1)(a).

(b)Breeding: under s 18(b), if the production of the hybrid or new variety concerned does not require repeated use of that variety, any person may:

(i)hybridise, or produce a new variety from, a protected variety; or

(ii)sell any hybrid of, or new variety produced from, a protected variety.

Infringement, liability, and relief

[44]   In New Zealand, the holder of a PVR may, under s 17(4) of the PVR Act 1987, bring a civil action against anyone infringing these rights.

[45]   Liability under s 17 of the PVR Act 1987 may be characterised as a statutory tort by the company and its director may be concurrently liable as joint tortfeasors.16 Remedies include damages, account of profit, and injunctive relief.17

Essentially derived varieties

[46]   UPOV 1991 introduced a concept of “essentially derived varieties” (EDVs). An EDV, in summary, is a variety which is derived from another and, while it is clearly distinguishable, that is only so in respect of characteristics which are not essential to the original variety.

[47]   The EDV provisions of UPOV 1991 are intended to require the enactment of provisions in member states which extend the exclusive rights of a grantee so that they also apply in respect of EDVs (unless permission is obtained by the breeder of the EDV). The PVR Act 2022 has such provisions, while the PVR Act 1987 does not.

The issues

[48]I need to determine the following issues:

16 Winchester International (NZ) Ltd v Cropmark Seeds Ltd CA226/04, 19 September 2005 at [56], citing Brooks v New Zealand Guardian Trust Co Limited [1994] 2 NZLR 134 (CA).

17 Gao v Zespri Group Ltd, above n 11, at [121]. The Court of Appeal held that an offer to sell and preparation of budwood for export, (including growing and/or harvesting it, preparing it for transit, making and implementing shipping arrangements, and packing it) were cross-border infringing conduct actionable within New Zealand.

(a)Does the Court have the jurisdiction to make the NPOs sought?

(b)If so, are the conditions for the making of the orders made out and, in particular:

(i)Would it be an abuse of process for the Court to grant the orders because of the imminent pending PVR application before the PVR Commissioner?

(ii)Is there an arguable wrong?

(iii)Is the overall justice condition made out, bearing in mind the exceptional nature of the jurisdiction?

(c)Are the terms of the orders sought cast too widely?

Analysis and decision

[49]   The opposition to the application is wide ranging. Mr Elliott KC described the application as unsettling, emphasising the broad and invasive nature of the orders sought. He also described the application as “misconceived” and “not justiciable”, submitting that the DNA evidence Zespri relies upon is patently inadequate and that there is simply no wrong to be remedied.

[50]I begin with the challenge to jurisdiction.

Issue – Jurisdiction

[51]   In challenging the fundamental premise of the application, Mr Elliott emphasised what he described as its “extra-territorial reach”. He contended that Zespri is seeking orders where a court in one jurisdiction is being asked to determine what happens in another jurisdiction. He sought to emphasise that there are separate rights at issue in separate jurisdictions and the whole purpose of UPOV is the enforcement of separate grants in separate territories. Mr Elliott challenged Zespri’s submission

that it is “now well established that Norwich Pharmacal relief may be granted in aid of foreign proceedings”.18

[52]Mr Elliott further submitted:

(a)The mere potentiality of foreign proceedings is insufficient to invoke the Norwich Pharmacal relief when the applicant already possesses sufficient information to pursue claims in specific jurisdictions. The Court in Green v CT Group Holdings19 emphasised the necessity of avoiding overreach in granting such orders where statutory regimes exist or where the applicant seeks to use the Court’s powers inappropriately to compel premature or overly invasive disclosure of confidential information.

(b)In Shlaimoun v Mining Technologies International Inc,20 the English High Court upheld the principle that Norwich Pharmacal relief is not a substitute for proper investigative steps where the applicant can identify relevant parties and jurisdictions.

(c)In New Zealand, r 8.20 of the High Court Rules 2016 serves as the primary procedural gateway for pre-action discovery, making Zespri’s attempt to invoke Norwich Pharmacal relief a misuse of the Court’s equitable jurisdiction.

(d)The effect of the English Court of Appeal decision in R Omar v Secretary of State for Foreign and Commonwealth Affairs21 and English cases that follow, is that where the purpose of a Norwich Pharmacal application is to obtain evidence for use in foreign civil proceedings, or in connection with criminal proceedings or a criminal investigation being carried on outside the UK, the Court has no jurisdiction to make a NPO because the exclusive remedy is under the

18     Tsai v Australia and New Zealand Banking Group Ltd [2023] NSWSC 604 at [13].

19     Green v CT Group Holdings [2023] EWHC 3168 at [18]–[19].

20     Shlaimoun v Mining Technologies International Inc [2011] EWHC 3278, [2012] 1 WLR 1276.

21     R Omar v Secretary of State for Foreign and Commonwealth Affairs [2013] EWCA 118.

respective statutory scheme. In New Zealand, the exclusive remedy is provided for in ss 184 and 185 of the Evidence Act 2006 (evidence for use in civil proceedings overseas).22

(e)Cases such as Romilos Trading Ltd v Buyanovsky23 further support the respondents’ position, rejecting wide-ranging disclosure orders where the applicant has not demonstrated a concrete and jurisdictionally appropriate claim. The Court should also apply the principle (or presumption) of territoriality as recently considered by the England and Wales Court of Appeal in Gorbachev v Guriev.24

[53]   I accept in principle the necessity of avoiding overreach in granting invasive disclosure of confidential information. I also accept and acknowledge the principle of statutory interpretation that legislation is presumed not to have extra territorial effect. However, in this case, Mr Elliott has overstated the extent to which those principles apply. I reject his contention that the statutory scheme of the Evidence Act and the pre-commencement process under r 8.20 of the Rules mean that the Court has no jurisdiction and/or the grant of relief here would be a misuse of the Court’s equitable jurisdiction.

[54]   In this case, Zespri seeks orders against New Zealand defendants for information held by them in New Zealand. The Court is not being asked to make orders with extra-territorial effect. I acknowledge that the orders sought might have consequences beyond the New Zealand jurisdiction, but that will depend upon steps taken by Zespri in those other jurisdictions.

22 Elisabeth McDonald and Scott Optican (eds) Mahoney on Evidence: Act and Analysis (2nd ed, Thomson Reuters, Wellington, 2024) at [EV182.08]: “According to a 2006 report prepared by the Ministry of Justice: “[Subpart 2 of Pt 4 of the Evidence Act] will allow New Zealand to become a party to the [Convention on the Taking of Evidence Abroad in Civil or Commercial Matters (referred to in s 182 of the Act as the ‘Hague Convention on Evidence Abroad’)]. The Convention facilitates the taking of evidence overseas by overcoming differences between civil and common law      systems.         There    are    currently    43    parties    to    the     Convention.   [Sections 184–187 (‘Evidence for Use in Civil Proceedings Overseas’)] are based on provisions of the Evidence (Proceedings in Other Jurisdictions) Act 1975 (UK),  which  allowed  the  United Kingdom to join the Convention. Most Australian states have also followed this legislative model. These clauses will also continue to allow New Zealand courts to assist the taking of evidence for applicants in countries that are not parties to the Hague Convention.””

23 Ramilos Trading Ltd v Buyanovsky [2016] EWHC 3175 (Comm).

24 Gorbachev v Guriev [2022] EWCA Civ 1270 at [24].

[55]   I also acknowledge that the Court of Appeal held in Taua v Tahi Enterprises Ltd that the existence of r 8.20 itself may obviate the need for Norwich Pharmacal relief in many cases.25 However, in this case, Zespri does not know who might be the relevant parties to any proceedings and/or the jurisdiction in which they could be sued. Zespri is not misusing the Court’s equitable jurisdiction as claimed. As Mr Katz KC noted in his article “Norwich Pharmacal orders in aid of pursuing property rights and other remedies – an update”, the Norwich Pharmacal procedure continues to have a real purpose, especially as, under r 8.20(3), an application for pre-commencement discovery must be served on the intended defendant and the person believed to possess relevant documents.26 Mr Katz noted that where the plaintiff has no idea who the intended defendant may be, and for that reason requires disclosure, the Norwich Pharmacal procedure is the correct one, rather than r 8.20.27

[56]   I accept the parties to these proceedings may be well known to each other; they all live in the Bay of Plenty. However, Zespri lacks basic information about the identity of potential wrongdoers. It may have some knowledge about potential wrongdoers in South Africa but none in the other jurisdictions it is concerned about. There is no reason to doubt Zespri’s claim that when it filed these proceedings, it had no relevant information. It did not know what countries the E2 plant had been sent to and it did not know of the entities within those countries who were dealing with E2. Since the evidence in these proceedings has been filed, Zespri has come to learn that E2 is in eight countries and that KiwiKo is involved. However, beyond that, it has in substance no real information. As Mr Arthur KC submitted, Zespri does not know who to sue and does not know exactly where to sue them or what these entities have been doing in their various jurisdictions.

[57]   I likewise find that the provisions of ss 184 and 185 do not apply and do not provide an exclusive remedy to deal with Zespri’s claim. Zespri is not seeking evidence for use in civil proceedings overseas, but rather information/discovery in order to be able to identify a wrongdoer.

25     Taua v Tahi Enterprises Ltd, above n 7, at [54].

26     Katz, above n 6, at 190.

27     Katz, above n 6, at 190.

[58]   In my view, and subject to my findings below on the breadth of the orders sought, Zespri is seeking what the English Court of Appeal in Smith Kline and French Laboratories Ltd v Global Pharmaceutics Ltd,28 identified as a clear NPO. In that case, it was held that where there was a claim by A against B to discover the identity of a wrongdoer, X, the Court had jurisdiction to order the disclosure of X’s name even though X was a wrongdoer under the law of a country other than the UK, provided it was shown that the transaction by X and the transaction in which the defendant was involved related to the same subject matter. Here, Zespri seeks to invoke the exact same jurisdiction.

[59]   In Smith Kline, the Court held that, in order for the plaintiff to obtain an effective remedy to prevent further patent infringement, it was vital that the plaintiff should be enabled to discover the names of as many persons or corporations as is practicable in the chain of distribution of the infringing product.29 I acknowledge that in that case there was a very clear and essentially undisputed claim of a breach of a patent. That provided a compelling reason for the grant of NPOs in that case. But I reject Mr Elliott’s submission that it is a different case altogether from that here. As Norwich Pharmacal itself makes clear, an applicant must establish an arguable wrongdoing, not conclusive proof of it. I will address below the critical issue of the strength of the applicant, Zespri’s, case.

[60]   I find that the distinction between information and evidence that some foreign jurisdictions have made is helpful and persuasive in addressing the issue of whether the statutory code of the Evidence Act is an exclusive remedy and/or code that precludes the Court from now making the NPOs sought. The cases include the Cayman Islands Court of Appeal decision in Essar Global Fund Ltd v ArcelorMittal USA LLC30 and the Hong Kong Court of Appeal decision in Manufacturer’s Life Insurance Co of Canada v Harvest Hero International Ltd.31

28     Smith Kline and French Laboratories Ltd v Global Pharmaceutics Ltd [1986] RPC 394.

29     Smith Kline and French Laboratories Ltd v Global Pharmaceutics Ltd, above n 28, at 397.

30     Essar Global Fund Ltd v ArcelorMittal USA LLC [2021] CICA (Civil) Appeal No 15 of 2019.

31 Manufacturer’s Life Insurance Co of Canada v Harvest Hero International Ltd [2002] 1 HKLRD 828 at [16], the court held that at common law, there was jurisdiction to grant Norwich Pharmacal relief in a potential foreign proceeding. Such relief was directed at information as distinct from evidence, and was entirely separate and distinct from the statutory regime in Part VIII of the Evidence Ordinance (Cap 8) and Ord 70 of the Rules of the High Court (Cap 4A) which govern the obtaining of evidence in Hong Kong for use in foreign proceedings.

[61]   In Essar Global Fund Ltd v ArcelorMittal USA LLC,32 the Cayman Islands Court of Appeal held that the Cayman Islands Evidence Order (equivalent to ss 184 and 185 of the Evidence Act) concerns the giving of evidence (whether oral or documentary) for the purposes of foreign proceedings, whereas the Norwich Pharmacal jurisdiction cannot, as a matter of principle, relate to evidence at all. Their Honours noted that this is clear from the Norwich Pharmacal case itself, where the distinction was drawn between the equitable remedy of discovery (which was a remedy utilised in Norwich Pharmacal) and the ability to compel the giving of evidence.

[62]Martin JA, giving judgment for the Court, further held:33

It is true that the further the Norwich Pharmacal jurisdiction gets from its roots, the greater the risk that orders will be made for the production of what on proper analysis is evidence, not merely information. The risk is the greater because of the lack of a clear conceptual distinction between information and evidence (see Omar at [12], cited in paragraph 48 above, and the conflicting views expressed by Lord Sumption and Lord Mance SCJJ in Singularis at [20]–[22] and [141]–[142] respectively). But so long as care is taken to confine the Norwich Pharmacal jurisdiction to its proper scope, there can in principle be no overlap between that jurisdiction and the statutory regime relating to evidence in foreign proceedings, and accordingly no reason to regard the former as excluded by the latter.

[63]The key point, as Martin JA made clear, is that care be taken to confine the

Norwich Pharmacal jurisdiction to its proper scope.

[64]I conclude that this Court has jurisdiction to make the NPOs sought.

Issue – Abuse of process

[65]As noted, the PVR application filed by Baker PVR is pending.

[66]   The respondents say that the breeding programme at issue is specifically permitted under s 17(1)(b) of the PVR Act 1987. They further say that unless and until the New Zealand PVR Office finds that the alleged infringing variety (E2) is not distinct from G3, there can be no breach of the PVR Act 1987. Mr Elliott submitted

32     Essar Global Fund Ltd v ArcelorMittal USA LLC, above n 30.

33     Essar Global Fund Ltd v ArcelorMittal USA LLC, above n 30, at [56].

that the PVR Commissioner is likely to make his decision this year and that the respondents have a right to have their PVR application processed in the normal way without interference from Zespri.

[67]   I acknowledge that the pending PVR application is a relevant factor in the exercise of my discretion. However, I reject the contention that as a matter of law I could not legitimately grant a NPO in advance of the imminent decision (assuming that to be so) by the PVR Commissioner. Likewise, I reject Mr Elliott’s claim of abuse of process. That high threshold is not made out here.

[68]   It is clear that a PVR grant application under the legislation requires considerable time to process and to determine. The evidence was not entirely clear, but it seems that there is considerable doubt about whether the application will in fact be determined this year – and even if it is, there are rights of appeal. Given Zespri’s opposition, I apprehend the issue will not be resolved for some considerable time.     I note too that official trials (tests) continue to be carried out on Baker PVR’s property under the review of the New Zealand Plant Varieties Office.

[69]   A decision by this Court to grant NPOs will not interfere with the current PVR process. The merits of that application remain a matter for the PVR Commissioner to determine. Any determination I make will necessarily be of an interim nature (i.e. whether there is an arguable case of infringement). The PVR Commissioner would be free subsequently to determine that E2 is in fact, distinct from G3 under the DUS test, if that were the conclusion reached (in the same way that a trial court is not bound by an interlocutory judgment).34

[70]   The confined orders this Court is asked to make do not in my view subvert the statutory process currently under way or in any way reach the high threshold of an abuse of process. Mr Elliott’s submission fails adequately to acknowledge the procedural and relatively narrow jurisdictional scope of the NPO. Again, the observations of Martin JA in Essar Global Fund Ltd v ArcelorMittal USA LLC35 remain apt.

34     Joseph Lynch, Land Co Ltd v Lynch [1995] 1 NZLR 37 (CA) at 42–44.

35     Essar Global Fund Ltd v ArcelorMittal USA LLC, above n 30.

The conditions for the making of the orders

[71]   The parties are agreed that the UK Supreme Court decision Rugby Football Union v Consolidated Information Ltd,36 provides a useful checklist for determining whether to exercise the discretion to grant a NPO. The Court held that the essential purpose of the remedy is to do justice and that this involves the exercise of discretion by a careful and fair weighing of all relevant factors. The various factors identified include:

(a)the strength of the possible cause of action contemplated by the applicant for the order;

(b)the strong public interest in allowing an applicant to vindicate his legal rights;

(c)whether the making of the order will deter similar wrongdoing in the future;

(d)whether the information could be obtained from another source;

(e)whether the respondent to the application knew or ought to have known that he was facilitating arguable wrongdoing or was himself a joint tortfeasor;

(f)whether the order might reveal the names of innocent persons as well as wrongdoers, and if so whether such innocent persons will suffer any harm as a result;

(g)the degree of confidentiality of the information sought;

(h)the privacy rights under international human rights law.37

36     Rugby Football Union v Consolidated Information Ltd, above n 8, at [17].

37     The remaining factors do not apply in this case.

Issue – Is there an arguable wrong?

[72]   Zespri submits the starting point is that there is at least a good arguable case that E2 is G3. Zespri submits that E2’s phenotype38 (i.e. the appearance and taste of the fruit), the uncontradicted DNA test results, the apparent circumstances of E2’s breeding, uncertainty about its origins, and the respondents’ ability to describe E2’s parentage, all persuasively show that E2 is likely to be G3.

[73]   Zespri further argues that the only point of distinction between E2 and G3 identified by the PVR office (asserted early harvest maturity) is well within the range of expected maturity. Accordingly, that point of distinction is immaterial. Zespri further says that while the respondents seek to discredit the DNA evidence, it is not contested by their expert, and they (or their offshore partners) have on prior occasions acknowledged that DNA testing may assist in confirming the provenance of E2.

[74]   In submissions, Mr Arthur  emphasised  the  evidence  of  Zespri’s  expert,  Dr Pilkington, who concluded that, from the sequences received, it appears “highly likely” that E2 is G3 and “highly unlikely” that E2 could be a progeny of G3.

[75]   Zespri submits that it has a good arguable case of breaches of the PVR Act 1987 and offshore PVR law by the respondents, by KiwiKo, and by other unknown persons. Zespri says that there have been exports by the respondents of reproductive material offshore and that the actions taken by the respondents fall within the definition of “sale” under the PVR Act 1987. The definition of sale captures any disposition of plant material for valuable consideration, even when such sale occurs by way of export.

[76]   Mr Elliott submitted that Zespri has a very weak case. At one stage, he referred to the “palpable absence of an arguable wrong”. He submitted that Zespri’s DNA evidence “misses the mark” because PVR grant rights are made solely on the basis of one or more phenotypical physical characteristics. He contended that there are two

38 Dr Pilkington (Science Group Leader, Kiwifruit New Cultivars in the New Cultivar Innovation portfolio at the New Zealand Institute for Plant and Food Research Ltd) describes the phenotype of an organism as the physical expression, or characteristics, of that genotype. This includes a plant’s morphology (structure and form), development, biochemical properties, physiology and behaviour.

observable variations in flowering and shape and that is sufficient to refute the DNA evidence. Mr Elliott described Zespri’s DNA evidence as “the straw man” that has been put up.

[77]   Mr Elliott again emphasised that the respondents are exercising legitimate breeding rights under the PVR Act 1987. He referred to the inherent tension between the PVR owner’s right to sue infringers and the parallel rights of plant breeders to carry out legitimate breeding programmes for the purpose of coming up with new varieties. The respondents say they have a complete defence, namely a right to a new and distinct variety. In contending that Zespri’s case is a weak one, Mr Elliott referred to “some form of equipoise” between the competing interests. Mr Elliott submitted that in contrast to the Smith Kline decision where there was a very strong case of patent infringement, here there is a strongly arguable defence that there has in fact been no infringement at all.

[78]   As I have already noted, the determination I am to make is necessarily of an interim  nature.   The  test  is  whether  there  is  an  arguable  case  of  infringement. I acknowledge that there may be some limitations with the DNA evidence, but as  Mr Arthur submitted, my focus must be on the contention of an arguable case of PVR infringement. PVR infringement is not determined by carrying out  the DUS test.  My understanding is that the DUS test cases take six or seven years. It cannot be the case that if a party is suing for plant variety infringement it has to wait six or seven years for a DUS result.

[79]   In determining the present application, the evidence of Dr Pilkington is of significant probative value, albeit untested. As Mr Arthur submitted, it is not contradicted. The earlier, preliminary DNA results may have been inconclusive but, as Ms Bensley for Zespri says, there is a good reason for that – namely it was extremely difficult to obtain DNA from the fruit skins.

[80]   I acknowledge the expert evidence of Dr Lashbrooke for the respondents. However, it does not contradict Dr Pilkington’s DNA conclusions and is based on a challenged assumption that E2 shows several significant phenotypic differences to G3. There is a comprehensive response from Dr Pilkington to the evidence of

Dr Lashbrooke. She agrees with a number of his conclusions, including the fact that any PVR office ruling will be based on phenotypic differences between plants. However, she repeats her key conclusions and says that they are the “only conclusions” that she can draw.

[81]   It is also notable that the respondents contemplated doing their own DNA testing. However, they have not provided any results and, as I have emphasised, the DNA evidence of Dr Pilkington remains uncontradicted.

[82]   I accept that there has been some identification by the respondents of claimed phenotypic differences between E2 and G3. However, I agree with the submission of Mr Arthur that there is no sufficiently probative evidence upon which I could conclude that there are likely to be phenotypic differences. That is a matter yet to be tested and determined and the evidence presented to me provides a very incomplete and somewhat unclear assessment of the number and extent of any phenotypic differences. There is reference in the respondents’ PVR application to some 10 phenotypic differences but not all have been listed and there is evidence in support of Zespri’s submission that the differences have been overstated. I acknowledge that tests are continuing. I also accept that commercial considerations may have precluded further disclosure of phenotypic differences. However, there are of course procedures available in court proceedings of this kind to ensure confidentiality. They have not been sought.

[83]   Mr Elliott further argued that Zespri’s allegation of there being a “budwood mix-up” is an argument that Zespri has been raising for many years. Mr Elliott refers to Mr Baker’s “very clear evidence” that he doesn’t believe that there was the slightest chance of a mix-up. That may be the case. However, and as I have emphasised, the expert scientific evidence of Dr Pilkington is uncontradicted – and the test to be applied is whether there is a good arguable case.

[84]   I now turn to address whether there is an arguable case of sale under the  PVR Act 1987. The parties in their submissions referred to this issue as “commercialisation”.

[85]   Mr Elliot submitted that there was no evidence of a “sale” by the respondents and challenged Zespri’s claim of “commercialisation”. He submitted that Zespri’s claim goes to commercialisation generally, which includes, for example, entering into an agreement with an orchardist to undertake testing of a variety.  Such testing is,  Mr Elliot says, “perfectly lawful”. He further submits that the distribution of plants by the respondents’ overseas is not “commercial exploitation”, but a lawful export of plant material for legitimate PVR purposes.

[86]   Mr Elliot referred to the evidence of Zespri’s witness, Ms Bensley, and her discussion of the four phases of plant variety development. He submitted that, in accordance with Zespri’s own evidence, the allegation of sale is not made out.

[87]   Ms Bensley referred to the four phases of plant variety development as follows: breeding, pre-commercial trials, commercial release, and commercial optimisation. Her second affidavit states:

Once the breeding phase is complete and a desirable variety has been identified, this variety will progress to pre-commercial trials. Pre-commercial growing trials and sales trials of the resulting fruit are always undertaken to inform a commercialisation decision. Information from the trials is used to determine the commercial feasibility and consumer acceptance of a variety and to enable pre-commercial planning to occur for when the variety is released commercially. These trials are not designed to develop a new variety (that occurs in the breeding phase) but rather they are designed to test whether the new variety will perform well and provide an acceptable return on investment and meet the intended goals of the breeder. Once this information is complete, the decision may be made to commercialise the variety (the third phase) and then following commercialisation, commercial optimisation trials may occur. These are also not about “breeding” a new variety but rather optimising the new variety which has been bred. For example, commercial optimisation may involve girdling, pruning, fertilisation, or other agronomic trials to optimise fruit size and taste for market.

[88]   The distinction Ms Bensley draws between the pre-commercial and commercial phases of development is of some assistance. Mr Elliot interpreted Zespri’s submission on commercialisation as suggesting that any steps taken by the respondents following the decision to commercialise constitute commercialisation, thereby infringing Zespri’s rights under the PVR Act 1987. I agree with Mr Elliot that something more than a mere decision to commercialise is required. The critical test to be applied is, of course, the definition of “sale” in s 2 of the PVR Act 1987. The

definition is broad and includes “any disposition for valuable consideration and any offer for sale”.

[89]   I find that there is an arguable case that the respondents have made a disposition for valuable consideration of E2 and likely also made offers for sale. There is clear evidence that the respondents have taken post-breeding steps which have crossed the line into “sale”, and those steps, and the associated planning, have been undertaken to release the E2 variety commercially. The respondents have arguably, in the words of Ms Bensley, disposed of reproductive material to third parties to undertake trials “not designed to develop a new variety (that occurs in the breeding phase) but rather … designed to test whether the new variety will perform well and provide an acceptable return on investment and meet the intended goals of the breeder.” In doing so, there has been an arguable disposition of reproductive material for valuable consideration.39

[90]   I find that it is reasonably arguable that there have been sales involving export. In Gao v Zespri Group Ltd,40 the Court of Appeal held that the fact that the conduct (alleged infringement of the PVR Act 1987) had an international dimension, including the objective of propagating in China, did not mean that pleaded unlawful acts undertaken in New Zealand in breach of the PVR Act 1987 were not actionable. The Court noted the expanded definition of sale and held that it captures any disposition of plant material for valuable consideration, even where such a sale occurs by way of export.

[91]   In correspondence to Zespri’s solicitors prior to the proceedings being filed, the respondents deny  any evidence of offshore exportation.  However, I note that  Mr Baker had previously advised Zespri (in December 2021 and January 2022) that he “was looking to sell” offshore rights in E2 and that his son was “supporting him in commercialisation”. Furthermore, Mr Baker advised that he had “exported plant

39 In her evidence Ms Bensley refers to the KiwiKo website which records that: “(a) under the  heading ‘Breeder Relations’ KiwiKo provides ‘variety owners and producers with a specialised service of variety development and commercialisation’; and (b) under the heading ‘Testing and Evaluation,’ that KiwiKo ‘evaluate[s] varieties in different growing regions to provide feedback on the commercial potential of varieties and to provide producers with meticulously evaluated and tested varieties.’”

40 Gao v Zespri Group Ltd, above n 11, at [121].

material, on behalf of KiwiKo to South Africa and Chile”. He advised that “either [he] or KiwiKo also exported plant material to Europe” (which he says died).

[92]   I agree and adopt Zespri’s submission that it is highly unlikely the respondents have gifted E2 to KiwiKo and the unknown offshore growers. Mr Baker did not, of course, say that he did so. It is clearly arguable that the most plausible explanation of the limited disclosure from the respondents is that they engaged KiwiKo as part of a commercial arrangement to establish and commercialise E2 offshore, granting a licence for them to do so, and in return KiwiKo would receive payment of royalties or other valuable consideration. This is consistent with Mr Baker’s evidence that he had “[engaged] KiwiKo to manage E2 kiwifruit … globally”, and his description of the arrangements as being “commercially confidential” and involving “sensitive commercial information”. I also note his assertions that Zespri is being “anti-competitive”, and KiwiKo’s website, which says that it provides variety owners and producers with “a specialised service of variety development and commercialisation” and that it “evaluate[s] varieties … to provide feedback on the commercial potential”. I further note that Mr Baker refused to disclose the terms on which he provided E2 plant material to KiwiKo and the offshore growers.

[93]   In addition to the arguable breaches of the PVR Act 1987, I also find that there are arguable breaches of offshore PVR law (through a chain of supply involving the respondents, KiwiKo, and undisclosed offshore growers). This includes arguable breaches in Australia (Plant Breeders Rights Act 1994 (Cth)), South Africa (Plant Breeders’ Rights Act No. 15 of 1976), the European Union (Regulation 2100/94 on Community Plant Variety Rights [1994] OJ L227), the United States (Patents for Plants 35 USC §§ 161–164), South Korea (Act on the Protection of New Varieties of Plants 2013), and Japan (Plant Variety Protection and Seed Act 1998).

[94]   Zespri says that its principal and urgent concern is to address the ongoing offshore infringement. However, it also claims that there are undisclosed sale infringements of the PVR Act 1987 ongoing in New Zealand.

[95]   The respondents admit that E2 is currently present on three properties, one of which is owned by an unnamed nursery owner and is said to be a “back up site”. I note

that a “non-propagation agreement” is referred to by the respondents as being in place for that nursery owner. However, that has not been put in evidence, and nor have the terms of the original transfer of plant material to that site. The respondents do not suggest that the nursery owner acted gratuitously in receiving that material and in my view the presence of a non-propagation agreement implies the opposite. Again, I find that there is an arguable case that there was a disposition of reproductive material of E2 for valuable consideration – and therefore a “sale” in contravention of s 17 of the PVR Act 1987.

Mixed up in condition

[96]   Based on my findings above, I find that the respondents are, at a minimum, mixed up in the arguable case for the wrongdoing. On the evidence before me, it is clearly arguable that they are centrally involved and have directly facilitated it.

Possession condition

[97]   I find that it is clearly arguable that the respondents are in possession of relevant information about the identification of potential wrongdoers. As Zespri submits, the respondents do not really deny that they hold relevant information.

Issue – Overall justice condition

[98]   This is a central issue in this case. Mr Elliott emphasised what he said was the delay in bringing the application. He contended that there is no urgency or exceptional circumstances justifying the extraordinary remedies sought. Mr Elliott submitted there can be no genuine urgency when Zespri, some six years after learning about the new plant variety, has finally decided to sue alleged wrongdoers. He again emphasised the proceedings have been brought shortly before the PVR Commissioner is to make a determination on whether to grant rights or not.

[99]   I reject Mr Elliott’s submission that there has somehow been disqualifying delay and that Zespri’s actions undermine its claim of urgency. Zespri did not know and could not have known that E2 was in fact G3 until it completed its full DNA analysis. As soon as it received the results of that analysis, it wrote a cease-and-desist

letter. It is also understandable that the earlier, preliminary DNA analysis (i.e. the one done in 2022 which was inconclusive) did not prompt Zespri to take action at that stage. The evidence is clear. It was not until 2024, when the fruit in the Sydney wholesale market was discovered, that Zespri was able to undertake its full DNA analysis and then bring these proceedings.

[100]   In addressing the overall justice condition, I find there is a clear public interest here in allowing Zespri to vindicate its legal rights. Parliament has conferred a special status on Zespri by virtue of the export ban under regs 3 and 4 of the Kiwifruit Export Regulations. That makes Zespri the sole exporter of kiwifruit from New Zealand otherwise than to Australia, with only minor exceptions. G3 is an immensely valuable and successful golden kiwifruit variety. It is New Zealand’s premier golden kiwifruit. As Ms Bensley’s evidence makes clear,  G3 was hugely important in saving the   New Zealand kiwifruit industry from the bacterial disease Psa.41 The rights at issue are clearly of great importance.

[101]   As Gao v Zespri Group Ltd42 makes clear, Zespri needs to act promptly in cases of this kind to prevent arguably illegitimate exploitation of a golden kiwifruit variety. Zespri notes that the prospect of unmitigated offshore exploitation of G3 is a serious matter for it. It says that kiwifruit vines can be readily and rapidly propagated. In Gao, Zespri established that New Zealand defendants had supplied G3 to a contact in China in 2012. Zespri now estimates that there are approximately 8,400 hectares of G3 illegitimately planted in China.43

[102]   I agree with Zespri’s submission that if it cannot promptly get disclosure from the respondents and take steps to protect its position, there is significant risk that its ability to address offshore infringement may be irreparably compromised.

[103]   Further factors relevant to the overall justice condition and favouring the grant of the application as an appropriate and important response, are the following:

41     Also known as Pseudomonas Syringae pv. Actinidiae.

42     Gao v Zespri Group Ltd, above n 11.

43     By area, that is slightly less than the total land area of Hamilton.

(a)The respondents are arguably not innocent holders of the requested information. They propagated and exported the reproductive materials. Mr Baker was advised by Zespri in July 2020 that budwood mix-up was the most likely answer for E2 differing from E1. Despite that knowledge, and without having had any determination on the PVR application, the respondents went ahead with propagating the plant for exporting and/or facilitating the export of reproductive material.

(b)The notice of opposition asserts concerns about commercial confidentiality. However, that is no legal bar to the orders sought.44

(c)There is no other practical means for obtaining information. Although it is clear to Zespri that unknown persons are infringing its rights, it does not know with any real certainty which jurisdictions are involved and much less which individuals. I accept that the application is brought for a genuine purpose of determining the identity of those infringing Zespri’s rights and to enable a considered assessment to be made about how and where Zespri should act to protect those rights.

(d)The undertakings provided to date by the respondents do not, in my view, go far enough and do not adequately protect Zespri’s position. Undertakings were given in November 2024 confirming that the respondents would not commercialise E2 until the New Zealand PVR application was determined. For reasons given above, Zespri needs to move promptly to protect its rights.

Conclusion

[104]   In conclusion, I find that Zespri has established the grounds for the Court to make NPOs requiring the respondents to provide certain information. I now turn to address the issue of the terms of the orders sought.

44     Smith Kline and French Laboratories Ltd v Global Pharmaceutics Ltd, above n 28.

[105]   There are five categories of documents sought by Zespri in its application. They are set out at [1(a)] of the originating application. They are also set out in the attached Appendix.

[106]   I see no difficulty with the first three orders sought, namely those described at [1(a)(i)]–[1(a)(iii)] of the application. However, I agree with Mr Elliott that the orders sought at (iv) and (v) are cast in wide terms and arguably stray beyond the confines of the Norwich Pharmacal jurisdiction.

[107]   Zespri denies that orders (iv) and (v) constitute a fishing expedition. Mr Arthur submitted that the information sought is to identify the alleged infringers and to enable Zespri to plead properly against those alleged infringers. However, in my view, it is clear from the Norwich Pharmacal judgment itself and the analysis of that case by Mr Katz in the New Zealand Intellectual Property Journal45 that the focus of the jurisdiction is very much on information going to the identity of a wrongdoer.

[108]In Ramilos Trading Ltd v Buyanovsky,46 Flaux J held that:

… the jurisdiction cannot be used for wide-ranging discovery or the gathering of evidence, but is strictly confined to necessary information. … an important limitation on the scope of the jurisdiction: it cannot be used for wide-ranging discovery or the gathering of evidence.

… the Norwich Pharmacal jurisdiction remains an exceptional jurisdiction with a narrow scope. The court will not permit the jurisdiction to be used for wide-ranging disclosure or gathering of evidence, as opposed to focused disclosure of necessary information: … it is impermissible to use the jurisdiction as a fishing expedition to establish whether or not the claimant has a good arguable case or not.

[109]   Whether an application for a NPO is a “fishing expedition” or whether it seeks only to obtain necessary information can be ascertained by considering what information is being sought and, importantly, why it is sought.47 The applicants have provided little indication as to the precise scope of what they are seeking and have not explained (beyond reference to the pleading) why such a broad class of information is necessary in enabling them to bring an action against the, as yet, unknown parties.

45     Katz, above n 6.

46     Ramilos Trading Ltd v Buyanovsky, above n 23, at [46] and [62].

47     Burford Capital Ltd v London Stock Exchange Group plc [2020] EWHC 1183 (Comm) at [24]–[25], as cited in Green v CT Group Holdings Ltd, above n 19 at [47].

[110]   Accordingly, I am not prepared at this stage to make the orders sought in paragraphs (iv) and (v). Zespri, as the applicant, will need to refile amended draft orders,  for  my  approval,  taking  into  account  the  findings  in  this   judgment.   In particular, order (v) appears to stray well beyond the scope of the jurisdiction and to be seeking evidence which goes to support the substantive claims that Zespri might make.

[111]It would be helpful to the Court for Zespri to now re-frame paragraphs (iv) and

(v) with a view to focusing on the scope of the jurisdiction and the focused disclosure of necessary information.

Result

[112]   I grant the application by the applicant, Zespri Group Ltd, for Norwich Pharmacal orders.

[113]   I direct the applicant, Zespri Group Ltd, to file amended draft orders (iv) and (v), following consultation with counsel for the respondents and taking into account my findings in this judgment. Upon receipt of amended draft orders, I will make formal orders requiring the first respondent, Baker PVR Ltd, to make an affidavit providing the requested information.

[114]   Leave is reserved to the applicant to apply in relation to Mr Baker, the second respondent, if an order of a personal representative or executor of Mr Baker’s estate proves to be necessary under r 4.50 of the High Court Rules 2016.

[115]   As to costs, I am of the preliminary view that having succeeded, Zespri is entitled to costs on a 2B basis plus disbursements. If agreement cannot be reached, memoranda are to be filed by 4 April 2025.

Andrew J

APPENDIX ‘A’

Zespri’s originating application for Norwich Pharmacal orders

1.        The applicant, Zespri Group Ltd, applies for the following orders:

(a)that the respondents disclose to Zespri:

(i)the names, addresses, and contact details of any legal or natural person who, to Baker PVR’s and Mr Baker’s knowledge, may have possessed, produced for sale, or sold, at any time, reproductive material of the variety which Baker PVR and Mr Baker describe as “E2”;

(ii)the names, addresses, and contact details of any legal or natural person who, to Baker PVR and Mr Baker’s knowledge, may have at any time, propagated the variety which Baker PVR and Mr Baker describe as “E2” for the production of kiwifruit (to the extent those persons differ from the above);

(iii)the names, addresses, and contact details of any legal or natural person who, to Baker PVR and Mr Baker’s knowledge, may have at any time, authorised any person to do the things described in the above paragraphs;

(iv)any documentation relevant to the above matters (including shipping documentation, export documentation, import permits, sales, supply or licensing contracts, and associated invoices);

(v)any documentation Baker PVR and Mr Baker hold that is not covered by the above matters, which is relevant to third parties planting and grafting “E2” plant material provided by Baker PVR and Mr Baker, including the amount of plant material provided, the timing of any grafting, and the current status of any plant material.