Discovery Principles Revisited

Introduction

A recent High Court decision has reiterated the principles underpinning discovery in Irish plenary actions in the context of a trademark dispute. InBayerishe Moteren Werke AG v. Edward Ronayne t/a BMWCare1, Judge Gilligan dealt with proceedings seeking an order pursuant to s.18 of the Trademarks Act 1996 (as amended) and/or Article 102 of Council Regulation 207/2009 restraining the defendant, or persons acting on his behalf, from infringing the plaintiff's community trademarks. In the context of disputed discovery categories, the court was faced with deciding whether certain documentation should properly be discovered.

Background

The parties had progressed through the pleadings stage of the proceedings, where they had set out their respective positions in formal legal documents, such as the Statement of Claim and Defence. The proceedings had reached the discovery stage, where each party may request of the other that discovery be made voluntarily of specified categories of documentation which pertain to the matters in dispute between the parties. If a party refuses to make discovery of one or more of the categories sought, then a motion may issue and the court will determine whether discovery should properly made of the category or categories refused.

Discovery Sought

In this case, some five categories were the subject of a motion issued by the plaintiff. Three of the five had been agreed before the hearing, which meant that two categories remained for the Court to consider. The disputed categories were (a) and (d), which requested respectively:

"All documents evidencing the defendant's use of the name BMWCare and/or the Plaintiff's Trade Marks by the Defendant in Ireland since 2005 (the alleged time when the Defendant began to trade as BMWCare."

"All documents and audio recordings relating the defendant's radio campaign which it was pleaded by the defendant in his defence and counterclaim was scheduled for broadcast in November, 2010 and or any other documents and audio recordings relating to advertising campaigns of any sort whether in the past or intended in the future for promotion of the defendant's business."

Relevant Principles

Judge Gilligan referred to Order 31, rule 12 of the Rules of the Superior Courts which provides that the discovery to be sought must be both relevant and necessary either for disposing fairly of the cause or matter or for saving costs. He also identified that the legal principles were set out in...