Flogas Ireland Ltd v Tru Gas Ltd and Others
| Jurisdiction | Ireland |
| Judge | Mr. Justice Brian J. McGovern |
| Judgment Date | 28 June 2012 |
| Neutral Citation | [2012] IEHC 259 |
| Judgment citation (vLex) | [2012] 6 JIC 2801 |
| Court | High Court |
| Date | 28 June 2012 |
[2012] IEHC 259
THE HIGH COURT
BETWEEN
AND
AND
HARTSIDE LTD v HEINEKEN IRL LTD UNREP CLARKE 15.1.2010 2010/21/5158 2010 IEHC 3
INDEPENDENT NEWSPAPERS (IRL) LTD v MURPHY 2006 3 IR 566 2006/30/6324 2006 IEHC 276
Intellectual Property – Infringement – Registered trademarks –Passing off – Gas cylinders being used by defendants and plaintiffs claiming infringement –Discovery
Facts: The plaintiff contended that the defendants had been making use of its gas cylinders in a manner that infringed its registered trademarks and which also equated to passing off. Proceedings had been issued to seek injunctions and other reliefs. As part of those proceedings the defendants now sought an order for discovery of a number of documents, the parties not having agreed the matter. The documents sought could be grouped into a number of categories. The plaintiff raised objections in respect of each category.
Held by McGovern J, that a number of the documents sought were confidential in nature. The law required that a party seeking discovery of such documents would be required to show that access to the documents would be relevant and necessary. Applying the relevant case law, access would be limited in a number of respects. Hartside Ltd v Heineken Ireland Ltd [2010] IEHC 3 and Independent Newspapers v Murphy [2006] IEHC 276 applied.
Orders were therefore made in respect of each category.
JUDGMENT of Mr. Justice Brian J. McGovern delivered on the 28th day of June, 2012
1. These are two related cases in which the plaintiff claims injunctions, damages and other forms of relief against the defendants arising out of the alleged use by the defendants of the plaintiff's gas cylinders in circumstances which the plaintiff alleges amount to infringement of the plaintiff's registered trademarks and passing off. The plaintiff also claims damages under various headings and other relief.
2. This application concerns a motion for discovery brought by the defendant in each case in respect of certain categories of documents where no agreement could be reached between the parties on the issue. In proceedings bearing record number [2011 No. 242 COM], the defendants seek an order for discovery in respect of the following categories of documents:
"Category 1: All documents concerning:rdquo;"
(a) Any assessment of market share of the total market for LPG in Ireland (including Northern Ireland) in the past six years.
(b) Any assessment of the turnover value of the entire Irish market in the past six years.
(c) Any assessment of the LPG usage as a percentage of Irish primary energy consumption in the past six years.
(d) Any assessment of the percentage of cylinder gas as a percentage of Irish primary energy consumption in the past six years.
(e) Any assessment of the Plaintiff's market share of the cylinder market in Ireland in the past six years.
(f) Any assessment of the aforesaid market share for LPG, turnover value, usage, consumption and market share as concerns Flogas NI and the Northern Irish Market.
(g) All returns made by the Plaintiff to the Competition Authority pursuant to Article 8 of Declaration (No. D/05/001).
Category 2: All documents concerning:
(a) Listing of all outlets currently within the Plaintiff's dealer network.
(b) Listing of all distributors currently within the Plaintiff's Distributor network.
(c) Listing of all distributors currently engaged in the filling of cylinders from supplies of bulk gas.
Category 3. All documents concerning:
(a) The Plaintiff's procurement of butane cylinders since 1979.
(b) The Plaintiff's procurement of propane cylinders since 1979.
(c) The Plaintiff's procurement of newly manufactured butane cylinders since 1979.
(d) The Plaintiff's procurement of newly manufactured propane cylinders since 1979.
(…)
Category 4: All documents concerning:
(…)
(e) All customer lists as provided for by paragraph 19 of the Authorised Dealer Agreement.
(f) All forms of agreement with 'Direct Customer Accounts'.
(g) All customer lists maintained by Authorised Distributors under clause 6.7(d) of the Authorised Distributor Agreement.
(h) Any similar agreements, price cards, forms and lists relating to cylinders placed on the market in Northern Ireland by the Plaintiff and/or Flogas Northern Ireland.
Category 8: All documents concerning:
(a) The price charged by the Plaintiff for filled cylinders supplied to authorised distributors.
(b) The price charged by the Plaintiff for bulk gas delivered to authorised distributors.
(c) The price charged by the Plaintiff for filled cylinders supplied to direct accounts.
(h) The cylinder licence fees charged by the Plaintiff to Authorised Distributor under clause 7.1 of the Authorised Distributor Agreements.
Category 12: All documents concerning any alleged breaches by any other supplier or retailer of LPG of property rights asserted by the Plaintiff and its associated company Flogas Northern Ireland in the past six years."
3. In the case bearing record number [2011 No. 244 COM], the defendant seeks an order for discovery of the following categories of documents:
"Category 1: All documents concerning:"
(a) Any assessment of market share of the total market for LPG in Ireland (including Northern Ireland) in the past six years.
(b) Any assessment of the turnover value of the entire Irish market in the past six years.
(c) Any assessment of the LPG usage as a percentage of Irish primary energy consumption in the past six years.
(d) Any assessment of the percentage of cylinder gas as a percentage of Irish primary energy consumption in the past six years.
(e) Any assessment of the Plaintiff's market share of the cylinder market in Ireland in the past six years.
(f) Any assessment of the aforesaid market share for LPG, turnover value, usage, consumption and market share as concerns Flogas NI and the Northern Irish Market.
(g) All returns made by the Plaintiff to the Competition Authority pursuant to Article 8 of Declaration (No. D/05/001).
Category 2: All documents concerning:
(a) Listing of all outlets currently within the Plaintiff's dealer network.
(b) Listing of all distributors currently within the Plaintiff's Distributor network.
(c) Listing of all distributors currently engaged in the filling of cylinders from supplies of bulk gas.
Category 3: All documents concerning:
(a) The Plaintiff's procurement of butane cylinders since 1979.
(b) The Plaintiff's procurement of propane cylinders since 1979.
(c) The Plaintiff's procurement of newly manufactured butane cylinders since 1979.
(d) The Plaintiff's procurement of newly manufactured propane cylinders since 1979.
[…]
Category 4: All documents concerning:
[…]
(e) All customer lists as provided for by paragraph 19 of the Authorised Dealer Agreement.
(f) All forms of agreement with 'Direct Customer Accounts'
(g) All customer lists maintained by Authorised Distributors under clause 6.7(d) of the Authorised Distributor Agreement.
(h) Any similar agreements, price cards, forms and lists relating to cylinders placed on the market in Northern Ireland by the Plaintiff and/or Flogas Northern Ireland.
Category 8: All documents concerning:
(a) The price charged by the Plaintiff for filled cylinders supplied to authorised distributors.
(b) The price charged by the Plaintiff bulk gas delivered to authorised distributors.
(c) The price charged by the Plaintiff for filled cylinders supplied to direct accounts.
(h) The cylinder licence fees charged by the Plaintiff to Authorised Distributor under clause 7.1 of the Authorised Distributor Agreements.
(k) The wholesale price charged for LPG and LPOG cylinders by the Plaintiff to distributors and by the Plaintiff or its distributors to its dealers in County Waterford.
(l) The wholesale price of LPG cylinders bearing the Norgas brand recently distributed by the Plaintiff in County Waterford."
4. Category 1: The defendant seeks discovery of these documents in view of the plaintiff's claim of loss of reputation and having regard to the reliance the plaintiff places on the nature and extent of its market share. The plaintiff agrees to make discovery except in respect of Northern Ireland on the grounds that it is not seeking any remedy in the proceedings relating to Northern Ireland and therefore does not meet the test of relevancy.
Category 2: The plaintiff contends that it has an extensive network of distributors and dealers and that through this network it exercises rights of ownership over Flogas-branded cylinders. The plaintiff also claims that its dealers and distributors have been engaged in cylinder exchange with the first named defendant and that the members of the network are suffering loss as a result of the alleged unlawful conduct of the defendant. The defendant maintains that details of the distributors and dealers are relevant to these claims and the defendants claim that through this network, the plaintiff is engaged in anticompetitive conduct. The plaintiff agrees to make discovery of a sample of documents required in para. (a) concerning its dealer network. It objects to providing more than this on the grounds that the defendant and the plaintiff are competitors and the issue of...
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