Nutrimedical BV v Nualtra Ltd

• Jurisdiction: Ireland
• Judge: Mr Justice Max Barrett
• Judgment Date: 26 May 2016
• Neutral Citation: [2016] IEHC 261
• Docket Number: Record No. 2015/3905P
• Court: High Court
• Date: 26 May 2016

[2016] IEHC 261

THE HIGH COURT

Barrett J.

Record No. 2015/3905P

Between:

NUTRIMEDICAL B.V.

AND BY ORDER

AYMES INTERNATIONAL LIMITED

Plaintiffs

– and –

NUALTRA LIMITED

Defendant

Intellectual Property – Assignment of trademark – Infringement of trademark – Unlawful interference of trade of infringer by an assignor – Discovery of documents – Temporal constraint

Facts: The parties to the present proceedings sought an order for discovery of certain categories of documents from each other in the main infringement proceedings instituted by the plaintiffs against the defendant for infringement of the plaintiffs' EU Trade Marks issued in relation to the supply and distribution of nutritional supplements for medical use. The defendant had also instituted a counterclaim against the assignor of the said EU Trade Marks/second named plaintiff, for unlawful interference in its trade and business and had already obtained a Norwich Pharmacal order in the English Court against the second named plaintiff. The defendant contended that the discovery of documents concerning instances of confusion regarding the origin of goods should be ordered subject to the application of temporal constraint.

Mr. Justice Max Barrett granted an order for the discovery of documents to both parties, but to a limited extent. The Court, however, granted an adjournment in relation to the discovery of additional and other categories of documents to the defendant under o.31 r.12(2)(a) of the Rules of the Superior Courts, 1986, and directed that the present case must be listed for case-management under a judge in charge of a commercial list. The Court granted an order for discovery of documents containing instances of confusion without application of a temporal limit. The Court held that though the appropriate date on which a person became an owner of the Trade Mark was the date for starting the alleged discovery, the date prior to that would be used for analysis as to whether any confusion existed prior to that date, and hence, no temporal limit would apply. The Court observed that the dates on which the infringer had become aware of his infringed action and ceased the production of infringed products would not be determinative of deciding the timeframe of the discovery of documents. The Court granted an order to the defendant for discovery of documents in relation to the defendant's business, products and website from the plaintiffs. The Court held that the Court should strike a balance between legitimate interests of a party pleading fraud versus the mala fide intent to know the case of the opposite party under the guise of discovery of documents.

JUDGMENT of Mr Justice Max Barrett delivered on 26thMay, 2016.

Part 1

Background

1 Nutrimedical BV is a manufacturer of nutritional supplement products. It previously had exclusive title to EU Trade Mark No. 10876381 “NUTRIPLETE”. Nualtra has hitherto been supplying and distributing nutritional supplements for medical use bearing the signs “NUTRIPLEN” and “NUTRIPLEN PROTEIN”. On 17th June, 2015, following the commencement of these proceedings, Nutrimedical licensed and assigned the NUTRIPLETE, NUTRIPLEN and NUTRIPLEN PROTEIN marks to Aymes International.

2 On 21st February, 2013, Nualtra applied to what is now the European Union Intellectual Property Office (EUIPO, formerly OHIM) to register three Community Trade Marks (now EU Trade Marks) in respect of “NUTRIPLEN” (application no. 11593209), “NUTRIPLEN PROTEIN” (application no. 11593233) and “NUTRIPLEN SMOOTHIE” (application no. 11593266). On 11th June, 28th July, and 20th August 2014, OHIM (as was) rejected Nualtra's applications concerning, respectively, NUTRIPLEN SMOOTHIE, NUTRIPLEN PROTEIN and NUTRIPLEN, holding that Nutrimedical's opposition to those applications was well-founded on its Community Trade Marks (now EU Trade Marks). On 10th October, 2014, Nualtra lodged notices of appeal to OHIM in respect of each of its applications. On 24th April, 2015, OHIM rejected Nualtra's appeal in respect of its application for NUTRIPLEN.

3 On 20th May, 2015, the plaintiffs' lawyers served Nualtra with the plenary summons in these proceedings, indicating that they would prosecute the proceedings if Nualtra did not give an undertaking (a) to withdraw all products bearing the name NUTRIPLEN, (b) to destroy all remaining stocks of such products, and (c) not, for the duration of Nutrimedical's Community Trade Mark, to manufacture, import into, market or sell within the European Union, products bearing the mark NUTRIPLEN. Such undertaking not having been provided, these proceedings continue.

Part 2

Some Peculiar Behaviour

4 Without seeking to diminish the seriousness of the trade mark dispute arising between the parties – and alleged infringement of another's intellectual property rights is a most serious matter – it would not be unfair to describe the facts identified in Part 1 as comprising a fairly typical intellectual property dispute. Adding some untypical colour to the proceedings is certain peculiar behaviour in which Aymes International has hitherto engaged.

5 By its own admission, Aymes International is responsible for sending “poison pen” correspondence about Nualtra to recipients in the United Kingdom. Thus, in November 2014, an e-mail was circulated to an as yet unquantified number of NHS employees in the United Kingdom concerning ‘several disturbing and worrying facts surrounding the use of a product made by the company Nualtra’. Subsequently, in July 2015, hundreds of medical practices in the United Kingdom, received an anonymous letter making various deprecatory comments about Nualtra.

6 By the time this Court embarked upon its first discovery hearing, on 12th February last, Aymes International had accepted responsibility for the July 2015 letter; however, it stridently denied that it was responsible for the November 2014 e-mail. Unfortunately for Aymes International, a Norwich Pharmacal order obtained by Nualtra in the English High Court has since revealed the truth to be rather different, forcing Aymes International to acknowledge in a letter of 29th March to the Irish solicitors for Nualtra that it was in fact responsible for the e-mail of November 2014 also.

7 It is alleged too that Aymes International, inter alia, has (1) (a) contacted a company by the name of Even Santé International, the manufacturer of certain of Nualtra's packaging, and (b) sought to put improper pressure on that company to terminate its contract with Nualtra, (2) organised hoax e-mail complaints and other enquiries to Nualtra, (3) commenced the within proceedings as a means of causing commercial detriment to Nualtra's business, and (4) engaged in a conspiracy with Nutrimedical to cause loss and damage to Nualtra.

8 All of the above-mentioned behaviour of Aymes International has had at least two consequences:

- first, it has prompted Nualtra to bring a counterclaim for unlawful interference with its trade or business and for what is referred to in Nualtra's amended defence and counterclaim as ‘abuse of civil process’ and described by counsel for Nualtra, in the course of the hearings, as ‘a claim of malicious abuse of civil process which is the tort that I have actually pleaded’ (Transcript, 3rd May, 2016, 103).

- second, and of more immediate significance perhaps in the context of this discovery application, Aymes International's duplicity in allowing its lawyers (who at all times acted with complete honesty and in full compliance with their professional obligations) to communicate a falsehood to the court last February concerning the authorship of the July 2014 e-mail, suggests that the court must bring more than a soupçon of scepticism when it comes to assessing the position and evidence of Aymes International. Even so, it is important that the court be careful not to draw the longbow in this regard; our courts may be temples of truth, but few within them are saints.

Part 3

The Discovery Applications

A. Overview.

9 By notice of motion of 27th January, 2016, Aymes International sought seven categories of discovery. By the time of the February hearing only five categories had not been agreed (categories 2, 9, 11, 14 and 17). Following the revelation, consequential upon the Norwich Pharmacal order, that Aymes International was responsible for the e-mail of November 2014, the pleadings were amended and a further day's discovery hearing was required in May. At the May hearing it was indicated that categories 9, 11 and 14 were no longer being sought. The remaining disputed categories (2 and 17) are considered below.

10 As to Nualtra, by notice of motion of 27th January last, it sought three categories of discovery (categories 1, 2 and 5). By the time of the February hearing, category 5 was no longer being sought. However, at the May hearing, Nualtra sought an additional further category of discovery. Categories 1, 2 and this additional category are considered below.

i. Category 2.

‘All documents which concern or refer to instances of confusion regarding the origin of goods bearing the signs “Nutriplen”, “Nutriplen Protein and/or “Nutriplen Smoothie” and the CTM “Nutriplete” in any jurisdiction of the EU.’

B. The Categories of Discovery Sought by the Plaintiffs.

i. Category 2.

11 There appears to be agreement between the parties that discovery of this documentation is relevant and necessary, subject to a contention by Nualtra that some form of temporal constraint ought to apply. In essence, Nualtra contends that Nutrimedical only acquired the mark on 3rd December, 2013 and felt confident enough to sue on it on 19th May, 2015. Ergo, Nualtra maintains, those two dates present a fitting temporal limit for the court to apply.

12 The court, with respect, does not accept this logic. A key thrust of Nualtra's...