Sterling-Winthrop Group Ltd v Farbenfabriken Bayer A.G.

• Jurisdiction: Ireland
• Court: High Court
• Judgment Date: 21 June 1967
• Date: 21 June 1967
• Docket Number: [1965. No. 1155 P.].

[1965. No. 1155 P.].

Sterling-Winthrop Group Ltd. v. Farbenfabriken Bayer A.G.

STERLING - WINTHROP GROUP LIMITED

Plaintiffs

and

FARBENFABRIKEN BAYER AKTIENGESELLSCHAFT

Defendants.

Practice - Discovery of documents - Motion for further discovery - Principles to be applied.

Motion on Notice.

The plaintiffs, a company incorporated in England, for many years had sold chemical products for medicinal use in England and Ireland under the name "Bayer Products"and they were the registered owners in England and Ireland of a trade mark called "the Bayer Cross Mark." The plaintiffs alleged that the defendants, a company incorporated in West Germany, intended to use the word "Bayer" and a form of the Bayer Cross Mark on their goods and that they proposed to trade in a manner which would constitute a passing off of the defendants' goods as being the goods of the plaintiffs. In the course of the plaintiffs' action the defendants filed three affidavits of discovery of documents disclosing the existence of thousands of documents which the defendants considered to be relevant to the issues in the action. The plaintiffs then by letter requested the defendants to disclose other documents, which had not been disclosed, relating to the defendants' decision to adopt the description "Bayer, Leverkusen" or "Bayer, Germany"on labels and in literature for the defendants' pharmaceutical products sold in Ireland, but the defendants replied that such documents were not relevant to any issue in the action. The plaintiffs thereupon applied to the High Court for an order directing the defendants to discover on oath "letters, memoranda, minutes and other documents relating to the decision to adopt the description 'Bayer, Leverkusen' or 'Bayer, Germany' on labels and on literature for the defendants' pharmaceutical products sold in Ireland."

The plaintiffs claimed that the defendants intended to use the plaintiffs' trade marks and trade names and such intention was admitted by the defendants. The plaintiffs also claimed that the defendants intended to pass off their goods as being the goods of the plaintiffs. The defendants filed affidavits of discovery of documents and the plaintiffs applied to the High Court for an order directing the defendants to file a further affidavit of discovery of documents including, in particular, documents relating to the defendants' decision to use the plaintiff's trade marks and names. Having reviewed the authorities it was

Held by Kenny J. 1, that the intentions of the defendants were not relevant to the passing-off issue.

2. That the plaintiffs' application should be refused because they had failed to show that further documents, relevant to the issues in the action, were in the possession of the defendants, or that the person making the affidavits of discovery on behalf of the defendants had misunderstood the said issues, or that such person was in error in holding the view that any further documents were not relevant to the said issues.

Compagnie Financiere du Pacifique v. Peruvian Guano Co. 11. Q.B.D. 55considered.

Cur. adv. vult.

Kenny J. :—

This is an application for an order that the defendants make a further affidavit of discovery of documents. The plaintiffs, who are incorporated in England, have for many years sold chemical products for medicinal use in England and Ireland under the name "Bayer Products" and are the registered owners in England and Ireland of a trade mark called "the Bayer Cross Mark" which consists of the word "Bayer" written horizontally and vertically with the letter 'y' in common. The defendants are a company incorporated in West Germany and they have been sued by the plaintiffs because they intend to use the word "Bayer"and a form of the Bayer Cross Mark on their goods. The plaintiffs' case is that the defendants intend to infringe the trade mark and that the course of trading which they propose will be a passing off of the defendants' goods as those of the plaintiffs. In their defence and counterclaim the defendants have pleaded that the first registration of the trade mark, in the then United Kingdom of Great Britain and Ireland, was obtained by fraud; that the assignments of it, by which the plaintiffs became its registered owners, were invalid; and that the plaintiffs, since the year 1939, have carried on their business in a fraudulent way because, it is said, they have pretended that they are selling goods produced by German companies.

On the 21st June, 1965, the defendants undertook to the Court that they would refrain from infringing the plaintiffs' registered trade mark by the use in the Republic of Ireland, in relation to any chemical substance prepared for use in Medicine and Pharmacy, of the Bayer Cross Mark on cartons or containers and the Court ordered by consent"that the parties herein do within 30 days from the date of delivery of the defence make discovery on oath of the documents which are or have been in their respective possession, power or procurement relating to the matters in question in this action." The defendants filed affidavits of discovery on the 30th September, 1965, and on the 29th April and the 30th December, 1966, disclosing the existence of thousands of documents which they considered relevant.

On the 18th April, 1967, the plaintiffs' solicitors wrote a letter to the defendants' solicitors which contained this passage:—"Following examination of the documents...