INTELLECTUAL PROPERTY – High Court Judge in charge of Intellectual Property List makes “Limited Discovery Order” for redacted materials
The Court of First Instance’s decision in Nu Pharm Ltd (卡士蘭有限公司) v Champ Group Ltd (智盟有限公司) & Ors  HKCFI 751 sheds light on how disputes over discovery of unredacted documents may properly be resolved. In this high-profile trade mark dispute, the Court made, among others, a “limited discovery order” requiring the discovery of four unredacted documents to the Plaintiff’s legal representatives subject to the condition that they are not to release the same to the Plaintiff. Anson Wong Yu Yat acted as junior counsel for the Plaintiff.
On 23 March 2021, the Court of First Instance handed down its Decision on interlocutory applications made in HCIP 5/2020.
The Plaintiff was incorporated in 1998 and is engaged in the business of selling a variety of food supplements and nutritional products. One of the Plaintiff’s products, made in Sweden, relates to the wellness of the liver and is called “肝美健” in Chinese and “Liver Clear” in English. At different stages in time, the Plaintiff managed to obtain certain registered trade marks in respect of “medicinal food supplements for nutritional purpose; all included in Class 5”.
The Defendants are associated companies. Since 1998, the 3rd Defendant has established a network of selling Japanese medicinal and health products under the brand name “日本命力Meiriki”. In 2009, the 1st Defendant was established to import a liver health product manufactured in Sweden (“the Defendants’ Product”). The 1st Defendant entrusted distribution of the Defendants’ Product to the 4th Defendant which also distributed other Swedish manufactured products. The 3rd Defendant handled the marketing of the Defendants’ Product, frequently in conjunction with other Meiriki Products.
In August 2012, the 1st Defendant obtained a distribution right to sell the Defendants’ Product in Hong Kong. It is the Defendants’ case that, prior to that, various preparatory works were undertaken including the naming of that product. By June 2012, the Chinese and English names of the Defendants’ Product were devised as “保肝美” and “Liver Clean” respectively.
On 17 November 2016, the Plaintiff commenced the present proceedings against the Defendants to claim for various relief for trade mark infringement and passing off.
The interlocutory applications
The Honourable Mr Justice Lok, the Judge in charge of the Intellectual Property List, decided the following interlocutory applications made by the parties:
• the Defendants’ application for further and better particulars;
• the Defendants’ application for specific discovery; and
• the Plaintiff’s application for specific discovery.
The Court’s rulings
The Court refused the entire application for further and better particulars made by the Defendants, consisting of a total of 36 requests. In so holding, the Court observed, inter alia, that some of the requests concern matters of evidence and are unnecessary; some others “relate to matters of evidence and not pleading”; some “totally unnecessary”. This Decision serves as a reminder to practitioners that it is simply not open to a party to cross-examine the other side under the guise of requests for further and better particulars (see §44 of the Decision).
As regards the Defendants’ application for specific discovery, the Court allowed two out of the eight categories of outstanding requests made by the Defendants.
As regards the Plaintiff’s application for specific discovery, the remaining question that the Court had to decide was whether it should order unredacted copies of certain documents to be disclosed. The Court made a “Limited Discovery Order” requiring the discovery of four unredacted documents to the Plaintiff’s legal representatives subject to the condition that they are not to release the same to their client, i.e. the Plaintiff.
In allowing the Plaintiff’s application, the Court observed (at §86 of the Decision):
“[Leading Counsel for the Defendants] has also supplied me with the unredacted copies of the [redacted documents] in a sealed envelope and invites me to look at the documents themselves. I decide not to do so. Though the court may in appropriate cases peruse the documents themselves with a view to determine whether the redacted parts are relevant, the court should be reluctant to do so unless it is absolutely necessary. After all, it would be against natural justice if the other side, or at least their legal representatives, do not have the opportunity of looking at the documents themselves.”
This Decision serves as an illustration as to how disputes over discovery of unredacted documents may properly be resolved.
Anson Wong Yu Yat (led by Winnie Tam, SC) acted for the Plaintiff.
|Anson Wong Yu Yat
Recently, Anson acted as junior counsel in two applications before the Appeal Committee and successfully obtained leave to appeal to the Court of Final Appeal on both occasions: FAMV 152/2020 (heard on 12 November 2020, on insolvency matters) and FAMV 151/2020 (heard on 14 December 2020, on land law and equity).
Disclaimer: This article does not constitute legal advice and seeks to set out the general principles of the law. Detailed advice should therefore be sought from a legal professional relating to the individual merits and facts of a particular case. The photograph which appears in this article is included for decorative purposes only and should not be taken as a depiction of any matter to which the case is related.