FEDERAL COURT OF AUSTRALIA Unilever Aust Ltd v RFC Nominees Pty Ltd [2000] FCA 1660 UNILEVER AUSTRALIA LIMITED (ACN 004 050 828) v RFC NOMINEES PTY LTD (ACN 067 545 117) AND OTHERS NG 732 of 1998 HILL J 13 NOVEMBER 2000 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 732 OF 1998 BETWEEN: UNILEVER AUSTRALIA LIMITED (ACN 004 050 828) APPLICANT/CROSS-RESPONDENT AND: RFC NOMINEES PTY LTD (ACN 067 545 117) FIRST RESPONDENT/FIRST CROSS-CLAIMANT GEORGE KAROUNOS SECOND RESPONDENT/SECOND CROSS-CLAIMANT SABRE INTERNATIONAL LIMITED THIRD RESPONDENT JUDGE: HILL J DATE: 13 NOVEMBER 2000 PLACE: SYDNEY EX TEMPORE REASONS FOR JUDGMENT 1 Before the Court is a motion filed by the second respondent for orders, inter alia, for discovery. The orders for discovery sought are in two parts. The first relates to specific documents which Mr Karounos has enumerated. The second seeks an order for general discovery in effect excluding documents which go to the question of damages on account of profits. 2 The question of discovery was first dealt with at a directions hearing on 3 May 1999. On that day Mr Karounos was represented by a Mr Coppola. At that time orders were made that discovery be given in nine categories. Those categories were agreed to by both paries. One of those categories was framed as follows: "Any and all documents (including audio and video tapes) having been used or being used as advertising including point of sale material on brochures, but not price lists (whether on the initial launch of the product or otherwise) for Unilever in respect of Rosella Soup and Continental Stock bearing the word "real" on its packaging." 3 Other categories related to advertising, packaging, etc using the word "real". 4 On 5 June 2000 a further category of document was ordered to be discovered, namely: "Any document or other material relating to the choice or adoption of "real" as part of a marketing strategy of the new product to be marketed or contemplated to be marketed by the applicant and any research whether related to packing, sales material or otherwise carried out in relation to that strategy." 5 Mr Karounos alleges that despite these orders the applicant, Unilever Australia Limited, has not discovered documents which go to the issues between the parties. This is denied by Unilever. The various documents which Mr Karounos asks now be included in discovery potentially range far wider than the issues as they are revealed in the pleadings filed in the matter. In essence, those issues, as outlined in the second further amended statement of claim and the amended defence, go to the use by Unilever of the word "real" and the use by the respondents of that word in conjunction with goods of the respondent or any of them. 6 It is agreed at the moment that matters that go to damages or loss of profits will be deferred to a later time. It is alleged that the respondents or some of them had no intention to use the word "real" as a trademark and had not used it or used it in good faith as a trademark. On the part of the respondents they deny the case of the applicant and allege that if they in fact have used the word "real" as a mark they or some of them have used the word, "real" as a mark or intended to use it at the time of registration of the applicant's registered mark and that the applicant has used the word "real" as a mark in a way that infringes the registered trademark "real" or "real fish and chips". 7 It is clear enough that some at least of the files listed in Schedule 1 to Mr Karounos' affidavit exist. I am not in a position to judge whether the applicant has or has not produced from those files such documents as are properly discoverable. It is for this reason that I propose to order that the applicant within seven days of today file and serve an affidavit discovering to the extent not already discovered any document, writing or thing in its possession or power which relates to the applicant's decision to use or its actual use of the word "real" whether alone or in conjunction with the word "rosella" or "continental" contained in all or any of the files described in Schedule 1. 8 The list in Schedule 1 in addition to referring to files which might contain material of the kind I have ordered to be discovered refers to three particular matters. The first concerns a statutory declaration of Mr Hall of 23 July; the second Mr Steven Smith and the third Saber International. 9 So far as Mr Hall is concerned he filed a statutory declaration in conjunction with an application to the Trade Marks Office in which he referred to inquiries he had made. In the motion Mr Karounos seeks details of the inquiries Mr Hall made, details of the persons referred to by Mr Hall in his affidavit and various documents relating to Mr Hall's findings. In my view, so far as the papers referred to are concerned these do not go to any issue in the proceedings and are thus not discoverable. So far as the request for information is concerned I do not propose to require the respondents to provide details of these matters because they are not relevant. 10 The same general comments are applicable in respect of the matters headed Steven Smith and Saber International. There is, for example, an allegation that in some way Unilever and Saber International colluded to create difficulties with Mr Karounos in this litigation. That is not a matter that has any relevance to the litigation as the issues are framed in the pleadings and the material in question is accordingly not discoverable. 11 Finally, I should mention that more broadly Mr Karounos seeks at this stage general discovery excluding the issues of profits, accounting for profits or damages. It is now considerably over a year since discovery in agreed categories was ordered. While Mr Karounos submits otherwise there is nothing on the evidence before me that in any way suggests that the applicant has endeavoured to avoid giving discovery to Mr Karounos. 12 It is no doubt often the case that from time to time documents come to notice that ought to have been discovered and are produced but it does not follow from that that the initial failure to produce those documents was deliberate or designed to create difficulties in the path of the other side to the litigation. I would not now grant general discovery particularly when the proceedings are listed for hearing on 12 December. 13 I would order that any documents discovered as a result of the order that I have earlier made should be produced for inspection to Mr Karounos by forwarding a photocopy of the documents to him by express delivery and in accordance with the previous arrangements for photocopy payments of documents and I would reserve costs of the motion as costs of the proceedings at this stage. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Hill. Associate: Dated: 13 November 2000 Counsel for the Applicant: Ronald J Webb Solicitor for the Applicant: Baker & McKenzie The Second Respondent appeared in person Date of Hearing: 13 November 2000 Date of Judgment: 13 November 2000