The High Court refused a request by Bayerische Moteren Werke Aktiengesellschaft for broad discovery of documents about Edward Ronayne’s use of the BMWCare name and the plaintiff’s trademarks, while ordering discovery of documents and recordings relating to advertising campaigns for his business, subject to an exclusion for unsolicited marketing material.
The ruling by Mr Justice Gilligan, delivered on 14 December 2011, concerns a discovery motion in trademark infringement proceedings. The underlying allegation is that Ronayne infringed the plaintiff’s trademarks. The judgment does not determine whether infringement occurred or resolve the parties’ other claims.
The disputed category (a) sought documents evidencing Ronayne’s use of the BMWCare name or the plaintiff’s trademarks in Ireland since 2005, the alleged start of his trading under that name. The plaintiff argued the material could show the extent of the use and assist with the question of damages. It relied on the defendant’s pleaded position that he had used the BMW roundel in providing BMW maintenance and repair services, and that his use was lawful. The defendant argued the request was speculative, insufficiently particularised and burdensome for a small sole trader.
The judge considered that the request was too broad and speculative, particularly given the other agreed discovery categories and the defendant’s admission that he had used the marks. He refused discovery under category (a). The judgment records that categories (b), (c) and (e) had been agreed by the parties; it does not set out their full terms.
The court also addressed category (d), covering documents and audio recordings related to a radio campaign pleaded as scheduled for broadcast in November 2010 and other advertising campaigns, past or intended, promoting the defendant’s business. The judge ordered discovery of that material, excluding unsolicited marketing material received by the defendant. The order concerned discovery only; the judgment made no finding on the trademark allegations or on damages.