Mopi Pte Ltd v Central Mercantile Corp (S) Ltd

• Jurisdiction: Singapore
• Judge: Tan Lee Meng J
• Judgment Date: 26 February 2004
• Neutral Citation: [2004] SGHC 41
• Court: High Court (Singapore)
• Year: 2004
• Published date: 01 March 2004
• Plaintiff Counsel: Tony Yeo and Joanna Koh (Drew and Napier LLC)
• Defendant Counsel: G Radakrishnan (Rada and Associates)
• Subject Matter: Civil Procedure,Discovery of documents,Whether documents obtained during discovery in one case can be used in another case,Disclosure of documents,Whether defendant should be released from express undertaking not to use or disclose plaintiff's documents
• Citation: [2004] SGHC 41

26 February 2004

Tan Lee Meng J:

1 The defendants, Central Mercantile Corporation (S) Ltd (“CMC”), appealed against the Assistant Registrar’s refusal to grant them leave to use documents disclosed during the assessment of damages in Suit No 637 of 2000 for the purpose of initiating civil and criminal proceedings against persons who were not parties in the said suit. I dismissed the defendants’ appeal and now give my reasons for having done so.

Background

2 The plaintiffs, Mopi Private Limited (“Mopi”), who market adhesive tapes, had made extensive use of the brand name “Hi-Bond” since 1978. Having spent a substantial amount on promoting the Hi-Bond mark and believing that they were the first in the market to do so, Mopi were taken aback when CMC tried to register “Hi-Bond” as a trade mark. A private investigator made a “trap purchase” of 72 rolls of masking tape bearing the “Hi-Bond” mark and 144 rolls of double-sided tape bearing the same mark from CMC on Mopi’s behalf. Mopi then commenced Suit No 637 of 2000 against CMC for acts of passing-off. Mopi sought damages as well as an injunction to restrain CMC from passing off or attempting to pass off products as “Hi-Bond” products.

3 In their counterclaim, CMC contended that they were entitled to sell Hi-Bond products and that Mopi had infringed their registered trade mark. They further alleged that Mopi had committed acts of passing off by selling products bearing the name “Hi-Bond” as well as four other trade marks, namely “Kawasaki”, “Senisui”, “Star” and “Nikko”. After the trial, Lai Siu Chiu J ruled that Mopi were in fact the wrongdoers. She thus dismissed their claim and ordered them to pay damages to CMC for acts of passing off. Damages were to be assessed by the assistant registrar. To date, this task has not been completed.

4 For the purpose of assessment of damages by the assistant registrar, Mopi voluntarily disclosed a number of their suppliers’ invoices. Mopi left the figures in the invoices intact but they blanked out the suppliers’ names. CMC sought an order that the names in the suppliers’ invoices be disclosed. This was not granted by the assistant registrar. CMC appealed against the assistant registrar’s decision. S Rajendran J allowed the appeal but he ordered CMC to give an express undertaking with respect to the disclosed documents in the following terms:

The Defendant to undertake that it will after the conclusion and final completion of the assessment inquiry, including all appeals,

(i) not use or disclose the documents or information given in discovery by the Plaintiff for the assessment inquiry or the information contained therein to any third party except with the leave of the Court; and

(ii) return to the Plaintiff copies of all the aforesaid documents belonging to the Plaintiff and not to make or keep copies of the same.

5 Notwithstanding their express undertaking, and even before the assessment of damages in Suit No 637 of 2000 has been completed, CMC applied for leave to use the documents in question for the purpose of commencing civil and criminal proceedings against third parties, and more specifically against, among others, Mr Lim Yew Hin, Mopi’s director, and Mopi China Pte Ltd, a company related to Mopi. Their application was understandably strenuously resisted by Mopi.

Whether or not leave should be granted

6 At the outset, it ought to be noted that although CMC sought leave to use documents discovered during the trial and assessment of damages for the purpose of initiating and prosecuting civil and criminal proceedings against third parties, it was clear that they were only interested in the documents discovered during the assessment of damages.

7 It is trite law that a party seeking discovery of documents gives an implied undertaking that he will make use of the documents only for the purposes of the action in which they are disclosed. As such, documents obtained during discovery in a case cannot, without the leave of the court, be used in another case. In Riddick v Thames Board Mills Ltd [1977] QB 881 at 895–896, Lord Denning MR explained in the following succinct terms why there is an implied undertaking to this effect by a person obtaining the documents:

Discovery of documents is a most valuable aid in the doing of justice. The court orders the parties to a suit – both of them – to disclose on oath all documents in their possession or power relating...