Introduction

Our office recently dealt with a case involving the use of the “right of information” at an early stage of trade mark infringement proceedings. The matter concerned a well-known multinational company that had brought a court action based on, among other things, infringement of its trade marks.

During the discovery process, the rightsholder relied on this right to request that the defendant disclose and permit inspection of invoices for products purchased over the previous five years that carried the rightsholder’s trade marks. The rightsholder also sought access to documents from the same period showing the origin of these products and the distribution channels through which they were supplied.

The legal background

Sections 77 and 78 of the Trade Marks’ Law[1] gives rightsholders powerful tools to seek disclosure of information in trade mark infringement proceedings. Transposing Article 8 of the Enforcement Directive,[2] these provisions allow a court to order the disclosure of evidence that is under the control of the opposing party, provided the requesting party (usually the rightsholder) has already produced reasonably available evidence supporting its claim of actual or imminent infringement. These provisions can be activated using Rule 31.7 of the Civil Procedure Rules 2023.

In cases involving infringement on a commercial scale, the court may also require the opposing party to disclose banking, financial, or commercial records, again subject to appropriate confidentiality protections. Confidential information disclosed under these provisions may be used only for the specific purpose stated in the court order.

Additionally, in trade mark infringement proceedings involving commercial-scale activity, the court may order the provision of information regarding the origin and distribution networks of the infringing goods or services. This obligation can extend not only to the suspected infringer but also to any person who: possessed infringing goods on a commercial scale; used infringing services on a commercial scale; provided services used to facilitate infringement on a commercial scale, or was identified by any such person as being involved in the production, manufacture, distribution, or provision of the goods or services.

The information that may be required includes, where appropriate: the names and addresses of producers, manufacturers, distributors, suppliers, previous holders, recipients, wholesalers, and retailers; and details on the quantities produced, manufactured, delivered, received, or ordered, as well as the price paid for the goods or services.

The interim judgment

In an interim judgment, the Court reiterated the importance of intellectual property, drawing upon the first recital of the Enforcement Directive.

It dismissed the respondent’s argument that it did not have any invoices, since every business has an obligation to keep accounting books and records,[3] which must be preserved for a period of six years from the end of the tax year.[4] The defendant, as a business compliant with this law, should therefore have the specific invoices and the Court could not accept the position that it conducts daily transactions with other traders without keeping any records or without receiving invoices or receipts for its purchases.

The Court also drew guidance from Cavallari[5] to dismiss the respondent’s objection that the invoices requested were not documents issued by the defendant but rather by thied parties.

Since there are no Cyprus court decisions on this issue, the Court looked to English case law for guidance, insofar as it made sense in the Cypriot context. English decisions[6] show that when a court considers ordering specific disclosure, it should take into account factors such as: how important the case is; whether the request is reasonable and not excessive; how complex the issues are; how costly compliance would be, and the resources of the parties involved.

In the case in question, the Court held that specific disclosure should be ordered for two main reasons:

  1. The importance of the case: the claim involves alleged infringement of a well-known company’s trade mark, which is a serious matter.
  2. Proportionality: the defendant is already legally required to keep these records for six years under tax law, so providing them should not create extra cost or burden.

As the documents requested relate to invoices for the products that allegedly infringe the rightsholder’s trade mark, as well as documents showing where the defendant bought these products (i.e., the suppliers and the quantities purchased), the rightsholder could use this information to calculate the damages it sought.

The Court found that the request was reasonable, focused, and not a “fishing expedition”. The documents requested were not only relevant but essential for the fair handling of the case. The Court also considered that giving access to these documents would not harm the defendant’s rights and would help speed up and simplify the process.

Finally, the Court ordered that costs of the interim application were payable by the defendant, as the latter had no real reason to refuse access to these documents earlier and instead waited for the rightsholder to file the application in question, causing unnecessary delay.

 

[1]  Cap. 268 (as amended)

[2]  Directive 2004/48/EC of the European Council and of the Council of 29 April 2004 on the enforcement of intellectual property rights

[3]  section 30(1)(b) of the Tax Assessment and Collection Law (L. 4/1978) (as amended)

[4]  pursuant to section 30(2) of Law 4/1978

[5] Cavallari and others v. Mercedes-Benz Group AG and other companies [2023] EWHC 1888 (KB)

[6] such as the cited Tower Bridge GP Ltd v. Revenue and Customs [2016] UKFTT 54 (TC)