Re Parfums Yves Saint Laurent Ltd

CACV000028/1989

Headnote

On the applicants' pleaded case, an order for the exchange of witnesses' statements under O 38 r 2A was not the answer to the respondent's request for interrogatories. Of the differences between the two procedures, the most significant was that the former was voluntary the latter mandatory.

BETWEEN

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Coram: Hon. Fuad, V.-P., Hunter r & Macdougall, JJ.A.

Date of hearing: 6 April 1989

Date of judgment: 7 April 1989

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J U D G M E N T

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Hunter, J.A. :

1. This is an appeal from Mayo J's refusal on 16th February 1988 of leave to deliver interrogatories. The action concerns the use of the name "RITZ". The applicants in the action (and the respondents to this appeal) are Ritz Hotel Syndicate Limited. They are the successors in title to Cesar Ritz who in 1898 founded the Hotel Ritz in Paris. They represent the Hotel Ritz interests in the suit. The respondents (and appellants) are Charles of the Ritz Ltd, in its two current forms. The original respondent was Charles of the Ritz Limited. It then assigned the trade marks in question to Max Factor UK Limited. There was a change of name.   Charles of the Ritz became Parfums Yves faint Laurent Ltd that is the 1st respondent. The Max Factor UK Ltd then became Charles of the Ritz Ltd, now as the 2nd respondent. They represent the interests of the Charles of the Ritz and associated Companies whose business does back to 1920s in New York.

2. Charles of the Ritz Limited is the registered proprietor of four trade marks in Hong Kong in class 3, cosmetics. Two were registered on 13th August 1969. The first is the word "RITZ"; the second the phrase "CHARLES OF THE RITZ". The next two trade marks were registered on 9th December 1981. They consist of "CHARLES OF THE RITZ" with other added words, which appear to be descriptive of a particular product range.

3. The present application was launched in January 1985 by the applicants. It is to have those trade marks expunged. The applicants' case in brief is that they are the owners of the reputation and goodwill associated with the word "RITZ" in succession to Cesar Ritz; that at the time of the registration the respondents were not the proprietors of the narks; and that user by the respondents is likely to deceive.

4. Pleadings were ordered and having regard to the narrow point at issue on this appeal, it is important to see how the applicant's case was put. In paragraph 7 of the Points of Claim, it is said that:

"The applicant has registered a number of trade marks consisting of or including the word "RITZ" in a number of classes in inter alia, France".

5. In that paragraph a distinction is drawn between two types of marks : what might be called the single mark consisting only of the word "RITZ", and the multiple mark consisting of the word "RITZ" with other associations, the word, Hotel, either in front or after, or a Hotel crest.

6. The points of claim go on to refer to other registrations in Hong Kong comprising the crest of  the Hotel Ritz in various classes and the wore "RITZ" in class 25. There were in fact twenty such registrations of the crest. Then the two key paragraphs in the points of claim plead:

"9. Further, the applicant has used the name "RITZ" in relation to numerous goods including soap, shampoo, hair conditioner, scarves, bath robes, bedroom slippers, playing cards confectionery and pate.

10. By reason of the foregoing, the name "RITZ" has at all material times been very well-known throughout the world including Hong Kong of the Applicant's business and goods".

That is the heart of the claim. It is later said:

"15. The applicant is aggrieved by the Respondent's said registrations [that is of the trade marks] and each of them, in that the applicant has used or intends to use either by itself or through licensees in, inter alia, Hong Kong the name "RITZ" and trade marks including the name "RITZ".

So again one has this distinction between the single and the multiple mark precisely drawn.

7. There were three sets of particulars delivered of that pleading. In the first particulars of September 1986, the document is consistent throughout in referring to the use of 'The name and mark "RITZ"' in all user identified in those particulars whether in answer to a request directed at the name and mark "RITZ" or a request directed at multiple user. So those the two documents, the points of claim and the first set of particulars, are wholly consistent.

8. The next set of particulars dated December 1987, however, introduced ambiguity. One there finds, for the fist time, two variations. The phrases are:

"Under and by reference to the trade mark "RITZ" or "Under or by reference to the trade mark "RITZ"".

It emerges, I think now, that that phraseology is intended to cover both single and multiple marks.

9. A third variant appeared in the final set of particulars dated March 1988 where the phraseology becomes "under and by reference to the name "Ritz.".

10. On discovery, which was reached last Autumn, a number of these marks and specimen marks were produced. Perhaps for the first time the respondents became aware of the degree of ambiguity which existed in these particulars and the degree of uncertainty as to whether the predominate user in the world had been of the mark "Ritz" or of one or more multiple marks. It was in that state of affairs that they decided to seek leave to interrogate. The request was made first by letter of 25th November and then by notice of 16th December. The interrogatories sought are now five in number.

The first is:

"1. Which of the goods described in the Schedule of Goods annexed hereto bore the mark "RITZ" alone?"

The Schedule of Goods is a collection of all the references in the pleadings and the particulars to the various users relied upon by the applicants.

11. The second question goes to time, to whether these goods bore the mark "RITZ" on or before 13th August 1969, the first registration date, or on or before the date of the Notice of Motion. The third question picks up change.

12. The fourth picks up the balance of the goods. It is directed to the balance of the goods which are not above identified, and asks the question "what mark or marks containing the name "RITZ" did the said goods bear, and exhibit copies of such marks". The fifth question picks up any subsequent variations of that.

13. So that interrogatories 1 and 4 are the heart of the matter : in respect of what goods was "RITZ" alone used; and in respect of what goods were multiple marks used, and if so, what multiples?

14. The reason for this is not hard to see. One has here, potentially at least, a scale of goodwill and reputation connected with this word, "RITZ". At the top of the scale, you have "RITZ" in association specifically with the word "Hotel", which might be said questionably to point to an hotel and very likely to the applicants' hotel. At the bottom of the scale, perhaps one has the word "ritzy" which the editors of the shorter Oxford Dictionary assures us is now part of the English language by derivation front Cesar Ritz, as being an adjective meaning "high class, posh, luxurious, or ostentatiously smart". The question really is where does "RITZ" come in this scale. It probably lies somewhere between the two. What is it descriptive of? Is it descriptive of a type of business in the same way as "ritzy" might be said to be descriptive? Or is it descriptive of a particular business, and if so of whose business?

15. The respondents are anxious to see the weight of user of the word "RITZ", as opposed to the weight of user of multiple masks. They may have been encouraged to this view by the terms of a judgment delivered in Sydney on 28th November 1988 by McLelland J in the Supreme Court New South Wales; an initial judgment given in the worldwide fight which apparently is going between the two interests represented in this action. The judgment suggests a very long and elaborate trial, in which similar issues were considered by McLelland J as arise in this suit. He seems not to have been very impressed, on the evidence led before him, by the weight of user of the mark "RITZ" by the present applicants. He describes the weight of user by their licensees as "much more significant" and all those licencees, judging from the terms of the judgment, had a choice of marks, they could use either single or multiple. The choice they made may be indicative of the particular reliance they were prepared to place or the word "RITZ" alone, or as to whether they took greater comfort from "RITZ" as part of a multiple mark.

16. That request for interrogatories having been made the matter came before Mayo J on 16th February. In fairness to him, the request then extended to twenty-two interrogatories not five and so it was somewhat more cumbersome. Another particular event had occurred upon which great reliance was placed by the judge and by the applicants. That was that on 10th November 1988 a consent order under O 38 r 2A was made for the exchange of all witnesses' statements within about six months ie by 1st May 1989, in anticipation of a trial which was and is due to start on 12th June. In effect, the main argument against the interrogatories advanced by the applicants on that occasion was that it was a matter of duplication. They were unnecessary having regard to that order.

17. That argument was accepted by the judge. He gave three critical reasons for his refusal :

"1. I can see little justification in making an order for the questions to be answered, when the applicants are required within a short period of time to provide witnesses statements, which will have to include sufficient evidence on the main issues to prove their case, if they are to be successful in this litigation.

2. Put in another way I can see no way that: the answering of the questions now can really assist in disposing fairly of the matter or of saving costs".

In other words, the judge was really saying to the respondents: this is quite unnecessary, you will get it all when you get these witnesses statement.

18. The third reason was that the matters canvassed "would much more conveniently and logically be dealt with by requests for further and better particulars". That reason was taken up by the respondents immediately after the hearing. They wrote to the applicants inviting them, by consent, either to give particulars, or to undertake to deal with the same matters in their witness statements. The request for particulars followed the terms of interrogatories word for word. The answer to that was "no" to both. Indeed, Mr Rogers today asserts, in my view with some considerable justification, that this was not a proper request for particulars at all ie it was interrogatories or nothing. That particular reason has not been supported in argument before us.

19. The real question is whether the overlap which the judge detected between these two roles is a sufficient answer to this request. No dot there is a good deal of overlap between statements, interrogatories and discovery generally. The overlap between interrogatories particulars is acknowledged interns by O 26 r 1(3). The overlap between discovery generally, both of documents and facts, and statements is recognised in the note to O 38, 38/2A/2 particularly in reasons six and seven. This would be true of the majority of cases where the purpose of the request is to contain or limit the other party's case. That case can be limited by any of these means, be it particulars, interrogatories or the delivery of statements. But it is not necessarily true where the purposes of the attack is not to contain, but to obtain admissions which might impugn that case.

20. There are a number of differences between O 38 r 2A and O 36. The principal and the most significant one for the purposes of this application, is that the one is voluntary and the other is mandatory. A person who is ordered to answer interrogatories is required to provide an answer subject only to a plea of privilege or self-incrimination. When it comes to delivery of witness statements, on the other hand, the party is free to choose whatever evidence he wishes to put before the Court. He is under no compulsion whatever.

21. This was a point most clearly made recently in England by Hoffmann J in Comfort Hotels Ltd v Wembley Stadium Ltd [1988] 1 WLR 872. He said, at p 877 :

"Ord. 38, r. 2A has the effect of empowering the court to make it a condition of a party's ability to lead oral evidence at the trial, that he should have given prior notice of such evidence in the form of a written statement served on the other parties. It does note mean that he can be compelled to disclose any document or information. Anything which he does not wish to disclose he may still keep to himself. It is only if he wants to disclose the information by way of evidence at the trial that he may now be required as a pre-condition to disclose it in written form in advance. What the rule therefore does is to advance the moment at which a party must examine the information he has gathered for the purposes of the trial and decide what he is going to use and what he is going to withhold".

22. That is the crucial point of difference between the parties in this case. What the respondents will get when they obtain the applicants' witness statements is what the applicants choose to give them : that part of the applicants history of worldwide tracing upon which they choose to rely, and which they see as being supportive of their claim to, in effect a proprietary interest, in the name "RITZ" alone. What the respondents say is that they do not want the edited version; they want the whole story because they suspect that there has been little use of the word, "RITZ" alone. If there has been such more use of the multiple marks, such use, of itself may point to the need in the mine of users and the public to add to the word "RITZ" because the word "RITZ" alone is not sufficiently descriptive.

23. This goes to the root of this case. With respect to the trial judge, when in effect he said that there was no need for interrogatories because these respondents will get all the information when they get the witnesses' statements, he misunderstood this crucial distinction between these two rules. He failed to appreciate the real significance of this difference, and the importance of this difference in the circumstances of this case.

24. There are other differences of less significance, but still of some significance.

25. The first is that written statements can only contain evidence which the witnesses can in fact give. They can go back as far as human memory, and no further. But in this case, one is going back into trading since 1898. These are proper matters for interrogatories. They cannot be covered by a witness statement. The person answering the interrogatory can only do so from the best of his information knowledge and belief, from the documents and information available to him in the company's records.

26. Secondly, within some limits, the person who is in possession of in an answer to an interrogatory may use it as he may be required to put in other answers as well. But the choice of whether or not to put it in evidence at all, is his. That is not true of statements delivered under O 38 r 2A. They cannot be used at all unless the witness, whose statement it is, is called. That is the effect of r 2A(4).

27. Thircly, reference in this case had been made to particulars. It is a feature of the case as I have said. But the particulars in fact delivered have gone through three editions and had been by no means unambiguous. Indeed, the formula used may have been deliberately chosen to cover this ambiguity. It seems to me that where particulars in that form are delivered, there is almost an invitation to interrogate. It follows, in my judgment, that the actual reasons relied upon by the upon by the judge were unconvincing and, with respect to him, incorrect. They contain a misdirection as far as the exercise of his discretion is concerned.

28. Before this Court his decision was sought to be supported principally on a different ground which he did not specifically rely upon. It is said that interrogatories at this stage in the action are oppressive; that they will put the applicants to a very great deal of work; and that there is insufficient time for that work properly to be done before 12th June. For my part, I do not find this objection impressive any more than it seems to me that Mayo J did.

29. The applicants chosen case is that they have the goodwill and reputation in this single mark, the wore "RITZ". That case has been chosen, no doubt, conscious of the problems which arise in a jurisdiction which does not recognise service marks, and in circum stances where the reputation originated in a service industry, namely an hotel. This may explain some of the problems of presentation. It may explain the ambiguities in the further and better particulars. But I am quite unable to believe that the applicants were not fully aware of this problem from a very early stage.

30. The witnesses' statements must now be nearly completed. If what the judge believed is right, and that it would be a simple matter to extract all this information from the statements, there would be no difficulty whatever in answering these interrogatories, and answering them quite quickly. But if in fact there is difficulty, it must mean that a number of the items of user which are comprehended by this blanket phraseology in the particulars are not going to be relied upon at the trial are tacitly being abandoned. If that be right, then I accept there is much more work to be done in the drafting of the answers to the interrogatories. But equally if that be right, there is a more compelling need for requiring these interrogatories, to explain really what has been happening, and what the full history, of the user of these marks is. So, if in fact the case in the points of claim and in the first particulars is right and simple, there is no question of oppression or difficulty at all. If in fact the real case is wrapped up in the second and third edition of the particulars, then I accept that there may be more difficulty, but also the greater the need for answering these questions.

31. In those circumstances, in my judgment, the judge's decision was wrong. This is a proper case for the ordering of interrogatories; and he reached his result by what must be regarded by this Court as a misdirection. There is no objection taken to the form of interrogatories themselves. They are sought to be answered within fourteen days. Having regard to what Mr Rogers has said to us about his difficulties on time we will obvionsly hear him. Put subject to that, for my part, I would allow the appeal, and order the delivery of answers to the interrogratories within some time yet to be fixed.

Fuad, V.-P.:

32. I agree for the reasons given so comprehensively by my Lord that the appeal should be allowed.

Macdougall, J.A.:

33. I too agree with the reasons given my Lord Hunter. I too would allow this appeal.

Representation:

Peter Garland (M/s Leacons) for Appellants/Respondents

Anthony Rogers, QC, Andrew Liao, QC (M/s Johnson Stokes & Master ) for Respondent/Applicant