Application for Australian evidence in parallel import case allowed

United Kingdom

In Honda Giken Kogyo Kabushiki Kaisha v KJM Superbikes Ltd (March 21 2007), the Court of Appeal of England and Wales has overturned a decision of the High Court in relation to Honda Giken Kogyo Kabushiki Kaisha's claim against a parallel importer of motorcycles.

The Court of Appeal's decision stems from KJM Superbikes Ltd's appeal against an order of the High Court dismissing its application for a letter of request to be issued to the Australian judicial authorities for the examination of witnesses allegedly relevant to parallel import proceedings brought by Honda.

In essence, KJM had been buying Honda motorcycles from an export firm and importing them into the United Kingdom. Honda sued for trademark infringement, alleging parallel importation of bikes that had not been put on the market in the European Economic Area with its consent. KJM said it did have consent, either express or implied, from Honda's Australian subsidiary (which the subsidiary denied). KJM then applied for a letter of request to be issued to the Australian courts for the examination of two potentially relevant witnesses: the sales director of Honda's Australian subsidiary and the director of the export firm. The High Court said that this was 'fishing' to discover whether there existed any evidence that might assist KJM's case and held that it was not a bona fide request for relevant evidence from suitable witnesses.

Allowing KJM's appeal, the Court of Appeal considered that the trial judge was wrong to deem the request to be a 'fishing' matter. The letter of request was plainly concerned with obtaining potentially significant evidence for use at the trial from witnesses who were plainly capable of giving such evidence. Further, the witnesses' importance was obvious, given their roles in their respective companies. The court added that where the truth as to the issue of consent was to be found in the witnesses' accounts and the burden to prove consent was upon KJM, it was neither fair nor in the interests of justice that KJM should be prevented from issuing the letter of request.

Jeremy Phillips, IP Consultant to Slaughter and May, London

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