Mopi Pte Ltd v Central Mercantile Corp (S) Ltd: Discovery of Documents and Use in Separate Proceedings
In Mopi Pte Ltd v Central Mercantile Corp (S) Ltd, the High Court of Singapore heard an appeal by Central Mercantile Corp (S) Ltd (“CMC”) 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. Mopi Pte Ltd (“Mopi”) had commenced Suit No 637 of 2000 against CMC for acts of passing-off. The court dismissed the appeal, upholding the implied and express undertakings not to use the documents discovered in Suit No 637 of 2000 for purposes unconnected with that action.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal dismissed with costs.
1.3 Case Type
Civil
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Mopi Pte Ltd v Central Mercantile Corp (S) Ltd concerns the use of discovered documents in separate proceedings and the enforcement of undertakings.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Mopi Pte Ltd | Plaintiff | Corporation | Claim Dismissed | Lost | Tony Yeo, Joanna Koh |
| Central Mercantile Corp (S) Ltd | Defendant, Appellant | Corporation | Appeal dismissed | Lost | G Radakrishnan |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tan Lee Meng | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Tony Yeo | Drew and Napier LLC |
| Joanna Koh | Drew and Napier LLC |
| G Radakrishnan | Rada and Associates |
4. Facts
- Mopi Pte Ltd had made extensive use of the brand name “Hi-Bond” since 1978.
- CMC tried to register “Hi-Bond” as a trade mark.
- Mopi commenced Suit No 637 of 2000 against CMC for acts of passing-off.
- Mopi voluntarily disclosed a number of their suppliers’ invoices for the purpose of assessment of damages.
- CMC sought leave to use the documents in question for the purpose of commencing civil and criminal proceedings against third parties.
- Rajendran J ordered CMC to furnish an express undertaking that they will not use or disclose the documents in question to any third party without the leave of the court.
5. Formal Citations
- Mopi Pte Ltd v Central Mercantile Corp (S) Ltd, Suit 637/2000/Q, RA 16/2004/Q, [2004] SGHC 41
6. Timeline
| Date | Event |
|---|---|
| Mopi Pte Ltd made extensive use of the brand name “Hi-Bond”. | |
| Mopi Pte Ltd commenced Suit No 637 of 2000 against Central Mercantile Corp (S) Ltd for acts of passing-off. | |
| High Court dismissed the defendant's appeal. |
7. Legal Issues
- Discovery of Documents
- Outcome: The court held that documents obtained during discovery in one case cannot be used in another case without the leave of the court.
- Category: Procedural
- Sub-Issues:
- Use of documents obtained during discovery in one case in another case
- Disclosure of documents
- Related Cases:
- [1977] QB 881
- Breach of Undertaking
- Outcome: The court upheld the express undertaking given by the defendant not to use or disclose the plaintiff's documents for purposes unconnected with the original action.
- Category: Substantive
8. Remedies Sought
- Damages
- Injunction
9. Cause of Actions
- Passing Off
10. Practice Areas
- Commercial Litigation
- Intellectual Property Law
11. Industries
- Manufacturing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Riddick v Thames Board Mills Ltd | Queen's Bench | Yes | [1977] QB 881 | England and Wales | Cited for the principle that documents obtained during discovery in a case cannot be used in another case without the leave of the court. |
| Sim Leng Chua v Manghardt | High Court | Yes | [1987] SLR 205 | Singapore | Cited for the principle that the Riddick principle may be relied upon by third parties who are sued on the basis of documents obtained during discovery in another case. |
| Microsoft Corp v SM Summit Holdings Ltd | Court of Appeal | Yes | [1999] 4 SLR 529 | Singapore | Cited for the principle that the implied undertaking not to use documents obtained during discovery in another case may be varied in appropriate situations. |
| Microsoft Corp v SM Summit Holdings Ltd (No 2) | High Court | Yes | [2000] 1 SLR 343 | Singapore | Cited for the principle that an application to vary the implied undertaking will only be granted in “very exceptional circumstances”. |
| Crest Homes Plc v Marks | House of Lords | Yes | [1987] AC 829 | United Kingdom | Cited for the principle that the court will not release or modify the implied undertaking given on discovery save in special circumstances and where the release or modification will not occasion injustice to the person giving discovery. |
| Halcon International Inc v The Shell Transport and Trading Co | Court of Appeal | Yes | [1979] RPC 97 | England and Wales | Cited for the view that disclosure of documents in other proceedings should only be authorised where there are “very strong grounds for making an exception to the general rule”. |
| Jade Engineering (Coventry) Limited v Antiference Window Systems Limited | Patents Court | Yes | [1996] FSR 461 | England and Wales | Cited by the defendant to support their right to pursue those who infringed their trade mark, but distinguished by the court. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| No applicable statutes | |
15. Key Terms and Keywords
15.1 Key Terms
- Discovery of documents
- Implied undertaking
- Express undertaking
- Passing off
- Assessment of damages
15.2 Keywords
- Discovery
- Documents
- Undertaking
- Passing off
- Trade mark
16. Subjects
- Civil Procedure
- Intellectual Property
17. Areas of Law
- Civil Procedure
- Discovery of Documents
- Trade Mark Law