HUNGRY JACK'S v BURGER KING [1999] NSWSC 112 | Case summary

1 The plaintiff, Hungry Jack's Pty Limited, which is referred to in the pleadings as HJPL, ("HJPL"), for which Mr N.C. Hutley of Senior Counsel and Mr T.D. Castle of Counsel appeared, has sued Burger King Corporation, which is referred to in the pleadings as BKC, ("BKC"); The Shell Company of Australia Limited, which is referred to in the pleadings as Shell, ("Shell"), for which Mr A.J. Sullivan of Queen's Counsel and Dr A.S. Bell of Counsel appeared; and Burger King Australia Pty Limited, which is referred to in the pleadings as BKAL, ("BKAL"). The proceedings were commenced in 1996 and HJPL will rely on the hearing, which is due to start on Tuesday, 27 April 1999 with an estimated hearing time of three months, on the allegations contained in the Sixth Further Amended Summons. 2 By a Notice of Motion filed on 15 February 1999 HJPL sought leave to administer a Notice to Answer Interrogatories to Shell in the form served on its solicitors on 1 February 1999. The Interrogatories sought to be administered are exhibited to the affidavit in support of the Notice of Motion of Mr A.J. Black, the solicitor for HJPL, sworn on 15 February 1999, which became Exhibit A on the application. The Notice of Motion also sought an order for verified discovery. It came before me on 19 February 1999 and, because of time constraints, I was only able to hear the application in relation to interrogatories, which was opposed by Shell. Because of the imminence of the hearing and the need for continued orderly preparation for it, I took the view, (from which the parties did not dissent), that I should hear this aspect of the motion and give judgment as quickly as possible. The Relevant Pleading 3 The section of the Sixth Further Amended Summons, which commences at paragraph 99, is headed "Breach of Duty of Confidentiality by Shell". It is pleaded in that paragraph that by clause 12.1 of the Test Site Agreement between Shell, BKC and HJPL, Shell agreed that all materials and information made available by HJPL were and are, to the extent that they are not already in the public domain, considered to be proprietary information of BKC. In paragraph 100 it is pleaded that by clause 12.2 of that Agreement Shell undertook to BKC and HJPL that it would keep the BKC proprietary information confidential and use it only in connection with that Agreement; and, in paragraph 101, that HJPL and its agents provided Shell with confidential information in connection with the joint venture or proposed joint venture. The particulars of the information cover a wide area of the conduct of retail outlets for the product of HJPL, the suitability or lack of suitability of certain of them, data relevant to those matters and available socio-economic and traffic data and relevant demographic information in relation to them. The particulars also relate to the set-up of such outlets. 4 Paragraphs 102 and 103 repeat, essentially, the allegations in relation to confidentiality, and paragraph 104 alleges:- "In breach of clause 12.1 of the Test Site Agreement, or alternatively the duties pleaded in paragraphs 102 and 103, Shell has used the information pleaded in paragraph 101 above to assist in designing and opening further Burger King restaurants in Shell service stations which are not operated or serviced by HJPL. PARTICULARS The plaintiff will provide particulars following discovery and interrogatories." 5 It is pleaded that in consequence of the alleged breaches HJPL has suffered and will continue to suffer loss, and that Shell has profited and is continuing to do so. 6 The allegations, and particularly those in paragraph 104, are in issue. The application to administer interrogatories goes to seeking to prove the use, which Shell allegedly made of the confidential information in breach of the Agreement. Particulars 7 By letter dated 19 February 1998 the solicitors for Shell sought further and better particulars of, inter alia, paragraph 104 of the Fifth Further Amended Summons, which is in the same terms as paragraph 104 of the present pleading. Paragraph 12 stated:- "Please provide particulars in support of paragraph 104 of the Fifth Further Amended Summons." 8 On 24 February 1998 the solicitors for HJPL replied in some detail and, in paragraph 5, stated:- "The inference that your client used the confidential information provided to it in designing and opening Burger King Restaurants in Shell service stations is available from the fact that it took active steps to provide that information throughout the period between mid-1994 and late 1995, including initiating discussions with officers of HJPL and corresponding with both Chester and BKC to obtain that information. The manner in which your client used that information, in designing and opening Burger King restaurants in Shell Service stations which are not operated or serviced by HJPL, is obviously a matter within its knowledge, and is not identifiable by our client except by review of your client's discovery, interrogatories or cross-examination. As we noted above, we are currently completing our review and analysis of your client's discovery." 9 This response immediately flagged the essential matters in issue. HJPL alleged that the confidential information had been furnished and, at least inferentially, that wrongful use had been made of it. The intermediate step was whether Shell had so acted and, if it had, in what way it had, which the solicitors for HJPL asserted was a matter within the knowledge of Shell. Such knowledge, of course, extends to two areas, viz what use, if any, Shell made of the information in doing certain things, and what use it made of the information in refraining from doing certain things. I shall refer to these as the "positive" and "negative" uses respectively. 10 By letter dated 9 March 1998 the solicitors for Shell referred to this response, and continued:- "Outside Court on 6 March 1998, you stated that if our client sought a direction requiring your client to provide the above particulars and any particulars to paragraph 104 of the Summons, your client would seek leave to administer interrogatories and refuse to provide the particulars requested until answers to interrogatories are provided. Our client regards this as fishing. Our client is of the view that it cannot complete its statements until your client provides any further particulars to paragraph 101 and particulars in support of paragraph 104." 11 By letter dated 10 March 1998 the solicitors for HJPL responded. They repeated, in essence, what had been said previously, and continued:- "In our conversation at Court on 6 March 1998, we noted that, first, it would be pointless for our client to be directed to provide further particulars as to paragraph 104 of the Fifth Further Amended Summons, since it has already provided the best particulars which are in its possession, and the matter is one within your client's knowledge; second, our client would be entitled to seek leave to administer interrogatories concerning this subject matter; and, third, for your client to press for further particulars and our client to press for interrogatories would have little utility, since your client is currently subject to a direction to file and serve its witness statements. That continues to be our client's position concerning this matter." 12 There was further correspondence between the parties and, by letter dated 12 March 1998, the solicitors for HJPL provided information by way of particulars further to that in their letter of 24 February 1998 and sought that that latter information be amended accordingly. 13 On 8 May 1998 Shell filed a Notice of Motion seeking further particulars in relation to paragraphs 104 and 104A of the Fifth Further Amended Summons. That came before Hunter J on 15 May 1998 when his Honour expressed the view, in argument, that he thought there should be some further particularisation of paragraph 104, but recognised there was "a bit of a problem from the plaintiff's point of view having regard to the fact that the matters are substantially within the knowledge of the defendants". His Honour suggested that an outline "of, in effect, an opening on the use it's said the information was put to" should be provided. In his judgment he said:- "In this matter, the only remaining issue between the parties, apart from some response to Notices to Produce, is a dispute as to the adequacy of particulars of paragraph 104 of the Fifth Further Amended Summons. It does not seem to be in dispute that statements filed and served by the plaintiff do not address the particulars of the alleged use of the information said to have been confidential. On that basis, it seems to me clear that the defendants are entitled to some better particularisation of the allegation of use of confidential information. At the same time, I think it should be recognised that that is a task that is not without its difficulties for the plaintiff, having regard to the fact that the allegation of use is that by the defendants of confidential information about which they would not be likely to be overt. However, I do not regard that as a reason for refusing some assistance to the defendants' understanding of the case to be met in that regard." (My emphasis.) 14 His Honour recognised that much of the information was solely within the knowledge of Shell. His observations, or perhaps more accurately directions, led to a letter from the solicitors for HJPL to Shell dated 28 May 1998 enclosing an outline of HJPL's case as to the use of confidential information as alleged in paragraph 104. 15 In that document HJPL asserted that Shell misused confidential information provided to it both as to site selection and in relation to architectural and design matters, and for the purpose of opening restaurants referred to in paragraph 3. It continued that the misuse of confidential information could be established by inference from the relevant circumstances, and that it was sufficient to establish HJPL's claim that confidential information provided by it to Shell was used, even if that use was not deliberate or was unconscious. It was further asserted that it would not matter if only one portion of the information provided was used by Shell in conjunction with other information, and that it would not be a defence to an allegation of misuse of confidential information even if Shell had used that information merely as a matter of convenience. 16 In the alternative it was asserted that the misuse of confidential information by Shell provided a springboard for the development of the sites referred to in paragraph 3. Thereafter further detailed particulars were given in relation to various sites and, in paragraph 8, it was stated that HJPL would rely on the following additional facts, matters and circumstances to support the inference of use by Shell of confidential site selection information provided to it by HJPL. A number of particulars were furnished. In paragraph 9 it was asserted that as to design of restaurants, HJPL contended that the Court would infer that Shell used confidential information provided by HJPL in designing restaurants at Shell sites in various ways particularised in that paragraph and in paragraph 10. 17 In paragraphs 11 and 12 it was stated:- "11. Shell has not served any witness statements of persons involved in the receipt of architectural and design information from HJPL and Chester and/or the design and/or construction of 'Hungry Jack's' restaurants at Shell service station sites. 12. HJPL proposes to supplement its case by interrogatories and subpoenas to third parties." 18 On 11 June 1998 the solicitors for Shell asserted that the particulars in the outline were not meaningful and that any attempt to administer interrogatories would constitute "a fishing expedition". By this stage there were certain draft interrogatories furnished, which were opposed globally and as to certain specific matters. 19 This led to further disputatious correspondence and, on 19 June 1998, the matter came before Hunter J when his Honour stood it over to 26 June 1998 "to enable the plaintiff to provide the defendant with particulars of the confidential information the subject of the alleged misuse by the defendant …". 20 This led to a document being furnished setting out particulars of the confidential information alleged to have been provided to Shell, which included in paragraph 1.6, HJPL's assessment of the suitability of the Shell service station sites in certain locations in Sydney and, in paragraph 1.7, an assessment of the suitability of Shell service station sites in certain localities in Victoria. Reference was also made in paragraphs 2 and 3 to architectural and design information and financial information respectively. 21 The solicitors for Shell again contended that this was not an adequate response to the request for particulars and, in an attempt to break this impasse, a meeting was arranged between the parties' legal representatives on 9 July 1998. On that date but after the meeting, the solicitors for HJPL wrote to the solicitors for Shell confirming that certain information was agreed to be provided, and noting that the question of interrogatories would be deferred until that further discovery had been given with a view to narrowing or refining the interrogatories. The letter concluded:- "Discussions relating to all further discovery would be deferred for, say, six weeks at which time all outstanding issues in relation to your client's discovery would be addressed with a view to finalising discovery at that time." 22 On 10 July 1998 the solicitors for Shell confirmed the arrangement, although seeking to give discovery in respect of one different site, and agreed to a further meeting being held for the purpose of addressing all outstanding discovery issues "in approximately six weeks' time". 23 On 16 October 1998 the solicitors for Shell wrote to the solicitors for HJPL referring to the Sixth Further Amended Summons and asserting that it still did not provide particulars of the alleged use of confidential information by Shell pleaded in paragraph 104, and requesting them within seven days. The letter concluded that unless satisfactory particulars were received within that time Shell would be filing a motion seeking an order that unless particulars were provided within seven days paragraph 104 should be struck out. 24 By their response, dated 30 October 1998, the solicitors for HJPL referred to the particulars previously furnished; suggested that the orders previously made did not contemplate that HJPL would provide further particulars "of the use of that information" by Shell; and that the use of that information was a matter within Shell's knowledge. 25 The letter continued by referring to the meeting of 8 July 1998 and certain matters flowing from it and concluded:- "While our client has been prepared to defer pressing its application to administer interrogatories to your client, pending further discovery which may allow it to narrow the scope of those interrogatories, it cannot do so indefinitely. Accordingly, if the outstanding discovery issues are not promptly resolved, our client will also press its application for leave to administer interrogatories to your client concerning these matters." 26 On 13 November 1998 the solicitors for HJPL wrote to the solicitors for Shell seeking a response to the communication of 30 October 1998 and, on 22 December 1998, the solicitors for Shell wrote to the solicitors for HJPL setting out documents which had been discovered and seeking "full particulars of the alleged use of confidential information" alleged in paragraphs 104, 104A and 104B "pursuant to the direction made by Mr Justice Hunter on 19 June 1998". 27 The letter repeated the earlier contention that, in the absence of such particularisation, an application would be made to strike out those paragraphs. 28 This led to further correspondence and, on 15 February 1999, the solicitors for HJPL wrote to the solicitors for Shell providing "the following further and better particulars of that allegation" i.e. the allegation in paragraph 104. Under the headings "Site Selection Information" and "Architectural and Design Information" numerous particulars were furnished of information allegedly confidential to HJPL and used by Shell. Further the basis upon which such use was to be inferred was particularised in detail. It is to be noted that the letter made it clear that it was providing "further and better particulars of the allegation" and it concluded:- "Our client anticipates that it will be in a position to supplement these particulars following further discovery by your client, and the provision of answers to the proposed interrogatories by your client. Naturally, our client also reserves the right to supplement or amend these particulars as further information becomes available to it." The Present Application 29 The material to which I have referred came from the affidavit of Mr Black and also the affidavit of Ms A.J. McFadzean, the solicitor for Shell, sworn 19 February 1999. 30 In his written Outline of Submissions Mr Hutley submitted that the interrogatories and further discovery concerned the question whether Shell had misused confidential information as pleaded in paragraph 104, and that documents produced on discovery and other evidence filed in the proceedings revealed a number of factual matters in relation to the design of "Hungry Jack's" restaurants, which disclosed similarities between the Shell standard design and HJPL drawings "upon the basis of which an architect to be called by HJPL has concluded that the HJPL drawings were used in the course of preparing the Shell plans". 31 The submissions relied heavily on the fact that the question of use by Shell of HJPL's confidential information is wholly within the knowledge of Shell, and that the questions asked were in a form which in substance asked what use Shell made of the confidential information. It was submitted this was an appropriate topic for interrogation based on the decision of Rockwell International Corporation & Anor v Serck Industries Limited [1988] Fleet Street Reports 187. 32 It was further submitted that for the purpose of interrogatories the extent to which Shell, by its relevant officers, used the information provided to it was plainly in issue and that the answers to the proposed interrogatories "would clearly be relevant within the test stated in Part 53 rule 1 for discovery and in s.55 of the Evidence Act". 33 The submissions continued that the interrogatories were necessary to obtain evidence which would not otherwise be available to HJPL and, in particular, that Shell had not filed any witness statements from a Ms Seymour or from any other persons responsible for or having a connection with drafting the Shell architectural plans. 34 It was finally submitted that the form of the interrogatories was designed to follow any flow of confidential information:- ".. so that Shell's enquiries can be limited to those persons who did receive or were likely to have received the information. Undoubtedly, if no use was made of the information, as Shell contends in its Defence, the answers to the interrogatories are unlikely to be extensive." 35 In his written Outline of Submissions Mr Sullivan pointed to the fact that there were 289 interrogatories to be answered within three weeks, and that the application for leave to administer interrogatories is oppressive having regard to the number and timing of it. Further he submitted that the vast number of interrogatories together with the further discovery amounted to fishing exercises. Mr Hutley acknowledged that I could extend the time for answering. 36 In support of the submission of oppression he referred to the decisions in American Flange v Rheem Australia Pty Limited [1965] NSWR 195 and Coal Cliff Collieries Pty Limited v C.E. Heath Insurance Broking (Australia) Pty Limited (1986) 5 NSWLR 703. From those authorities he submitted that it was plain that an extensive number of interrogatories may be oppressive in and of itself and that, in the present case, many of the questions had the vice that, depending on the answers to them, the number of responses required would multiply. The first point is undoubtedly correct if the number of interrogatories can be so characterised. However there is much in those authorities, which favours the stance of HJPL on the facts of and in the circumstances concerning this case. 37 Mr Sullivan placed reliance upon the fact that the limit of thirty interrogatories without leave contained in Part 24 rule 1 recognised the potential for oppression and was introduced because of the perceived abuses. He continued that the most cursory perusal of the proposed interrogatories revealed their oppressiveness and provided an example based upon interrogatory 14(b)(ii) and subsequent questions. I do not agree with that submission. 38 Mr Sullivan submitted, nextly, that the interrogatories went to an issue, which has not been properly particularised "until Monday of this week", "namely the use alleged to have been made of the alleged confidential information despite numerous requests by Shell for particularisation of this issue for almost twelve months". I think it is necessary to pause to note that over a lengthy period, as I have described, HJPL has been furnishing particulars and consistently asserting that the question as to the use, if any, Shell made of the confidential information was a matter solely within its knowledge. 39 The submission continued that the application to administer interrogatories comes at an important time in the chronology of the litigation as the trial is only nine weeks away and the proceedings have been on foot for well in excess of two years. The submission continued that HJPL has "only just" served its evidence in chief on the issue of misuse of confidential information to which Shell will need to devote time and resources, and that Shell also needs to respond "in the limited time remaining prior to trial" to HJPL's evidence on quantum, which still has not been served. 40 From these circumstances Mr Sullivan submitted that it is fundamentally unfair to impose the burden of answering such interrogatories: Residues Treatment v Southern Resources Limited (Supreme Court of South Australia - 22 November 1988 - unreported) and Southern Pacific Hotel Services Inc v Southern Pacific Hotel Corporation Limited (Supreme Court of New South Wales - 10 December 1984 - unreported). He continued that it could not "glibly" be said that Shell has ample resources to undertake the task, which answering the interrogatories would require, and he relied upon further written submissions in support of that and, in relation to Ms Seymour, he said that it could not be assumed that it was not intended to call her and that in fact she will be called in response to evidence filed on behalf of HJPL. From this he submitted that there were a very large number of interrogatories, which called for answers from her, and there was no reason why she could not be asked those questions in cross-examination. He wrote:- "Similar comments apply in relation to many other interrogatories .. which call for responses from Messrs Lannen, McKenzie, Plaistead and Harris all of whom it is intended will be called in Shell's case." 41 The second basis for the submissions was dealt with under the heading "Fishing". Mr Sullivan submitted firstly that the interrogatories must be assessed by reference to matters in issue between the parties as disclosed by the pleading as particularised: Ring-Grip Pty Limited v HPM Industries Pty Limited (1971) 1 NSWLR 798. He referred to various other authorities including Southern Pacific Hotel Services Inc and Residues Treatment and continued that it followed "inexorably" from them "that any interrogatories sought to be administered must be strictly confined to HJPL's case as pleaded and particularised". 42 From that he submitted that it became necessary to identify with precision the allegations of HJPL: John Zink Co Limited v Lloyd's Bank and Airoil Burner Co [1975] RPC 385. He submitted that paragraph 104 amounted to nothing more than a bald assertion, which was wholly unparticularised, and that the letter of 16 February 1999 furnished particulars of misuse "for the first time", notwithstanding that Shell had been seeking particularisation for twelve months. I think this submission was misconceived for the reasons I have given. He submitted that there was reference to only some restaurants and that HJPL could not rely on more broadly stated or generalised particulars of misuse "in circumstances where it is plain that it has no basis for such an allegation". 43 As a secondary submission Mr Sullivan stated that the interrogatories were too wide and should be confined. 44 I think it is necessary to go back to the basic submissions made on behalf of HJPL. It is that it provided confidential information to Shell and that it has discerned in certain of the restaurants features, which lead it to the view that Shell has misused the information in respect of restaurants not provided or used by HJPL. From those two factors HJPL asks the Court to infer that Shell has used the confidential information in breach of the Agreement. However, HJPL's submissions go further. They are, firstly, that it may be purely coincidental that the likenesses between what is provided in the confidential information and what is observed have occurred in the sense that Shell, or those at Shell responsible for the set-up of the restaurants, did not have access to the confidential information and did not use it. HJPL submits that this is material entirely within the knowledge of Shell and that it is entitled to interrogate to ascertain what, if any, use Shell made of the information. 45 The submission further was that because Shell is a large organisation and HJPL is unaware of how it functions, it is not able to say that the inference between the two facts to which I have referred necessarily follows, as it may well do in the case, for example, of the confidential information being furnished to one architect, whose work then appears to make use of it. 46 My view is that it is that essential element about which Shell is entitled to interrogate. My further view is that it is not correct to say either that Shell has not provided particulars, which give rise to these allegations, until February 1999, nor is it correct to say that Shell is merely seeking to obtain the information to make good a case, which it has pleaded but cannot prove. 47 As to the first point I have set out in some detail the history of the matter, the particulars which have already been furnished over a wide range of matters potentially relevant to the misuse of confidential information, and to the continued assertion by HJPL that the use to which Shell has put the information is within its knowledge. Hunter J obviously accepted that there would be some limitation on the particularisation HJPL could provide. I think also that the parties sought to overcome the difficulties by the meeting on 9 July 1998 and through some of the correspondence thereafter. 48 There is a recognition in certain of Mr Sullivan's submissions that the knowledge of Shell of the use to which it put the information is relevant. This emerges from his statements that Ms Seymour and Messrs Lannen, McKenzie, Plaistead and Harris are intended to be called and that they may be cross-examined conformably with a number of questions the interrogatories direct to them. Also certain of his specific objections to particular interrogatories were based on the fact that those persons would be called. I shall assume that the witnesses to whom Mr Sullivan has referred in his written submissions will be called, the consequence of that being that it will be necessary for witness statements to be prepared for them. The consequence of the necessity to prepare witness statements is that they will have to be interviewed about matters relevant to the pleadings and, in this context, to the allegation in paragraph 104. I should add that there is not presently before the Court any application to strike out that paragraph. Mr Sullivan's submissions, in my respectful opinion, accept that these witnesses will all be relevant to the issue posed by paragraph 104. In these circumstances proper preparation of the case demands that they be asked about those matters and, in so far as they propose to give evidence either in chief or in reply about them, that that evidence be set forth in a written statement. Accordingly, much of the ground required to be covered in answering the interrogatories will, almost of necessity, have to be traversed in conference. Even if the decision is taken not to lead any evidence from those witnesses about the matters raised in paragraph 104 it is inconceivable, in my view, that a proper preparation of the case would not require that, in the circumstances as they presently exist, viz the knowledge of the potential cross-examination, those witnesses will not be interviewed by the representatives of Shell about such matters. If Shell accepts that they may be cross-examined about them then clearly it would wish to be aware of what they are likely to say under such cross-examination and, certainly, as the issues are formulated, I can see no objection to Shell's legal representatives obtaining such information from those intended witnesses. 49 At one stage during the submissions Mr Hutley suggested that the matter could be shortened by Mr Sullivan stating that he would call in Shell's case all persons who had access to the confidential information. He submitted that if that were to be done then he would be able to cross-examine each and every relevant witness as to the use made of it. Mr Sullivan, as he was entitled to do, stated that he would be calling such witnesses as he considered it appropriate to call in Shell's case, which, as I understand it, meant the ones he identified. That, however, tends to point up the dilemma confronting Mr Hutley. Let it be assumed for example that one of the witnesses called for Shell stated that he made no use of the confidential information but, without more, passed it on to another officer of Shell, who is not called. In those circumstances HJPL has no opportunity to cross-examine that witness although if the interrogatories are allowed the fact that that officer received the confidential information and the use that he or she made of it would appear from the answers. 50 There is a further point, which in my view is of particular significance in a case such as this. The use to which Shell put the confidential information may not only have resulted in Shell's doing something, which is discernible, but it may also have resulted in Shell's refraining from doing something, which is not discernible. For example Shell may have made use of certain of the information furnished to refrain from establishing a restaurant at a certain site, or it may have used the information to modify or alter its plans as to the type or extent of the restaurant it set up at a certain site. These matters would not or may well not, in the absence of interrogatories, be known to HJPL from its observation of what Shell has done or is doing. None-the-less it cannot be suggested that it would not be relevant, and that is the appropriate touchstone as I would understand it, to HJPL's complaint about Shell's alleged misuse of the confidential information. This is essentially a case which depends upon an examination of information solely within Shell's knowledge. In the absence of any undertaking to call all persons to whom the confidential information went within Shell cross-examination of such witnesses as Shell calls will not necessarily disclose all that it knows. HJPL has made it clear at all times that this is a situation it may confront. I do not consider that HJPL should be precluded from seeking to make that case merely because it cannot particularise each and every action which Shell took or failed to take in reliance on the confidential information. I say this against the background of the fact that in my opinion HJPL has provided quite fulsome particulars over a long period of the type of allegations it is seeking to make. 51 It is now necessary to consider the authorities to which I was referred to see whether this point of view is supported by them. Mr Sullivan submitted that Mr Hutley had not taken me to the decision in Rockwell International, notwithstanding that it was annexed to his written submissions, because it was not a case which, on analysis, favoured them. 52 The headnote stated:- "In an action for infringement of copyright in manufacturing drawings relating to plug valves, the defence contained a bare denial of infringement. The plaintiffs served interrogatories concerning the design of the valve complained of. The Master ordered certain of the interrogatories to be answered but disallowed others. The defendants appealed and the plaintiffs cross-appealed. Held, allowing the appeal and dismissing the cross-appeal, (1) the interrogatories sought evidence of the detailed history of the defendants' design and development of their valve. In effect, they were directed to asking the defendants: 'Tell us what you did'. That was not allowable. A plaintiff was entitled to interrogate a defendant as to facts which tended to support the plaintiff's case or to impeach the defendant's case, but not as to facts which supported the defendant's case. … (2) The interrogatories were, and were intended to be, fishing. The plaintiffs wanted to fish out information in the hope that it would either support the plaintiffs' case or enable them to know what part or parts of their case to abandon. As such the interrogatories were not allowable." 53 Contrary to Mr Sullivan's submission, I consider that the decision in Rockwell Corporation supports the submissions of Mr Hutley. At p.195 Falconer J said:- "I would observe that no doubt the plaintiffs could have sought to interrogate as to whether, in designing a particular part or parts, it was derived from the plaintiffs' DB valve; that is to say, whether or not it had been copied. But that is not what the interrogatories have done. As is apparent from a consideration of the interrogatories, what they have done is sought to interrogate the defendants on the lines simply of: 'tell us what you did'." 54 At the risk of repetition it is clear to me that HJPL is seeking to interrogate to ascertain the use to which Shell put the confidential information both positively and negatively in the senses I have sought to describe. That, in my opinion, is directly analogous to the type of interrogatory Falconer J considered was permissible. 55 After a lengthy consideration of the authorities his Lordship continued, at p.205:- "Finally, without looking at any authorities, I would also refer to the well-established practice as to interrogatories in patent actions, whereby although a plaintiff in such an action may administer interrogatories framed on parts of the specification and ask the defendant whether he used the process described therein in forming part of his invention, taking them step by step, he may not go further and ask: if you do not use that process, tell me what you do use." 56 In my view the thrust of Mr Hutley's interrogatories is sanctioned by that which his Lordship considered was permissible. 57 The unsuccessful party sought leave to appeal, which Slade LJ, in a short judgment, refused. 58 Mr Sullivan placed heavy reliance upon the decision in John Zink Company Limited. That case was concerned with an application to strike out a Statement of Claim, which alleged that a former employee of the plaintiff had wrongly disclosed trade secrets to the second defendant, which was a trading competitor. The former employee denied the allegations and asked for particulars, which were not provided. Prior to the matter coming before Templeman J, the Court of Appeal had ordered the plaintiff to provide particulars before the defendants were required to file a Defence. The broadness of the allegations made in the originating process can be seen from the portion from the judgment of Russell LJ cited at p.387:- "It will then be known what are the matters which are said to be trade secrets or confidential matter, and not simply the areas in which or the matters in respect of which it is said that the plaintiffs are or were so to speak proprietors of trade secrets or information that was confidential .. In so far as the plaintiffs' rights have been breached or infringed by the first defendant .. or by procurement by the second defendant, presumably the plaintiffs have at present some ground for their assertions in those regards, and can add to particulars if later other such grounds emerge on discovery." 59 HJPL is in the position that it does have some particulars to which, conformably with the statement I have just quoted, it should be entitled to add in the circumstances to which his Lordship referred. 60 There were similar statements by the other Lord Justices of Appeal, which are quoted at p.387. 61 Templeman J then turned to consider the sufficiency of the particulars furnished. In his consideration of them it is quite clear that his Lordship was satisfied that the particulars did not disclose a case. 62 His Lordship nextly considered whether the Statement of Claim constituted an abuse of the Court's process, which he concluded it did. He said:- "Each case must turn on its own particular facts. But having read the pleadings, the Statement of Claim and the particulars, and the one instance where some attempt is made to remove the sting that this is a purely speculative action, I am satisfied in my own mind that these pleadings are an abuse of the process of the Court and I propose to strike them out and dismiss the action." 63 That case is far removed from the present. There is no application to strike out HJPL's present pleadings in relation to confidential information on the ground that it does not disclose a cause of action. Indeed it is accepted that there is an issue proffered to which Shell has pleaded and which has been particularised, although Mr Sullivan does not accept it has been adequately particularised. It is also accepted, as the submissions to which I have referred make clear, that Shell will be calling witnesses to respond to that issue and there may be cross-examination of them on the issue of the use made of the confidential information. That is a totally different situation from that considered in John Zink. 64 In Southern Pacific Hotel Services there was a claim for damages for breach of contract in which an order had been made for the administering of interrogatories. This led to the defendant filing and serving a Notice to Answer Interrogatories comprising three volumes totalling 504 pages of typescript, which were accompanied by two volumes of similar size containing copy documents described as annexures to the interrogatories. This amounted, according to his Honour, to some 15,000 separate questions. His Honour was of the view by merely surveying the interrogatories and accompanying documents that the task involved in answering them "would be enormously taxing and time consuming". There was some reduction in the number, but his Honour took the view that he did not need to decide between the competing assertions in any precise way because it was clear that the relevant persons to be consulted for the purpose of providing answers were Canadian residents, and he was satisfied that the interrogatories could not be answered in time for the commencement of the trial and, further, that any attempt at answering them would gravely impede the plaintiff's preparation for trial having regard to the amount of time that would be involved. Finally his Honour was satisfied that the cost would be vast. 65 His Honour considered the particular circumstances of that case and, in the course of so doing, stated, correctly in my respectful opinion, that a party cannot plead a case "and then, by an oppressive set of interrogatories, seek to ascertain whether it can be made good". The case to which his Honour was referring was whether an agreement was a sham. He was not considering a case where an essential element was solely within the knowledge of the party being interrogated, nor where it was conceded that witnesses called on behalf of the defendant could be cross-examined on the matters as to which they were sought to be interrogated. His Honour was also considering a case where there was, prima facie, great oppression from the very number of interrogatories asked. 66 In a subsequent judgment in the same matter of 13 December 1984, his Honour referred to the necessity for the party seeking leave to administer further interrogatories to affirmatively satisfy the Court that the interests of justice in the particular case required that leave be granted: Goding v Queensland Newspapers Limited (1965) 113 CLR 170 and Wildier Pty Limited v Lee (1984) 9 ACLR 222. In the present case I am so satisfied that interrogatories should be permitted because I consider it is in the interests of justice that HJPL should be aware of the use, both at a positive and negative level, which Shell made of the confidential information, that being solely a matter within the knowledge of Shell. 67 His Honour was also of the view that there would be an unnecessary distraction in the preparation of the case. That case differs from the present case in which, as I have noted, statements are to be prepared from a number of people, who will be witnesses and to whom the interrogatories will be directed. For the reasons I have given it seems to me that Shell, in the proper preparation of its case, will seek to ascertain that information in the preparation of its case. There is, accordingly, a further reason for not holding that the answering of the interrogatories would be oppressive. Further, in my opinion, the number and content of the interrogatories does not, of itself, bespeak oppression. Nor does the time within which they are to be answered (although I would consider an extension) in the context of the preparation for the hearing. 68 In Coal Cliff Collieries Clarke J considered the practice in the Commercial List. He expressed the view that there are a number of cases in the List in which interrogatories fulfil a useful purpose and in which it would be inimicable to the interests of justice to refuse the parties access to a procedural device, which could facilitate proof of particular facts, save costs or cut delays. In my opinion, the present is such a case. He referred, by way of an example to the facilitation of proof of particular facts, to the authority of an agent, a matter closely analogous to if not the same as one involving information solely within the knowledge of one party. 69 At p.705 his Honour said that commercial Judges must be astute to ensure that interrogatories are only ordered in those cases "in which they are necessary". He referred to the proper definition of issues and quoted from the decision in American Flange, which accepted the general principle that interrogatories are in the discretion of the Court and will only be allowed when they are necessary for disposing fairly of the cause or matter or for saving costs. It further provided that they must be limited to facts that will support the case of the interrogating party or cut down the case of his opponent. The present interrogatories satisfy those criteria. 70 At p.707 his Honour said:- "As a general rule it will be necessary, for instance, for the applicant to show that the provision of the answers will, or may, provide relevant information (such as admissions of facts and other material such as would facilitate the just and expeditious disposal of the proceedings) which the interrogating party has been able to extract from his opponent. Because, however, of pre-trial procedures in the Court and its requirement that the parties make all admissions or concessions necessary to focus attention on the nature of the real dispute I envisage that an order will be unnecessary in many cases. In particular the Court will be unlikely to accede to a submission that 'pretty nearly anything that is material may be asked'." 71 In my opinion the general thrust of the interrogatories HJPL seeks to administer meets these tests. 72 In Residues Treatment Perry J was confronted with a large number of interrogatories, which were alleged to be prolix and oppressive. They occupied a book of some 112 pages and there were annexed documents. His Honour referred to various authorities, including Coal Cliff Collieries. He accepted that that was authority for facilitating proof and said that facilitating proof did not mean providing a means by which the plaintiffs may make out their cause of action, which they otherwise lack. The present is not such a case. Conclusions 73 In my opinion HJPL should be entitled to administer the interrogatories, which are Exhibit A, subject only to a consideration of any particular interrogatories to which particular objection is taken. I note that interrogatory 15 is not pressed by Mr Hutley. Mr Sullivan has handed me a list of the particular interrogatories to which objection is taken and, if necessary, I will deal with those specific objections. I can summarise the reasons why, in the exercise of my discretion I consider it is appropriate to grant HJPL the leave it seeks. 74 Firstly, the interrogatories clearly go to a matter in issue. Secondly, the interrogatories are framed, in relation to that issue, in a permissible form. Thirdly, the interrogatories seek to advance HJPL's case and to derogate from Shell's case in relation to matter which is solely within the knowledge of Shell. Fourthly, Shell proposes to call a number of witnesses and concedes that they may be cross-examined in relation to the matters raised by the interrogatories. Implicit in this concession is that such cross-examination would be relevant to a matter other than credit. However, Shell has not undertaken, and I do not say this in any critical way of it, that it will call all witnesses relevant to that issue. Having regard to the nature of the issue I consider that HJPL is entitled to ascertain what other witnesses may be relevant to it. The interrogatories are accordingly designed not to see whether HJPL has a case, but rather to advance the case, which it has pleaded and particularised in some detail. Fifthly, in so far as it is said that it will be oppressive in the preparation of the case to require these questions to be answered a number of the witnesses will have to be interviewed and statements taken from them. The effect of the interrogatories will be to direct their attention to the precise matters likely to be the subject of the cross-examination. On this point the further matter arises that if the interrogatories are answered time may well be saved in Court by making cross-examination, at least in relation to this issue, unnecessary by virtue of the tendering of the answers to the interrogatories. I regard this as an important matter for consideration provided the interrogatories otherwise satisfy the various tests to which I have referred. For the reasons I have sought to give I am satisfied they do. 75 I have published these reasons as expeditiously as possible so that the parties may be aware of my views. I do not intend thereby to preclude Shell arguing objections to specific interrogatories or HJPL reconsidering either those objections or the form of other interrogatories which may, in the light of what I have said, be modified or refined. The reason I have adopted this course, obviously enough, is so that the parties may proceed with the preparation of the case on the basis that the interrogatories will, at least substantially, have to be answered. 76 I shall stand the Notice of Motion over until Friday, 5 March 1999 and I propose to reserve the costs of the argument before me on 19 February 1999, although my present inclination is that Shell should pay HJPL's costs of that day. I grant leave to any party to apply on two days' or such shorter notice as a Judge of the Court may allow.

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HUNGRY JACK'S v BURGER KING

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