N.V. Sumatra Tobacco Trading Company v British American Tobacco Australia Services Limited

1. The applicant within 30 days of the date of this order give security in an amount of $89,000.00 by way of an Australian bank guarantee or bond or in a form acceptable to the respondent or fixed by the Court, for the respondent's costs of and incidental to the future conduct of the proceeding and the trial of the proceeding commencing on Monday, 14 March 2011, in response to the grounds of appeal relied upon by the applicant in its appeal pursuant to the Trade Marks Act 1995 (Cth) from a decision of the Delegate of the Registrar of Trade Marks made under that Act on 31 July 2008.
2. In the event that the applicant fails to give security in accordance with Order 1, the proceeding be stayed until such security is provided.
3. The parties have liberty to apply.
4. The costs of and incidental to the notice of motion filed 25 October 2010 be reserved for later determination.
5. The Notice to Produce issued by the applicant dated 27 September 2010 be set aside.
6. The applicant have leave to issue a further notice to produce in the terms of the Notice dated 27 September 2010 in which the definitional term "Report" is defined to mean "a document being a survey report or market report or market research report which contains findings or statistical data arising out of a survey, market analysis or market research". Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website.

IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY GENERAL DIVISION QUD 260 of 2008

AND: BRITISH AMERICAN TOBACCO AUSTRALIA SERVICES LIMITED ACN 004 069 649

JUDGE: GREENWOOD J DATE: 8 DECEMBER 2010 PLACE: BRISBANE

Background 1 The aspect of the proceedings currently before the Court for interlocutory determination is an application by the respondent, British American Tobacco Australia Services Limited ("BAT"), by notice of motion, for an order that the applicant, N.V. Sumatra Tobacco Trading Company ("NVS") provide security for the respondent's costs of and incidental to responding to the applicant's appeal under the Trade Marks Act 1995 (Cth) from a decision of the Registrar of Trade Marks made on 31 July 2008. 2 The respondent also seeks an order that a notice to produce filed by NVS dated 27 September 2010 be set aside on the ground that the notice is oppressive having regard to the field of documents required to be produced. 3 The present application for security for costs is the second application for security made by the respondent. The first application was determined by orders made on 16 October 2008: N.V. Sumatra Tobacco Trading Company v British American Tobacco Australia Services Limited [2008] FCA 1542; (2008) 79 IPR 286 (the "NVS v BAT decision"). On 16 October 2008, the applicant was ordered to give security within 30 days of the order in an amount of $20,000 by way of an Australian bank guarantee or bond (in a form acceptable to the respondent or fixed by the Court) for the respondent's costs of and incidental to responding to the grounds of appeal relied upon by the applicant in its appeal from the decision of the Registrar's Delegate of 31 July 2008. By [38] of the NVS v BAT decision the amount of $20,000 was formulated as security for the costs incurred by BAT of and incidental to responding to NVS's grounds of appeal "up to and including the completion of the preparation of statements of evidence". 4 By the present application, BAT seeks further security for the costs of aspects of work already undertaken since the completion of the preparation of statements and security for the future costs of preparation for trial and the trial itself. The various items of work undertaken and to be undertaken and the costs of the work are the subject of an affidavit of Ms Antoinette Josephine Austin sworn 25 October 2010. Ms Austin is a Barrister and Solicitor of the Supreme Court of Victoria who has since 1982 worked continuously as a Legal Costs Consultant. Ms Austin exhibits to her affidavit a curriculum vitae. In her affidavit, Ms Austin sets out the principles she has applied in formulating an assessment of the costs, the steps she undertook in preparing an itemised bill of costs and the methodology she applied in doing so. Ms Austin also sets out the assumptions that governed the formulation of a draft bill of costs. 5 Those matters will be further discussed in these reasons. 6 The background to NVS's appeal to the Federal Court and the matters put in issue by BAT in its crossappeal were described in the earlier NVS v BAT decision. It is convenient to simply set out in these reasons the description of those matters contained in the earlier judgment. They are these: 2. The principal proceeding arises in these circumstances. 3. On 25 July 2003, NVS made application to register under the Trade Marks Act 1955 (Cth) ("the Act") a trade mark "LUCKY DRAW" (Application No. 963426) in respect of "cigarettes, cigarette filters, kretek cigarettes, cigarette papers, white cigarettes, ashtrays (not made of precious metal), cigars, tobacco, lighters, matches, smoker's articles" within Class 34 under the Act. NVS also applied on the same date to register a trade mark "LUCKY DREAM" (Application No. 963428) in respect of the same goods within Class 34. Both applications proceeded to acceptance. On 4 March 2004, BAT filed a Notice of Opposition in respect of the LUCKY DREAM trade mark. BAT filed a Notice of Opposition on 17 March 2004 in respect of the LUCKY DRAW trade mark. Each Notice of Opposition identified 11 grounds including questions going to whether the applicant was the owner of the mark; intended use; capacity to distinguish the applicant's goods; whether the trade mark would be likely to deceive or cause confusion contrary to s 43 of the Act; whether use involved a contravention of s 60 of the Act; use contrary to s 42(b) of the Act; use in a way likely to mislead or deceive or pass off the applicant's goods as those associated with the opponent having regard to the contended reputation the opponent enjoys in respect of particular registered trade marks; and whether the applicant's trade marks are substantially identical with or deceptively similar to BAT's registered trade marks "LUCKY STRIKE" and "LUCKIES" (Registrations 81899, 151409, 367392 and 482934). Thus, BAT contended that the applications ought to have been rejected. 4. On 31 July 2008 the decision of the delegate of the Registrar of Trade Marks was published. Although it is not necessary for present purposes to analyse the decision of the Registrar's delegate in any real detail, it is sufficient to note that the delegate concluded that "there is no apparent basis for any potential customer to entertain a reasonable doubt that LUCKY DREAM or LUCKY DRAW was a deliberate variation of either LUCKY STRIKE or LUCKIES and intended to indicate a common trade source". The delegate did not believe that there is any particular risk of confusion within the niche market of smokers of a packet of cigarettes bearing the trade mark LUCKY STRIKE with one bearing the mark LUCKY DREAM. However, the delegate considered that each of the applicant's trade marks is deceptively similar to BAT's LUCKIES trade mark in contravention of s 44 of the Act. The delegate did not find it necessary to consider the application of s 60 of the Act. The delegate did not accept that BAT had made out the elements of s 43 of the Act for the purposes of opposition. 5. In the result, the Registrar's delegate reached a decision under s 55(1) of the Act to refuse to register each of the applicant's trade marks on the ground that s 44 of the Act had been made out by the opponent. 6. On 21 August 2008, NVS appealed under s 56 of the Act from that decision to this Court. By its Notice of Appeal, NVS challenges the delegate's decision in relation to s 44 and seeks orders that the delegate's decision be set aside, the opposition dismissed and an order that each trade mark be registered. Fundamentally, NVS challenges the delegate's decision that each of its marks are deceptively similar to BAT's mark LUCKIES. A number of findings in the process of reasoning leading to that conclusion are challenged. Relevantly for present purposes, s 44(1) provides that the applications for registration of NVS's trade marks must be rejected if the either mark is substantially identical with or deceptively similar to either of BAT's registered trade marks. 7. On 12 September 2008, BAT filed a Notice of CrossAppeal by which each of the unsuccessful contentions advanced by way of opposition are reagitated. BAT seeks orders varying the delegate's decision so as to establish that ss 43 and 60 of the Act are made out as a basis for refusing registration of the applicant's trade marks, in addition to s 44 of the Act. BAT relies upon 21 grounds to support the crossappeal. As to s 60, BAT says the delegate ought to have found that each of the applicant's marks are deceptively similar to BAT's LUCKY STRIKE trade mark and that before the priority date each of BAT's marks had acquired a reputation in Australia and by reason of the reputation, use by the applicant of its marks would be likely to deceive or cause confusion. In relation to s 43, BAT says that a number of findings ought not to have been made and others ought to have been made particularly having regard to the reputation in Australia subsisting in BAT's trade marks. BAT challenges the delegate's view that neither of the applicant's marks would be abbreviated to LUCKIES. BAT challenges findings concerning the attitude of casual smokers and their capacity to differentiate brands and findings concerning the meaning to be attributed to the applicant's marks and the contextual meaning to be attributed to BAT's marks. 7 The principles governing the exercise of the discretion to order security for costs are set out at [13] to [15] of the NVS v BAT decision. 8 In the context of an application by a respondent for an order for security of the costs incurred (or to be incurred) in dealing with an applicant's appeal (where the applicant is a corporation located outside the jurisdiction) in circumstances where the respondent is a crossappellant, the Court said this at [35]: 35. It seems to me as a matter of principle that it is correct to say that since NVS is a corporation located outside the jurisdiction with no relevant assets in the sense described above, within the jurisdiction, an order for security ought to be made. The order for security ought to be confined to security for the costs BAT will incur in responding to the matters put in issue by NVS. The election on the part of BAT to crossappeal and put in issue a range of other matters is entirely a matter for the crossappellant. BAT might have elected to respond to NVS's appeal by simply dealing with the grounds raised by NVS. In that event, BAT would be entitled to security for costs of the litigation generated by NVS. BAT has, understandably, elected to go beyond that question by embarking upon a rehearing of the grounds it put in issue and in respect of which it would formulate and seek to call new evidence going to reputation and other matters. The costs of those professional activities are entirely a matter for BAT. 9 BAT seeks an order that NVS provide an amount of $145,066.64 as security for the respondent's costs of and incidental to NVS's appeal. NVS has offered an amount of $20,000 by way of further security. In reliance upon the affidavit of Ms Austin, BAT contends that an accurate and conservative estimate of the costs it is likely to incur in dealing with the field of issues in NVS's appeal (and thus the evidence going to those issues) to the conclusion of trial is the sum it now seeks.

NVS's contentions 10 NVS opposes the order sought by BAT on this footing. 11 First, NVS says that the application is made far too late. 12 BAT sought an order for security in 2008. An order was made on 16 October 2008. It should be noted that although the order is framed in terms of an order for security of $20,000 for the respondent's costs of and incidental to responding to the grounds of appeal, it is plain from [38] of the judgment that the security then provided concerned the costs for which BAT was at risk up to and including the completion of the preparation of statements of evidence. NVS contends that since BAT has not moved the Court for further security since the order on 16 October 2008, it has demonstrated a failure to act in an engaged supervisory and prudential way. NVS says that the parties have now filed all evidence upon which they propose to rely in the proceedings and the last evidence filed and served in the proceeding was that of the respondent on 26 March 2010. On 20 October 2010, the proceeding was listed for hearing over five days commencing on 14 March 2011. NVS says that there was correspondence between the parties in early April 2010 concerning steps to relist the proceeding for further directions. That step was not taken until NVS's solicitors pursued the matter with the respondent on 24 August 2010. The question of further security was not raised inter parties until the respondent wrote a letter to the applicant's solicitors on 21 September 2010. 13 NVS says that in the period between 16 October 2008 and 21 September 2010 BAT elected to prepare extensive evidence in the proceedings in what NVS calls the shadow of the previous judgment which specifically provided for a sum of $20,000 for the respondent's costs of and incidental to responding to the grounds of appeal. NVS says that BAT plainly has not acted promptly. It was obliged to do so. NVS says that BAT, by its conduct, has accepted "the risk as to nonrecovery of costs against the applicant". 14 As to the question of delay, I am not satisfied that the failure to make a further application for security in a more timely way ought to operate as a determinative answer to BAT's application. The exercise of the discretion must take into account broader circumstances serving the interests of justice. The litigation in question is commercial litigation between resourced corporations concerning the rights and interests of the respective parties in the distribution and sale of tobacco products by reference to particular trade marks and involves in NVS's appeal a forensic examination of all the relevant circumstances going to the question, fundamentally, of whether, at the priority date, the sale and distribution of tobacco products bearing the trade mark LUCKY DRAW or LUCKY DREAM is deceptively similar to the sale of tobacco products bearing BAT's registered trade mark LUCKIES. 15 The failure on the part of BAT to supervise or monitor its continuing exposure to the risk of nonrecovery of costs is a matter which the Court will take into account in exercising the discretion as to costs incurred up to the date of the present application. However, as a matter of principle, the respondent ought to be protected from the risk that a foreign corporation with no assets in the jurisdiction may not voluntarily pay the costs incurred by the respondent of and incidental to resisting NVS's appeal, on the assumption that BAT is successful and obtains an order in its favour for the relevant costs. Moreover, NVS seems to concede in its written submissions that BAT is at risk of nonrecovery of costs against the applicant but ought to be treated as having accepted that risk by failing to act more promptly. 16 It seems to me that the real question to be determined is to what extent ought BAT be protected from the risk of nonrecovery in all the circumstances. 17 The second contention of NVS is that BAT's application so far as it relates to past costs in dealing with or attending to the settling of affidavits and the swearing and filing of those affidavits ought to be refused as the previous order was confined to an order for the respondent's costs "of and incidental to responding to the grounds of appeal" and that order governs the past costs. As already indicated, the order was framed in terms of security limited to the period up to and including the completion of the preparation of statements of evidence. As matters transpired, the evidence was prepared in the form of affidavits. 18 It follows that a proper reading of the judgment in the context of the controversy alive before the Court on the previous application taken in conjunction with order 1 of the orders made on 16 October 2008 ought not to operate so as to foreclose an application for security in respect of further costs incurred in the period between the completion of the preparation of statements (affidavits) and the making of the application for further security. The relevant matter is whether, in the circumstances of a reasonably long delay between 16 October 2008 and 21 September 2010, an order for security for those costs ought to be made. 19 The third contention concerns the quantum of the costs in the context of the matters in issue in the proceeding. NVS contends that the scope of the controversy initiated by it is confined to a challenge to the Delegate's decision in relation to s 44 of the Trade Marks Act 1995 (Cth), which challenge is a narrow one. NVS says that BAT has broadened the scope of the controversy by crossappealing and putting in controversy a much wider range of matters. It follows that the field of issues engaging NVS and BAT is much broader than the scope of NVS's appeal and, it contends, the quantum of the costs are correspondingly greater. 20 Since the only costs that ought to be the subject of an order for security are those costs BAT must properly and reasonably confront in addressing the issues raised by NVS's appeal, it is necessary to isolate the body of costs referable to NVS's appeal, assess the quantum of those costs and exercise the discretion having regard to those matters. It further follows that items of work undertaken (or to be undertaken) by BAT referable to addressing the issues raised by it ought to be isolated from those costs for which BAT is at risk due to NVS's election to challenge the Delegate's decision. NVS says that BAT has undertaken an exercise of isolating or attributing costs between the NVS's appeal and BAT's crossappeal by providing Ms Austin with a document called "Categories of Work". By that document, BAT's lawyers have examined 12 affidavits BAT will rely upon in chief and seven affidavits in reply so as to isolate the proportions of each affidavit attributable to the issues raised by NVS's appeal and those attributable to BAT's crossappeal. Overall, BAT contends that approximately 70% of the work it has undertaken is properly referable to dealing with evidence relevant to the issues raised by NVS's appeal. 21 NVS says, however, that Ms Austin has relied upon BAT's apportionment. She has not undertaken her own analysis of the appropriate apportionment. Reliance upon the apportionment represents one of the assumptions upon which Ms Austin's report rests. NVS says that the issues raised by its appeal are narrow and contained with the result that the substantial body of work undertaken by BAT in assembling its affidavitsinchief and affidavits in reply, and all of the future work associated with preparing and conducting a trial by reference to that material is overwhelmingly associated with the field of issues in controversy between the parties on BAT's crossappeal. 22 NVS has not put on any evidence from a costs assessor on these questions and does not rely upon any material which contradicts the affidavit (and report) of Ms Austin. 23 As to the issues raised by NVS's appeal, the position is this. 24 Section 44 of the Trade Marks Act is well known and provides, relevantly, that an application for the registration of a trade mark in respect of goods must be rejected if the applicant's trade mark is deceptively similar to a trade mark registered by another person in respect of similar goods. The Delegate concluded that each of NVS's marks (LUCKY DRAW and LUCKY DREAM) were, at the date of application, deceptively similar to BAT's registered LUCKIES trade mark for the same or similar goods. NVS contends that its marks are not deceptively similar to BAT's LUCKIES mark. NVS's second ground of appeal is that the Delegate erred in concluding that each of NVS's marks would be "shortened or abbreviated to or mistaken for LUCKIES". The third ground is that the Delegate in applying s 44 of the Trade Marks Act failed to have regard to NVS's marks in the form applied for and had regard to the trade reputation claimed by the respondent to subsist in BAT's trade marks LUCKIES and LUCKY STRIKE rather than BAT's marks as registered. 25 By the fourth ground, NVS contends that the Delegate erred in finding that NVS's marks were deceptively similar to BAT's LUCKIES mark having regard to the Delegate's findings that NVS's marks would not "not ordinarily be shortened LUCKIES"; "buyers of tobacco products in Australia are not 'uninvolved consumers'"; and NVS's marks "look and sound different to [BAT's trade marks], have different meanings and are not likely to be considered by consumers to be connected with [BAT's] trade marks".

The scope of the evidential inquiry arising by reason of NVS's appeal 26 Of course, it is not necessary for the applicant to show error on the part of the decisionmaker as the hearing on appeal is a hearing de novo on material properly placed before the Court. However, the grounds of appeal frame a forensic or evidential analysis of whether LUCKY DRAW and LUCKY DREAM are deceptively similar to LUCKIES; whether there is a risk of confusion within the cohort of relevant buyers of the products marked with the competing trade marks; whether LUCKY DRAW or LUCKY DREAM would be shortened to LUCKIES or abbreviated to LUCKIES or mistaken for LUCKIES; whether LUCKY DRAW, LUCKY DREAM and LUCKIES have a common trade source; whether because buyers of tobacco products in Australia are engaged consumers and not just impulse buyers (that is, not "uninvolved consumers") they would differentiate between cigarette products bearing the trade marks LUCKY DRAW, LUCKY DREAM and LUCKIES with the result that no deceptive similarity arises between NVS's marks and BAT's registered mark LUCKIES; and whether NVS's marks look and sound different to BAT's trade mark, have different meanings and are not likely to be considered by consumers to be connected with BAT's trade marks. 27 In Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J in exercising original jurisdiction in an appeal to the High Court considered the field of inquiry enlivened by s 114 of the Trade Marks Act 19051948 (Cth) which provided that "no mark the use of which would by reason of its being likely to deceive … shall be used or registered as a trade mark or part of a trade mark". 28 His Honour noted that the corresponding section in the English Act (s 11 of the Trade Marks Act 1938 (Imp)) was in the same terms as s 114 except that the words "or cause confusion" followed the phrase "likely to deceive". His Honour observed that although these words of addition "make the section more specific they add nothing to its effect". Kitto J was content to adopt, on that footing, propositions derived from In re Jellinek's Application (1946) 63 R.P.C. 59 per Romer J at p 78 as informing the field of inquiry directed to a likelihood of deception under s 114. Those propositions included as matters relevant to a likelihood of deception through use of a particular trade mark (and sufficient to establish such a likelihood) whether a number of persons (within the relevant market whether niche or otherwise) would "be caused to wonder whether it might not be the case that the two products come from the same source" and "[i]t is enough if the ordinary person entertains a reasonable doubt": Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd per Kitto J at p 595. 29 On appeal in Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at pp 607 and 608 Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ said this: The question whether it is likely that deception will result from the use of a mark which is the same as, or which closely resembles, a trade mark already in use may, and frequently will, require the consideration of matters [such as] … whether the registered mark is general or special in character and to ascertain the extent of its reputation. Again, it may be important to see whether the goods in respect of which it is registered constitute a narrow class or a wide variety of goods as also will be the question whether the goods of both the applicant and the opponent will be likely to find markets substantially in common areas and among the same classes of people. It is, of course, for the person applying for registration to establish that there is no likelihood of confusion and we agree with Kitto J. that registration should be refused if it appears that there is a real risk that "the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source"; it is, of course, not necessary that it should appear that the user of the mark will lead to passingoff: … Further, it is not enough for the applicant "to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of registration and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration: Reckitt & Colman (Australia) Ltd v Boden per Dixon J (as he then was) (1945) 70 CLR at pp 94, 95. 30 Both Kitto J and the Full Court proceeded on the footing that confusion constituting a basis upon which a consumer would be "caused to wonder" was sufficient to establish a likelihood of deception. In the modern line of analogous authority, the question of whether conduct (whether use of a trade mark or other conduct) is likely to deceive the relevant section of the public such as prospective retail purchasers of a product would not be likely to be made out simply by demonstrating that those consumers were "caused to wonder" whether it might not be the case that the two products come from the same source. 31 The Trade Marks Act 1955 (Cth) by s 28(a) introduced the words of addition "or cause confusion" after the phrase "likely to deceive" in providing that a mark the use of which resulted in either of those things, shall not be registered as a trade mark. Similarly, the Trade Marks Act 1995 (Cth) provides that a trade mark is taken to be deceptively similar to another trade mark "if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion": s 10. 32 It follows that in determining whether, for the purposes of s 44 of the Trade Marks Act 1995, the trade marks LUCKY DRAW or LUCKY DREAM are deceptively similar to BAT's trade mark LUCKIES, evidence will be relevant to the question of whether there is a real, tangible danger of confusion occurring rather than a mere probability of it; whether a not insignificant group or cohort within the niche or target market will be caused to wonder whether it might not be the case that products bearing the trade marks LUCKY DRAW, LUCKY DREAM and LUCKIES come from the same source; whether ordinary persons within the cohort might entertain a reasonable doubt about that matter; whether, in isolating the ordinary or reasonable members of the class or cohort, an objective attribution of certain characteristics should be made such as whether a prospective purchaser of the products reasonably could be expected to attempt to ascertain a distinction between LUCKY DRAW, LUCKY DREAM and LUCKIES; whether the probability of deception or confusion (in the sense already described) is made out having regard to all the circumstances including the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods: Southern Cross, both before Kitto J and on appeal; Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45 per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ at [83] (in the context of s 28(a), Trade Marks Act 1955). 33 In addition, the propositions formulated by Kitto J recognise that the rights of the parties are to be determined as at the date of the application and the onus must be discharged by the applicant in respect of all goods coming within the specification in the application. 34 It follows that in addressing the issues raised by the applicant's grounds of appeal, the respondent is entitled to put on evidence probative of a fact in issue in the form of affidavits relevant to each of the identified questions. Evidence that is relevant in a proceeding is evidence that, if it were accepted, could rationally affect (directly or indirectly) the assessment of the probability of the existence of a fact in issue in the proceeding: s 55, Evidence Act 1995 (Cth). Of course, evidence that is relevant in that sense is admissible in a proceeding: s 56(1). 35 Accordingly, the applicant is not entitled to limit the scope of relevant evidence that the respondent is entitled to adduce as probative of facts in issue in NVS's appeal. Although NVS says that the issues raised by the appeal are narrow, the field of factual matters relevant to questions in issue in its appeal are comprehended by the questions set out above consistent with authority. 36 Nevertheless, it remains true that the grounds of appeal raised by BAT in its crossappeal are more extensive than those raised by NVS in its appeal and thus a broader field of evidence will be assembled by BAT in advancing its case.

BAT's grounds of crossappeal 37 BAT raises 21 grounds of appeal in its crossappeal by which it agitates each of the unsuccessful contentions advanced in opposition. BAT relied upon 11 grounds of opposition. BAT seeks to demonstrate that registration of each of the applicant's marks ought to be refused on the basis of ss 43, 44 and 60 of the Trade Marks Act. As to s 43, BAT says that use of either of NVS's marks in relation to products for which the marks are sought to be registered would be likely to deceive or cause confusion with its LUCKIES and LUCKY STRIKE marks. BAT contends that both LUCKY DREAM and LUCKY DRAW would be shortened or abbreviated to LUCKIES having regard to the imperfect recollection of consumers and their tendency to abbreviate names for frequently purchased consumer goods. BAT further contends that errors of fact were made by the Delegate which raise for rehearing factual matters concerning the behavioural patterns of casual smokers, their commitment to particular brands, their disposition to errors in purchasing, their practices in abbreviating particular product names, the distinctiveness of the words and capacity to differentiate products, the several contextual meanings of the words LUCKY STRIKE and the comparable contextual meaning of the terms LUCKY DRAW and LUCKY DREAM and the likelihood of confusion between BAT's marks and NVS's trade marks within a niche market of smokers. 38 Apart from these factual matters and the ss 43 and 44 challenge, BAT contends that s 60 of the Trade Marks Act gives rise to a basis upon which neither application ought to be granted. BAT contends that each of NVS's marks are deceptively similar to BAT's LUCKIES and LUCKY STRIKE trade marks on the footing that before the priority date for each of NVS's marks, BAT's marks had acquired a reputation in Australia and by reason of that reputation the use of NVS's marks would be likely to deceive or cause confusion. 39 It can be seen from BAT's grounds of appeal that the field of factual inquiry is broader than the factual inquiry required in order to answer NVS's appeal.

The quantification and apportionment of the costs of the proceeding 40 In order to identify the costs to which BAT is at risk in responding to the issues raised by NVS's appeal, BAT relies upon the affidavit of Ms Austin. In her affidavit, Ms Austin identifies the principles she has applied in isolating BAT's "at risk" costs. Ms Austin identifies the observations of Dixon J in Smith v Madden (1946) 73 CLR 129 at pp 133134 to the effect that the party receiving the costs of the claim should recover the general costs and whatever was reasonably incurred in defending the action considered as if there had been no counterclaim (crossappeal) and the party receiving the costs of the counterclaim is entitled to recover the further or increased costs reasonably incurred in bringing the counterclaim. Thus, NVS's claim is to be treated as if it stood alone and the costs referable to any counterclaim are only those costs by which the counterclaim increases the costs of the proceedings. 41 Ms Austin applies these principles to proceedings in which there is an appeal from the Registrar and a crossappeal by a respondent. 42 Ms Austin says that in quantifying the costs, a division of items of work, which may on the face of the item appear to be a "single item", may be made so as to allocate costs to the appeal or the crossappeal. However, a distinction is drawn between "mixed items" and "common items". A mixed item is one where there is a single charge for the work undertaken but it is possible to sever that part of the work relating to the claim or appeal from the crossclaim or crossappeal. An example of such an item is a charge for drawing a defence and counterclaim or drawing a reply and defence to a counterclaim. In such matters the costs attributable to those single steps can properly be apportioned to the particular claims. Another example is a party's attendance at a court hearing. It may be that specific time spent addressing a crossclaim or crossappeal can be isolated from the time engaged in dealing with a claim or appeal. 43 A common item is an item of work that relates as much to a claim or appeal as it does to the counterclaim or crossappeal. Common items are those which would have been incurred in relation to the claim or appeal in any event and are therefore not divided on taxation but are items allowed in full as costs of the claim. An affidavit of documents relevant to both the claim and counterclaim is an example of a common item for which no allowance will be made as costs of a counterclaim. Similarly, no allowance is made for attendances at general directions hearings which concern both the claim and the counterclaim. In principle, the respondent crossappellant would have attended the directions hearing in any event. 44 In identifying the costs BAT might recover from NVS, should it obtain a costs order in its favour, Ms Austin observes that the items of work falling within a party and party assessment of costs must be shown by BAT to be necessary and properly incurred. In identifying those costs, Ms Austin says that she would ordinarily substantiate the item charges by examining the file notes, drafts, documents, letters and other material on the files of the solicitors for the party. In preparing the report for BAT's security for costs application, Ms Austin has not reviewed her instructor's file as questions of legal professional privilege and client confidentiality prevented her from doing so. That seems a little odd as legal professional privilege would not be waived by consenting to an examination of the files for this limited purpose. 45 However, Ms Austin conducted an analysis of the Court documents provided to her. Ms Austin says that in preparing the draft bill of costs she could not descend to the level of scrutiny she would normally employ in preparing a bill of costs. Ms Austin says that she reviewed the "Categories of Work" summary given to her and identified what she estimated to be a "minimum claim" for that part of the affidavit preparation which is described under the heading "Claim for special letters and attendances on witness to obtain instructions and settle affidavit including perusal instructions". 46 Ms Austin says that the minimum estimate claimed under the heading identified above relates solely to the response to the appeal by NVS and represents those minimum costs which would have been incurred in any event. Ms Austin says that if a detailed bill of costs had been prepared incorporating every item allowable on a party and party basis for preparation of the witness affidavits, the costs in her opinion would have been greater than the minimum charges set out in the bill. 47 Ms Austin says that in preparing the bill so as to take account of the general item called "Care and Conduct" or "Care and Consideration" which involves the exercise of a discretion by a taxing officer, Ms Austin has had regard to the Federal Court's guide issued in accordance with Order 62, rule 46(5) of the Federal Court Rules entitled National Guide to Discretionary Items in Bills of Costs. 48 At paras 29 to 32 of her report, Ms Austin sets out the methodology she has applied in undertaking the apportionment reflected in the draft bill of costs prepared so as to identify the quantification of the various items of work. Ms Austin observes that she was provided with the document called "Categories of Work" which sets out the percentage allocations of work as between the appeal and crossappeal to be applied by her in preparing the estimate of past costs relating to the preparation of the affidavits. Ms Austin says that in order to calculate the apportionment that may apply generally to certain items of future costs (such as attendances on trial) Ms Austin reviewed the percentage allocations described in the document and based on those allocations assumed that it would be appropriate in all the circumstances on a party and party basis to allocate 70% of general costs to the appeal and 30% to the costs of the crossappeal. Ms Austin says that as a result of that "global allocation", she prepared the particular calculations reflected in the bill. Ms Austin says that a specific apportionment of the anticipated time spent at trial, counsel's fees and witness expenses has been undertaken on the assumption of a 70%/30% apportionment in calculating an estimate of the costs. 49 Ms Austin says that she is mindful that any costs claimed by BAT over and above the minimum claims detailed in the draft bill must relate solely to the defence of the appeal. Alternatively, such costs must be apportioned to reflect the percentage allocation previously determined. 50 The apportionment reflected in the "Categories of Work" document is set out in Ms Austin's report. 51 On the application in support of the order for security, BAT has provided the Court with three volumes which contain each of the affidavits relied upon by BAT in chief and each of its affidavits in reply. Written submissions have been formulated which seek to explain the topics addressed by each witness and the pages of each affidavit referable to addressing the issues raised by NVS's appeal and those pages of each affidavit referable to the matters put in issue by BAT. 52 Views might differ about the extent to which the disaggregation of the evidence can accurately be done and ultimately a taxing officer might have to decide where the boundary lies. No evidence has been put on by NVS to contradict the analysis of the affidavits and the attribution of parts of each affidavit to the appeal and parts to the crossappeal. 53 For the purposes of considering the exercise of the discretion, I have not sought to affirm for myself, affidavit by affidavit, the attribution of particular pages or parts of each affidavit to the appeal and other pages or parts to the crossappeal. Nor have I engaged in a process of seeking to establish the precise accuracy of the analysis that led to the "Categories of Work" document and Ms Austin's assumption of that apportionment. I have, however, examined many of the affidavits in order to understand the field of issues addressed by each of the deponents so as to obtain a sense of the matters going to the field of issues discussed at [26] and [32] to [34] of these reasons relevant to NVS's appeal and those matters going to the field of issues described at [37] and [38] of these reasons relevant to BAT's crossappeal. By doing so I have attempted to determine a broad overview of where the emphasis lies in the material rather than a specific page by page deconstruction of the evidence.

The approach adopted by the Court to apportionment 54 The approach I have taken is to start by accepting in a very broad sense indeed the apportionment reflected in the "Categories of Work" document and discount the apportionment to reflect a wider view of the emphasis in the material recognising that Ms Austin did not come to an apportionment of the material herself; Ms Austin did not have the advantage of looking at the files as part of a substantiation exercise; and recognising that in ordering security for costs, the order ought to reflect a discount of the apportionment so as to safely provide protection against the risk of nonrecovery without setting the level of protection at a point beyond a fair emphasis in the material as between the issues on the appeal and those on the crossappeal. 55 For all the obvious reasons, the exercise cannot be precise although I accept that BAT has attempted to inject a reasonably high level of precision into the disaggregation of the affidavits. The point of principle, however, is that the Court must try to come to a view of where the emphasis lies in making a protective order. 56 The approach to the calculation of the "at risk" costs of BAT is this. 57 The draft itemisation of the costs is divided into Parts A and B. 58 Part A is described by Ms Austin as a calculation of the professional costs relating to the preparation of the affidavits. In her summary at p 11 (para 55), Ms Austin describes that amount as $33,330.52 by reference to items 4 to 304 of the draft itemisation (bill), although at p 15 of the bill at the end of item 304, the total costs for affidavit preparation are said to be $32,330.52. Items 4 to 304 of the bill, according to my calculations, amount to $36,330.52. The total of items 2 (leaving aside item 1 which is simply a heading) to 304 amount to $41,428.52 (the running total at p 15). The work at items 2 and 3 amount to $5,098.00. Items 4 to 304 of the bill less items 2 and 3 amounts to $36,330.52. 59 Since the completion of the affidavit preparation work, further work has been undertaken reflected at items 305 to 311. Those items amount to $17,979.00. The items of work at items 2 and 3 have also been undertaken after the completion of the affidavit preparation work and those items amount to $5,098.00. The total cost of work related to the preparation of affidavits, the completion of work relating to the finalisation of those affidavits and the items at 2 and 3 of the bill (including items 305 to 311) amount to $59,407.52. 60 BAT contends that the costs truly related to work done "up to and including the completion of the preparation of the affidavits" is $25,194.02 and no claim for security is made for that sum. A claim for security is however made for the amount at items 2 and 3 ($5,098.00); the costs relating to the execution, filing and service of the affidavits (being work beyond the completion of preparation) which amounts to $11,136.50 and the work identified at items 305 to 311 ($17,979.00). 61 This work the subject of the further Part A claim relates to past work. The amount claimed by way of security in respect of Part A work is $34,213.50. 62 At Part B, Ms Austin identifies the future costs to be incurred. 63 The total costs of Parts A and B (items 2 to 529 constitute $170,260.66). The Part A costs of items 2 to 311 constitute $59,407.52 with resulting future costs constituting $110,853.14. The total sum claimed by way of security is the Part A amount of $34,213.50 and the Part B future costs of $110,853.14 amounting to a total sum claimed by way of security of $145,066.64. 64 In exercising the discretion in ordering security for costs, BAT is entitled to be protected against the risk that an order for costs made against NVS as a foreign corporation with no assets within the jurisdiction might remain unsatisfied. The order for security focuses upon those costs BAT will incur in defending or resisting the appeal by NVS represented by those costs it reasonably incurs which are properly attributable, according to settled principle, to taking instructions (the general costs), preparing, filing and serving its affidavitsinchief or in reply and those steps reasonably incurred in preparing the defence of the appeal for trial and the trial itself. BAT has already obtained an order for security for the costs of completing the preparation of statements (affidavits) in an amount of $20,000. That amount represented an amount for security on the making of the order on 16 October 2008 having regard to the state of the evidence then before the Court. 65 BAT has now assembled a body of evidence which seeks to disaggregate the affidavitsinchief and in reply and supports the quantification of the likely costs by reference to Ms Austin's affidavit. It is true that BAT has not sought to agitate the question of security at any time (apart from its inter parties' letter of 21 September 2010) between 16 October 2008 and the making of the application in November 2010. I am not persuaded that security for costs ought to be ordered in relation to the steps referable to the swearing or affirming of the affidavits and related attendances. 66 Plainly enough, an order for security for costs already incurred (past costs) can be made. However, the earlier order anticipated, in principle, costs up to the completion of the preparation of the evidence in final form. Those costs in fact seem to be $36,330.52. The additional costs at items 305 to 311 ($17,979.00) also seem to be directly related to the settling of the affidavits. Items 2 and 3 are concerned with perusals ($5,098.00). Although an application for security for past costs made some considerable time after the costs were incurred (April 2009) can properly be made, it seems to me, in providing protection for "at risk" costs in the context of an application made in November 2010 against the background of the earlier order, the proper course is to make no further order for security in respect of these past costs but to provide a measure of protection to BAT in respect of future costs. 67 I do not accept that BAT has exhausted its entitlement to apply for a further order for security by reason of the earlier order. Nor do I accept that BAT's failure to monitor the interlocutory steps with a view to identifying "at risk" costs as they are incurred and immediately making an application for further security either then or in anticipation of further "at risk" costs being incurred, constitutes an acceptance of the risk foreclosing any other order. 68 Although I have considered the apportionment reflected in the "Categories of Work" document attached to the report of Ms Austin and the discussion of that apportionment in the written submissions in light of the affidavits, it seems to me that the apportionment contended for by BAT and adopted by Ms Austin (on instructions) ought to be adjusted to take account of the wider emphasis earlier mentioned. For present purposes I accept that the future costs which are likely to be incurred, on the assumptions reflected in Ms Austin's report, constitute $110,853.14 (that is, a figure which reflects the apportionment at 70%). I propose to discount that amount by a further 20% which results in an amount of $88,682.51 and round the security amount up to $89,000.00. 69 Accordingly, an order will be made for security for costs of $89,000.00.

NVS's Notice to Produce 70 The second aspect of the motion concerns a challenge by BAT to NVS's notice to produce. The notice calls upon BAT to produce the following documents having regard to the following definitions: Definitions: "Relevant Period" means the period from 1 January 2000 to December 2003 "Report" means a document which contains the results of a survey, investigation, inquiry or research, and which may contain findings and statistical or other data setting out, or summarising, the findings of any such survey, investigation, inquiry or research "Respondent" means [BAT] "Third Party" means any person or entity instructed, commissioned or engaged by or on behalf of the Respondent, including but not limited to any advertising agency, research organisation or analyst Documents in relation to which production is sought: 1. All Reports produced in the Relevant Period by the Respondent or any Third Party which are within the Respondent's possession, custody or control in relation to each of the following: (a) The target market in Australia of "Lucky Strike" cigarettes; (b) The characteristics of consumers of "Lucky Strike" cigarettes in Australia including but not limited to their average age, gender, demographic distribution and average weekly expenditure on cigarettes; (c) The volume of sales to consumers of "Lucky Strike" cigarettes in Australia; (d) The volume of sales of "Lucky Strike" cigarettes in Australia by reference to type of retail outlet such as supermarket, milk bar, tobacconist, service station, newsagent, convenience store or hotel. 2. All Reports produced in the Relevant Period by the Respondent or any Third Party which are within the Respondent's possession, custody or control in relation to each of the following: (a) The target market in Australia of all brands of cigarettes offered for sale, or distributed, by the Respondent; (b) The characteristics of consumers of all brands of cigarettes offered for sale, or distributed, by the Respondent in Australia including but not limited to their average age, gender, demographic, distribution and average weekly expenditure on cigarettes; (c) The volume of sales of all brands of cigarettes offered for sale, or distribution, by the Respondent in Australia; (d) The volume of sales of all brands of cigarettes offered for sale, or distributed, by the Respondent in Australia by reference to type of retail outlet such as supermarket, milk bar, tobacconist, service station, newsagent, convenience store or hotel. 3. All Reports produced in the Relevant Period by the Respondent or any Third Party which are within the Respondent's possession, custody or control in relation to each of the following: (a) The target market in Australia for cigarettes; (b) The characteristics of consumers of cigarettes in Australia including but not limited to their average age, gender, demographic, distribution and average weekly expenditure on cigarettes; (c) The volume of sales of cigarettes in Australia; (d) The volume of sales of cigarettes in Australia by reference to type of retail outlet such as supermarket, milk bar, tobacconist, service station, newsagent, convenience store or hotel. 4. Without limiting the scope of the request contained in each of paragraphs 1, 2 and 3 above: (a) A copy of the document titled "British American Australasia - Social Report 2001-2002"; (b) A copy of the documents titled "British American Tobacco Australia General Consumer Survey" produced in relation to each of 2000, 2001, 2002 and 2003. 71 BAT contends that the Notice is oppressive because it requires BAT to dedicate more time than is available to it prior to the trial commencing on Monday, 14 March 2011 (for five days) in locating the documents sought by paras 1, 2 and 3 of the Notice and, in part, seeks documents not probative of any issues in the case. The Notice, properly construed, calls, it is said, for much time to be spent locating documents by reason of these considerations. 72 The Notice calls for documents spanning four calendar years (1 January 2000 to December 2003) reaching back between seven and almost 11 years. The definitions are said to impose a heavy burden on BAT because the term "Report" means a document which contains the results of a particular activity, namely, a survey, an investigation, an inquiry or research, and therefore BAT must look for and produce documents extending as broadly as a memorandum or an email that "contains" the relevant results. Moreover, "Report" also means a document which may contain "findings" and "statistical or other data" setting out or "summarising" the findings of any survey, investigation, inquiry or research and thus BAT must search for documents containing findings, statistical data or summaries. The second limb of the definition, it is said, extends the field of the search considerably. In order to find all those documents, BAT says that it is required to undertake an oppressively extensive and detailed survey of its documents. 73 The difficulty of complying with the Notice is the subject of three affidavits of Ms Mariella Hilda Symons sworn 28 October 2010, 29 October 2010 and 15 November 2010. Ms Symons is employed by British American Tobacco Australia Limited ("BATA") described by Ms Symons as a sister company of BAT. Both companies are subsidiaries of British American Tobacco Australasia Limited ("BATAL"). Ms Symons is employed as "Group Insights and Research Manager". She has worked for BATA since 2009. In this role, Ms Symons is responsible for coordinating and managing the research conducted by and on behalf of "BATAL companies" (which presumably means companies controlled by BATAL) and includes BATA and BAT. Ms Symons says that she is "required to provide insights to the business conducted by BATAL companies in Australia in relation to consumer behaviour and various strategies relating to specific brands as well as researching and reporting on key attributes of different market segments". Prior to commencing employment at BATA, Ms Symons had been employed by A C Nielsen Australia Pty Limited and had been responsible for reviewing and interpreting sales performance data and consumer behaviour information. 74 Ms Symons says that she has considered in detail the nature of the documents called for by paras 1, 2 and 3 of the Notice and the burden of compliance is explained in this way. 75 First, Ms Symons has attempted to find a document that lists the surveys or any other investigation, inquiry or research conducted in the required period by or on behalf of BATAL companies but, to the best of her knowledge, a record of this kind does not exist or is not held by BATA or BAT. 76 Secondly, BATA and BAT retain their documents in electronic repositories. These repositories contain many hundreds of thousands, if not millions of documents, it is said. The documents contained in the repositories have been uploaded by hundreds of different employees over a period of 10 years and no single system is used. Ms Symons says there are a variety of methods in place for storing documents and various approaches are taken to storage across departments, functions and people. BATA and BAT manage their hard copy documents by an external storage provider called Access Records Management. 77 Thirdly, Ms Symons has caused searches to be carried out in the various electronic storage facilities (drives) in the relevant period by reference to search fields. The searches were conducted by reference to interrogation of the drives using the following search keys, British American Tobacco Australia General Consumer Survey (Question 1 (Q1)); General Consumer Survey (Q2); GCS (a common abbreviation for "General Consumer Survey" (Q3)); Report or Reports and Result or Results and Survey or Investigation or Inquiry or Research (Q4); Report or Reports and Result or Results and Survey (Q5); Report or Reports and Result or Results and Investigation (Q6); Report or Reports and Result or Results and Inquiry (Q7); and Report or Reports and Result or Results and Research (Q8). Those searches have been undertaken by reference to the "initial queries"; the initial queries plus "Lucky Strike"; the initial queries plus "cigarettes"; the initial queries plus "British American Tobacco Australia Services Limited"; and the initial queries plus the acronym "BATA". 78 Ms Symons says that the above field searches by reference to the keys at Q1 to Q8 produced these responses from Q1 to Q8: 6; 1385; 10,239; 49,236; 17,063; 16,574; 4,485; 24,102. 79 Ms Symons says that she has randomly examined some of the documents from these fields. For example, the documents identified at Q2 in the random sample revealed one duplicate document; the smallest document was three pages; and, the largest document consisted of 246 PowerPoint slides. In the case of Q3, the smallest document was one page, the largest document consisted of 137 PowerPoint slides. Ms Symons concludes that for the most part there are few duplicate documents and while some documents were short in length others were dozens of pages in length and took several minutes to review. Ms Symons estimates that the average time necessary to review each document is at least two minutes and having regard to the range of documents thrown up by the searches such as 49,236 documents at Q4, it will take BAT a very long time to review all the material. In the case of Q4, Ms Symons says that based on an estimate of two minutes to review each document, it will take 1,641 hours or around 205 working days working at eight hours a day without breaks to review the documents. 80 Ms Symons also says that she has attempted to refine the search fields described earlier at [77] by adding the other terms described at [77]. The additional searches identified further documents at Q4 of 8,193, 16,375, 211 and 788 documents (25,567 additional documents in all) or 74,803 documents in total under the Q4 search fields described at [77]. 81 Ms Symons identifies the costs associated with undertaking the review previously mentioned. 82 In addition to the electronic documents, Ms Symons says that BATA retains an extensive archive of hard copy documents which would need to be searched. The archive is stored offsite and is searchable only to a limited degree through a database called the BATA Single Source Database ("SSD") which is an index of hard copy files. A search of the SSD index would identify an "Access Box" containing possibly relevant files. Therefore, an SSD search would only permit the box to be identified and then files would need to be examined within each box. An SSD search will not identify terms contained in documents. For example, an SSD search for "LUCKY STRIKE" would reveal files that contain documents having that phrase in the title to the document but will not reveal documents that contain the phrase within the documents themselves. 83 Ms Symons says that it necessarily follows that only a complete review of each document in every file in every box within the archives (involving 48,000 boxes in total) would be capable of effectively identifying all documents referred to in the Notice and thus it follows that it is impossible to estimate how much time would be taken in identifying all potential documents referred to in the Notice. 84 Ms Symons says that notwithstanding these difficulties, she caused SSD searches to be made using the search terms used in undertaking the searches of the electronic repositories and the supplementary terms. Ms Symons says the results of these SSD searches were inconclusive. A search for "GCS and LUCKY STRIKE" identified only eight files contained within seven separate boxes notwithstanding that a search for the term "GCS" on its own identified 251 files across 39 boxes. Ms Symons further says that as BAT sells and was conducting surveys regarding "cigarettes" and "LUCKY STRIKE" products during the relevant period and as LUCKY STRIKE is one of BAT's major brands, Ms Symons believes it to be highly unlikely that only two files or eight files respectively contain potential Notice documents by reference to those terms. Identifying relevant documents would necessarily involve a physical search of each document within the relevant boxes. Conducting an SSD search confined to the search terms at Q1 to Q8 suggests that documents in the archive potentially responsive to the notice to produce are spread across 261 separate hard copy files contained within 40 separate boxes. Ms Symons identifies the steps necessary to examine each of the 261 hard copy archive files and says that determining whether a document falls within the notice to produce would require a person undertaking the review to have specialised knowledge of the specified terms and categories as well as experience in the management and analysis of the relevant surveys and there are only two individuals at [BATA] that possess the necessary knowledge and experience, namely, Ms Symons and Mr Colin Perumal who is an "Insights Manager". 85 This analysis by Ms Symons seems to demonstrate that if the Chief Executive Officer of the holding company for BAT or BATA or BATAL wanted to see and called for a copy of a market survey or market analysis undertaken by those companies or in the possession or control of those companies (whether undertaken by them or a consultant such as A C Nielsen) relating to the target market for LUCKY STRIKE or perhaps LUCKIES or the demographic or age or gender distribution of buyers of cigarettes, generated in the four year period between 1 January 2000 and 31 December 2003 (say, for consideration in the context of current business decisions or for the purposes of making submissions to a body about particular matters), these companies would simply not be able to produce that material without many months of highly engaged cost consumptive analysis. That seems unlikely in respect of reports which, by inference, necessarily go to the core business activity of the companies. The answer may simply be that the way in which the Notice is framed brings about that result. 86 Interrogating hard copy indices and electronic databases (perhaps relational databases) by reference to the conjunctive and disjunctive search keys described by Ms Symons produces, unsurprisingly, a very wide range of documents which might be relevant to those search keys. 87 Although the Notice defines "Report" in a distributive way, a fair reading of the Notice suggests that what is sought is a copy of any survey report or market report or market research report (undertaken by the company or a consultant to the company) produced in the period 1 January 2000 to 31 December 2003 which speaks to the target market in Australia for LUCKY STRIKE cigarettes, the characteristics of the likely buyers of LUCKY STRIKE cigarettes in Australia (which takes into account such matters as the average age, gender, demographic distribution and average weekly expenditure of that group on cigarettes), the volume of sales of LUCKY STRIKE cigarettes to consumers and the volume of sales broken down by the particular type of retail outlet for those sales such as supermarkets, milk bars, specialist tobacconist shops, service stations, newsagencies, convenience stores or hotels. 88 If the relevant companies undertook or had possession of a survey report or a market report or market research report produced in the particular period going to those matters it surely must be possible within the period between service of the notice to produce and the commencement of the trial on 14 March 2011 (or a reasonable period prior to that date) for documents of that kind to be found if they exist. 89 The second ground of challenge to the Notice is that some of the documents sought by the Notice are irrelevant. As to the documents concerning para 1 of the Notice, they have an apparent relevance to the matters put in issue by BAT having regard to the 21 grounds of crossappeal reflected in BAT's notice of crossappeal and summarised briefly at [37] and [38] of these reasons because the documents sought by para 1 of the notice are reasonably likely to add, in the end, in some way or other to the relevant evidence in the case. The question is not whether each and every document is admissible for the purposes of s 55 of the Evidence Act but whether the documents have an apparent relevance because production of the documents is reasonably likely to add "in the end, in some way or other, to the relevant evidence in the case": Spencer Motors Pty Ltd v LNC Industries Ltd [1982] 2 NSWLR 921 at 927 per Waddell J; Trade Practices Commission v Arnotts Ltd (1989) 88 ALR 90 at pp 101103 per Beaumont J; National Employers' Mutual General Insurance Association Ltd v Waind and Hill [1978] 1 NSWLR 372 at p 385 per Moffitt P (Hutley and Glass JJA agreeing); Seven Network Ltd v News Ltd (No. 11) [2006] FCA 174 per Sackville J at [6]. 90 The documents called for by para 1 of the Notice directly relate to LUCKY STRIKE cigarettes. The documents called for by para 2 concern the target market in Australia for all brands of cigarettes offered for sale or distributed by the respondent, the characteristics of consumers of cigarettes offered for sale or distributed by the respondent (including matters of age, gender, demographic distribution and likely average weekly expenditure by that group on cigarettes), the volume of sales of all brands of cigarettes offered for sale or distributed by BAT in Australia and a breakdown of those sales by reference to the character of the site of sale (as described in para 1). 91 The documents called for by para 3 concern all of the matters described in para 2 without the specific reference to the nexus of cigarettes sold or offered for sale specifically by the respondent. 92 BAT says that the documents called for by paras 2 and 3 extend to all brands of cigarettes offered for sale by BAT and then all cigarettes generally. They say these documents are not relevant to the issues raised in the appeal or crossappeal. 93 By para 5 of the crossappeal, BAT says that each of its trade marks had acquired a reputation in Australia. The factual foundation for that reputation is thus alive as an issue. Having regard to the reputation of each of BAT's trade marks, the use of each of the opposed trade marks is said to be likely to deceive or cause confusion. Buyers of cigarettes might therefore be caused to wonder whether NVS's products marked with the opposed trade marks come from the same sources as products marked with BAT's trade marks. The demographic and other characteristics of the buyers of BAT's products marked with the trade marks would be relevant in determining whether a not insignificant cohort within the consumer group might be "caused to wonder". 94 By para 6 of the crossappeal, a factual question is raised concerning credulous consumers, the degree of speculation about implicit or explicit connection between BAT and NVS's products having regard to reputational issues for BAT's marks in Australia. 95 By para 7 of the crossclaim, BAT puts in issue the question of the propensity of buyers to reduce the terms LUCKY DREAM or LUCKY DRAW to the abbreviated phrase LUCKIES and thus the disposition of buyers within the cohort to abbreviate product names, titles or trade marks (for cigarettes) is central. BAT says that LUCKY DREAM and LUCKY DRAW would ordinarily be shortened to LUCKIES. BAT puts in issue the factual question of whether casual smokers who are not committed to any particular brand may be more or less prone to error than other smokers and thus the general disposition of casual smokers of cigarettes, at large, to be errorprone (presumably in identifying sources of cigarettes or brand selection) is alive as an issue (para 9). 96 At para 10 of the crossclaim, BAT puts in issue the question of whether casual smokers who are not committed to any particular brand and people who purchase cigarettes for others are likely to be more or less errorprone than other smokers and at para 11, BAT puts in issue a question of whether those who know that LUCKIES is an abbreviation of LUCKY STRIKE may or may not be deceived or confused by LUCKY DREAM or LUCKY DRAW. Paragraphs 13 and 14 deal with issues of look and sound between NVS's trade marks and LUCKY STRIKE. Paragraph 16 puts in issue whether NVS's trade marks are comparable to the meanings of BAT's trade marks and whether LUCKY STRIKE has a single, fairly clear meaning, to do with a strike in a mining context as in "to strike oil" which seems to raise questions relevant to the mental cues or hierarchy of mental cues affecting selection choices in the relevant cohort. Paragraph 20 puts in issue whether smokers in what is described as the "niche market of smokers" are at risk of confusion particularly if cigarette products of NVS marked LUCKY DREAM are present for selection before members of the niche market of smokers together with cigarette products of BAT marked LUCKY STRIKE. At paras 22 and 23, BAT put in issue whether NVS's trade marks and LUCKY STRIKE are comparable in a relevant sense and whether the conduct of NVS in adopting the opposed trade marks falsely suggests subbranding by BAT which raises the question of the mental cues and responses of the relevant members of the relevant market. 97 In addition, NVS says that the affidavits put on by BAT address sales of BAT cigarette products, long term brand awareness, the behaviour of consumers and the way in which the niche market operates. 98 It seems to me that the documents called for by paras 2 and 3 have apparent relevance to the issues raised by BAT both in its notice of crossappeal and aspects of the affidavits it has filed in order to advance the merits of each of its contentions. The question is whether the scope of the Notice is framed in a way which makes compliance with it oppressive. That question ultimately comes back to a consideration of whether the documents are reasonably likely to add, in the end, in some way or other to the relevant evidence in the case. It seems to me that they are apparently relevant in the sense that term is used in the authorities. The second question is whether isolating the documents is unnecessarily burdensome. 99 I accept that the Notice is drawn too broadly in the sense that the definitional terms may give rise to a conjunctive and disjunctive field of searches which make it difficult to isolate what might be called the "primary" documents sought by the Notice fairly construed. I do not accept that properly focused inquiries are incapable, without months of burdensome investigation, of revealing documents which are in the nature of a survey report or market report or market research report produced by the relevant companies (either by them or on their behalf) in the relevant period directed to the topics identified in the Notice. 100 I propose to set aside the notice to produce and give leave to issue a further notice to produce returnable at 9.30am, Monday 31 January 2011 in which the term "Report" will be confined to "a document being a survey report or market report or market research report which contains findings or statistical data arising out of a survey market analysis or market research". BAT contends that many of the documents which it will be required to produce are confidential. Appropriate confidentiality undertakings would need to be agreed between the parties. In the event that the parties are unable to reach agreement about that matter, the proceeding may need to be listed before the Court for the determination of an appropriate order. 101 The order for security does not extend to those costs incurred by the respondent in addressing the applicant's notice to produce the subject of leave. The respondent may or may not consider it appropriate to make a further application in relation to those costs. By making this observation, the Court is not inviting a further application for security. The question of whether a further application might be made is a matter for the respondent against the background of the anticipated costs in complying with the applicant's notice issued with leave. However, the point to be made for present purposes is that the existing order does not foreclose a further application on the merits. 102 The costs are reserved for later determination. I certify that the preceding one hundred and two (102) numbered paragraph is a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.