Court finds witness statement from overseas proceedings discoverable in Australian proceedings

Court finds witness statement from overseas proceedings discoverable in Australian proceedings

Australian Medic-Care Company Ltd v Hamilton Pharmaceutical Pty Limited (No 3) [2008] FCA

It is not uncommon for an owner of intellectual property in more than one country to be involved in multi-jurisdictional litigation. When that happens, and the litigation involves the same parties and similar issues, it is important to be mindful that documents (such as witness statements) filed in one of the Court proceedings can be discoverable in the other proceeding as demonstrated in the decision of Lander J on 24 June 2008 in Australian Medic-Care Company Ltd v Hamilton Pharmaceutical Pty Limited (No 3) [2008] FCA (‘the Hamilton decision’)

The parties to the Hamilton decision were involved in litigation in both Hong Kong and in Australia. The subject of both disputes was that Australian MedicCare Company Ltd (‘AMC’) alleged it had an exclusive right in relation to the distribution of Hamilton products in Hong Kong, and AMC claimed Hamilton was supplying its products to another company in Hong Kong in breach of that agreement. In the Hong Kong proceedings, AMC also sued the company said to be engaging in the parallel distribution of Hamilton’s products. In the Hamilton decision, which was an interlocutory application brought by Hamilton in the Australian proceedings for further and better discovery, Hamilton was successful in obtaining orders that AMC discover various documents which had either been discovered in or created as a result of the Hong Kong proceedings. The categories in relation to which Hamilton was successful were as follows:

Hong Kong witness statements

A witness statement by a director of AMC filed in the Hong Kong proceedings, a witness statement given by another defendant filed in the Hong Kong proceedings and documents discovered by the defendants in the Hong Kong proceedings were all found to be discoverable.

AMC resisted discovery of the statement of AMC’s director on the grounds that the statement was protected by legal professional privilege and that privilege had not been waived by the filing of the statement in the Hong Kong proceedings. Justice Lander decided that legal professional privilege is lost when a statement is filed (rather than when it is read into evidence), and ruled that the AMC director statement should be discovered in the Australian proceedings.

The statement of the other defendant in the Hong Kong proceeding had been provided to Hamilton by the other defendant of the Hong Kong proceedings. Hamilton nevertheless pressed for production from AMC. AMC opposed production on the ground that it was a document which AMC had discovered in the Hong Kong proceedings and that AMC was bound by an implied undertaking to not use the document for any other purpose than the Hong Kong proceedings. The same principle applies to documents discovered in Australian proceedings. Despite the undertaking, the Court held that Hamilton was entitled to press for production of the statement in the Australian proceedings. That is, if a document is discoverable under the rules of another court, an undertaking that it not be used for any other purpose other than the purpose of that court does not preclude the party from discovering the document in another court.

Copies of the legal advice given by AMC’s Hong Kong solicitors to AMC

The Court refused to order that AMC’s Hong Kong’s solicitors’ files be discovered, however, the Court ordered that legal advice given in relation to the terms of the agreement and AMC’s entry into the agreement should be discovered. This was because AMC was alleging that it entered into a distribution agreement, that the oral terms were inconsistent with the written terms, and that insofar as they were inconsistent, claimed that the written agreement should be rectified.

AMC’s trade mark attorneys’ file

Hamilton argued that the file was discoverable because AMC’s state of mind as at the date of lodgement of the trade mark application was relevant. The Judge found that AMC should disclose that part of its trade mark attorneys’ file that would indicate the instructions given to the trade mark attorneys at the relevant dates. The remainder of the file was not discoverable.


In summary, Hamilton was successful in obtaining discovery orders in relation to many of the documents it sought. Accordingly, it is crucial when conducting multi-jurisdictional proceedings to always bear in mind the relevance of documents produced in one proceeding to proceedings in another jurisdiction, as the documents may be used for the purposes of Court proceedings where similar parties are involved and where similar issues are in question.