Federal Court of Australia

National Tyre & Wheel Pty Ltd v Starcorp Holdings (NSW) Pty Ltd (Application for particulars) [2026] FCA 1273

REASONS FOR JUDGMENT

Ex tempore, revised from transcript

WHEELAHAN J:

1    The applicant claims that the respondent has, inter alia, without the applicant’s licence or authority imported into Australia and sold two models of tyres which embody designs which are identical to, or substantially similar in overall impression to the applicant’s registered designs. The tyres are identified as –

(a)    Cooper ZEON LTZ PRO tyres; and

(b)    Cooper AT3LT tyres.

2    By its defence, the respondent denies that it imported the tyres. However, it admits that it has sold the tyres, admits that the tyres embody the applicant’s registered designs, but denies that it has thereby infringed the applicant’s registered designs. The bases for the denials are claims by the respondent in relation to each model of tyre that they are genuine goods which embody the respective designs with the licence or authority of the applicant, or the applicant’s predecessor in title. The respondent further alleges that the rights with respect to the designs have been exhausted. The respondent has given particulars in the following form in relation to each model of tyre –

(i)    The [Tyres] are genuine goods that were acquired from an authorised distributor/reseller of the Applicant (or the Applicant’s predecessor in title) and/or are genuine goods that are the same as the [Tyres] dealt with by the Applicant (or the Applicant’s predecessor in title) in Australia.

(ii)    Further or in the alternative, the Respondent relies on section 71(2) of the Designs Act 2003 (Cth).

(iii)    Further or in the alternative, the Respondent relies on the exhaustion doctrine where the rights of the Applicant (or the Applicant’s predecessor in title) are exhausted upon first sale of the [Tyres].

(iv)    Further particulars may be provided after interlocutory steps.

3    The respondent also alleges in relation to each model of tyre that it has a licence and authority to sell, offer for sale and use for the purpose of trade or business, and keep for those purposes, the tyres. The particulars of those allegations are in the following form –

(i)    The licence is implied by the fact that the [Tyres] are genuine goods and embody the [Design] with the licence or authority of the Applicant (or the Applicant’s predecessor in title) and the [Tyres] were obtained from an authorised distributor/reseller of the Applicant (or the Applicant’s predecessor in title) with no restriction on their sale or use by the Respondent.

(ia)    Further or in the alternative, the Respondent says that the [Tyres] are genuine goods that are the same as the [Tyres] dealt with by the Applicant (or the Applicant’s predecessor in title) in Australia, with no restriction on their sale or use by the Respondent.

(ii)    Further particulars may be provided after interlocutory steps.

4    The respondent also claims in [22] of its defence in response to the applicant’s claim for additional damages that it understood that there was no impediment to its conduct as admitted in its defence and understood that it was not infringing the applicant’s registered designs.

5    The applicant sought further particulars of these allegations which the respondent objected to providing. The applicant now seeks an order of the Court that the respondent provide the following further particulars –

(a)    the identity of each person or entity from whom the Respondent acquired the [Tyres], including each alleged authorised distributor and reseller;

(b)    in respect of the [Tyres] purchased by the Respondent, the identity of the person or entity said to have made the first sale of the [Tyres];

(c)    the facts and circumstances relied upon by the Respondent to assert that the [Tyres] purchased by the Respondent are "genuine goods";

(d)    the facts and circumstances relied upon by the Respondent to assert that the [Tyres] purchased by the Respondent "embody the [Design] with the licence or authority of the Applicant (or the Applicant's predecessor in title)"; and

(e)    the facts and circumstances relied upon by the Respondent to assert that there was no restriction on the sale or use of the [Tyres] by the Respondent.

6    In relation to the respondent’s plea in [22] of the defence that is responsive to the claim for additional damages the applicant seeks particulars of –

The facts and circumstances relied upon by the Respondent as supporting its alleged understanding or belief referred to in paragraph 22 of the [Amended Defence].

7    The applicant submitted that the particulars were necessary because, inter alia,

(a)    determining whether particular tyres passed through a supply chain involving the Applicant, a predecessor in title, or an authorised distributor or reseller requires identification of the persons or entities in the supply chain and the transactions relied upon; and

(b)    once the persons, entities and transactions relied upon by the Respondent are identified, the Applicant can investigate whether the Applicant or a relevant predecessor in title had dealings with those persons or entities and identify the records and personnel relevant to those dealings.

8    In resisting the application for particulars, the respondent relied on two arguments. The first was that there was a suspicion that, at least in part, the applicant was using this proceeding as a means to ascertain the respondent’s suppliers so that it could then use that information for commercial purposes. In circumstances where there is no plea that this proceeding is an abuse of process on the ground that it has been brought for a collateral purpose, no application for summary dismissal on that ground, and no direct evidence in support of that claim, I give it no weight.

9    The second and more substantial submission by the respondent drew upon the recognised distinction between material facts and evidence. That distinction is recognised by r 16.02(1)(d) of the Federal Court Rules 2011 (Cth) –

(1)    A pleading must:

…

(d)    state the material facts on which a party relies that are necessary to give the opposing party fair notice of the case to be made against that party at trial, but not the evidence by which the material facts are to be proved

10    Particulars are the subject of r 16.41(1) –

(1)    A party must state in a pleading, or in a document filed and served with the pleading, the necessary particulars of each claim, defence or other matter pleaded by the party.

11    There are legislative notes to r 16.41 which include –

Note 1:    The object of particulars is to limit the generality of the pleadings by:

(a)    informing an opposing party of the nature of the case the party has to meet; and

(b)    preventing an opposing party being taken by surprise at the trial; and

(c)    enabling the opposing party to collect whatever evidence is necessary and available.

Note 2:    The function of particulars is not to fill a gap in a pleading by providing the material facts that the pleading must contain.

…

12    There is an implied distinction underlying Note 2 between material facts, and particulars of a pleading.

13    Rule 16.45 provides, inter alia –

16.45 Application for order for particulars

(1)    If a pleading does not give a party fair notice of the case to be made against that party at trial and, as a result, the party may be prejudiced in the conduct of the party’s case, the party may apply to the Court for an order that the party who filed the pleading serve on the party:

(a)    particulars of the claim, defence or other matter stated in the pleading; or

…

14    It is not always easy to identify bright line distinctions between material facts, particulars of material facts, and evidence: see Charlie Carter Pty Ltd v The Shop, Distributive and Allied Employees’ Association of Western Australia (1987) 13 FCR 413 at 417 (French J). The consideration of the applicant’s application for particulars should have regard to the purposes that are served by pleadings, which include giving the other parties fair notice of the case that must be met at trial, identifying issues for the purpose of formulating any discovery obligations, identifying issues against which rulings on evidence might be made at trial, and formulating issues for decision: see Banque Commerciale SA, en liquidation v Akhil Holdings Ltd (1990) 169 CLR 279 at 286 (Mason CJ and Gaudron J). I have also had regard to the overarching purpose in s 37M of the Federal Court of Australia Act 1976 (Cth).

15    In this case, there will be an orderly filing of evidence by affidavit, and discovery will take place after affidavit evidence is filed. I have given consideration to whether the claims made by the respondent in its defence will likely affect the evidence to be adduced by the applicant in chief. I have concluded that because the respondent alleges expressly that it obtained the tyres from an authorised distributor or reseller of the applicant (or the applicant’s predecessor in title), the identities of those suppliers are necessary to give the applicant fair notice of the respondent’s case that the applicant will have to meet, and to enable it to prepare its evidence in chief accordingly.

16    In relation to paragraph [22] of the respondent’s defence, which is relevant to additional damages, the respondent pleads a condition of its corporate state of mind, in respect of which particulars are required by r 16.43.

17    For the above reasons, I will order that by 4.00 pm 11 September 2026 the respondent give further and better particulars of its defence in accordance with schedule 1 of the applicant’s interlocutory application filed 25 August 2026.

Associate:

Dated:    28 August 2026