4. Legal Reasoning and the Precedents Applied
4.1 A pleaded allegation must have an informational foundation
In Keating v RTE and the Commissioner of An Garda Siochana [2013] 2 I.L.R.M. 145, paragraph 63, the court identified the requirement for “some information on which the plea is based” before discovery is ordered. Discovery is therefore not simply a means of investigating an unsupported accusation.
ADS met that threshold through photographs showing alleged similarities, Cubic’s acknowledgment that ADS materials had been used in certain publications, evidence concerning the STORMTECH trademark and domain name, and affidavit evidence that requests identifying StormTech products could receive proposals for alternatives. There was also evidence concerning the registration and use of StormTech as a business name.
These matters supplied an adequate foundation for discovery. They did not establish copying, unlawful substitution, passing off or trademark infringement. In particular, acknowledging use of marketing materials was not treated as an admission that the chambers themselves had been copied.
4.2 Confidentiality requires necessity and safeguards, not automatic immunity
Tobin v Minister for Defence [2020] I.R. 211, paragraph 44, supplied the standard that disclosure of confidential information must be “truly necessary to the resolution of the proceedings”. Twomey J. expressly applied that standard to confidential material ordered to be discovered.
The judgment separates two questions: whether information is needed and how access should be controlled. Necessary confidential information may be disclosed through a confidentiality agreement or ring restricting its use to the litigation. Such arrangements do not, however, make unnecessary disclosure acceptable. That distinction explains why the court ordered sensitive design evidence but refused broad demands for unrelated customer complaints.
The precise membership and operation of the confidentiality arrangements were not settled in the judgment. It should not be read as establishing a universal entitlement to access by a competitor’s commercial staff.
4.3 Proportionality limits historical and expansive searches
In Biogen Inc. v Celltrion Inc. [2018] IEHC 239, paragraph 4, Barrett J. required “very explicit justification” for discovery spanning 14 and 22 years. Twomey J. applied that reasoning to Cubic’s request for documents extending back almost a quarter of a century.
The possibility that an old document might prove relevant was insufficient. The court considered the request disproportionate even without ADS’s affidavit evidence estimating search costs exceeding €1.9 million. The estimate reinforced the conclusion; it was not the sole basis for refusal.
Ryanair Plc v Aer Rianta Cpt [2003] 4 I.R. 264, at page 277, provided the broader explanation. Fennelly J. warned that the proper administration of justice is not confined to a “relentless search for perfect truth”: expedition and economy also matter. Applied here, that principle prevented discovery from becoming an unrestricted reconstruction of the parties’ entire commercial history.
The court also relied on Ryanair v Skyscanner Ltd and Others [2025] IEHC 320. Paragraph 156 emphasised discovery’s role in fairly disposing of proceedings or saving costs. Paragraph 21 supported caution about formulations such as “all documents relating to”, which commonly extend beyond a sufficiently defined evidential need.
These authorities did not produce an absolute prohibition on lengthy searches or broad wording. Rather, the burden must be justified by the actual issues. That is why the court retained meaningful disclosure through narrower alternatives, including documents ADS intended to rely on and targeted evidence of copyright ownership.
4.4 The requesting party should test its own demands
At paragraphs 36–37, Twomey J. proposed a practical discipline: before requesting discovery, litigants should put themselves in the recipient’s position and honestly ask whether the demand would appear reasonable and proportionate.
This is a useful application of proportionality, not a new subjective veto. A party cannot defeat necessary disclosure merely by saying that it would dislike receiving the request. The point is that litigants should confront search burden, cost and breadth before requiring judicial intervention.
4.5 Sampling and non-duplication are legitimate case-management tools
Cubic objected that representative sampling could permit ADS to select only favourable technical communications. The court answered that disclosure always depends substantially on compliance by the person swearing the discovery affidavit. That person must ensure that a supposedly representative sample genuinely meets that description and remains answerable to the court.
Conversely, ADS successfully challenged Cubic’s proposed five-project sample because its adequacy could not be assessed without knowing the overall volume. Increasing the sample to a percentage or minimum number linked disclosure more closely to the scale of the relevant activity.
The rejection of overlapping marketing categories followed the same cost-conscious approach. Producing parties must identify and disclose responsive documents; receiving parties must analyse those documents and identify their significance. Discovery ordinarily need not be organised into duplicative categories merely to keep the recipient’s preferred issues “in focus”.
4.6 Copyright disclosure must address subsistence and title without becoming unlimited
Section 17(6) of the Copyright and Related Rights Act 2000 made communications concerning design briefs relevant. It provides that copyright does not subsist in a work, or to the relevant extent, where it is copied from a work previously made available to the public. Such communications could therefore assist in examining whether ADS’s claimed works qualified for protection.
The court also required identification of the works, their creators and the basis of ADS’s ownership. These are distinct issues: showing that a work attracts copyright does not necessarily show that the claimant owns it.
However, the judgment rejected an effectively unlimited inquiry into ADS’s copyright-related documents and its subjective assessment of the litigation. The refusal of Category 10 was directed to its breadth, limited relevance and likely privileged content; it was not a ruling that all internal business communications are privileged.
Similarly, the court’s observation that the core dispute was not a challenge to a registered intellectual property right concerned the proposed sub-corrugation disclosure. It should not obscure the separate pleaded claim involving ADS’s registered STORMTECH trademark.
4.7 Inspection has its own procedural basis
ADS sought inspection under Order 50, rule 4 of the Rules of the Superior Courts. That provision permits inspection, sampling, observations and experiments where necessary or expedient to obtain full information or evidence.
Bula Ltd v Tara Mines Ltd (No.1) [1987] I.R. 85 established that access to inspection does not depend on demonstrating the strength of the plaintiff’s substantive case or verifying the cause of action in advance. Accordingly, the inspection application was not an occasion to determine whether ADS would ultimately succeed.
This operates alongside, rather than displaces, the informational threshold applied to discovery under Keating v RTE and the Commissioner of An Garda Siochana. The judgment treated the two procedural applications according to their respective governing principles.
4.8 Equality of arms required effective, independent testing
Cubic offered visual inspection at its premises by ADS’s lawyers and experts, subject to restrictions including European experts, no video recording and apparent review of redacted inspection notes. Inspection also appeared likely to occur in the presence of Cubic personnel.
That proposal was inadequate. Cubic itself relied on physical differences between the products, including corrugation design, dimensions and weight. ADS needed a fair opportunity to examine that evidence. Some design features might require machinery or destructive testing rather than visual observation.
Murphy Environmental Ltd v Spencer Place Development Company Ltd [2020] IECA 78, paragraph 30, identified equality of arms as the underlying rationale for inspection orders. Cubic could examine and use its own chambers when defending the claim; ADS should not be confined to a materially inferior evidential opportunity.
The proposed supervision also risked exposing discussions between ADS’s lawyers and expert to its opponent. Effective inspection required an independent setting, not merely physical proximity to the disputed products.
4.9 Product quality was relevant even though inferiority is not essential to passing off
Cubic argued that passing off concerned confusion and appearances, making visual inspection sufficient. The court rejected that narrow approach because ADS also sought to investigate whether allegedly substituted products were inferior and whether that affected damage.
In Singer Manufacturing Co. v Loog (1882) 8 App Cas 15, at pages 29–30, Lord Blackburn explained that passing off may be actionable even where the substituted goods are not inferior. The quotation reproduced in the judgment also referred to Blofeld v. Payne and Edelsten v. Edelsten as historical support for that proposition; those authorities were not independently analysed.
Polycell Products Ltd v O'Carroll [1959] I.R. 342 further supported the proposition that appropriation of goodwill can establish damage without proof of inferior goods.
These principles did not make quality irrelevant. If inferiority existed, it could assist in proving damage or assessing its extent. Testing was therefore potentially relevant even though ADS would still have to establish the other requirements of passing off. The court made no finding that RainSafe products were inferior.
4.10 Commercial availability weakened confidentiality, but did not remove every safeguard
James Elliott Construction Ltd v Lagan [2015] IEHC 631, paragraph 12, supported facilitating inspection while protecting the opposing party’s interests. Applying that balance, the court attached importance to the fact that RainSafe chambers were sold to third parties without any identified confidentiality restriction.
Purchasers could examine, test or destroy their chambers and could provide them to others. Installation underground did not alter those ownership rights. Cubic’s claim that finished products were too confidential to supply to ADS was therefore considerably weakened. Its previous access to StormTech chambers during the long distributorship also formed part of the court’s assessment.
The court nevertheless distinguished finished chambers from raw manufacturing material. Raw material was not offered to the public in the same way, and the finished samples adequately balanced the evidential need against Cubic’s legitimate commercial interests. The request for 23 kg of coloured raw material was refused.
Carlisle Mortgages Ltd v Heagney [2019] IEHC 108, paragraph 28, supported attaching conditions to protect commercially sensitive information. Here, testing and inspection had to occur in Ireland, with all related records retained here, improving the Irish courts’ ability to supervise compliance.
ADS’s request was for five chambers of each model. Paragraph 107 directs that “five samples” be provided without expressly repeating that model-by-model formulation. The reasons clearly grant sample access, including potentially destructive testing, but the precise quantity is not restated with complete clarity.
4.11 Costs remained to be resolved pragmatically
Finally, Word Perfect Translation Services Ltd v Minister for Public Expenditure and Reform [2023] IECA 189, paragraph 94, informed the court’s expectation that lawyers take a broad-brush approach to costs. Twomey J. encouraged agreement to avoid another unnecessary sitting. The judgment itself did not determine the final costs allocation.