Steadfast Capital Management LP v Steadfast Financial Consulting Ltd & ors (Approved)

Factual and Procedural Background

The Plaintiff, Company A, a U.S. limited partnership incorporated in The State of Delaware and located on [Number] Main Street in The City, provides fund management services, primarily hedge funds. Company A is the registered proprietor of an Irish Registered Trade Mark (the "mark") comprising the word "STEADFAST" for financial services under Class 36 of the Nice Classification. The mark was registered effective from 9 August 2006 and published on 29 February 2012.

The Defendants, Company B, a private limited company incorporated in Ireland with offices in two locations in The State, provides financial consultancy services under the domain "www.steadfastfinancial.ie". The second and third Defendants are directors and consultants of Company B. For the purposes of this judgment, the Defendants are collectively referred to as "Financial Consulting".

The Plaintiff initiated proceedings on 20 August 2018 alleging trademark infringement and passing off by Financial Consulting through the use of the "Steadfast" name and related materials. The Plaintiff claims goodwill and reputation in the mark internationally and within The State, asserting infringement under sections 14 and 61 of the Trade Marks Act 1996, passing off, conspiracy, and intentional economic interference. Remedies sought include permanent injunctions, damages, and an account of profits.

Financial Consulting filed a defence and counterclaim on 14 December 2018, admitting registration of the mark but denying tortious conduct. It asserts lack of goodwill or reputation of the Plaintiff’s mark within The State and denies confusion, claiming it has built its own goodwill under its name and abbreviations thereof. The counterclaim seeks revocation of the mark under section 51 of the Act of 1996 for non-use or suspension of use within five years of registration.

The Plaintiff replied on 11 January 2019, disputing the defence and counterclaim and asserting that Financial Consulting had constructive knowledge of the mark, as it ought to have conducted a trademark search.

The present application, heard on 28 July 2020, concerns the Plaintiff’s motion under Order 19, rule 7 of the Rules of the Superior Courts for further and better particulars of certain matters in the defence and counterclaim.

Legal Issues Presented

1. Whether the Defendants must provide further and better particulars regarding the abbreviations of their company name used in trade.
2. Whether the Defendants must provide particulars about any trademark searches conducted prior to adopting the disputed name.
3. Whether the Defendants must provide full particulars of their claim of passing off by the Plaintiff due to alleged laches.

Arguments of the Parties

Plaintiff's Arguments

• The Plaintiff contends it is entitled to know in broad outline the case it must meet at trial, including detailed particulars of the abbreviations used by Financial Consulting to properly understand the defence.
• The Plaintiff asserts that the case is complex, involving statutory torts, thus warranting more detailed particulars.
• Regarding trademark searches, the Plaintiff argues that whether the Defendants conducted such searches is relevant to the defence of "descriptive use in accordance with honest practices" and should be answered with a simple yes or no.
• On the passing off defence raised by the Defendants, the Plaintiff claims equivalence between its passing off claim and the Defendants’ potential claim, thus entitling it to full particulars of the latter.

Defendants' Arguments

• The Defendants argue the Plaintiff already knows the broad outline of their case, including the use of their full company name and certain abbreviations such as domain names and email addresses, and that further particulars would amount to impermissible interrogatories.
• They maintain that the request for confirmation that no other abbreviations exist is a disguised interrogatory and that the pleadings speak for themselves.
• Regarding trademark searches, the Defendants assert this is a matter for evidence at trial, not particulars, and refuse to provide a yes/no answer, emphasizing the multi-factorial nature of the defence.
• On the passing off claim, the Defendants contend there is no meaningful equivalence between the Plaintiff’s claim and their potential or contingent claim, which is extraneous to the current proceedings and need not be particularised.

Table of Precedents Cited

Court's Reasoning and Analysis

The court acknowledged the established principles governing particulars, emphasizing that parties are entitled to know the broad outline of the case they must meet at trial, but particulars should not require detailed evidence or function as interrogatories.

Regarding the request for particulars of abbreviations used by Financial Consulting, the court found that the pleadings sufficiently outline the case. The Defendants have identified the abbreviation “steadfastfinancial.ie” in their domain name and email address. The court viewed the Plaintiff’s request for confirmation that no other abbreviations exist as a disguised interrogatory, which is impermissible. The issue of whether plural or singular abbreviations are used is a semantic matter best resolved by evidence at trial.

On the issue of trademark searches, the court accepted that whether Financial Consulting conducted such searches is relevant to the multi-factorial test for the defence of honest descriptive use. However, this is a matter of evidence and argument at trial, not particulars. The request for a yes/no answer was similarly deemed to be an impermissible interrogatory.

Concerning Financial Consulting’s potential passing off claim against the Plaintiff, the court found no equivalence with the Plaintiff’s passing off claim in these proceedings. The Defendants’ potential or contingent claim is extraneous and need not be particularised. The court emphasized that pleadings should not include extraneous matters and that such matters may be struck out if unnecessary.

Overall, the court balanced the need for clarity in pleadings against the risk of overburdening parties with evidential demands and interrogatories, concluding that the Plaintiff’s requests exceeded the scope of permissible particulars.

Holding and Implications

The court REFUSED the Plaintiff’s application for an order requiring the Defendants to provide further and better particulars of their defence and counterclaim.

The direct effect of this decision is that the Defendants are not obliged to provide the additional particulars requested by the Plaintiff. The decision clarifies the limits of particulars in pleadings, distinguishing them from evidential demands or interrogatories. No new legal precedent was established, but the ruling reinforces procedural principles regarding pleadings and the scope of particulars in complex trademark infringement litigation.