10 August 2026
The Federal Court has rejected an attempt to obtain broad categories of documents in an ongoing trade mark non-use dispute.
The message from the Court was straightforward: discovery must be targeted, necessary and proportionate. It cannot be used to search another party’s records in the hope that a useful argument might turn up.
What happened?
In Skyn Pty Ltd v LifeStyles Healthcare Pte Ltd [2026] FCA 1060, Skyn Pty Ltd is appealing a decision to partially remove a number of its SKYN trade marks for non-use.
Skyn sought extensive discovery from LifeStyles Healthcare concerning:
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when LifeStyles Healthcare and its predecessor first became aware of Skyn;
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trade mark searches undertaken before entering the Australian market;
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LifeStyles Healthcare’s knowledge of Skyn’s activities; and
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medical or health-related services promoted under the SKYN brand.
The Court refused the application as drafted.
Why was it refused?
The proposed categories were too broad and were not sufficiently connected to the issues properly raised in the proceeding.
Some requests covered long periods and potentially large volumes of historical documents. They were not limited to particular employees, business functions or document types.
LifeStyles Healthcare estimated that the searches could take eight to 12 weeks and cost approximately $40,000 to $50,000 in legal fees.
The Court also found that parts of Skyn’s application amounted to fishing.
Skyn had explained the arguments it might make depending on what the documents revealed. But discovery is not there to help a party work out whether it has a case. It is there to obtain documents relevant to a case that has already been properly identified.
Was all discovery ruled out?
No.
The Court accepted that narrower discovery may be justified for documents showing:
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if and when LifeStyles Healthcare knew about Skyn’s trade marks before filing its own SKYN-related applications in classes 35 and 44; and
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what sexual health advice or information LifeStyles Healthcare actually provided under the SKYN brand.
The parties were directed to consider more focused categories.
Skyn was ordered to pay the costs of the unsuccessful application.
The practical lesson
When seeking discovery in a trade mark dispute:
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clearly identify the issue the documents relate to;
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narrow the request by date, document type and relevant people;
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explain what the documents are expected to prove;
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avoid seeking documents about facts that are already agreed; and
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make sure the likely value justifies the cost.
Broad requests are not necessarily stronger requests. In many cases, they are easier to reject.
Facing a trade mark non-use dispute or Federal Court proceeding? IP Solved can help you develop a focused evidence and litigation strategy. Contact our team to discuss your position.
This article provides general information only and is not legal advice. Specific advice should be obtained for your business and target markets.
