Origin Net Pty Ltd v Origin Energy Limited

The Court recorded that one issue in dispute concerned, broadly speaking, the honesty of Origin Energy's use and what knowledge it had of Origin Net's mark and use. Those issues had already been addressed in the pleadings and in affidavits from Duncan Permezel, a General Manager of Origin Energy, dated 12 December 2024 and 10 October 2025.

After pleadings closed, Burley J made timetabling orders requiring the parties to exchange proposed discovery categories, confer, and if necessary put disputed categories before a Judicial Registrar. Sixteen categories remained in dispute. National Judicial Registrar O'Connor heard submissions on 5 February 2026 and gave a decision on 16 February 2026. She refused categories 1 and 2 sought by Origin Net, but allowed categories 3 and 4 and eight other categories.

Origin Net then filed an interlocutory application on 9 March 2026 seeking what it described as a review. But the application did more than ask the judge to reconsider the refusal of categories 1 and 2. It also sought orders under the Federal Court Rules requiring Origin Energy to give discovery in different categories annexed to its solicitor's affidavit. That distinction became central to the result.

The proceedings were listed for hearing commencing on 18 May 2026, so the Court was dealing with this issue close to trial and against the background of discovery already underway.

Burley J examined the categories now sought and said they were different in substance from those argued before the Judicial Registrar. The judgment points to wording changes in category 1 and category 2, including deletion of language that had referred to documents recording or evidencing consideration, planning, launch decisions and post-launch assessment, and similar wording about rebranding decisions and post re-branding assessment. The judge said the result was, in effect, a broad and new category of documents.

So the application had two separate problems. First, the supposed review was not really directed to the same subject matter that had been before the Judicial Registrar. Secondly, the additional order sought under the Rules was, in substance, a fresh discovery application brought late in the case.

The second reason concerned the fresh discovery request itself. The judge declined to make that order. Burley J said Origin Net had had since at least July 2025 to frame the categories of documents it sought. It had the first Permezel affidavit since December 2024. The parties' legal representatives had conferred and should have done their best to narrow the issues before the Judicial Registrar. The registrar had then issued her ruling.

In that context, Origin Net could have sought the different category earlier and had not done so or adequately explained its failure.

The Court used strong language about the way the process had been approached. Burley J said the conduct of a hearing before the Judicial Registrar is not to be regarded as an opening gambit or negotiating position. The Court and the respondents were entitled to treat the position adjudicated by the Judicial Registrar as the best case Origin Net could put forward. The judge said the present application was approaching, if not arriving at, an abuse of process.

The Court also accepted evidence from Bridie Egan, Special Counsel at Mallesons for Origin Energy, about the burden of further discovery. Origin Energy had already given or was in the process of giving discovery in about 10 categories that had been allowed. The affidavit described the considerable effort required to search for, locate, scrutinise and produce those documents.

If further categories were added, the evidence was that there would be considerable extra steps and cost, and that production would take at least eight weeks. The judge accepted that much of this would duplicate work already being done.

On that evidence, Burley J held that ordering production at that stage of the proceedings would be oppressive. Even assuming the new categories were relevant, the Court noted that they overlapped to some extent with other categories already granted concerning bona fide use. Weighing the justice of the position with case management principles, the Court refused the additional discovery.

This is especially important in branding, trade mark and misleading conduct disputes. Internal documents about naming decisions, launch planning, rebranding, competitor awareness, legal clearance and post-launch review can all become relevant. But relevance alone is not enough. Timing, precision, duplication and burden all matter. A request that might look sensible in the abstract can still be refused if it is raised too late or framed in a way that imposes oppressive search and review obligations.

The case also shows the value of evidence about burden. Origin Energy did not just say further discovery would be inconvenient. It put on affidavit evidence about the practical effort required, the likely duplication, and the time needed to complete production. Businesses resisting broad discovery should note that concrete operational evidence can be far more persuasive than general complaints about cost.

For readers using this case as a practical guide, the important point is that the judgment is procedural and interlocutory. It should be read as authority on discovery review, fresh discovery applications, burden and case management, not as a final statement on the underlying trade mark or consumer law merits.