Norwich Pharmacal Co. v The Commissioners of Customs and Excise

Legislation

Unknown

Keywords

Patent infringement; discovery from third parties; confidential information; norwich pharmacal orders; disclosure

Counsel

Anthony Walton QC, Robin Jacob, Peter Prescott, Peter Oliver QC, P.L. Gibson, Bruce Spalding

Solicitors

Allen & Overy; The Treasury Solicitor for the Commissioners of Customs and Excise

Judges

Lord Reid, Lord Morris of Borth-y-Gest, Viscount Dilhorne, Lord Cross of Chelsea, Lord Kilbrandon

Court

House of Lords

Reported

[1974] RPC 101

Summary

The Claimant was the owner and exclusive licensee of a patent for a chemical compound, furazolidone. Unlicensed consignments of the compound were imported into the UK, and constituted infringements of the patent. The Defendants had records of the identity of the importers. The Claimant had failed to determine the identity of the importers and brought a claim against the Defendants, for amongst other things, an order for disclosure of the names and addresses of the importers of furazolidone, the quantity imported by each importer and any other relevant documentation.

The Defendants objected to production of the documents on the basis that such disclosure would be injurious to the public interest because they contained confidential information.

The patent was assumed to be valid and the imported consignments, infringements. The Judge granted the order for disclosure. The Court of Appeal allowed the Defendants appeal and the Claimant appealed to the House of Lords.

Decision

Allowing the appeal and granting the order for discovery it was held that:

  1. Discovery to find the identity of a wrongdoer was available against anyone against whom the claimant had a cause of action in relation to the same wrong. However, it was true as a broad and general rule that a court would not order discovery against a mere witness or a party against whom no reasonable cause of action existed. An order for discovery was not available against a person who had no other connection with the wrong than that he was a spectator (e.g. against a bystander to a road accident who happened to note the licence plate number of the car) or had some other document relating to it in his possession.
  2. On the other hand, if through no fault of his own a person became mixed up in the tortious act of others so as to facilitate their wrongdoing, he might not incur personal liability, but he came under a duty to assist the person who had been wronged, by giving him full information and disclosing the identity of the wrongdoers. It did not matter whether he became so mixed up by voluntary action on his part or because it was his duty to do what he did.
  3. This principle would operate regardless of whether the person mixed up, incurred any minor liability, and whether or not proceedings were brought against him. In the circumstances the public interest lay in granting the order sought.
  4. Lord Reid and Lord Cross of Chelsea stated that a party concerned about the propriety of making such disclosures was entitled to require the matter to be submitted to the court at the expense of the person seeking the disclosure.