Coca Cola Company and Schweppes Limited v Peter John Gilbey and others

Date

15 September 1995

Legislation

s. 72 Supreme Court Act 1981

Keywords

Counterfeiting; privilege against self-incrimination; threat of violence; disclosure of information; personal jeopardy; search order; Anton Pillar order

Counsel

Peter Leaver Q.C. and Michael Tappin for Coca Cola, Nigel Davis Q.C. and David Stockill for the sixteenth defendant

Solicitors:

Rouse & Co for Coca Cola; Gaisyers for the sixteenth defendant.

Judge:

Nourse, Simon Brown LJJ. Lightman J at first instance.

Court:

Court of Appeal (Civil Division)

Reported:

[1996] F.S.R. 23

Summary:

The plaintiffs commenced proceedings for trade mark infringement and passing off and obtained search orders (also known as Anton Pillar orders) against a number of persons believed to be involved in producing counterfeit Coca Cola and Schweppes lemonade.

One person against whom a search order was obtained was a Mr Periclis Pericleous (also known as Peter Smith), and he was in turn added as the sixteenth defendant to the trade mark infringement action. On the day on which the search order was served on Mr Pericleous he complied in all respects save that he failed to provide required information about the whereabouts of certain documents, the premises used by the counterfeiting organisation, the location of the components used in counterfeiting the goods, and the names of other persons involved.

Mr Pericleous accepted that the plaintiffs were entitled to a search order in principle, but objected to the provision of the information on two grounds: privilege against self-incrimination; and personal jeopardy (i.e. that his personal safety would be put at risk). In relation to the personal jeopardy basis, Mr Pericleous argued that his evidence should be heard in a private hearing without the attendance of the plaintiffs.

Decision at Court of First Instance

At first instance Lightman J. held that:

• s.72 of the Supreme Court Act 1981 provides that the fact an answer to a question or compliance with an order may expose a person to criminal proceedings for a ‘related offence’ shall not excuse a person from complying if that order is made in proceedings relating to the infringement of a trade mark or passing off.
• It is plain in these circumstances that the search order was made in trade mark proceedings and thus there is no substance to the objection on the basis of privilege against self-incrimination.
• In relation to personal jeopardy, it was not appropriate for the evidence to be given without the attendance of the plaintiff’s lawyers. If the hearing was to be made on the basis that the plaintiff’s lawyers could not disclose the evidence to their client then there could be no commitment of the court that it would not thereafter grant leave that the clients be informed.
• The risk of violence on account of the disclosure is a factor to be taken into account, but in any ordinary case the risk of violence does not outweigh the interest of the plaintiff in obtaining the information.
• Police protection is the appropriate remedy and, if the person responsible is detected, proceedings for contempt could be issued.

Court of Appeal decision

Pericleous then applied for leave to appeal before the Court of Appeal which held that:

• The judge was right to regard this as a case in which there was a discretion but where in any ordinary case disclosure should be ordered.
• Save, just possibly in the very most exceptional set of circumstances (which did not arise in this case), the court ought never to accede to such a submission.
• There was clearly nothing wrong with the judges approach and full argument on appeal was not needed, hence leave to appeal was refused.