Legal Disclosure Latest reported UK intellectual property case on Norwich Pharmacal Order

Legal Disclosure

Legal disclosure of information is one of the most useful tools you can deploy in any litigation. Getting evidence with which to prove your case is probably the most important element of any litigation
 
This post is a review of the recent legal disclosure related reported case of Wilko Retail Ltd (Claimants) v Buyology Ltd (Defendants) heard on the 02 July 2014 [2014] EWHC 2221 (IPEC) (the “Wilko case”)
 
So in certain circumstances the English courts have jurisdiction to order the legal disclosure of third party information regarding an ultimate wrongdoer.
 
In the scenario where an unknown third party is infringing your intellectual property rights: such as passing their business off as yours; infringing your trademarks; patents; or even abusing your confidential information through a known party, you can apply to the court for an order that the known party give legal disclosure of the identity of the unknown ultimate wrongdoer, by way of interim relief.
 

Legal Disclosure

Legal Disclosure

 
The order is said to be a Norwich Pharmarcal Order taking the name of the case in which the interim relief was initially granted.
 
In the Wilko case, an application for summary judgment or alternatively judgment on admission in an action for infringement of trademarks and passing off was made. The Defendants admitted infringement. Judgment on admissions was not resisted. However, the Claimants also made an application in the form of a Norwich Pharmacal Order.
 
HH Judge Hacon approved judgment on the 07 July 2014.
 
The single point at issue was whether the relief granted should include an order for specific legal disclosure in the form of the order granted in Norwich Pharmacal [1974] AC 133. The Claimants sought an order that the Defendants should give legal disclosure of the names and addresses of the Defendants’ suppliers of the infringing goods.
 
What makes this case interesting are the following issues dealt with in HH Judge Hacon’s judgment as follows:
 
(i) Although there was a binding agreement between the parties to settle the dispute the Claimants were not precluded from seeking the Norwich Pharmacal relief. This is significant because the Norwich Pharmacal Order is an interim relief typically sought early on in the course of proceedings. Further, in this case the parties had already contractually settled proceedings and presumably needed the court to formalise their agreement by way of an order. HH Judge Hacon’s judgment says that the Defendant was entitled to make the application for a Norwich Pharmacal type order.
 
(ii) The judgment confirmed that there was jurisdiction to grant the order. Reference was made in the judgment to Jacob J in Jade Engineering (Coventry) Ltd v Antiference Window Systems Ltd [1996] FSR 461 and to Article 8 of Directive 2004/48/EC on the enforcement of intellectual property rights.
 
Legal Disclosure

Legal Disclosure

 
Decision
 
Ultimately HH Judge Hacon decided that on the balance of the irreparable harm test that he was not going to order the disclosure sought by the Claimants. Reference was made by Judge Hacon to Eli Lilly & Co Ltd v. Neolab Ltd [2008] EWHC 415 (CH).
 
If you like this article on disclosure in litigation cases then you might like our articles on:
 

The Intellectual Property Enterprise Court

 

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