INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| WILKO RETAIL LIMITED
|- and -
Ashton Chantrielle (instructed by Bennetts Solicitors) for the Defendant
Hearing date: 2 July 2014
Crown Copyright ©
Judge Hacon :
"The simplest way to deal with [the proceedings] is for the parties to agree a form of Order and make an application to the Court accordingly. This would bring the proceedings to a close save for our right to enforce the terms of that Order if this should become necessary.
We attach the form of Court Order which would be acceptable to use and would urge your client to agree to its terms."
The draft order attached ("the 6 November Draft") was in the form of a consent order which broadly followed the relief sought in the prayer in the Particulars of Claim including an order for injunction, delivery up, an inquiry as to damages or at WRL's option an account of profits, and costs. The order proposed did not contain any requirement that Buyology should disclose any information regarding its suppliers.
"Our client is prepared to agree to the terms of the draft Order. We are instructed however to address a number of provisions and do so as follows:
Our client is also prepared for you to collect the infringing stock from its stores. Further our client is prepared for you to attend at each of our client's stores to inspect that it is no longer selling your products.
Whilst our client will no longer offer for sale our products in any of its stores, we consider it important that you are made aware that since the date that our client filed its Defence, it has been offered "Wilko" branded products from a number of sources and there have been no requirements from any of those sources in relation to de-branding/de-labelling.
As to paragraph 4, our client is prepared to submit to an inquiry or an account of profits. However, in the interests of saving costs and time for both parties, our client would be willing and consider it to be more beneficial for the parties to attempt to reach agreement. We trust you agree.
In summary, therefore, our client is prepared to agree to your draft Order. It would prefer to reach agreement as to a payment in respect of the profits as opposed to proceeding with an inquiry and we welcome your comments on that."
Was there a binding agreement?
(1) Buyology would not deliver up the infringing goods but would instead allow WRL to collect them from Buyology's stores and while WRL's staff were at those stores, allow them to check that Buyology was no longer selling Wilko branded products.
(2) Rather than submitting to an inquiry or account, Buyology was instead suggesting that the parties could agree a figure to compensate WRL for infringement.
Does the agreement preclude WRL from now seeking Norwich Pharmacal disclosure?
"We are instructed at the outset of this letter to say that our client will under no circumstances disclose details of its suppliers to you."
It is possible to read the letter as (a) an acceptance of WLR's offer and (b) a clear rejection of any separate claim regarding disclosure of the details of Buyology's suppliers in the event that WLR were to persist in such a claim.
Whether there should be an order for disclosure
1. Member States shall ensure that, in the context of proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who:
(a) was found in possession of the infringing goods on a commercial scale;
(b) was found to be using the infringing services on a commercial scale;
(c) was found to be providing on a commercial scale services used in infringing activities; or
(d) was indicated by the person referred to in point (a), (b) or (c) as being involved in the production, manufacture or distribution of the goods or the provision of the services.
2. The information referred to in paragraph 1 shall, as appropriate, comprise:
(a) the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers;
(b) information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question.
3. Paragraphs 1 and 2 shall apply without prejudice to other statutory provisions which:
(a) grant the rightholder rights to receive fuller information;
(b) govern the use in civil or criminal proceedings of the information communicated pursuant to this Article;
(c) govern responsibility for misuse of the right of information; or
(d) afford an opportunity for refusing to provide information which would force the person referred to in paragraph 1 to admit to his own participation or that of his close relatives in an infringement of an intellectual property right; or
(e) govern the protection of confidentiality of information sources or the processing of personal data.
"Regulation 4 implements Article 8 of the Enforcement Directive in Scotland. It creates a new type of court order, for disclosure of information about infringing goods and services. By reason of the House of Lords decision in Norwich Pharmacal v Customs and Excise Commissioners  AC 133 no provision is necessary to implement this obligation in England and Wales or Northern Ireland"
" The essential purpose of the remedy is to do justice. This involves the exercise of discretion by a careful and fair weighing of all relevant factors. Various factors have been identified in the authorities as relevant. These include: (i) the strength of the possible cause of action contemplated by the applicant for the order: the Norwich Pharmacal case  AC 133, 199 f–g, per Lord Cross of Chelsea, Totalise plc v The Motley Fool Ltd  EMLR 750, para 27, per Owen J at first instance, Clift v Clarke  EWHC 1164 (QB) at , , per Sharp J; (ii) the strong public interest in allowing an applicant to vindicate his legal rights: the British Steel case  AC 1096, 1175 c–d , per Lord Wilberforce, the Norwich Pharmacal case  AC 133, 182 c–d, per Lord Morris of Borth-y-Gest, and p188 e–f, per Viscount Dilhorne; (iii) whether the making of the order will deter similar wrongdoing in the future: the Ashworth case  1 WLR 2033, para 66, per Lord Woolf CJ; (iv) whether the information could be obtained from another source: the Norwich Pharmacal case  AC 133, 199 f–g, per Lord Cross, the Totalise plc case  EMLR 750, para 27, President of the State of Equatorial Guinea v Royal Bank of Scotland International  UKPC 7 at , per Lord Bingham of Cornhill; (v) whether the respondent to the application knew or ought to have known that he was facilitating arguable wrongdoing: the British Steel case  AC 1096, 1197 a–b, per Lord Fraser, or was himself a joint tortfeasor, X Ltd v Morgan-Grampian (Publishers) Ltd  1 AC 1, 54, per Lord Lowry; (vi) whether the order might reveal the names of innocent persons as well as wrongdoers, and if so whether such innocent persons will suffer any harm as a result: the Norwich Pharmacal case  AC 133, 176 b–c, per Lord Reid; Alfred Crompton Amusement Machines Ltd v Customs and Excise Comrs (No 2)  AC 405, 434, per Lord Cross of Chelsea; (vii) the degree of confidentiality of the information sought: the Norwich Pharmacal case  AC 133, 190 e–f, per Viscount Dilhorne; (viii) the privacy rights under article 8 of the European Convention for the Protection of Human Rights and Fundamental Freedoms of the individuals whose identity is to be disclosed: the Totalise plc case  EMLR 750, para 28; (ix) the rights and freedoms under the EU data protection regime of the individuals whose identity is to be disclosed: the Totalise plc case  EMLR 750, at paras 18–21, per Owen J; (x) the public interest in maintaining the confidentiality of journalistic sources, as recognised in section 10 of the Contempt of Court Act 1981 and article 10 of the European Convention for the Protection of Human Rights and Fundamental Freedoms: the Ashworth case  1 WLR 2033, para 2, per Lord Slynn of Hadley."