England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		Rolls Building 7 Rolls Buildings Fetter Lane London EC4A 1NL
		30/05/2013

Mr Justice Birss :

1. This action concerns a claim for infringement of design rights relating to beer glasses. The claimant claims that the defendants have infringed its UK registered design No 4021276 and certain unregistered UK design rights. The claimant's rights all relate to a beer glass design called Aspen. The defendants sell a beer glass made of polycarbonate known as Aspire. The Aspire design is a copy of the Aspen and the claimant believes it is an infringement of the rights referred to.
2. When the action began the claimant sought an interim injunction against the defendants to stop sales of the Aspire. On 18^th December 2012 the application came before me. Both sides were represented. At that stage the defendants wished to have more time to present their evidence. I granted an injunction over until 21^st January 2013. My judgment on that occasion is [2012] EWPCC 58. On 21^st January 2013 I heard the application, the defendants now having had a chance to put in all the evidence they wished. I granted the injunction over to a trial. That judgment is [2013] EWPCC 15. The trial is fixed for 24^th September 2013.
3. In early April two individuals who had given witness statements (signed with statements of truth) which were used at the earlier hearings admitted that the evidence they had given was deliberately fabricated to mislead the court in order to advance the claimant's interests and that they had conspired together to present false evidence and to lie in their witness statements. False emails had been created and presented to the court as genuine. The two individuals were Mr Stephen Dodd a director of the claimant (Utopia) and Mr Thomas Core, the sales director of Utopia. The circumstances are set out fully in a Fifth Witness Statement of Stephen Dodd dated 5^th April 2013, a Second Witness Statement of Thomas Core dated 5^th April 2013 and two witness statements of the claimant's solicitor Ralph Cox of the firm Fasken Martineau. There is no suggestion that Mr Cox was involved in the matter.
4. The defendants submitted that, pursuant to CPR r81.18(5), the court should direct that the matter be referred to the Attorney General with a request that the Attorney General consider whether to bring proceedings for contempt of court. I decided not to resolve that question on paper but to hear the parties. This is my judgment having done so.

Can this court refer?

5. Mr Edenborough QC, who appeared for the claimant on this occasion, but who had not appeared before, submitted as a preliminary matter that this court, that is to say a county court, had no power under r81.18 to direct that the matter be referred to the Attorney General. In making this submission Mr Edenborough was not seeking to derail the application. He was, entirely properly, seeking to ensure that the matter was dealt with in the proper way. When I heard the application I was the presiding judge of the Patents County Court (a specialist circuit judge) although I have since been appointed to the High Court. Mr Edenborough suggested that if the submission was right, I should sit as a section 9 judge of the High Court to hear the application.
6. Mr Edenborough's point was as follows. CPR r81.18 is in part 6 of Part 81 of the CPR. Part 81 concerns contempt of court and Part 6 concerns committal for making a false statement of truth or disclosure statement. It was common ground that the contempts in question are classed as criminal contempts. That does not mean they are dealt with in the criminal courts.
7. Rule 81.18 is as follows.

Committal application in relation to a false statement of truth or disclosure statement

81.18 (1) A committal application in relation to a false statement of truth or disclosure statement in connection with proceedings in the High Court, a Divisional Court or the Court of Appeal, may be made only –

(a) with the permission of the court dealing with the proceedings in which the false statement or disclosure statement was made; or

(b) by the Attorney General.

(2) Where permission is required under paragraph (1)(a), rule 81.14 applies as if the reference in that rule to a Part 8 claim form were a reference to a Part 23 application notice and the references to the claim form were references to the Part 23 application notice.

(3) A committal application in relation to a false statement of truth or disclosure statement in connection with proceedings in a county court may be made only –

(a) with the permission of a single judge of the Queen's Bench Division; or

(b) by the Attorney General.

(4) Where permission is required under paragraph (3)(a) rule 81.14 applies without the modifications referred to in paragraph (2).

(Under rule 81.14(6)(b), the court granting permission may direct that the application be listed for hearing before a single judge or a Divisional Court.)

(5) The court may direct that the matter be referred to the Attorney General with a request that the Attorney General consider whether to bring proceedings for contempt of court.

(6) Where the committal application is made by the Attorney General, the application may be made to a single judge or a Divisional Court of the Queen's Bench Division.

8. Paragraphs 5.1 to 5.7 of the Practice Direction also relate to rule 81.18. The material paragraphs of the Practice Direction are:

Committal application in relation to a false statement of truth or disclosure statement – Rule 81.18

5.1 Rules 81.18(1)(b) and 81.18(3)(b) provide that a committal application may be made by the Attorney General. However, the Attorney General prefers a request that comes from the court to one made direct by a party to the proceedings in which the alleged contempt occurred without prior consideration by the court. A request to the Attorney General is not a way of appealing against, or reviewing, the decision of the judge.

[ … ]

5.4 A request to the Attorney General to consider whether to bring proceedings for contempt of court must be made in writing and sent to the Attorney General's Office at 20 Victoria Street, London, SW1H 0NF.

5.5

A request to the Attorney General must be accompanied by a copy of any order directing that the matter be referred to the Attorney General and must –

(1) identify the statement said to be false;

(2) explain –

(a) why it is false; and

(b) why the maker knew the statement to be false at the time it was made; and

(3) explain why contempt proceedings would be appropriate in the light of the overriding objective in Part 1.

[…]

5.7

The rules do not change the law of contempt or introduce new categories of contempt. A person applying to commence such proceedings should consider whether the incident complained of does amount to contempt of court and whether such proceedings would further the overriding objective in Part 1.

9. Considering the rule, it can be seen that r81.18(1) concerns a committal application in relation to a false statement made in connection with proceedings in the High Court, a Divisional Court or the Court of Appeal whereas r81.18(3) relates to a committal application in relation to a false statement made in a county court. In either case the application may be made by the Attorney General. In the High Court (etc.) the application may also be made with permission of the court dealing with the relevant proceedings, whereas in relation proceedings in a county court, if the Attorney General is not making the application, the permission of a single judge of the Queen's Bench Division is needed. The county court in question cannot give permission to a party to make such a committal application.
10. Rule 81.18(5) provides that the court may direct that the matter be referred to the Attorney General with a request that the Attorney General consider whether to bring proceedings for contempt of court. This is the rule the defendants seek to invoke. Mr Edenborough's submission is focussed on this rule. The question is: which court is "the court" referred to in the rule? In a case relating to a county court, does it refer to the county court or to the High Court?
11. From a linguistic point of view Mr Edenborough's point is that when one looks back in r81.18 to rule (1) it is plain that "the court" means the court dealing with the proceedings since only that court is referred to. However when one looks back to r81.18(3) two courts are referred to, the county court in which the relevant proceedings took place and the single judge of the Queen's Bench Division who may give permission to bring an application. Mr Edenborough submitted that as a matter of policy, once one understands that the county court has no jurisdiction to deal with criminal contempts and that r81.18 is designed to ensure that permission to bring a committal application in relation to such proceedings has to come from the Queen's Bench Division, the word "court" in sub-rule (5) must, in the context of sub-rule (3) mean the Queens Bench Division or at least the High Court. The requirement for permission is intended to act as a gateway to regulate the bringing of such committal applications and the gateway task, in relation to the county court, has been allocated to the High Court.
12. Mr Onslow did not agree with Mr Edenborough's interpretation of r81.18(5). He contended that the natural meaning of "the court" in the context of r81.18 meant the court in which the relevant proceedings were or had taken place. He said there was no reason in policy terms why a direction to refer the matter to the Attorney General could not be made by the relevant county court and indeed he suggested the county court in question was in the best position to be able to make such a direction. He accepted that the rules created a form of gateway to regulate the bringing of applications for committal but that was what the process of referral to the Attorney General was. There was no reason why another layer of scrutiny should be required, bringing an application to the Queen's Bench Division, if all that was sought was a direction to refer.
13. Neither party cited any authorities which bore on the issue I have to decide. Mr Edenborough also informed me that although at one stage his solicitors had been told by the Attorney General's Office that directions to refer were made by county courts, in fact the position of the Attorney General's Office was that under r81.18 a county court was not able to make a referral to the Attorney General and that a referral request should instead be made to a single judge of the Queen's Bench Division.
14. I prefer Mr Onslow's submissions on this issue to those of Mr Edenborough. As I read r81.18 the natural meaning of the language used does not demand that, in a case in which the false statement was made in county court proceedings, the county court could not direct that the matter be referred to the Attorney General. I can see that in a county court case in which a party then sought permission of a Queen's Bench judge to bring a committal application, the judge in the Queen's Bench Division could, as an alternative, direct that the matter be referred but I do not see any reason why the rule should be read in a restrictive way which prevents referral from the county court in question. Referral to the Attorney General from a county court does not undermine the gateway element of these provisions. Nor does it involve exercising a jurisdiction the county court does not have since the whole point of the referral is that the decision whether to bring a committal application is one for the Attorney General and not the court referring the matter.
15. I am troubled by the fact that my view differs from that expressed to Fasken Martineau by the Attorney General's Office but the Office did not explain the basis for its view and the only reasons I have been given for reading the rule in the manner contended for are those advanced by Mr Edenborough. I am grateful for Mr Edenborough's careful submissions on the point but I have rejected them.
16. I find that a county court in which the relevant proceedings took place may make the direction provided for in r81.18(5) and I will proceed to consider whether to do so in this case.

Should I make a direction for referral in this case?

17. Mr Onslow submitted that I should make a direction in accordance with r81.18(5). His reasons were as follows. The false statements and email evidence were advanced to support the claimant's application for an interim injunction. At the start of the proceedings the claimant claimed that the Aspire glass not only involved infringements of design right but also amounted to passing off. The false evidence was directed to the claim for passing off. One of the false emails was quoted in my judgment on 18^th December at paragraph 6. The emails purported to show that, unsolicited, the claimant's customers were concerned about the defendants' Aspire product and thought that it was a direct copy of the unique shape of the claimant's Aspen. As I said then, that supported the claimant's case for interim relief by supporting the argument that the claimant would suffer unquantifiable harm over to a trial. The emails were advanced as genuine in a first witness statement of Stephen Dodd. At the hearing on 18^th December the defendants doubted that the emails were unsolicited and raised the matter with the court. That is why my judgment on that occasion goes into the matter (see paragraphs 7 to 9). The emails were relied on as a reason for granting relief over to 21^st January (see paragraphs 14 and 15). I ordered the claimant to provide a witness statement dealing with the emails.
18. By the hearing on 21^st January Mr Dodd and now Mr Core had purported to look into the matter. In statements from those two individuals (dated 4^th January) the false story was maintained and elaborated upon. Mr Core set out what he now admits to be a series of lies, made up to present a story about how the emails were unsolicited.
19. On 11^th January 2013 a witness statement of Mr Steer of the defendants was served. The statement admits that the defendants copied the exterior of the Aspen glass to make the Aspire glass. However Mr Steer raised a problem with the date of the emails. He said he did not believe they could be genuine or unsolicited since the dates they bear are before the defendants launched the Aspire product. In fact Mr Steer was correct. The emails were not just not unsolicited, they were not genuine at all. Mr Dodd and Mr Core had called the distributors and asked them to send the emails, indicating to the distributors what they wanted them to say. The dates of the emails were changed to suit the claimant's case.
20. Rather than come clean however, in a witness statement dated 16^th January Mr Dodd maintained that the emails were genuine but purported to withdraw reliance on them. He also made allegations against the defendants, suggesting that the explanation for the dates was that employees of the defendants had leaked information into the market place. As Mr Onslow submitted, at this stage, Mr Dodd was seeking to brazen it out and to make accusations against the defendants employees about the matter.
21. When the matter came to court on 21^st January the position was that the claimant maintained, based on the evidence of Mr Dodd, that the emails were genuine albeit that the claimant also did not seek to rely on them in support of its claim for an interim injunction. This is dealt with in paragraphs 15 onwards in my judgment on that occasion. I granted an interim injunction over to trial on the basis of the claim for design right infringement and not based on the claim for passing off.
22. Later, the claimant sought to drop the passing off claim altogether and on that basis sought to prevent the defendants from contacting the distributors from whom the emails purported to have been sent, ostensibly on the basis that it was disproportionate to do that given that the passing off claim had been dropped. The claimant brought an urgent application on short notice asking the court to direct that the authenticity of the emails was not in issue. I heard that application on the telephone on 8^th February and refused to decide the issue at that stage. It was only after that and after the defendants were continuing to press at least one of the distributors (Mr Macdonald) that Mr Dodd and Mr Core confessed to their solicitor what they had done. This led to the confessional witness statements (Dodd 5 and Core 2) which I have already mentioned.
23. Mr Onslow submits that the following can be derived from all this:

i) This is actually a conspiracy case. Mr Dodd and Mr Core conspired together and with third parties (the distributors) to present a false picture to the court. Although the distributors (Mr MacDonald, Mr Lowery and Mr Wallwork) are not free from blame, clearly Mr Dodd and Mr Core were the lead conspirators;

ii) Mr Dodd read the defendants' skeleton argument in December and was clearly warned that if the claimant relied on the emails they would be "crossing the Rubicon" in relation to contempt. He went ahead with his eyes open to the consequences and Dodd 5 does not deal with this. The explanation that Mr Dodd was angry that the defendants had copied the Aspen product does not explain the point. The decision to go ahead was coldly calculated as were the subsequent actions to try to get the emails excluded from the proceedings.

iii) In response to the challenge on the emails Mr Dodd made a second witness statement signed with a statement of truth which asserted they were unsolicited and sought to rely on the emails. At this stage the date problem had not emerged.

iv) A completely fictitious story was concocted by Mr Dodd and Mr Core to explain how the emails were created. The two witness statements in which these lies were told were made in purported compliance with an order of the court.

v) When the date problem emerged in the evidence of Mr Steer, Mr Dodd still did not confess, but went on the attack against the defendants' employees.

vi) Only after the tactic of trying to prevent contact with the distributors in order to cover their tracks had failed did Mr Dodd and Mr Core confess what they had done.

24. I accept Mr Onslow's characterisation of what has happened in this case. His description of what happened and of the conduct of Mr Dodd and Mr Core is accurate.
25. However Mr Edenborough contends I should not direct a referral in this matter. His submissions are as follows:

i) It is not suggested there should be no sanction for the false statements but this is not the most serious contempt and can be adequately dealt with within the trial process by public censure and a financial penalty in the form of an appropriate adjustment to any order for costs.

ii) The contempt was not of the most serious nature because:

a) The emails did not have any material effect on the injunction granted on 21^st January and therefore, it may be inferred, that the injunction granted on 18^th December would also have been granted anyway without them. Moreover the first injunction was granted without the belated admission of copying by the defendants.

b) Prior to 21^st January reliance on the emails was abandoned. While there was repetition of the false statements, this was not to continue reliance on a false case.

c) The falsity was admitted by Mr Dodd and Mr Core rather than being found against them in a contested contempt hearing. In essence they have pleaded "guilty" before the charge has been laid. They have expressed sincere remorse and credit should be given for this early confession.

iii) A referral to the Attorney General may lead to the claimant having to manage two simultaneous sets of proceedings, this action and a contempt application. This would place the parties on an unequal footing and would create an unfair disadvantage for the claimant.

iv) A referral would not save expense or be proportionate since the contempts are admitted and can be dealt with by the court's case management powers. If the defendants are not prepared to make the application themselves, why should the burden fall on the public purse? For the same reasons referral would not result in the allocation of an appropriate share of the court's resources.

v) The conduct of the defendants is relevant. The defendants only admitted copying belatedly when they could and should have done so earlier. Second, by not revealing what they knew about the date of the emails until later, the defendants seem to have led the claimant on in order to secure a collateral advantage and the court should not condone this conduct.

26. I reject the submission that the admitted contempts were not serious. Signing false witness statements, repeating the lie in further false statements, conspiring to present false evidence and tampering with the dates of the emails amount to a serious contempt. The fact that it is in the context of a small case in the Patents County Court is not relevant.
27. Mr Onslow submitted that there may be a misconceived temptation, engendered by the comparative informality of proceedings before the Patents County Court, to file evidence which does not tell the whole truth, perhaps bolstered by the knowledge that cross-examination in the Patents County Court is limited (see r63.23(1) and PD63 paragraph 29.1(6)). If Mr Onslow is right then the Attorney General may reasonably believe that it is a temptation which needs to be dispelled in a public forum.
28. I do not accept that the fact that the injunction on 21^st January was granted without reliance on the emails means that one can extrapolate back to the judgment on 18^th December. That judgment on its face places reliance on false evidence (paragraph 14).
29. Although it is true that the falsehoods were admitted, that was not until after the individuals had maintained their story despite challenges and gone on the attack against the defendants' employees. The admission only came when it was obvious the evidence would emerge. Before that point the lies were maintained and repeated.
30. I do not regard the fact that there might be two sets of proceedings as a major issue in the balance. Mr Dodd and Mr Core only have themselves to blame for that. The timing of any committal application would be a matter for the Attorney General. Equally as regards public resources, that is a matter which the Attorney General will be able to consider in deciding what to do.
31. I reject the argument that the defendants' conduct has a bearing on these issues. The belated admission of copying was belated but irrelevant. The defendants do not accept the "leading on" argument. This is dealt with and denied in a second witness statement of Paul Booth. There is no reason to doubt what he says.
32. The fact that the court could take steps within its existing case management powers to mark its disapproval does not mean that that is all that should be done in this case. The admitted contempts are serious and it seems to me that the contempts themselves and the circumstances in which they took place are of sufficient gravity that the Attorney General ought to be given the opportunity to consider whether to bring a committal application.
33. Paragraph 5.5 of the Practice Direction requires certain things to be set out in a request to the Attorney General:

i) The identity of the statements said to be false are set out in the fifth witness statement of Mr Dodd and second witness statement of Thomas Core. In summary the false statements are in paragraphs 13, 14, 15, 19, 20, 25, 27 and 34 of the first witness statement of Mr Dodd, paragraph 6 of the second witness statement of Mr Dodd, paragraphs 2, 3, and 4 of the third witness statement of Mr Dodd, paragraphs 2, 3, 4, and 5 of the fourth witness statement of Mr Dodd, paragraphs 3, 4, 5, 7, 8, 10, 11, 12, and 13 of the first witness statement of Mr Core.

ii) The explanation why these statements are false is set out in the fifth witness statement of Mr Dodd and second witness statement of Thomas Core. The emails referred to were not genuine. They were procured and re-dated to support the claimant's case.

iii) The makers of the statements have admitted that they knew the statements were false at the time they were made.

iv) A committal application would be appropriate for the reasons I have addressed above.

Conclusion

34. I am not satisfied that a committal application would be contrary to the overriding objective in CPR Part 1. Indeed it seems to me that there are good reasons, expressed above, why contempt proceedings could be appropriate in the light of the overriding objective in Part 1. Whether to bring them or not is a matter for the Attorney General and I will direct that this matter is referred to the Attorney General's Office.