Norwich Pharmacal Co. v. Customs and
Excise Commissioners
By: Karan Yadav
Case Summary
The
UK House of Lords, reversing the Court of Appeal's decision, established that a
party may request the court to order the disclosure of information where
wrongdoing has been or may have been done by a third party and where the
information be needed. Justice in respect of that wrongdoing. The appellant
owners and licensees of a chemical compound patent took action against the
Customs and Excise Commissioners to obtain the names and addresses of the
importers they wanted to sue for infringement. The House of Lords argued that
justice requires a person who inadvertently facilitates the crime of a wrong to
disclose relevant information unless there is some consideration of public
policy that prevents it.
Facts
Norwich
Pharmaceuticals was an American corporation that had a patent for a chemical
compound called "furazolidone". Its UK subsidiary and licensee, Smith
Kline & French Laboratories, alleged that large quantities of counterfeit
compounds were being imported into the UK by unidentified persons. With the
intention of holding those importers accountable for patent infringement,
Norwich and its subsidiary made a formal request to UK Customs and Excise to
release the names and addresses of the importers. Customs officials refused to
do so, explaining that the names and addresses of the importers were
confidential, with the exception of publishing figures showing the total
quantity of the imported product.
Norwich
and Smith Kline and French Laboratories sued the Commissioners of Customs and
Excise for aiding and abetting importers' infringement by not exercising their
power to seize counterfeit products. They also claimed an independent right to
search the names and addresses of the importers, no matter what the
commissioners' fault was. The court of prima facie rejected the genuine claim
of aid and abetment, but held that the companies were entitled to the
disclosure of the information.
The
UK Court of Appeals unanimously reversed the decision, holding that in the
public interest the commissioners are required to keep the names and addresses
of the importers confidential. The judges also held that no action for the sole
purpose of search can be taken against the party against whom no other relief
was sought. The Appeals Committee of the House of Lords allowed a petition by
the appellants for permission to appeal.
Decision Overview
The
House of Lords unanimously overturned the Court of Appeal's decision.
Lord
Reid first considered whether information could be obtained from a person
against whom no other reasonable cause of action could be brought. In doing so
he said that the Court of Appeal had misused the so-called "mere witness
rule" in the present case. Under this long-established rule,
"information cannot be obtained by search from any person who would be
obliged to give that information either by oral testimony as a witness or on
summons." According to him, the underlying foundation of the rule is
"the assumption that ultimately testimony will be available either in an
action already underway or in a subsequent action." They argued that the
rule could not be applied in this case because Norwich was unable to take
infringing action without identifying the alleged wrongdoers. Lord Reid,
however, also rejected the appellants' contention that the finding should be
available against any person who could give information as to the identity of a
wrongdoer, observing that "any authority, principle and Nor will public
policy justify it."
In
his view the commissioner was in an intermediate position: “His conduct was
completely innocent; This was in the performance of his statutory duty. But the
infringement could never have been done without some action on their
part." After reviewing the relevant case law, Lord Reid concluded that the
finding should not only be available if the requesting party has a case against
that person. be the cause of action from which the discovery is sought, but
also when "a person without his fault gets mixed up in the atrocious acts
of others so as to facilitate their wrongdoings……….needs justice that he may
co-operate in the righting of the wrong if he has inadvertently facilitated his
crime. He added that the goods are under the statutory control of customs till
they pay the duty and the consignee is authorized to remove them. Customs
officers can specify where the goods are to be kept or prevent their movement
and have full power to examine or test the goods. The goods are therefore under
the control of the Commissioners, although they are never in possession.
Having
found that the commissioners had a duty to disclose the information, Lord Reid
said that the court had to justify the non-disclosure as to the requirements of
justice to the appellants against the interests of confidentiality and
statutory duty claimed by the commissioners. Had to weigh He said there was
nothing secret or confidential in the information sought, nor was there any
real danger in the matter that the disclosure would hinder the work of the
commissioners or that the imports were not counterfeit.
In
all these circumstances, Lord Reid held that the appellants could obtain the
finding from the Commissioners and allowed the appeal accordingly.
Lord
Morris agreed with Lord Reid and the Court of Appeal that "cases generally
support the view that no independent action for finding is against a party
against whom no just cause of action can be imputed." or who is merely in
the position of a witness in the strictest sense.” However, relying on the
earlier cases of Orr v. Dipper and Upman v. Elkan, both ordered a search
against third parties involved in the business activities of unknown
wrongdoers. Granted, Lord Morris said it would be a denial of justice if
customs officials had not been ordered to disclose the information.
In
his opinion, Viscount Dilhorn said that the case required an analysis of three
questions: "First, on the facts of the case, whether [the commissioner],
who was not [the wrongdoer himself], was given the names of the importers. who,
acknowledging the validity of the patent, [were] the wrongdoers. Second, in the
exercise of the discretion vested in the Court, should they be ordered to do so
; and third, [were] [the Commissioner] prohibited from disclosing that
information in any event."
With
regard to the first question, Viscount Dilhorn agreed with the Court that where
there was involvement in or participation in any wrongdoing, whether he was
innocent or that the person seeking the information had no intention of suing
the participant, the search was permitted. May go. According to him, the
commissioners were actually involved in the import of counterfeit products as
they exercised substantial control over the movement till they were removed
from the port of entry. As for the second question, he stated that it is
clearly "in the public interest and right to protect patent holders, where
the validity of the patent is acknowledged and its infringement is not
disputed, that they are able to obtain by Finally, Lord Dilhorn said that the
commissioners were unable to point to any statutory provision that prevented
them from disclosing the names of the importers. He also expressed doubts that
even if the information be considered confidential, but it was not confidential
enough to override the interest of justice in disclosure.
Lord
Cross held after lengthy discussion of previous cases on this issue that the
mere fact that goods pass through the possession or control of customs places
the authorities under a duty to disclose the names and addresses of importers,
No viable absent privileges do this. They agreed that the information sought
was not highly confidential because it was available to all who were in favor
of a shipment of a product, such as shipowners and employees of transit owners.
He also dismissed the concern expressed by the commissioners that the Court's
order for search would lead to a flood of requests from individuals who try to
collect evidence from individuals without any relevant connection to the
wrongdoer. Lord Cross held that the present case was not about gathering of
evidence but it was about asking for the name of the person whom the appellants
were seeking to make as a respondent.
Lord
Kilbrandon was of the opinion that the "mere witness" rule could not
be applied here as the rule "prohibits a search against a person who has
no connection with other litigation matters except by him having to testify
either." may be called to give or as a witness. Produce documents at
trial." On the contrary, there could have been no possibility of
litigation in this case without obtaining the names of the importers. He agreed
with the other judges that because the commissioners were "mixed with the
transaction," the justices sought an order of discovery.
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