Norwich Pharmacal Company v Commissioners of Customs and Excise

JurisdictionUK Non-devolved
JudgeLord Reid,Lord Morris of Borth-y-Gest,Viscount Dilhorne,Lord Cross of Chelsea,Lord Kilbrandon
Judgment Date26 June 1973
Judgment citation (vLex)[1973] UKHL J0626-1
Date26 June 1973
CourtHouse of Lords
Norwich Pharmacal Company and Others
Commissioners of Customs and Excise

[1973] UKHL J0626-1

Lord Reid

Lord Morris of Borth-y-Gest

Viscount Dilhorne

Lord Cross of Chelsea

Lord Kilbrandon

House of Lords

Upon Report from the Appellate Committee, to whom was referred the Cause Norwich Pharmacal Company and others against Commissioners of Customs and Excise, That the Committee had heard Counsel, as well on Monday the 26th, as on Tuesday the 27th and Wednesday the 28th, days of February last, as on Thursday the 1st, Monday the 5th, Tuesday the 6th, Wednesday the 7th, Monday the 12th, Tuesday the 13th, Wednesday the 14th, Thursday the 15th, Monday the 19th, Tuesday the 20th and Wednesday the 21st, days of March last, upon the Petition and Appeal of Norwich Pharmacal Company (now known as Morton-Norwich Products Inc.) of 17 Eaton Avenue, Norwich, Chenago County, New York, United States of America, Smith Kline and French Laboratories Limited of Welwyn Garden City, Hertfordshire, and Norwich Pharmacal Company of 17 Eaton Avenue, Norwich, Chenago County, New York, United States of America, praying that the matter of the Order set forth in the Schedule thereto, namely an Order of Her Majesty's Court of Appeal of the 25th of July 1972, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, and that the Petitioners might have the relief prayed for in the Appeal, or such other relief in the premises as to Her Majesty the Queen, in Her Court of Parliament, might seem meet; as also upon the Case of the Commissioners of Customs and Excise, lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:

It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal, of the 25th day of July 1972, complained of in the said Appeal, be, and the same is hereby, Reversed, and that the Cause be, and the same is hereby, remitted back to the Chancery Division of Her Majesty's High Court of Justice with a Direction to order that the Respondents do set forth and disclose to the Appellants in the case of the last importation referred to in paragraph 2 of the Amended Particulars of Breaches served by the Appellants on the 19th of May 1970 in Action 1969 N.230, and in the case of each importation referred to in paragraph 2 of the Particulars of Infringements served by the Appellants on the 5th of August 1970 in Action 1970 N.1809, the name and address of any person appearing from the customs entry in respect of such importation to be an importer: And it is further Ordered, That the Appellants do pay, or cause to be paid, to the said Respondents the Costs incurred by them up to the date of the Judgment of the Honourable Mr. Justice Graham, namely, the 16th day of December 1971: And it is also further Ordered, That no costs be allowed to either side in the Court of Appeal, or in respect of the said Appeal to this House.

Lord Reid

My Lords,


The Appellants own Patent No. 735,136 which covers a chemical compound called furazolidone. The validity of the patent is not in dispute. This substance is widely used and matter published by the Respondents shows that some 30 consignments of it were imported into the United Kingdom between 1960 and 1970. None of these were licensed by the Appellants. Each of these consignments therefore involved a tortious infringement of their right. The Appellants have tried, but with little success, to discover the identity of the importers.


When any goods are imported the master of the ship bringing them and the importer have to lodge documents with the Customs which disclose the identity of the importer. It is not disputed that the Respondents have in their possession documents shewing who imported each of these consignments and the Appellants now seek to get from the Respondents by way of discovery the names of those who are shewn in their records to have imported furazolidone during the last six years in order that the Appellants may be able to take proceedings against such importers. The Respondents for a number of reasons say that they are not entitled or are not willing to give this information and they assert that the Appellants have no right to obtain discovery.


On 27th June, 1967, the Appellants wrote a long letter to the Respondents setting out their contentions and seeking information in respect of the persons responsible for the importation of this substance. On 25th July the Respondents replied that they had no authority to give such information. The Appellants then issued a writ. They alleged infringement by the Respondents and sought wider discovery than they now seek. But they now admit that they have no cause of action against the Respondents.


The question therefore now is whether the Respondents are in law liable to make discovery of the names of the wrongdoers who imported the patented substance. Graham J. held that they were but his decision was reversed by the Court of Appeal.


Discovery as a remedy in equity has a very long history. The chief occasion for its being ordered was to assist a party in an existing litigation. But this was extended at an early date to assist a person who contemplated litigation against the person from whom discovery was sought, if for various reasons it was just and necessary that he should have discovery at that stage. Such discovery might disclose the identity of others who might be joined as defendants with the person from whom discovery was sought. Indeed in some cases it would seem that the main object in seeking discovery was to find the identity of possible other defendants. It is not clear to me whether in all these cases the plaintiff had to undertake in some way to proceed against the person from whom he sought discovery if he found on discovery being ordered that it would suit him better to drop his complaint against that person and concentrate on his cause of action against those whose identity was disclosed by the discovery. But I would think that he was entitled to do this if he chose.


But it is argued for the Respondents that it was an indispensible condition for the ordering of discovery that the person seeking discovery should have a cause of action against the person from whom it was sought. Otherwise it was said the case would come within the "mere witness" rule.


I think that there has been a good deal of misunderstanding about this rule. It has been clear at least since the time of Lord Hardwick that information cannot be obtained by discovery from a person who will in due course be compellable to give that information either by oral testimony as a witness or on a subpoena duces tecum. Whether the reasons justifying that rule are good or bad it is much too late to enquire: the rule is settled. But the foundation of the rule is the assumption that eventually the testimony will be available either in an action already in progress or in an action which will be brought later. It appears to me to have no application to a case like the present case. Here if the information in the possession of the Respondents cannot be made available by discovery now, no action can ever be begun because the Appellants do not know who are the wrongdoers who have infringed their patent. So the Appellants can never get the information.


To apply the mere witness rule to a case like this would be to divorce it entirely from its proper sphere. Its purpose is not to prevent but to postpone the recovery of the information sought. It may sometimes have been misapplied in the past but I see no reason why we should continue to do so.


But that does not mean, as the Appellants contend, that discovery will be ordered against anyone who can give information as to the identity of a wrongdoer. There is absolutely no authority for that. A person injured in a road accident might know that a bystander had taken the number of the car which ran him down and have no other means of tracing the driver. Or a person might know that a particular person is in possession of a libellous letter which he has good reason to believe defames him but the author of which he cannot discover. I am satisfied that it would not be proper in either case to order discovery in order that the person who has suffered damage might be able to find and sue the wrongdoer. Neither authority, principle nor public policy would justify that.


So discovery to find the identity of a wrongdoer is available against anyone against whom the plaintiff has a cause of action in relation to the same wrong. It is not available against a person who has no other connection with the wrong than that he was a spectator or has some document relating to it in his possession. But the Respondents are in an intermediate position. Their conduct was entirely innocent; it was in execution of their statutory duty. But without certain action on their part the infringements could never have been committed. Does this involvement in the matter make a difference?


On the view which I take of the case I need not set out in detail the powers and duties of the Respondents with regard to imported goods. From the moment when they enter the port until the time when the consignee obtains clearance and removes the goods, they are under the control of the Customs in the sense that the Customs authorities can prevent their movement or specify the places where they are to be put, and in the event of their having any suspicions they have full powers to examine or test the goods. When they are satisfied and the appropriate duty has been paid the consignee or his agent is authorised to remove the goods. No doubt the Respondents are never in possession of the goods, but they do have considerable control of them during...

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