NOTES OF CASES
| Published date | 01 November 1975 |
| DOI | http://doi.org/10.1111/j.1468-2230.1975.tb01436.x |
| Author | Andrew Gore |
| Date | 01 November 1975 |
NOTES
OF
CASES
INTERLOCUTORY INJUNCTIONS-A
FINAL
JUDGMENT?
MOST natural absorbable sutures used in the United Kingdom are
produced by a firm called Ethicon. In
1966
a firm called Cyanamid
registered a patent for synthetic suture. Marketed
in
1970
it
proved
popular; by
1973
it had captured
15
per cent. of the market. Ethicon
countered by producing their own synthetic sutures. Cyanamid
thereupon sought an injunction against Ethicon alleging breach of
their patent. Graham
J.,
as patent judge, held that a prima facie
case of infringement had been made out, and, considering the
balance of convenience favoured maintenance of the status quo,
granted an interlocutory injunction. The Court of Appeal (Russell
and Stephenson
L.JJ.
and Foster
J.)‘
held that the plaintiffs had
failed to make out a prima facie case, refuted counsel for the
plaintiff’s argument that an interlocutory injunction could neverthe-
less be granted
if
the balance of convenience favoured it,‘ and
therefore discharged the injunction. Leave to appeal was granted.:’
The House of
Lords,
allowing the appeal,4 laid out
a
series of
principles to be applied to applications for interlocutory injunctions.
First, said Lord Diplock, with whom Lords Cross, Salmon and
Edmund Davies and Viscount Dilhorne concurred, there
is
no rule
requiring the court to be satisfied the plaintiff
is
prima facie likely
to obtain judgment at trial. It is enough
if
the court is satisfied that
there is a serious question to be tried, which is met
if
the material
before the court discloses that the plaintiff has any real chance of
succeeding.j If the court is
so
satisfied,
it
should consider the
balance
of
convenience. As to that the following principles are to
be applied:
(i)
If an interlocutory injunction is refused but the plaintiff sub-
sequently succeeds in obtaining a permanent injunction, can he be
adequately compensated in damages for his loss caused by the failure
to grant an interlocutory injunction, and is the defendant good for
those damages? If
so,
no interlocutory injunction should normally
be granted.
(ii)
If
the plaintiff cannot be
so
compensated, can the defendant
be adequately compensated
for
his loss
by
the plaintiff’s cross-
undertaking in damages
if
an interlocutory injunction
is
granted
1
Bar Library Transcript
No.
136
of
1974.
*
Counsel citing
Hubbard
v.
Vosper
[1972] 2
Q.B.
84; [I9721
1
All
E.R.
1023,
C.A.,
Evans
Marshall
&
Co.
Ltd.
v.
Berlola
S.A.,
etc.
[I9731
1
W.L.R.
349: I19731
1
All
E.R.
992,
C.A.
It
appears leave was granted on the facts, and
not
to
determine
the
general
principles
of
injunction law. (Compare the argument at
the
end of the judgments
in
the Court
of
Appeal with Lord Diplock’s remarks at
119751 2
W.L.R.
316, 321;
[I9753
I
All
E.R.
504,
508,
H.L. (E).
-___
____
~__
4
[I9751
2
W.L.R.
316: 119751
1
All
E.R.
504,
H.L.
(E).
3
lbid.,
at pp.
323,
510.
672
NOV.
197511
NOTES
OF
CASES
673
and the defendant later succeeds at the trial, and
is
the plaintiff
good for his undertaking?
If
so,
an interlocutory injunction should
be granted.6
(iii) Where doubt exists as to the adequacy
or
availability of
damages for either party,
or
both, the court must consider all the
other factors affecting the balance of convenience; these factors
are many and no attempt should be made to list them, but:
(a) the extent to which each party will suffer uncompensatable
disadvantages is always a significant factor in assessing where the
balance
of
convenience lies.
(b) where the factors are evenly balanced it is a counsel of
prudence to maintain the status quo.
(c) where the extent of the uncompensatable disadvantages does
not differ widely between the parties, and on undisputed facts one
party’s case is disproportionately strong to that of the other “it
may not be improper” to considcr the relative strength of the
parties’ cases as disclosed on the affidavits.’
Applying these principles to the case in hand, the House
of
Lords
granted an interlocutory injunction: a serious question had been
raised; much unquantifiable harm would be done to Cyanamid
if
an
injunction were refused-their patent would run out in
1980,
it
would need
a
long uninterrupted period to establish itself, and the
principal benefit deriving from the protected period
in
pharma-
ceutical patents was in the establishing of the product in users’
minds for the longer term. Further,
if
Ethicon’s product were
allowed on the market, Cyanamid might be unable to enforce
a
permanent injunction because of the damaging effect on its good-
will, forcing doctors to abandon a product they had found useful.
On the other side, Ethicon had no business going which an inter-
locutory injunction would put a stop to,
so
no work-people would
be put out of work or factories closed.8
Lord Diplock considered the notion that the court had to estab-
lish whether the plaintiff had proved a prima facie case to entitle
him to final relief a recent doctrine, though with earlier antecedents,
and his recollection of practice before his elevation to the House
was that it corresponded closely to the need to show that there was
a serious question to be tried.8 However, Brown
L.J.’O
and Sir John
Pennycuick
’*
have subsequently commented that the practice
in
their respective divisions when trial judges was to require
a
prima
facie case to be shown. Whilst injunction law, given the court’s
-
6
At
pp. 323, 510, Lord Diplock places these principles
as
first
and second
in
the
balance
of
convenience;
at
pp. 324,
511
he suggests they are prior
to
the balance
of
convenience.
It
is submitted the tenor
of
the whole judgment is in accord with the
former construction.
7
At
pp. 323-324, 510-511.
8
At
pp. 324-32.5, 511-512.
9
At
pp. 322, 509.
10
In
Fellowes
v.
Fisher
[1975]
3
W.L..R.
184, 196;
[I9751
2
All
E.R.
829, 840,
C.A.
discussed below.
11
Ibid.,
at pp. 199, 843.
VOL.
38(6)
3
674
THE
MODERN
LAW
REVIEW
[Vol.
38
desire to see the remedy by injunction “kept flexible and dis-
cretionary
”
and
“
not
. .
,
made the subject of strict rules,”
l2
has
naturally developed over the years, it appears the recollections of
Brown L.J. and Sir John are correct.
It
was undoubtedly the practice
in the later nineteenth century
to
require
a
prima facie case.I3
Apparently some confusion later arose though, and practitioners were
led to believe the plaintiff had to show
a
prima facie case if asserting
a right, but only an arguable case that the defendant was infringing
it.“ (Did this confusion perhaps affect Lord Diplock’s recollection?)
Such confusion should have been stilled by the House of Lords’
decision in
Stratford
(I.
T.)
&
Son Ltd.
v.
Lindley,I5
where Lord
Upjohn, clearly setting out the agreed view of the House, held the
plaintiff had to show a prima facie case both of right and breach.“
Strangely, though, this first pronouncement by the Lords on inter-
locutory injunction principles went largely unnoticed on the injunc-
tion point I7-certainly it was not in the minds of the court in
Harman Pictures,
N.V.
v.
Osborne
I*
or of the Court of Appeal in
Hubbard
v.
Vo~per,’~
though in any event the Court of Appeal did
take the same view as the Lords had in
1965.
Nor was it dis-
12
Hubbard
v.
Vosper
[1972] 2
Q.B.
84, 96; [I9721 2
All E.R.
1023, 1029,
C.A.,
per
Lord Denning, M.R.
13 There are early nineteenth century cases using such language as, showing “a
colour of light
”
(Powell
v.
Lloyd)
(1827)
1
Y.
&
J.
427, 430,
per
@xander L.C.B.,
whether there are “difficult and important questions to be decided
(De
Maltos
V.
Gibson)
(1859) 4
De.
G.
&
J.
276, 284,
per
Turner L.J., but these ph::ses probably
carried a connotation similar to
our
understanding of
“
prime facie today. This
may be illustrated from the judgments given by Lord Cottenham L.C. in interlocu-
tory cases: he makes it clear that a prima facie case, in
our
understanding
of
the
term, must be established by the plaintiff (see,
e.g.
Hilton
v.
Earl
of
Granville
(1841)
Cr.
&
Ph.
283, 292,
Electric Telegraph
Co.
v.
Nott
(1847) 2
Coop.T.Cott.
41,
but
at times uses language which today would carry a very different meaning (see,
e.g.
Glascott
v.
Lung
(1838)
3
My.
&
Cr.
451, 455-“
a case which makes the trans-
action a proper subject
of
investigation in a Court
of
Equity,’’
Great Western Rly.
v.
Birmingham
&
Oxford Rly.
(1848) 2
Ph.
597, 603-“a
substantial question be-
tween the parties.” And Lord Cranworth, in
Shrewsbury
&
Chester Rly.
v.
Shrews-
bury
&
Birmingham Rfy.
(1851)
1
Sim.N.S.
410, 427,
juxtaposes these statements,
‘I
the Court has
to
be satisfied that he has a fair question to raise.
.
.but
I
do not
understand that in every case where there
is
a prima facie
or
probable case sug-
gested..
.”
However, by the end
of
the century the language is clear and unam-
biguous:
Preston
v.
Luck
(1884) 27
Ch.D.
497,
C.A.,
per
Cotton
L.J.
at p.
506,
Lindley L.J. at p.
508,
Brown
v.
Stock Exchange Commitlee
(1892) 36
S.J.
752, 753,
per
Bruce J.,
Challender
v.
Royle
(1887) 36
Ch.D.
425, 443,
C.A.,
per
Bowen L.J.
in very strong terms.
14
This false distinction appears to originate from
Halsbury’s Laws,
the editors
possibly misled by the ambiguities noted,
supra,
note
13,
and particularly by re-
marks
of
Turner v.-C. in
Sparrow
v.
Oxford
&
Worcester Rly.
(1851) 9
Hare
436,
441.
This false distinction was unfortunately adopted in
Donmar Productions
v.
Burr
&
Others
[1967]
1
W.L.R.
740
n.;
11967) 2
All E.R.
338n.
(decided in
1964),
followed in
Harman Pictures N.V.
v.
Osborne
[I9671
1
W.L.R.
723; [1967] 2
All
E.R.
324.
15
[I9651
A.C.
269;
[I9641
3
All E.R.
102,
H.L.
(E).
16
At
338,
116.
17 It is not cited in this respect in the White Book, the Supplement to
Hafsbury’s
Laws
or
in
Chifly,
though it is discussed in
Clerk
&
Lindsell,
13th ed. para.
503.
It
was cited in
Daily
Mirror Newspapers
Ltd.
v.
Gardner
[1968]
2
Q.B.
768; [19681
2
All E.R.
163,
C.A.
18
[I9671
1
W.L.R.
723; 119671 2
All E.R.
324.
19
[1972] 2
Q.B.
84; [1972]
1
All E.R.
1023,
C.A.
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