R.HM Foods Ltd v Bovril Ltd
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE LAWTON,LORD JUSTICE OLIVER |
| Judgment Date | 20 January 1982 |
| Judgment citation (vLex) | [1982] EWCA Civ J0120-1 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | 82/0006 |
| Date | 20 January 1982 |
[1982] EWCA Civ J0120-1
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (Civil Division)
(On appeal from Mr. Justice Warner)
Royal Courts of Justice
Lord Justice Lawton
and
Lord Justice Oliver
82/0006
1981 R. No. 3413
and
Mr. ANDREW BATESON, QC, and Mr. PETER PRESCOTT (instructed by Messrs. Simmons & Simmons) appeared on behalf of the Appellants.
Mr. LEONARD HOFFMANN, QC, and Mr. DAVID KITCHIN (instructed by Messrs. Macfarlanes) appeared on behalf of the Respondents.
This is an appeal by the defendants, Bovril Limited, in a passing-off action against an order made by Mr. Justice Warner on the 30th November 1981, which was nineteen days after the issue of the writ and before a statement of claim had been delivered, whereby he ordered them on or before the 21st December 1981 to disclose all the briefs which they had given to their advertising agents, together with resulting correspondence, in connection with the marketing and advertising of a gravy mixture called Gravymate which is now competing with the plaintiffs' well-known gravy mixture which since 1910 has been marketed under the name Bisto. The plaintiffs have alleged in this court that the defendants have packaged, and advertised on television, their gravy mixture in such a way as to give the impression to the public that it is a Bisto product and that they have done this with an intention deliberately to deceive the public.
These allegations, which are grave ones to make, are based on alleged similarities in packaging and the way in which the television advertisements have been made up and presented; for example, the colours in the packaging are much the same for the two products and in their television programmes the defendants have used the same sequences of presentation as the plaintiffs used in a series of television advertisements which they put out for a number of years ending in 1976, including the use in these advertisements of the words "It browns, seasons and thickens" which the plaintiffs say the public identifies with Bisto. The evidence about the similarities was set out in affidavits sworn by Helen Falconer and Philip Sheldon.
These similarities may be enough to establish a prima facie case for the purposes of the motion for an interlocutory injunction to restrain the defendants from acting as they have done. The plaintiffs served this motion with the writ. It is likely to be heard in February 1982.
A case based solely on similarities, however, is not a strong one. The plaintiffs are alive to this and have sought to strengthen their case by asking the court to consider inferences which the two deponents, to whom I have referred, drew from the fact of the similarities. Helen Falconer in paragraph 36 of her affidavit said: "In short I believe the makers of the commercials have deliberately set out to plagiarise Bisto's advertisements which have been established by years of advertising development and a considerable amount of media exposure". In paragraph 40 she said: "In these circumstances I am convinced that the defendants are deliberately trying to launch their product on the back of the reputation associated with Bisto and that one product will be taken for the other or as being associated with or coming from the same source as the other. Needless to say for Gravymate to attract the benefit of the goodwill associated with Bisto in this way would considerably assist its launch". Philip Sheldon in paragraph 4 of his affidavit said: "I have read the affidavit of Helen Patricia Falconer…. and confirm her conclusions with regard to the intention of the defendants. The defendants appear to have adopted a deliberate and systematic campaign to appropriate the goodwill of the Bisto product".
Mr. Hoffmann submitted that these paragraphs amount to an allegation that the defendants set out deliberately to deceive the public into thinking that Gravymate was a Bisto product and that on the hearing of the motion, which, so he submitted but the defendants denied, may well decide all issues other than damages. The intent with which the defendants packaged and advertised Gravymate as they did will be a relevant issue. He relied on the decision of the Privy Council in Cadbury-Schweppes Pty. Ltd. v. The Pub Squash Co. Ltd. (1981) RPC 429. Lord Scarman delivered the opinion of the Board and said at page 493: "Counsel for the appellants accepted that the issue of deception was crucial…. Where an intention to deceive is found, it is not difficult for the court to infer that the intention has been, or in all probability will be, effective: see Slazenger and Sons v. Feltham and Co. (1889) 6 RPC 531 at 538 per Lindley L.J."
As the issue of deception was going to be a live one in the case the plaintiffs' advisers, before any further step in the action was taken, decided to apply under Order 24, rule 7, for discovery of particular documents. If, as the plaintiffs alleged, there had been an intent deliberately to deceive the probability was that the defendants or their advertising agents or both of them would be in possession of documents evidencing such an intent. Mr. Justice Warner was impressed with this submission and being of the opinion that on the hearing of the motion for interlocutory relief the court would have to consider any evidence there was of an intent to deceive, a case had been made out for the discovery of the documents he specified in his order. No doubt he had in mind that under rule 7(1) his form of order can be made at any time on the application of any party to a cause or matter.
Both before Mr. Justice Warner and in this court the defendants, through Mr. Bateson, rested their objections on three grounds: first, that the judge had no jurisdiction to make the order he did; secondly, that even if he had jurisdiction, on the facts there was no evidential basis for making it; and thirdly, it was an order which was unfair to the defendants. The third ground, in my judgment, is an aspect of the second.
Mr. Bateson pointed out that rule 7(1) starts with the words "Subject to rule 8", which has a cross-heading "Discovery to be ordered only if necessary". It ends with these words, "and shall in any case refuse to make such an order if and so far as it is of opinion that discovery is not necessary either for disposing fairly of the cause or matter or saving costs". He also pointed out that the plaintiffs had made their application for the purposes of getting interlocutory relief and he submitted that such a purpose was not "either for disposing fairly of the cause…. or for saving costs". The plaintiffs had never suggested that they had made their application for the purpose of saving costs. He invited our attention to the decision of this court in A.J. Bekhor and Co. Ltd. v. Bilton (1981) 2 All E.R. 565 at page 575. That was a case in which the Judge at Chambers had, on the application of the plaintiffs, ordered discovery under Order 24, rule 7, and interrogatories under Order 26, rule 1(1) in aid of a Mareva injunction. This court adjudged that these orders did not give jurisdiction because they would not relate to matters in question in the action. Lord Justice Ackner, in the course of his judgment, said at page 575: "If and in so far as the judge relied for his power to make the order under the Rules of the Supreme Court, then I respectfully think he was in error. The documents which can be made the subject of discovery must relate 'to matters in question in the action': see Order 24, rule 1. Order 24, rule 7(1), to which the judge drew specific attention and which the plaintiffs in the first three lines of their notice of intention to apply for discovery specifically invoked, although giving the court power at any time to make an order for discovery, in no way departs from Order 24, rule 1. In fact it provides (in rule 7(3)) that an application for an order under this rule must be supported by an affidavit stating the belief of the applicant that the party from whom the discovery is sought has, or at some time had, in his possession, custody or power the document, or class of...
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