Wilko Retail Ltd v Buyology Ltd
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Hacon,Judge Hacon |
| Judgment Date | 07 July 2014 |
| Neutral Citation | [2014] EWHC 2221 (IPEC) |
| Date | 07 July 2014 |
| Docket Number | Case No: CC13P03341 |
| Court | Intellectual Property Enterprise Court |
[2014] EWHC 2221 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
His Honour Judge Hacon
Case No: CC13P03341
Kathryn Pickard (instructed by Wilko Retail Limited Legal Department) for the Claimant
Ashton Chantrielle (instructed by Bennetts Solicitors) for the Defendant
Hearing date: 2 July 2014
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
This is an application for summary judgment or alternatively judgment on admissions in an action for infringement of trade marks and passing off. The defendant ("Buyology") admits infringement. At the hearing judgment on admissions was not resisted. The single point at issue was whether the relief granted should include an order for disclosure in the form granted in Norwich Pharmacal [1974] AC 133. Specifically the claimant ("WLR") seeks an order that Buyology should disclose the names and addresses of Buyology's suppliers of the infringing goods.
WRL runs a substantial retail business with some 370 stores in the United Kingdom which sell a wide variety of consumer products. The stores are generally referred to as "Wilko's".
Buyology is also a retailer, though smaller, having 8 outlets in the south west of England and in Wales. It specialises in the sale of end-of-line or discontinued stock at discount rates.
The proceedings are for infringement of three UK registered trade marks, all in the form of the word WILKO, and for passing off. Buyology does not deny that it has sold goods bearing the sign WILKO without the consent of WRL, although it says that it was assured by its suppliers that it was entitled to sell the goods.
The first letter of complaint from WRL's legal department to Buyology is dated 30 October 2012. The two principal requirements contained in the letter were that Buyology should remove Wilko-branded products from sale and that Buyology should disclose the name and address of its supplier of those products. The correspondence between the parties continued for some time. WRL's insistence that Buyology should disclose details of its supplier was repeated in letters of 12 April 2013 and 21 June 2013.
The Claim Form was issued on 5 August 2013 and the Particulars of Claim served on 17 August 2013. The Particulars made no mention of WRL's claim to disclosure of the details of Buyology's suppliers either in the body of the pleading or in the prayer for relief.
On 31 October the Defence was served admitting infringement and including an undertaking not to sell any Wilko branded products without WRL's consent. Such sales nonetheless continued. Buyology says that the sales were accidental and small in number. WRL does not suggest that the sales were in deliberate breach of the undertaking but says that Buyology took an excessively casual approach to its obligations.
In a letter dated 6 November 2013 to Buyology's solicitors WRL complained about these continuing sales from Buyology's stores in Bridgewater, St Austell and Plympton. The letter also made a proposal to resolve the proceedings. The letter included the following:
"The simplest way to deal with [the proceedings] is for the parties to agree a form of Order and make an application to the Court accordingly. This would bring the proceedings to a close save for our right to enforce the terms of that Order if this should become necessary.
We attach the form of Court Order which would be acceptable to use and would urge your client to agree to its terms."
The draft order attached ("the 6 November Draft") was in the form of a consent order which broadly followed the relief sought in the prayer in the Particulars of Claim including an order for injunction, delivery up, an inquiry as to damages or at WRL's option an account of profits, and costs. The order proposed did not contain any requirement that Buyology should disclose any information regarding its suppliers.
Buyology's solicitors responded in a letter dated 20 November 2013:
"Our client is prepared to agree to the terms of the draft Order. We are instructed however to address a number of provisions and do so as follows:
…
Our client is also prepared for you to collect the infringing stock from its stores. Further our client is prepared for you to attend at each of our client's stores to inspect that it is no longer selling your products.
Whilst our client will no longer offer for sale our products in any of its stores, we consider it important that you are made aware that since the date that our client filed its Defence, it has been offered "Wilko" branded products from a number of sources and there have been no requirements from any of those sources in relation to de-branding/de-labelling.
As to paragraph 4, our client is prepared to submit to an inquiry or an account of profits. However, in the interests of saving costs and time for both parties, our client would be willing and consider it to be more beneficial for the parties to attempt to reach agreement. We trust you agree.
…
In summary, therefore, our client is prepared to agree to your draft Order. It would prefer to reach agreement as to a payment in respect of the profits as opposed to proceeding with an inquiry and we welcome your comments on that."
Was there a binding agreement?
Ms Chantrielle, who appeared for Buyology, submitted that the letters of 6 and 20 November 2013 constituted an offer by WRL and an acceptance by Buyology and thus a binding agreement between the parties to settle these proceedings by seeking a court order in the terms of the 6 November Draft.
Ms Pickard, who appeared for WRL, submitted that there was no binding agreement. Buyology's letter of 20 November 2013 was not an acceptance of WRL's offer but a counter-offer which was not accepted. She said that the counter-offer was to amend the 6 November Draft in two ways:
(1) Buyology would not deliver up the infringing goods but would instead allow WRL to collect them from Buyology's stores and while WRL's staff were at those stores, allow them to check that Buyology was no longer selling Wilko branded products.
(2) Rather than submitting to an inquiry or account, Buyology was instead suggesting that the parties could agree a figure to compensate WRL for infringement.
In my view this is not a fair reading of the letter of 20 November 2013. The letter twice states, in clear and unequivocal terms, that Buyology agreed that these proceedings should be settled on the terms set out in the 6 November Draft. The two so-called qualifications were nothing more that suggestions from Buyology as to how best to implement the terms. As to the first, allowing WRL to pick up the infringing products would be just as effective in handing them over to WRL as would Buyology putting them in a van and taking them to WRL's premises. Buyology suggested the first means by way of offering an additional concession: WRL would be allowed to check Buyology's stores if they wanted to. As to the second so-called qualification, in my view this was nothing more than a very reasonable indication from Buyology that it was willing to cut out the necessity for an inquiry or account and instead negotiate an agreement on quantum. It was not a counter-offer in response to the proposed term that WRL would be entitled to an inquiry or account.
I therefore take the view that there was a binding contract between the parties. That contract has now been performed by the parties attending court and agreeing to an order in the terms of the 6 November draft.
Does the agreement preclude WRL from now seeking Norwich Pharmacal disclosure?
That leaves the application for disclosure of details of Buyology's suppliers. Ms Pickard submits that even a binding agreement between the parties would make no difference to WRL's entitlement to seek Norwich Pharmacal disclosure. This is an application independent of the proceedings proper. It could be made before, during or after the conclusion of the proceedings and therefore the right to seek details of Buyology's suppliers cannot be curtailed by an agreement to settle the proceedings.
Ms Chantrielle submitted that when the parties settled these proceedings by agreeing to the terms of the 6 November Draft, this was understood and intended to draw a line under all claims each party has against the other relating to this dispute. WRL was now belatedly seeking to impose an extra head of relief on Buyology outside the scope of the agreed terms. WLR's application was an abuse of process.
Ms Chantrielle also submitted that WLR could not get around the contract by starting fresh proceedings in which Norwich Pharmacal relief was sought. To do so would be contrary to the rule in Henderson v Henderson requiring finality in litigation, see (1843) 3 Hare 100, at 114, 115, per Sir James Wigram V-C, explained by Lord Bingham of Cornhill in Johnson v Gore Wood & Co [2002] 2 AC 1, at 31.
I have quite a lot of sympathy with this. It may be that Buyology thought that a deal had been reached to end all aspects of the dispute and were dismayed to find that a key aspect of it was reopened after all appeared to have been settled. Nonetheless I do not think that WRL is barred from seeking Norwich Pharmacal relief. It seems to me that the agreement settled all claims each party had against the other within the four corners of the pleaded claim. The Particulars of Claim did not include any claim to...
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The Football Assocation Premier League Ltd v Richard Alan Wells and Others
...this is an order which I do have jurisdiction to make. In particular I was shown a decision of His Honour Judge Hacon in Wilko Retail Limited v. Buyology Limited [2014] EWHC 2221 (IPEC) a decision in the Intellectual Property Enterprise Court. Although declining to grant relief on the facts......