Wilko v Buyology – A Right Owner's interests v an Infringer's interests

Posted by Ben Evans on
Hacon J refuses to grant an order compelling the Defendant to disclose the identity of its suppliers following a trade mark infringement matter heard by the Intellectual Property Enterprise Court (IPEC).

Background

The Claimant, Wilko Retail Limited is the proprietor of several registered trade marks. The Defendant, Buyology bought and sold products baring WILKO branding consequently infringing the Claimant's marks.

The Claimant commenced proceedings, in August 2013, against the Defendant for trade mark infringement and passing off. The Claimant did not seek disclosure of the Defendant's suppliers as part of its relief. The Defendant admitted liability in full and the parties promptly agreed to settle the proceedings by way of a consent order. The terms of the consent order did not compel the Defendant to disclose the identity of the suppliers who provided it with the infringing products, therefore the Defendant was not breaching the terms of the settlement by refusing to disclose this information. The Claimant therefore sought a Norwich Order to require the Defendant to disclose the names of the suppliers.

The court allowed the Claimant's application despite the fact that the parties had reached a settlement. In considering the application, Hacon J had to consider whether the mechanics of the settlement agreement prevented a party from seeking additional relief where that relief was beyond the scope of the agreement, and if additional relief was not beyond the scope of the agreement, whether the order should be granted in this case.

Norwich Pharmacal Orders

A Norwich Pharmacal Order requires the respondent to disclose to the applicant specific information in relation to a third party who is unlikely to be party to the proceedings but who is implicated in the wrongdoing. The leading authority on Norwich Pharmacal Orders is Mitsui & Co Limited v Nexen Petroleum UK Limited [2005] EWHC 625 (Ch). In this case the court established the following three requirements:

  • An ultimate wrongdoer must have carried out the wrong;
  • The order must be necessary in order to enable the claimant to bring an action against the ultimate wrongdoer; and
  • The respondent must be: implicated in the wrongdoing, so as to have facilitated it; and likely to be able to provide the necessary information to enable the ultimate wrongdoer to be sued.

Decision

In making his decision Hacon J held that the most important issue for determination was where the balance of irreparable harm lay. Hacon J considered the repercussions for both parties. In respect of the Claimant, it was accepted that by refusing the order it would have considerable difficulty in attempting to prevent future infringements. On the other hand, if the court ordered disclosure the Defendant may be subject to serious harm on the grounds that it may sever relationships and result in a lack of trust it has with its suppliers.

The court, as a result of its considerations, refused the Claimant's application holding that the balance of irreparable harm on the evidence lay in favour of the Defendant.

Comment

Some commentators have suggested that the decision by the IPEC protects the interests of the infringing party over those of the trade mark owner, which if correct would be rather disconcerting. In actual fact had the Claimant sought disclosure of the suppliers' identity prior to initiating proceedings the outcome may well have been in its favour. Certainly it would have been preferable for such information to form part of the settlement agreement.

Although the Claimant was successful in enforcing its rights against the Defendant it seems inevitable that the infringing goods will somehow find their way back onto the market and once again the Claimant will have to take action against. Trade mark owners should be conscious of this decision and, if they find themselves in a situation similar to this, ensure that the full extent of the relief they seek is established from the outset.

For more information about trade mark rights and infringement, please contact the Blake Morgan Intellectual Property Team.

About the Author

Ben is a dual-qualified Solicitor and chartered trade mark attorney and advises clients on both contentious and non-contentious intellectual property matters.

Ben Evans
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