The plaintiffs sought discovery of the names of patent infringers from the defendant third party, submitting that by analogy with trade mark and passing-off cases, the Customs could be ordered to give discovery of the names.
Held: Buckley LJ said: ‘If a man has in his possession or control goods the dissemination of which, whether in the way of trade or, possibly, merely by way of gifts (see Upmann v Forester (1883) 24 ChD 231) will infringe another’s patent or trade mark, he becomes, as soon as he is aware of this fact, subject to a duty, an equitable duty, not to allow those goods to pass out of his possession or control at any rate in circumstances in which the proprietor of the patent or mark might be injured by infringement ensuing. The man having the goods in his possession or control must not aid the infringement by letting the goods get into the hands of those who may use them or deal with them in a way which will invade the proprietor’s rights. Even though by doing so he might not himself infringe the patent or trade mark, he would be in dereliction of his duty to the proprietor. This duty is one which will, if necessary, be enforced in equity by way of injunction: see Upmann v Elkan (1871) LR 12 Eq 140 (1871) 7 Ch App 130. The man having possession or control may also be under a duty to give information in relation to the goods to the proprietor of the patent or mark: Upmann v Elkan .’
Buckley LJ
[1972] 2 All ER 813, [1972] RPC 743
England and Wales
Citing:
Appeal from (revresed) – Norwich Pharmacal Co and others v Customs and Excise Commissioners ChD 1972
The court considered an application for an order that the other party identify third party wrong-doers. . .
Cited – Upmann v Elkan CA 5-Jun-1871
The defendant freight forwarding agent was innocently in possession of consignments of counterfeit cigars in transit to Germany through a London dock. The action was not for discovery, but for an order restraining the forwarder from releasing the . .
Cited by:
Appeal from (reversed) – Norwich Pharmacal Co and others v Customs and Excise Commissioners HL 26-Jun-1973
Innocent third Party May still have duty to assist
The plaintiffs sought discovery from the defendants of documents received by them innocently in the exercise of their statutory functions. They sought to identify people who had been importing drugs unlawfully manufactured in breach of their . .
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – Smith v ADVFN Plc CA 15-Apr-2008
The claimant complained of defamation on internet bulletin boards. He made an application to require the forum operator to disclose IP addresses and other information about posters under a Norwich Pharmacal order. Further applications were made for . .
Cited – Golden Eye (International) Ltd and Another v Telefonica UK Ltd ChD 26-Mar-2012
Golden Eye and 13 other claimants sought a Norwich Pharmacal order against Telefonica UK Ltd trading as O2, one of the six largest retail internet service providers in the UK. The object of the claim was to obtain disclosure of the names and . .
Cited – Mircom International Content Management and Consulting Ltd and Others v Virgin Media Ltd and Another ChD 16-Jul-2019
The claimants, producers of pornographic films, sought disclosure by the defendant internet service provider of certain internet protocol addresses, wishing to pursue those it said had wrongfully downloaded their films. The court was asked first . .
Cited – AB Bank Ltd, Off-Shore Banking Unit (Obu) v Abu Dhabi Commercial Bank Pjsc ComC 12-Aug-2016
Application to set aside Norwich Pharmacal Order: ‘The application raises the question whether the court has jurisdiction to permit service out of the jurisdiction of an application for the grant of a Norwich Pharmacal Order.’
A Norwich . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 July 2021; Ref: scu.239094