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Title: Norwich Pharmacal Co. and others -v- Customs and Excise Commissioners

Court: House of Lords

Date: June 26, 1973

Coram: Lord Reid, Lord Morris of Borth-y-Gest, Viscount Dilhorne, Lord Cross of Chelsea and Lord Kilbrandon

References: [1973] 3 WLR 164

Cur Ad Vult



My Lords, the appellants own patent no. 735,136 which covers a chemical compound called furazolidone. The validity of the patent is not in dispute. This substance is widely used and matter published by the respondents shows that some 30 consignments of it were imported into the United Kingdom between 1960 and 1970. None of these were licensed by the appellants. Each of these consignments therefore involved a tortious infringement of their right. The appellants have tried, but with little success, to discover the indentity of the importers.

When any goods are imported the master of the ship bringing them and the importer have to lodge documents with the Customs which disclose the identity of the importer. It is not disputed that the respondents have in their possession documents showing who imported each of these consignments and the appellants now seek to get from the respondents by way of discovery the names of those who are shown in their records to have imported furazolidone during the last six years in order that the appellants may be able to take proceedings against such importers. The respondents for a number of reasons say that they are not entitled or are not willing to give this information and they assert that the appellants have no right to obtain discovery.

On June 29, 1967, the appellants wrote a long letter to the respondents setting out their contentions and seeking information in respect of the persons responsible for the importation of this substance. On July 25, the respondents replied that they had no authority to give such information. The appellants then issued a writ. They alleged infringement by the respondents and sought wider discovery than they now seek. But they now admit that they have no cause of action against the respondents.

The question therefore now is whether the respondents are in law liable to make discovery of the names of the wrongdoers who imported the patented substance. Graham J. held that they were but his decision was reversed by the Court of Appeal.

Discovery as a remedy in equity has a very long history. The chief occasion for its being ordered was to assist a party in an existing litigation. But this was extended at an early date to assist a person who contemplated litigation against the person from whom discovery was sought, if for various reasons it was just and necessary that he should have discovery at that stage. Such discovery might disclose the identity of others who might be joined as defendants with the person from whom discovery was sought. Indeed in some cases it would seem that the main object in seeking discovery was to find the identity of possible other defendants. It is not clear to me whether in all these cases the plaintiff had to undertake in some way to proceed against the person from whom he sought discovery if he found on discovery being ordered that it would suit him better to drop his complaint against that person and concentrate on his cause of action against those whose identity was disclosed by the discovery. But I would think that he was entitled to do this if he chose.

But it is argued for the respondents that it was an indispensable condition for the ordering of discovery that the person seeking discovery should have a cause of action against the person from whom it was sought. Otherwise it was said the case would come within the "mere witness" rule.

I think that there has been a good deal of misunderstanding about this rule. It has been clear at least since the time of Lord Hardwicke that information cannot be obtained by discovery from a person who will in due course 'oe compellable to give that information either by oral testimony as a witness or on a subpoena duces tecum. Whether the reasons justifying that rule are good or bad it is much too late to inquire: the rule is settled. But the foundation of the rule is the assumption that eventually the testimony will be available either in an action already in progress or in an action which will be brought later. It appears to me to have no application to a case like the present case. Here if the information in the possession of the respondents cannot be made available by discovery now, no action can ever be begun because the appellants do not know who are the wrongdoers who have infringed their patent. So the appellants can never get the information.

To apply the mere witness rule to a case like this would be to divorce it entirely from its proper sphere. Its purpose is not to prevent but to postpone the recovery of the information sought. It may sometimes have been misapplied in the past but I see no reason why we should continue to do so.

But that does not mean, as the appellants contend, that discovery will be ordered against anyone who can give information as to the identity of a wrongdoer. There is absolutely no authority for that. A person injured in a road accident might know that a bystander had taken the number of the car which ran him down and have no other means of tracing the driver. Or a person might know that a particular person is in possession of a libellous letter which he has good reason to believe defames him but the author of which he cannot discover. I am satisfied that it would not be proper in either case to order discovery in order that the person who has suffered damage might be able to find and sue the wrongdoer. Neither authority, principle nor public policy would justify that.

So discovery to find the identity of a wrongdoer is available against anyone against whom the plaintiff has a cause of action in relation to the same wrong. It is not available against a person who has no other connection with the wrong than that he was a spectator or has some document relating to it in his possession. But the respondents are in an intermediate position. Their conduct wa.s entirely innocent; it was in execution of their statutory duty. But without certain action on their part the infringements could never have been committed. Does this involvement in the matter make a difference?

On the view which I take of the case I need not set out in detail the powers and duties of the respondents with regard to imported goods. From the moment when they enter the port until the time when the consignee obtains clearance and removes the goods, they are under the control of the Customs in the .sense that the Customs authorities can prevent their movement or specify the places where they are to be put, and in the event of their having any suspicions they have full powers to examine or test the goods. When they are satisfied and the appropriate duty has been paid the consignee or his agent is authorised to remove the goods. No doubt the respondents are never in possession of the goods, but they do have considerable control of them during the period from entry into the port until removal by the consignee. And the goods cannot get into the hands of the consignee until the respondents have taken a number of steps and have released them.

My noble and learned friends, Lord Cross of Chelsea and Lord Kilbrandon, have dealt with the authorities They are not very satisfactory, not always easy to reconcile and in the end inconclusive. On the whole I think they favour the appellants, and I am particularly impressed by the views expressed by Lord Romilly M.R. and Lord Hatherley L.C. in Upmann v. Elkan (1871) L.R. 12 Eq. 140; 7 Ch.App. 130. They seem to me to point to a very reasonable principle that if through no fault of his own a person gets mixed up in the tortious acts of others so as to facilitate their wrong-doing he may incur no personal liability but he comes under a duty to assist the person who has been wronged by giving him full information and disclosing the identity of the wrongdoers. I do not think that it matters whether he became so mixed up by voluntary action on his part or because it was his duty to do what he did. It may be that if this causes him expense the person seeking the information ought to reimburse him. But justice requires that he should co-operate in righting the wrong if he unwittingly facilitated its perpetration.

I am the more inclined to reach this result because it is clear that if the person mixed up in the affair has to any extent incurred any liability to the person wronged, he must make full disclosure even though the person wronged has no intention of proceeding against him. It would I think be quite illogical to make his obligation to disclose the identity of the real offenders depend on whether or not he has himself incurred some minor liability. I would therefore hold that the respondents must disclose the information now sought unless there is some consideration of public policy which prevents that.

Apart from public policy the respondents say that they are prevented by law from making this disclosure. I agree with your Lordships that that is not so. If it were they could not even disclose such information in a serious criminal case, but their counsel were, quite rightly, not prepared to press their argument so far as that.

So we have to weigh the requirements of justice to the appellants against the considerations put forward by the respondents as justifying non-disclosure. They are twofold. First it is said that to make such disclosures would or might impair or hamper the efficient conduct of their important statutory duties. And secondly it is said that such disclosure would or might be prejudicial to those whose identity would be disclosed.

There is nothing secret or confidential in the information sought or in the documents which came into the hands of the respondents containing, that information. Those documents are ordinary commercial documents which pass through many different hands. But it is said that those who do not wish to have their names disclosed might concoct false documents and thereby hamper the work of the customs. That would require at least a conspiracy between the foreign consignor and the importer and it seems to me to be in the highest degree improbable. It appears that there are already arrangements in operation by the respondents restricting the disclosure of certain matters if the importers do not wish them to be disclosed. It may be that the knowledge that a court might order discovery in certain cases would cause somewhat greater use to be made of these arrangements. But it was not suggested in argument that that is a matter of any vital importance. The only other point was that such disclosure might cause resentment and impair good relations with other traders: but I find it impossible to believe that honest traders would resent failure to protect wrongdoers.

Protection of traders from having their names disclosed is a more difficult matter. If we could be sure that those whose names are sought are all tortfeasors, they do not deserve any protection. In the present case the possibility that any are not is so remote that I think it can be neglected. The only possible way in which any of these imports could be legitimate and not an infringement would seem to be that someone might have exported some furazolidone from this country and then whoever owned it abroad might have sent it back here. Then there would be no infringement. But again that seems most unlikely.

But there may be other cases where there is much more doubt. The validity of the patent may be doubtful and there could well be other doubts. If the respondents have any doubts in any future case about the propriety of making disclosures they are well entitled to require the matter to be submitted to the court at the expense of the person seeking the disclosure. The court will then only order discovery if satisfied that there is no substantial chance of injustice being done.

I would therefore allow this appeal. The respondents were quite right in requiring the matter to be submitted to the court. So they are entitled to their costs down to the date of the judgment of Graham J. Thereafter the appellants caused much extra expense by putting their case much too high. In the circumstances I would award no costs in the Court of Appeal or in this House.


My Lords, the question which calls for consideration arises in proceedings which by now have shed many of their original features. Two actions were begun. They were later consolidated. The plaintiffs [the appellants] were respectively the registered proprietors of, and the exclusive licensees in the United Kingdom under, letters patent which covered a specific chemical compound called furazolidone. The claims made by the plaintiffs in each action were as follows. First, there was a claim for a declaration that the defendants (the commissioners) had infringed or had caused, enabled or assisted others to infringe the letters patents. Secondly, there was a claim for a declaration that it was the commissioners' statutory duty to forfeit all the imported furazolidone in their possession custody or control which was not licensed for importation by the plaintiffs. Thirdly, there was a claim for an order that the commissioners should:

It was pleaded that third parties whose names were unknown to the plaintiffs had infringed the letters patent by importing furazolidone without the leave and licence of the plaintiffs. Particulars were given setting out dates, quantities, values and countries from which imported. The discovery claimed was sought in aid of proceedings which the plaintiffs wished to bring against others but which they could not initiate without at least knowing the names of the importers.

After delivery of defences both parties filed lists of documents. In one part of the commissioners' list there were included the following documents: Special Chemical Register: Customs Entries (comprising Forms XS107 and C.105 and supporting documents) delivered by persons other than the plaintiffs relating to the importation of furazolidone: and ships' reports, cargo manifests, correspondence and books of account relating to such importations. The commissioners objected to produce those documents. The objection was on the following grounds:

The plaintiffs took out a summons by which they asked that the defendants be ordered to produce the documents for inspection. The summons was adjourned into court and was heard by Graham J.

Though the learned judge held that the plaintiffs had no reasonable cause of action against the commissioners he held in a most careful and illuminating judgment that the court could make an order requiring them to disclose to the plaintiffs the names and addresses of the importers of furazolidone. The commissioners appealed to the Court of Appeal against this order. The plaintiffs persisted in their contention that they had causes of action against the commissioners and by a respondent's notice they contended (a) that the commissioners had infringed (or had caused or enabled or assisted others to infringe) the letters patent and (b) that the commissioners were in breach of a statutory duty to forfeit all imported furazolidone in their possession custody or control which the plaintiffs had not licensed for importation.

Having lost in the Court of Appeal the plaintiffs by leave appealed to this House. Though by their printed case the plaintiffs set out that to a limited extent they desired to maintain the contention that they had a cause of action for infringement by the commissioners themselves, that contention was abandoned when the appeal was opened. The case proceeded therefore on the basis (a) that it consisted solely of a claim for limited discovery against the commissioners and (b) that no other relief could be or could have been claimed against the commissioners. It must be approached on the footing that it was and always had been an action solely for discovery. The claim is now expressly limited so as to relate only to the names and addresses of any persons appearing from the customs entry to be the importers (a) in the case of the last importation referred to in paragraph 2 of the amended particulars of breaches in the first action and (b) in the case of each importation referred to in paragraph 2 of the particulars of infringements in the second action.

It is important to mention certain matters. (1) The commissioners by their pleadings admitted (for the purposes of this case) the validity of the letters patent. But beyond this there was evidence showing that the validity of the patent (the complete specification of which was published nearly 16 years ago) had never been challenged. Some infringements had been detected and all infringers who had been detected had been sued: the actions had been settled on the basis that there was infringement. (2) The commissioners publish certain monthly statistics of goods imported into the United Kingdom and the importation of furazolidone has been specifically mentioned. The plaintiffs are in a position to assert that the persons who have imported, whoever they are, must have been infringers and therefore wrongdoers. The commissioners know the names and addresses of these people. The plaintiffs wish to sue such people and intend to sue them if they can find out who they are. The plaintiffs say that they are unable to find out who the people are unless the commissioners tell them.

The plaintiffs wrote (in June and July 1967) to the commissioners and asked for the information they sought. The commissioners stated that they were advised that information furnished to them under a requirement of the Customs and Excise Act 1952 should not be disclosed to third parties.

In my view, it would be reasonable, and in a broad sense of the term just, if the desired information could be supplied. The facts are very special. The plaintiffs are fully entitled to protect their interests. Subject always to the emergence of some possible explanation of a nature not at present known, the importers whose names are known to the commissioners are wrongdoers. It will be unfortunate not only from the point of view of the plaintiffs but also of that of the public if the wrongdoers cannot be challenged. In this situation two questions arise: (1) Is it within the power of the court to assist the plaintiffs or is the law powerless? (2) If the court has power to make the desired order - would it be against the public interest to make it?

In the review of very many authorities to which we were referred in painstaking and learned arguments it seemed clear that as a broad and general rule it is true to say that a court will not order discovery against a mere witness. On behalf of the plaintiffs it is not sought to challenge this. A witness is one who may be able to give testimony in either pending or anticipated proceedings. Here there are no pending proceedings and unless the plaintiffs secure the help of the court there are no anticipated proceedings. If the names are given and if the plaintiffs take proceedings it is unlikely that there would be any need to rely on any evidence from the commissioners.

It is not suggested that in ordinarily circumstances a court would require someone to impart to another some information which he may happen to have and which the latter would with to have for the purpose of bringing some proceedings. At the very least the person possessing the information would have to have become actually involved (or actively concerned) in some transactions or arrangements as a result of which he has acquired the information. In all ordinary circumstances there would then be some proceedings in the course of which tl.e machinery of the court would enable all relevant and admissible evidence to be obtained.

My Lords, the review of numerous authorities undertaken by learned counsel has left me with the impression that unless supplied by the case of Orr v. Diaper (1876) 4 Ch.D. 92 clear-cut authority is meagre in support of the very limited order now sought by the plaintiffs; equally I am left with the impression that it would be very unfortunate if the law could not come to the aid of the plaintiffs. The commissioners have had public duties to discharge. They have acted with complete propriety. But in the course of their public duties they have come b know, and have been obliged to come to know, the names of those who an reasonably be assumed to be wrongdoers vis-a-vis the plaintiffs. Assuming that only the necessities of the public service (a matter to which I will later refer) have deterred the commissioners from disclosing the names to the plaintiffs, and always assuming that there is no statutory prohibition against such disclosure, is there any reason why the court, in the interests of justice and in the absence of any real doubt that certain wrongdoers are enjoying a quite fortuitous protection, should not authorise and require the commissioners to disclose the names?

So far as authority goes the sheet anchor of the appellants is the decision in 1876 in Orr v. Diaper, which is reported in 4 Ch.D. 92 and in other reports. In the much earlier case of Moodalay v. Morton (1785) 1 Bro.C.C. 469 there was a bill for discovery against the East India Company and against Morton, their secretary. The plaintiffs had had a lease for a period of 10 years from the East India Company of the permission to supply the inhabitants of Madras with tobacco: the plaintiffs alleged that the company, by their servants in India, had dispossessed the plaintiffs and had granted a lease to others: the plaintiffs intended to sue the East India Company but in order to do so they needed the evidence of persons resident in the East Indies: they therefore prayed for a commission for the examination of witnesses and they required the company and the secretary to discover by whom and under what authority the second lease was granted. The plaintiffs wanted to know whether those who had dispossessed them were or were not servants of the company: if they were not they would be liable in their own persons. A demurrer to the bill was overruled. The fact that no action had been brought was no answer.

Moodalay v. Morton was much discussed in Angel v. Angel (1822) 1 L.J.O.S.Ch. 6. It was considered whether it was not exceptional to grant a commission to examine witnesses before an action was begun. Sir John Leach V.-C. said, at p. 9, in reference to Moodalay v. Morton: "The plaintiff there required a commission, in order to know against whom the action should be brought." While in the present case there is now no suggestion that the commissioners are to be sued the justice of the case would just as much warrant help being given to the plaintiffs as to Moodalay.

Numerous cases firmly recognised the rule that a bill of discovery would not lie against a mere witness. Fenton v. Hughes (1802) 7 Ves.Jr. 287 was but one of many cases which illustrated the rule. Someone who was not being sued and could not be sued would be regarded as a mere witness. The rule was recognised in Mayor and Commonalty and Citizens of London v. Levy (1803) 8 Ves.Jr. 398, where the demurrrer was allowed because the bill did not allege with sufficient certainty by whom the duties which were claimed were payable. Lord Eldon L.C. said, at p. 404:

In the present case the appellants are able to say that they have rights which they intend to pursue and rights which as far as can be known must succeed: they know everything except the names and addresses of those whom they desire and intend to sue: they further know that those names and addresses appear on Customs entries in the possession of the commissioners and of which the commissioners have become possessed in pursuance of their duties. Is there any reason why the court should not sanction and direct discovery?

I do not propose to refer to the majority of the cases which were cited for our consideration because I agree with the conclusion reached both by the learned judge and by the Court of Appeal that in general the cases support the view that no independent action for discovery lies against a party against whom no reasonable cause of action can be alleged or who is in the position of a mere witness in the strict sense. If this is, in general, the conclusion which is reached after a study of numerous decisions how, then, is the decision in Orr v. Diaper, 4 Ch.D. 92 to be viewed? No less an authority that Mr. Bray (see Bray on Discovery (1885), pp. 40 41) regarded it as a special case. From the broad general rule Graham J. considered that there could be exceptional cases and that, of such, Orr v. Diaper was an example. We have studied and re-studied that case and it was the subject of very careful analysis in the Court of Appeal and in particular by Buckley L.J., who most helpfully examined the report of the case in 25 W.R. 23. The conclusion which I for my part have reached, in agreement with the Court of Appeal, is that Orr v. Diaper perhaps need not on its facts have been regarded as an exception to the broad general rule. Yet I think it was so regarded. Nor I think did Mr. Bray regard the decision as heretical but rather as being an exception from a broad general rule which permitted of certain exceptions being made, and an exception which, in the particular case, a court in the interests of justice had been warranted in making. To prevent a denial of justice must at all times be the aim of a judge and the concluding words of Hall V.-C., 4 Ch.D. 92, 96 would surely have been regarded as wholly commendable in any court of equity:

But whatever may be the true view of Orr v. Diaper I think that it is very significant that it has been quoted as an authority and has not been overruled, with the result that after this lapse of time it may be regarded as furnishing a precedent for a course that justice would seem to demand.

We were referred to Hunt v. Maniere (1864) 34 Beav. 157, Upmann v. Elkan (1871) L.R. 12 Eq. 140 and Upmann v. Forester (1883) 24 Ch.D. 231. But the position of the commissioners is not I think to be equated with that of wharfingers or forwarding agents or shippers. The position of the commissioners is rather special. They are not engaged in commercial activities: they differ from those who voluntarily engage in trade for their own profit. In no ordinary sense are the commissioners in possession of goods though they are endowed with certain wide powers which they need to enable them to discharge their statutory duties. But they are not mere outsiders or volunteers or, so to speak, mere bystanders. They become obliged to have active concern with, to acquire positive knowledge of, and to exercise certain powers in respect of, the affairs of traders and the movement of goods.

What, then, was the position of the commissioners when they were asked by the plaintiffs voluntarily to give the names? Were they entitled or obliged to do so? In this connection the words of Lord Romilly M.R. in Upmann v. Elkan, L.R. 12 Eq. 140 were referred to. (It may here be mentioned that neither in that case nor in Upmann v. Forester, 24 Ch.D. 231 did the proceedings take the form of a bill of discovery.) Lord Romilly M.R. said, at p. 145:

In my view, the position of the commissioners differed from that of the forwarding agents in the case cited. I think that the commissioners were at the date of the request to them warranted in declining voluntarily to give the names. It is quite different if the court having considered all aspects of the public interest authorises and requires them to give the names. But the information possessed by the commissioners was information which others had been obliged to give them under statutory compulsion and for some particular purposes. I think that the commissioners were correct in taking the view that they ought to treat the information possessed by them as confidential. In this respect the provisions of section 3 of the Finance Act 1967 are of importance. The commissioners are given power to disclose some information to some others if the Secretary of State is satisfied that it would be in the national interest, but no power is given to sanction the disclosure of "the price of the goods or the name of the importer of the goods." This shows that the names of importers come within an area indicated by the legislature as being one of special sensitivity: see also section 127 of the Finance Act 1972,

The next step is to consider whether the court should make the desired order and whether it would be in the public interest or against the public interest to make the order. If there was some statutory prohibition (such as that contained in section 17 (2) of the Agricultural Marketing Act 1931: see Rowell v. Pratt [1938] A.C. 101) then that, of course, would be conclusive. In the absence of any such prohibition it seems to me that in the special circumstances of this case, and with some support from authority, the interests of justice warrant the court in making the desired order unless there are some features of the public interest which are of such weight as to out-balance the public interest of advancing the cause of justice. I can well appreciate the importance of the considerations which were advanced and which undoubtedly carry some weight, but having considered them in relation to the very limited order now sought I am firmly of the view that the balance of the public interest warrants the making of the order as now requested. I consider that the fair order as to costs is that the plaintiffs should pay to the commissioners their costs at first instance and that there should be no order as to costs in the Court of Appeal and in this House.

I would allow the appeal accordingly.


My Lords, the appellants hold the patent for a chemical called furazolidone which is used in poultry food. The respondents publish monthly statistics of the goods imported into the United Kingdom. Those statistics revealed that in 32 months between March 1960 and February 1970 furazolidone was imported into this country, but they do not reveal who were the importers. Each importation, the appellants say, constituted an infringement of their patent, though they say that it is conceivable that some of the chemical sold by them was reimported into this country, in which case there would be no infringement. The appellants say that although there must have been infringement in, if not all, at least the majority of these importations, they are unable to take any steps to protect their patent as they do not know and cannot find out, unless successful in these proceedings, the names of the importers, all of which are known to the respondents.

On June 29, 1967, the appellants' solicitors wrote to the respondents asking for the names, not only of the consignees, but also of the consignors of the imported furazolidone and alternatively alleging that they were under a duty to seize and forfeit the imported furazolidone. The respondents in reply said that they were under no such duty and that in the absence of statutory authority it was impossible for them to disclose the names of the importers.

On February 4, 1969, the appellants issued a writ against the respondents in which they claimed a declaration that the respondents were infringing or enabling or assisting others to infringe their patent, an injunction to restrain them from doing so and an injunction to compel them to forfeit the imported furazolidone. The writ was later amended to include a claim for discovery by the respondents of the names and addresses of the consignors and consignees and of all documents which were or had been in their possession relating to the imported consignments.

On August 5, 1970, the appellants issued another writ claiming similar relief in respect of later importations in five months in 1968, 1969 and 1970. The two actions were consolidated and a summons for directions was taken out on March 3, 1971. It was adjourned into court and came before Graham J. After a five day hearing he gave judgment dealing with all the appellants' claims. He rejected the claim that the respondents were themselves infringers of the patent and also the claim that they were under a duty to forfeit the furazolidone.

By their defence the respondents admitted the validity of the letters patent and at the hearing before Graham J. Mr. Walton for the appellants said that if the respondents gave the information asked for it was improbable that the question of infringement would be pressed against them. He agreed that the proceedings could be treated as a pure action for discovery for the production of information as to the identity of the importers. And so although the claims in respect of infringement and forfeiture were not abandoned until the hearing in this House, the proceedings have continued to be treated as those for discovery of the names of the importers alone. Graham J. held that that discovery should be made and made an order in a form agreed between the parties.

In the Court of Appeal his decision was reversed, the court holding that the appellants had no conceivable cause of action against the respondents and that they could not bring an action merely for the purpose of discovering from them the names of the importers. They also held that the information required was received in confidence by the respondents and that the balance of public interest demanded that the respondents should keep the names and addresses of the importers secret.

So there are three questions to be decided. First, on the facts of this case, can the respondents, who are not themselves wrongdoers, be ordered to disclose the names of the importers who, the validity of the patent being admitted, are wrongdoers. Secondly, in the exercise of the discretion vested in the court, should they be ordered to do so; and thirdly, are the respondents in any event prohibited from disclosing that information.

Numerous authorities were referred to on the first question. Few of them I found of much assistance. Many of them are very briefly reported and throw little, if any, light on the principles to be applied. The most recent and the most relevant case on which the appellants relied was decided nearly a hundred years ago. Orr v. Diaper (1876) 4 Ch.D. 92; 25 W.R. 23.

In that case the plaintiffs were sewing cotton and thread manufacturers. The cottons and threads were made up for sale in different coloured papers and specially designed tickets were used to distinguish them from the cottons and threads of other manufacturers. The defendants were shippers and the plaintiffs discovered that they had for some time been shipping to Valparaiso and elsewhere cotton thread packed in the same manner as their own and bearing the same tickets. The plaintiffs sought to find out the names and addresses of the parties from whom they had received the cotton for shipment and wrote saying they quite understood that the defendants were innocent of any intention to act prejudicially to them and that if they gave the names and addresses "the necessity for further proceedings would cease." No reply was sent and proceedings were commenced, the statement of claim alleging that the defendants "well knew the tickets and of the injury" and that they ought to give the information that was sought in aid of proceedings in contemplation by the plaintiffs to restrain the piracy of their tickets and that the proceedings contemplated could not be maintained without the discovery sought.

The defendants demurred. There are many differences in the report of the case in the Law Reports and in the Weekly Reporter, both in the report of the arguments advanced on behalf of the defendants, counsel for the plaintiff not being called on, and in the report of the judgment of Hall V.-C.

It appears from the reports of the arguments that the main point taken on demurrer was that discovery was not obtainable from persons who will not,be and who are not intended to be parties to an action and that to be granted, "the discovery sought must be material, either to the relief prayed by the bill, or to some other suit actually instituted, or capable of being instituted": 4 Ch.D. 92, 94 (Mitford's Chancery Pleadings, 4th ed. (1827), p. 191, 3rd ed. (1814), p. 155) (4 Ch.D., at p. 94); and no relief was sought against the defendants and no other suit instituted or capable of being instituted against them. In the report in the Weekly Reporter, 25 W.R. at p. 24, it is said that it was submitted that "These defendants are merely witnesses, and you cannot make a mere witness a party to obtain discovery" and then it was recognised that there may be circumstances under which discovery may be sought against persons who otherwise would not be parties to the action. Two examples were given: first, the case of a corporation where a person holding a representative position is made a party who otherwise would only be a witness, - that, it was said, was an exception to the rule, - and, secondly, where there is statutory authority compelling discovery: Dixon v. Enoch (1872) L.R. 13 Eq. 394. In that case Wickens V.-C. said that the object of the Act was to enable the plaintiff to extract from the defendant the name or names of some other person or persons other than himself who might be sued at law. He then said, at p. 400:

Hall V.-C. began his judgment with the citation of this passage from Wickens V.-C.'s judgment. saying, 25 W.R. at p. 24: "That is the view I take of this case. Nothing but 'absolute necessity' will compel me to allow this demurrer." He clearly thought that Wickens V.-C.'s observations, in relation to a case where there was a defendant being sued for libel and a statute provided for the disclosure, were applicable to a case when the person from whom discovery was sought was not in fact a defendant from whom relief was sought.

In the report in the Weekly Reporter, at p. 24, it is said that he expressed the opinion that the position of the defendants in shipping the goods "might subject them to proceedings by way of injunction to restrain them from continuing to ship these goods." He rejected the contention that they were mere witnesses, saying according to the report in the Law Reports, 4 Ch.D., at p. 96: "their position, they being the actual shippers, is different from that of mere witnesses"; and according to the report in the Weekly Reporter, at p. 25:

He ended his judgment by saying according to the Law Reports, 4 Ch.D., at p. 96: ". . . it would be a denial of justice if means could not be found in this court to assist the plaintiffs"; and overruled the demurrer.

As I read the reports of his judgment he based his conclusion on two grounds: first, that the defendants were not mere witnesses and, secondly, on the fact that in his opinion they could themselves have been sued.

Whether he would have over-ruled the demurrer if he had been of the opinion that the defendants could not have had proceedings brought against them apart from the claim for discovery is not clear, though it would seem probable from Hall V.-C.'s other observations to which I have referred that he would have done all in his power to assist the plaintiffs.

In Plummer v. May (1750) 1 Ves.Sen. 426 Lord Hardwicke L.C. said that a person could not be made a defendant to a bill

So the rule that discovery is not obtainable from a mere witness is of very considerable antiquity.

There are some more cases decided before Orr v. Diaper to which I must now refer. The first of these is Moodalay v. Morton (1785) 1 Bro.C.C. 469. There discovery was sought from the East India Company in order to discover by what authority the plaintiffs were dispossessed of a lease for supplying the inhabitants of Madras with tobacco. The plaintiffs wanted to find out if the persons who had dispossessed them were acting as servants of the company. If they were, then the plaintiffs intended to sue the company. Lord Kenyon M.R. held that the plaintiffs were entitled to the discovery sought.

It was sought not to ascertain the identity of anyone but whether the company was responsible for the injury the plaintiffs had suffered. I regard the case as an authority for the proposition that discovery can be granted before an action is instituted, but it was information, not names, that was sought, information to discover whether the company were responsible, not to identify the wrongdoer.

In the Mayor and Commonalty and Citizens of London v. Levy (1803) 8 Ves.Jr. 398 in which Moodalay v. Morton was not cited, the defendants had refused to discover whose property were certain goods and without which discovery an action of law could not be proceeded with. Lord Eldon L.C., in the course of his judgment, said, at p. 404:

Moodalay v. Morton, 1 Bro.C.C. 469, was commented on in Angel v. Angel (1882) 1 L.J.O.S.Ch 6, 9, where Sir John Leach V.-C. said it was an exception to the general rule

I do not see that it is possible to reconcile Lord Eldon L.C.'s observations with the decision in Moodalay v. Morton except upon the narrow ground that in Moodalay v. Morton the name of the proposed defendant was known and the company would be sued if discovery showed it to be responsible It would indeed be odd if you could get discovery if you named the party you intended to sue if you could discover his responsibility, but that you could not get discovery though you had suffered an injury if you were not able to name the person who might be responsible.

In Story on Equity Jurisprudence, 2nd Eng. ed. (1892), p. 1011, para. 1483, it is stated:

A similar passage appears in the first edition and in a footnote to it Moodalay v. Morton, Angel v. Angel and City of London v. Levy are cited. Story thus does not appear to have thought that the right to discovery of the proper party against whom the suit should be brought depended upon the ability of the plaintiff to give his name.

In Queen of Portugal v. Glyn (1840) 7 Cl. & F. 466, the majority in this House, Lord Cottenham L.C., Lord Lyndhurst, and Lord Brougham, Lord Wynford dissenting, held that a bill of discovery could not be granted against the Queen of Portugal who was not a party to an action brought against Glyns, the bankers, but who was clearly an interested party in that action as it was brought by her agent, Lord Cottenham L.C. holding that it was a long established rule that discovery on a bill would only be granted against a party to the action. Moodalay v. Morton, I Bro.C.C. 469 and Angel v. Angel, 1 L.J.O.S.Ch. 6 were not cited and I do not consider that the decisions in those cases, Moodalay v. Morton being regarded as an exception to the general rule, are to be regarded as inferentially overruled by this decision of this House.

Hunt v. Maniere (1864) 34 Beav. 157, and Upmann v. Elkan (1871) L.R. 12 Eq. 140 were neither of them cases on discovery. In Hunt v. Maniere the question was whether wharfingers had rightly refused to deliver up wine with a false label to the consignee. I do not think that this case assists. In Upmann v. Elkan, L.R. 12 Eq. 140 though the dispute was about costs there were observations by Lord Romilly M.R. at first instance and, by Lord Hatherley L.C. on appeal (7 Ch.App. 130), which are of interest.

There a bill had been filed praying an injunction to restrain Elkans, who were forwarding agents and the consignees, from removing boxes of cigars marked falsely with the plaintiffs' brand from St. Katharine's Docks. With regard to the St. Katharine Dock Company who were also joined as defendants, Lord Romilly M.R. said that there was not the least pretence for making them parties to the suit and, at p. 145, that it was the duty of the consignees, despite their innocence and ignorance of the fraud "at once to give all the information required," and to undertake that the goods should not be removed from their possession. Before the bill was filed the defendants had disclosed the names of the consignors and ultimate consignees. In the Court of Appeal (1871) 7 Ch.App. 130 it was held, affirming the decision of Lord Romilly M.R., that the fact that Elkans were agents and merely carriers was no defence to the suit, and Lord Hatherley L.C., at p. 133, said it was the business of Elkans, once the complaint was made, to give all proper information.

This case, while it states the duties of consignees of goods where complaint is made that they are spurious, does not decide that discovery could have been ordered against Elkans.

From these decisions it is apparent that little support is given to the decision in Orr v. Diaper, 4 Ch.D. 92. The most helpful case is Moodalay v. Morton, 1 Bro.C.C. 469. However, Orr v. Diaper has not so far as I am aware, ever been questioned or criticised in any subsequent case or in any textbook and the principle it enunciates has been followed on several occasions in other countries. In the textbooks, in addition to the observations of Story J. in his book on Equity Jurisprudence to which I have referred, there are statements to a similar effect in Bray on Discovery (1885) p. 40, in Sichel & Chance Interrogatories and Discovery (1883) p. 180 and in Ross The Law of Discovery (1912) p. ll, and it is not without interest to note that in the third edition of Snell's Equity published in 1874 before the decision in Orr v. Diaper, it is said at p. 516 that there are exceptions to the general rule that to maintain a bill of discovery an action should have been commenced in another court: "as where the object of discovery is to ascertain who is the proper party against whom the suit should be brought. But these are of rare occurrence."

In these circumstances it is, in my opinion, far too late to challenge that decision. What exactly did it decide? In my view, that a discovery can be granted against a person who is not a mere witness to discover, the fact of some wrongdoing being established, who was responsible for it . The "mere witness" rule has lost a great deal of its importance since the Common Law Procedure Act removed the bar to persons interested giving evidence, but it still has significance. Someone involved in the transaction is not a mere witness. If he could be sued, even though there be no intention of suing him, he is not a mere witness. In Orr v. Diaper Diapers were involved, so were Elkans in Upmann v. Elkan, L.R. 12 Eq. 140, so was the East India Company in Moodalay v. Morton, 1 Bro.C.C. 469 and it matters not that the involvement or participation was innocent and in ignorance of the wrongdoing.

Are the respondents to be regarded as so involved in this case? I think the answer is yes. They were not, it is true, involved of their own volition. They were involved in the performance o,f their statutory duty. The furazolidone was in Customs charge until cleared and the commissioners could control its movement until cleared (Customs and Excise Act 1952, section 22 (1)). I do not see how it can be said that they were not involved in the importation of this chemical.

So for these reasons in my opinion the answer to the first question I formulated, can the respondents be ordered to disclose the names of the importers? is in the affirmative. As to the second question, should they be ordered to do so? I think that the answer is also yes, unless in consequence of their special position the answer to the third question is in the negative. Subject to the public interest in protecting the confidentiality of information given to Customs, in my opinion it is clearly in the public interest and right for the protection of patent holders, where the validity of the patent is accepted and the infringement of it not disputed, that they should be able to obtain by discovery the names and addresses of the wrongdoers from someone involved but not a party to the wrongdoing.

I now turn to the third question. In their list of documents the respondents asserted that they were precluded by law from disclosing the names of the importers and that that disclosure would be injurious to the public interest. In their notice of appeal to the Court of Appeal they gave notice that the grounds of appeal were:

In their case they contend that discovery should not be ordered because disclosure would be contrary to the public interest on two grounds (1) that the information is given to the respondents and their officers in confidence and under compulsion in order that the respondents may perform their statutory duties. "The informant" it is said "is entitled to assume that information for this purpose will not be disclosed to others for a different purpose": and (2) that it is essential that the confidence of importers should be respected in order to ensure that full and candid information continues to be given by them. "The furnishing of the information" they submit "would inhibit importers from making full and frank disclosure." The affidavit of Sir Louis Petch, the Chairman of the Commissioners of Customs and Excise, sets out these contentions more fully.

The respondents were unable to point to any statutory provision prohibiting them from disclosing the names of the importers. I do not accept the proposition that all information given to a government department is to be treated as confidential and protected from disclosure, but I agree that information of a personal character obtained in the exercise of statutory powers, information of such a character that the giver of it would not expect it to be used for any purpose other than that for which it is given, or disclosed to any person not concerned with that purpose, is to be regarded as protected from disclosure, even though there is no statutory prohibition of its disclosure. But not all information given to a government department, whether voluntarily or under compulsion is of this confidential character and the question is whether the names of the importers of the furazolidone were given in confidence. I do not think that that is established. The names and addresses of the importers had to be given to the master of the ship and made known to all those taking part in securing the transit of the chemicals. Presumably the parcels of furazolidone had on them the names and addresses of the consignees for all to see, though they may, I do not know, have not disclosed that the contents of the parcels were furazolidone. The documents completed for the transit of the chemicals and for Customs which show the names of the consignees and the contents of the parcels do not seem to me more confidential than consignment notes completed for British Railways and British Road Services.

I do not doubt that a great deal of the information obtained by Customs is of a highly confidential character which it would be most improper for them to disclose but I do not consider that this information, even if it be of a confidential character, was of a highly confidential nature.

I do not forget that by section 127 of the Finance Act 1972, it is provided that no obligation as to secrecy or other restriction upon the disclosure of information imposed by statute or otherwise is to prevent the communication of information by the Commissioners of Inland Revenue to the Commissioners of Customs and Excise and vice versa, or that the disclosure of information obtained by one from the other is prohibited by section 127 (2), save for the purposes there specified, and I do not forget that by section 3 of the Finance Act 1967, power is given to the commissioners to disclose, on it being notified to them by the Secretary of State that it is in the national interest, that certain information about imported goods should be given, and that, though by order the Secretary of State can add to the description of information which can be disclosed, he is expressly debarred from authorising the disclosure of the price of the goods or the name of the importer.

I can well understand that Customs, taking the view that they are prohibited by law from disclosing information obtained by them, would require a provision expressly authorising disclosure to be included in these Acts. The reason for the prohibition in section 3 of the Act of 1967 of the Secretary of State requiring information to be given as to the name of an importer are not apparent from the section. It may have been, I do not know, on account of the "candour" argument of Customs and Excise.

The inclusion of these provisions in these two recent Acts does not appear to me to lead to the conclusion that the assumption that Customs and Excise are prohibited by law from disclosing all information obtained by them is well based. Much of the information they obtain is no doubt of such a character that it is implicit that it is not to be used or disclosed for any purpose other than that for which it is given. The question here is whether the names of importers of furazolidone in infringement of the patent are of that character.

For the reasons I have given I do not think they are. If any degree of confidentiality is attached to them I think it must be a low degree. I must confess that I am not in the least impressed by the "candour" argument I really cannot conceive it to be realistic to suggest that the vast majority of importers who do not infringe patents or do other wrongs, will be in the least deterred from giving proper information to Customs by the knowledge that pursuant to an order of the court the names of the wrongdoers are disclosed by Customs.

Having said this, I want to make it clear that in my opinion Customs and Excise have acted perfectly properly throughout these proceedings. Applications for discovery by persons who are not sued and who have done no wrong were a rare occurrence in the last century and are even rarer in this. Customs are right to be solicitous for the interests of those who give them information. They were right initially to refuse the appellants' request. Indeed I think that it may well be that in cases which are not absolutely on all fours with this, they would be right in future to refuse disclosure except on the order of the court.

And the question is, should the court now order it? If a degree of confidentiality does attach to the names and addresses of the importers, I think that on the balance of national interest the interests of justice in this case far outweigh any interest there may be in non-disclosure.

The appellants now only seek discovery of the names and addresses of the consignees of the imported furazolidone in the last six years and, in my opinion, that discovery should be ordered in the form which has B been agreed between the parties.

As to costs, I agree with the order proposed by my noble and learned friend, Lord Reid.

For the reasons I have stated, in my opinion this appeal should be allowed.


My Lords, on the appellants' summons for inspection Graham J. held that the respondents had not infringed the patent and that the goods were not liable to forfeiture under section 44 of the Customs and Excise Act 1952, as "prohibited goods"; but that nevertheless they were bound to disclose the names for which the appellants were asking. His order dated December 8, 1971, which gave effect to this decision was technically an interlocutory order but in reality it disposed of all the issues raised in the consolidated actions. The respondents appealed to the Court of Appeal which by a judgment given on March 27, 1972, agreed with the judge on the question of infringement and on the construction of section 44; but held that, even apart from the question of privilege, the respondents, not being infringers, were under no obligation to disclose the names of the importers; and that in any case it would have been contrary to the public interest to have ordered them to disclose them. On their appeal to this House the appellants abandoned the contention that the respondents had infringed the patent. They did not, as I understood, abandon their contention that goods ,imported in infringement of a patent are goods "imported contrary to a prohibition in force with respect thereto under or by virtue of an enactment" within the meaning of sect,ion 44; but - in common I think with all your Lordships I have no doubt that Graham J. and the Court of Appeal were right in rejecting this contention. The action falls, therefore, to be treated as a pure action for discovery and the questions to be decided are (A) whether in the circumstances the respondents, although not themselves infringers, would be bound - apart from any question of privilege - to make the discovery asked and (B) whether, if so, it would be contrary to the public interest to order them to make it. For the purpose of answering these questions one must make three assumptions in favour of the appellants, first that the patent is valid; secondly, that the patent has been infringed by importers whose names are known to the respondents; and thirdly, that the appellants cannot discover the identity of the infringers unless the respondents disclose it to them.

The most recent English authority to which the appellants could refer us in support of the proposition that the court can entertain an action by A against B in which the only relief asked is that B disclose to A the identity of someone who has to his knowledge infringed A's rights, in order to enable A to bring an action against him is the case of Orr v. Diaper decided by Hall V.-C. in 1876 and reported in 4 Ch.D. 92 and, more fully, in 25 W.R. 23. Unfortunately, however, in order to understand the argument and the judgment in that case it is necessary to plunge still further into the past and consider the practice of the Court of Chancery with regard to bills of discovery. I say "unfortunately" because the lawyer of today can at best have only a superficial understanding of a procedure developed when law and equity were administered in separate courts and the parties to common law actions were not permitted to give evidence. A further source of difficulty is that the Chancery reports before the time of Lord Eldon L.C. often take the form of brief notes, which may have been useful to those for whose benefit they were published but mean very little to the modern reader. I am, therefore, far from confident that what I am about to say is an accurate summary of the position. One starts with the distinction which came to be drawn by equity lawyers between a bill of relief and a bill of discovery. Since the ordinary Chancery bill asking for relief in equity always included a request that the defendant be ordered to answer on oath a number of interrogatories framed to elicit admissions which would help the petitioner to prove the case set out earlier in the bill it can be said that every Chancery bill was in a sense a bill of discovery. But a bill of discovery properly so called was a bill which simply asked for the disclosure of facts known to the defendant or of documents in his possession to aid the petitioner in prosecuting or defending other proceedings and asked no other equitable relief save, if the petitioner was the defendant to an action at law, an injunction staying that action until the discovery was given. A defendant from whom discovery was sought either by a bill of relief or by a bill of discovery might object to giving the discovery on the ground that he had no "interest" in the proceedings but was "a mere witness" and ought not to be compelled to give his evidence before the hearing. To this rule exceptions were allowed in the interests of justice but by the end of the 18th century the list of exceptions was closed. Further, what constituted an "interest" for the purpose of the rule came to be defined. In the case of a bill of relief it was such an interest as that a decree could be made against him or that he would be affected by the decree. As to a bill of discovery it was finally decided by this House in the Queen of Portugal v. Glyn, 7 Cl. & F. 466 that such a bill could not be maintained against a person who was not a party to the record in the action in aid of which the discovery was sought even though he was deeply interested in its success. It is, incidentally, not without interest to observe that whereas in earlier days, in particular at the time of the disputes between Lord Ellesmere L.C. and Coke C.J., the common lawyers had bitterly resented the granting of injunctions by the Chancellor staying proceedings at law where the defendant could make out a prima facie case of fraud on the part of the plaintiff with which the common law was unable to deal, in the case of the Queen of Portugal v. Glyn it was common lawyers -Lord Abinger C.B. and Lord Wynford - who thought that an injunction could and should be granted to stay an action by an agent of the Queen on bills of exchange to which, if the allegations in the bill were true, she was not "in conscience" entitled, whereas it was the equity lawyer, Lord Cottenham L.C., who gave the leading speech upholding the demurrer to the bill of discovery on the ground that the Queen was not a party to the record at law and could in theory have been called as a witness by the defendant. But the "mere witness" rule has in principle nothing to do with the question whether or not a defendant to a bill should be obliged to disclose the identity of someone against whom the plaintiff wishes to claim relief. In such cases there can be no question of calling the defendant to give the evidence at the hearing since without the disclosure of the name proceedings cannot be brought at all. In this field it was settled that if relief the petitioner was entitled to discovery from him of the existence or whereabouts of other persons not parties in order that they might be made parties; but whether one could bring a bill of discovery in order to find out whom to sue in proceedings which you had not yet brought was not entirely clear.

On one side reliance could be placed on Moodalay v. Morton, 1 Bro.C.C. 469; 2 Dick. 652 decided in 1785 by Lord Kenyon M.R. There the plaintiff who said that the East India Company had granted him the right to supply the inhabitants of Madras with tobacco for a term of years and that persons who were servants of the company had dispossessed him and purported to grant a lease of the right to someone else filed a bill of discovery against the company and Morton their secretary asking them to disclose by whom and under what authority the second lease had been made so that he might know how to frame the action at law which he wished to bring in respect of the injury done to him. Obviously it was material for that purpose for him to discover whether those who had dispossessed him were acting by the authority of the company or not. That case differs from the present case in that there the discovery might well have shown that the proper defendant to the proposed action was in fact the person - the East India Company - from whom discovery was sought; but that does not seem a very substantial distinction. Further in Angel v. Angel (1822) 1 L.J.O.S,Ch. 6 Sir John Leach V.-C. appears to have regarded Moodalay v. Morton, I Bro,C.C. 469, as an authority showing that a "would be" plaintiff at law could bring a bill of discovery in equity to discover against whom the action should be brought. On the other side reliance could be placed on some language used by Lord Eldon L.C. in his judgment in Mayor and Communally and Citizens of London v. Levy, 8 Ves.Jr. 398, 402, 404 - though Moodalay v. Morton was not referred to in that case and the decision can be justified on the ground that the bill was a "fishing enquiry" by plaintiffs who were trying to find out whether their rights had in fact been infringed. It is noteworthy that Story in his Equity Jurisprudence, 2nd ed. (1839), para. 1483, states on the authority of Moodalay v. Morton and Angel v. Angel that a bill of discovery may be brought when the object of the discovery is to ascertain who is the proper party against whom a suit should be brought and that as his note also contains a reference to the Mayor of London v. Levy he presumably did not consider that anything which Lord Eldon L.C. said in that case cast any doubt on the general principle.

With this by way of introduction one can now turn to Orr v. Diaper, 4 Ch.D. 92 - though it is not irrelevant to bear in mind that since 1851 the parties to civil actions at law had been able to give evidence and that by the Judicature Act a single court had been established in place of the separate courts of law and equity in which both law and equity could be administered concurrently with the proviso that in case of conflict the rules of equity should prevail.

Orr v. Diaper was argued on demurrer. The facts alleged in the statement of claim which must be taken to have been true were that the plaintiffs were manufacturers of sewing cotton which they packed in a distinctive way and which was sold abroad in - among other countries -Chile; that sewing cotton of an inferior quality packed according to their style and bearing counterfeit tickets had been sold in Chile for the past few years and that in April 1876 they discovered that the defendants who were shippers in Liverpool had been for some years and were still "shipping" these goods to Valparaiso. On April 10,1876, the plaintiffs' solicitors asked the defendants to give them the names of the consignors and, on their refusal to do so, started an action on April 25 asking for discovery of the names and addresses of the consignors of the goods bearing the counterfeit tickets - "in aid of proceedings now in contemplation by the plaintiffs to restrain the piracy of the said tickets" which could not, as they said, be maintained without the discovery sought. There is no doubt that if these allegations were established - and the demurrer of course proceeded on the footing that they were established - the plaintiff could have obtained an injunction against Messrs. Diaper, in proceedings framed for that purpose, to restrain them from continuing to ship goods which were being "passed off" as the plaintiffs' goods. This appears from Upmann v. Elkan, L.R. 12 Eq. 140; 7 Ch.App. 130. The relevant facts there were that on June 14, 1869, Messrs. Elkan who were continental forwarding agents carrying on business in London received a letter from a firm in Hamburg saying that they had shipped to them a case of cigars containing cigars of various brands, requesting them to pay the duty thereon and to forward the contents to various persons resident in England whose names and addresses were given. The case duly arrived and was warehoused with the St. Katharine's Dock Company. The plaintiffs who were cigar manufacturers discovered -somehow or other - that the cigars which were not of their manufacture were packed in boxes bearing an imitation of their brand and on June 19 their solicitors told Messrs. Elkan, who said that up to that time they had no reason to suspect that anything was wrong, that the cigars consigned to them bore a forged brand. After, as they said, verifying that this was indeed the fact, Messrs. Elkan offered to give the plaintiffs the names of the consignors and actually gave them the names on July 8. Meanwhile, on July 1, the plaintiffs filed a bill against Messrs Elkan and the dock company asking for an injunction to restrain Messrs. Elkan from removing the cigars from the docks and from infringing their mark and asking for damages. They obtained an ex parte injunction on July 2. A motion for interim injunction was made on July 8 which stood over until July 15 on Messrs. Elkan giving an undertaking, and on July 15 the injunction was granted -Messrs. Elkan expressing their willingness to act as the court should direct but saying that they preferred to have an injunction granted against them to simply continuing their undertaking. When the suit came on the court held that Messrs. Elkan were not privy to the infringement of the mark and the dispute became a dispute as to costs - but to resolve it the court had to decide what were the rights and duties of the parties on the footing that Messrs. Elkan had no knowledge of the fraud before the plaintiffs' solicitors told them of it. Lord Romilly M.R., at p. 145, expressed the view that as soon as Messrs. Elkan were told of the fraud it was their duty to give the plaintiffs the information as to the identity of the consignors for which they were asking and to undertake that the goods should not be taken from the warehouse until the spurious brand had been removed. He added that persons in the position of Messrs. Elkan could not reasonably complain if proceedings were started against them before they gave the information. It was their misfortune that they had dishonest correspondents. In the result on Messrs. Elkan undertaking that if any fresh cigars should be sent to them bearing the plaintiffs' brand they would at once give the plaintiffs notice, he made no order as to costs as between the plaintiffs and Messrs. Elkan - leaving each side to pay its own. That decision was affirmed on appeal by Lord Hatherley L.C. who agreed with what Lord Romilly M.R. had said as to the duty of Messrs. Elkan on

To return now to Orr v. Diaper, 4 Ch.D. 92 - counsel for the defendant pointed out that the action was a pure action for discovery, that no relief was asked against his clients beyond the disclosure of names to enable the plaintiff to bring proceedings against the consignors, and he submitted that the "mere witness" rule applied. When Hall V.-C. asked whether the plaintiff could not add to his suit a claim for relief in equity against the defendant counsel referred to the rule (laid down by Lord Eldon in Butterworth v. Bailey (1808) 15 Ves.Jr. 358) that a bill of discovery could not be turned by amendment into a bill for relief. The Vice-Chancellor - perhaps unfortunately - did not call on counsel for the plaintiff. If he had done so it may be that counsel would have pointed out that the "mere witness" rule could have no application to a case where all that was being asked for was the identity of a wrongdoer whom the plaintiff would be unable to sue unless the defendant gave it to him. As it was the judge overruled the demurrer on the ground that the defendant was not a "mere witness" because on the facts taken to be admitted the plaintiff could have obtained an injunction against him if he had chosen to apply for one. To make the right of a plaintiff to obtain the sort of discovery which was being sought in Orr v. Diaper and is being sought in the present case dependent on whether or not the plaintiff could have obtained some relief against the defendant if he had chosen to ask for it is to my mind utterly illogical. Suppose that Diaper after having innocently and unwittingly shipped infringing goods for some consignor for several years had gone out of business shortly before the plaintiff asked him for the consignor's name. In such a state of facts the plaintiff could not have obtained any relief against him since he was not continuing to ship infringing goods nor was there any danger that he would do so in the future. Yet if Lord Romilly M.R. and Lord Hatherley L.C. were right in saying that a man who has become innocently mixed up in fraudulent trading is under a duty to disclose the name of the wrongdoer to the injured party in order to enable him to bring his action that duty must be just the same in a case where because, for example, some infringing goods are still in his possession an injunction could be obtained against him and a case such as I have supposed where it could not. Bray, in his well-known work on Discovery published in 1885 treats Orr v. Diaper, 4 Ch.D. 92 as a modern example of what he regards as the old principle that a bill of discovery might be filed against a person in order to discover the names of other persons for the purpose of bringing an action against them although no proceedings were to be brought against the defendant to the bill - and makes no reference to the fact that in Orr v. Diaper it so happened that such proceedings could have been brought - see the note on p. 40. On p. 614 he suggests that the language used by Lord Eldon in Mayor of London v. Levy, 8 Ves.Jr. 398 "perhaps requires some little qualification." The same view of Orr v. Diaper was taken in 1887 by the Supreme Court of Massachusetts in Post v. Toledo, Cincinnati and St. Louis Railroad Co. (1887) 11 N.E.Rep. 540, There an Ohio corporation had recovered judgment in Ohio against another Ohio corporation under whose statutes its stockholders were personally responsible for its debts. The business of the debtor corporation was conducted in Massachusetts and the creditor corporation brought a bill of discovery in the court of that state against the debtor corporation and its officers who were resident in Massachusetts for discovery of the names of its stockholders so that the creditor corporation could take proceedings against them in Ohio. Although the debtor corporation was made a defendant it was not served with the bill since there was no way in which effectual service could be made on it. So in substance the only defendants to the bill were the officers of the corporation against whom no relief was or could be claimed. They demurred to the bill. In support of the demurrer it was argued that Lord Eldon's decision in Mayor of London v. Levy, 8 Ves.Jr. 398 was inconsistent with the badly reported earlier cases such as Moodalay v. Morton, 1 Bro.C.C. 469 that Hall V.-C. could not have meant to overrule a decision of Lord Eldon universally accepted for 75 years and that Orr v. Diaper, 4 Ch.D. 92 should be treated as a special case not to be followed unless the facts were exactly the same. On the other side it was said that if a plaintiff could obtain from a person whom he had properly made defendant to a bill for relief discovery of the names of other parties necessary to be made defendants to the suit, why should he not be able to bring a bill of discovery against persons against whom he could claim no relief in order to obtain the names of defendants to a proposed action which he could not bring unless he knew the names? - Orr v. Diaper was cited in support of that argument.

In overruling the demurrer the court said, 11 N.E.Rep. 540, 547:

The court then pointed out that the facts in Mayor of London v. Levy, 8 Ves.Jr. 398 were not such as required Lord Eldon to overrule Moodalay v. Morton, 1 Bro.C.C. 469 and that in fact no reference is made to that case in his judgment and they quote Orr v. Diaper, 4 Ch.D. 92 for the proposition that under some circumstances discovery may be had for the purpose of ascertaining the persons against whom the plaintiff may bring a suit although he does not allege that he has a cause of action against or intends to sue the persons who are the defendants in the proceedings for discovery. They then state their conclusion on the facts in the case before them as follows, at p. 547:

I find that case of great assistance in the solution of the problem before us in this case. The court which decided it was of high standing; it was decided in the light of the old English Chancery authorities which as the case was decided as long ago as 1887 the judges were probably in a better position to understand than we are; and it lays down a reasonable principle by which to judge whether a plaintiff should have this sort of discovery. To make his right depend on whether or not he could obtain some other relief against the defendant is to my mind quite irrational. The court in Post's case, 11 N.E.Rep. 540 makes it depend on the nature of the relation which subsists or subsisted between the defendant to the action for discovery and the persons the disclosure of whose names is sought. In that case the relation was that of agents in charge of the undertaking of which the persons whose names were sought were in effect the owners. In cases such as Upmann v. Elkan, L.R. 12 Eq. 140 and Orr v. Diaper, 4 Ch.D. 92 the relation was that of persons engaged by the tortfeasor to deal with the goods in question and who in the course of doing so unwittingly facilitated the commission of the tort. In my judgment no sensible distinction can be drawn in applying the Post case principle between the position of the respondent commissioners and the position of Diaper or Messrs. Elkan or the St. Katherine's Dock Company. It is true that Messrs. Elkan were under no obligation to enter into the business relations with the dishonest consignors which made them unwitting facilitators of a fraud whereas the commissioners were under a statutory duty to bring under their control for the purpose of exacting duty these infringing imports of furazolidone. But the fact remains that these goods passed through their hands and - assuming that they cannot claim privilege on the grounds of public interest - I cannot see any reason why they should not be under the same duty to disclose the names as the dock company who owned the transit shed in which the imports were stored under the surveillance of customs officers. The dock company would certainly have been bound to give discovery of the names if the plaintiffs discovered the furazolidone was in a particular transit shed and that the dock company who were in possession of it knew the names of the importers. If so, why not the commissioners who had effective control of the goods?

That being my conclusion on this part of the case I do not find it necessary to express any opinion on a point to which a good deal of argument was devoted - namely, whether the appellants could have obtained against the commissioners the equivalent of an injunction in the shape of a declaration that they ought not to give clearance to imports of furazolidone without giving the appellants the name of the importers.

This brings me to the claim of privilege. In his affidavit sworn on April 28, 1971, Sir Louis Petch put the claim on two grounds; first, that the commissioners were not entitled to disclose the information requested even if they wished to do so and. secondly, that assuming that they had the power to give it the disclosure would be contrary to the public interest. Mr. Oliver in his able and candid argument wisely did not seek to support the first ground. Of course a statute may provide that information of a certain character shall not be disclosed even for purpose of legal proceedings. An example of such a prohibition is section 17 (2) of the Agricultural Marketing Act 1931, which wa.s considered in Rowell v. Pratt [1938] A.C. 101. But the commissioners are not prohibited by statute from disclosing the names of importers. No doubt the commissioners consider very properly that they ought to treat as confidential and not voluntarily to disclose even to another government department information which comes to them as a result of the exercise of the powers given to them by the Customs and Excise Act 1952, for the purpose of enabling them to collect the revenues of customs and excise. Section 3 of the Finance Act 1967, and section 16 (9) of the Agriculture Act 1970, to which Sir Louis refers - and also section 127 of the Finance Act 1972, passed after he had sworn his affidavit, were enacted in order to make it clear that the obligation of secrecy which the commissioners very properly consider to be binding on them as a general rule is not to apply in the cases there specified. But this has nothing to do with disclosure under an order of the court for the purpose of legal proceedings - whether criminal or civil, for outside the field of legal professional privilege the fact that information has been imparted confidentially is not - in the absence of an express statutory prohibition - any bar to the court ordering its disclosure. Then is it contrary to the public interest that this information should be disclosed? This problem falls to be considered under two heads - first, from the point of view of the individuals who have supplied the information; secondly, from the point of view of the efficiency of the Customs. Now on the admitted facts in this case the great majority of those whose names will be disclosed have infringed the appellants' patent and it does not lie in their mouths to complain that their identity is revealed It is no doubt conceivable - though most unlikely - that some persons who brought furazolidone from the appellants and exported it for sale abroad have re-imported it. Such people, if they exist, might possibly dislike their identity being disclosed - but in this connection we should bear in mind that the information in question is given to many others besides the commissioners. The shippers, the master of the ship and the employees of the owners of the transit sheds or warehouses in which the goods are stored will all know or have means of getting to know the names of the importers. This information accordingly cannot fairly be regarded as highly confidential information in the hands of the commissioners. I turn now to the effect of the disclosure on the efficient working of the Customs service. Sir Louis says that he is afraid that the good relations and mutual confidence which usually exist between the officers of the Customs and traders would be seriously impaired if it became known that any information of a confidential character obtained from traders under statutory powers might have to be disclosed by the commissioners otherwise than under the provisions of a statute enabling them to disclose it. The traders whose good relations with the Customs Sir Louis in anxious to maintain are, presumably, honest traders. Any honest trader who was disturbed at the thought that a court could order the disclosure of importers' names in circumstances such as exist here would be a most unreasonable man and I cannot believe that there would be many such. No doubt dishonest traders might be disturbed by the knowledge that such disclosure could be ordered, and Sir Louis gives it as a further ground for the claim of privilege that dishonest traders who now tell the Customs the truth with regard to the character of the goods and the identity of the importers may be driven to giving false information. An argument that one wrongdoers may take to committing yet further offences in order to be able to maintain their original course of wrongdoing is not very attractive. But in any case I think that Sir Louis' fears on this head are exaggerated. On the question of public interest I agree with Graham J. and disagree with the Court of Appeal. I would therefore allow the appeal and I agree that the costs should be dealt with in the manner proposed by my noble and learned friend, Lord Reid.

In the course of the argument fears were expressed that to order disclosure of names in circumstances such as exist in this case might be the "thin end of the wedge," that we might be opening the door to "fishing requests" by would-be plaintiffs who want to collect evidence or the requests for names made to persons who had no relevant connection with the person to be sued or with the events giving rise to the alleged cause of action but just happened to know the name. I think that these fears are groundless. In the first place, there is a clear distinction between simply asking for the name of a person whom you wish to make a defendant and asking for evidence. This case has nothing to do with the collection of evidence. Secondly, although in any case which was on all fours with this case or any subsequent case which may be decided the commissioners or any other person who was asked for a name would no doubt give it without putting the applicant to the expense of obtaining an order of the court; in any case in which there was the least doubt as to whether disclosure should be made the person to whom the request was made would be fully justified in saying that he would only make it under an order of the court. Then the court would have to decide whether in all the circumstances it was right to make an order. In so deciding it would no doubt consider such matters as the strength of the applicant's case against the unknown alleged wrongdoer, the relation subsisting between the alleged wrongdoer and the respondent, whether the information could be obtained from another source, and whether the giving of the information would put the respondent to trouble which could not be compensated by the payment of all expenses by the applicant. The full costs of the respondent of the application and any expense incurred in providing the information would have to be borne by the applicant.

LORD KILBRANDON. My Lords, the facts which are basic to the question of law arising in this appeal lie in very narrow compass. Between May 1967, and February 1970, there were in six individual months importations into the United Kingdom of furazolidone, a chemical substance of which the first appellants are patentees in U.S.A., and the second appellants (whom I shall refer to as "the appellants"), are exclusive licensees in the United Kingdom. While it is possible, it is commercially very improbable, that some of these importations may have included importations or reimportations of the patented article manufactured by or under licence from the appellants. In spite of some unhappy ambiguities in the appellants' pleadings, it is right that the appeal should be decided on the footing that the importers of these parcels of furazolidone are by their use of the substance infringers in the United Kingdom of the appellants' patent right, could be restrained by law from future infringement, and are liable in law for the pecuniary consequences of their past infringements.

The appellants have come to know of these infringements through the publication by the respondents, the Commissioners of Customs and Excise, of monthly Special Chemical Returns prepared by them and made available by them to the chemical industry. The name of the importer, otherwise "infringer," does not appear in the return. I do not think it is necessary to go into the details of the compilation of, and the sources of information for, the respondents' published statistics. Nor do I need to refer, except in the broadest way, to the procedures governing the passage of imported goods through customs. In the present context, that is the disclosure of names of importers, it is enough to say that, on the arrival of a ship (or aircraft) at a customs port, the master has to prepare, sign and deliver to customs a "report" of his ship and her lading, which report contains a description Of each purchase of goods and the name of the consignee thereof, while the importer or his agent must prepare, sign and deliver to customs a form of "entry" specifying the description, quantity, tariff code number and value of goods consigned to him. No goods can be released out of customs' charge until these forms have been presented, and the appropriate duty paid.

The case has been conducted on the footing that it is impossible for the appellants to find out the names of the infringers of their patent unless the respondents disclose them. The respondents refuse to do so, and the present action, as it is now maintained, is like the old bill of discovery as much as it prays for no relief, but seeks an order for discovery only. This is not by any means the extent of the claim against the respondents which was before the courts below. Until the appeal was opened in your Lordships' House, the appellants were claiming a declaration that the respondents had infringed, or caused, enabled or assisted others to infringe their patent, a declaration that it was the respondents' duty to forfeit the imported furazolidone, and an order that they make a complete discovery of documents relating to the importations.

It will be convenient to consider first whether such an application as this would succeed against a person not in the position of a department of state, that is, treating as a separate and subsequent question whether any special considerations of public policy apply to such bodies as the Commissioners of Customs and Excise. It is easy to envisage a dock authority, probably operating under powers conferred in a local act within the framework of the Harbours Clauses Act 1847: the authority is empowered to demand sight of a ship's manifest, or otherwise obtain a detailed account of her cargo, broken down into quite narrow categories, in order that the dock charges appropriate to each category of goods can be calculated and imposed. There will be some provision for the detention of goods in the dock area until dues are paid, and the authority will necessarily be aware of the names of the consignees. The dock authority is apprised that the Importation of certain goods which passed through the port infringed a patent conceded to be valid - as the respondents concede for the purposes of the present case - and the patentee can get no remedy unless the dock authority disclose the names of the patentee? To make the comparison completely valid, and with an eye to some of the precedents to which it will be necessary to refer, it must also be predicated not only that the patentee has no intention of bringing suit against the dock authority for any relief other than discovery, but also that he has no ground in law or equity for doing so. That would, I apprehend, be the situation if the goods were no longer in the control of the authority, and if there were no grounds which would support an application for an injunction against them at the instance of the patentees in respect of future importations.

Among the large number of cases cited to us, I believe it is not possible to find a precedent for the granting of an application for discovery in the precise circumstances I have figured. Indeed, I think I can greatly shorten what I have to say on this topic, which is of a technical character involving an expert knowledge of English legal history in the nature of things denied to me, by saying that I respectfully agree with the analysis made in the Court of Appeal by Buckley L.J. of the cases of Upmann v. Elkan, L.R. 12 Eq. 140 and Orr v. Diaper, 4 Ch.D. 92; 25 W.R. 23. These seem to be generally regarded as the root cases on the subject, especially perhaps the latter since it post-dates the Judicature Act 1873, and are widely cited as leading cases in the foreign jurisdictions to which we were copiously referred. In both cases the plaintiff claimed to have a right of action against the defendant arising out of the import or export of goods masquerading as his own; in Upmann, too, the defendant had refused, wrongly as Lord Hatherley L.C. held, to disclose the names of the twenty consignees. In Orr v. Diaper, while the plaintiff had no intention of suing the defendant, he alleged in his statement of claim that the defendants "had been for some time and were still shipping" the offending goods; this statement was made after the defendants had acquired knowledge of the offences. This is no doubt the foundation for Hall V.C.'s observation that the plaintiffs showed a right to sue the defendants at law, "which expression, since the change made by the Judicature Acts, must mean this court, in some other proceeding (25 W.R. 23, 25)."

In Moodalay v. Morton, 1 Bro.C.C. 469, as I read it, the plaintiff had an action not only against the person who had infringed his right of property by purporting to give it to another, but also against the East India Company if that person turned out to be their servant or agent. With special reference to that case, I would heartily agree with some remarks made by the Vice-Chancellor in Angel v. Angel (1823) 1 L.J.O.S.Ch. 6, 8. (Presumably the reference in the quotation is to Mitford's Chancery Pleadings):

We were offered two reports of the judgment in Moodalay, one by Brown, which was criticised by the Vice-Chancellor in Angel, 1 L.J.O.S.Ch. 6, 9, and the other by Dickens; they are entirely different from one another. Both cannot be authentic, so I suppose it is possible that neither of them is. We were shown at least three versions of the judgment in Orr v. Diaper; the Court of Appeal made a point of preferring that in the Weekly Reporter to that in the Law Reports. The former is certainly fuller and easier to follow, but for all I know it was deliberately altered by the learned judge on revision. These considerations made one reluctant to rely on the old cases except in so far as they deal with the actual subject matter arising for decision in them. To erect on them a structure of principles which should guide a modern court in the administration of justice seems to me to be building on quicksands. If, without the positive assistance of the ancient precedents, it seems possible to identify principles prima facie acceptable, the only limitation to their adoption might be to see whether these principles had ever been authoritatively negatived.

A case which gives rise to some difficulty is Queen of Portugal v. Glyn (1840) 7 Cl. & F. 466. One Soares sued Glyns to recover the proceeds of certain bills. Glyns filed a bill of discovery against Soares and the Queen, alleging that Soares was a mere agent for the Queen. The Queen demurred; in the demurrer Glyns' averments had to be accepted pro veritate. The House, reversing the decision of Lord Abinger C.B., Lord Wynford dissenting, sustained the demurrer, on the ground that since the Queen was not a party to the record in the action at law, she could not be made respondent in the bill of discovery in equity. The case exhibits some curious features. The appeal was heard in 1837; judgment was given more than 3 years later, after an unusually controversial debate. The case is ignored by Bray (1885), by Story (1892) and by Snell in his first edition (1868), being the only one published before the Judicature Acts. The sole reference to it in Halsbury's Laws of England, 3rd ed., vol. 1 (1952), para. 528, n. (i), is under "Agency," not "Discovery." Two decisions (1892 and 1906) of the Court of Appeal are there cited in support of the proposition,

The footnote concludes, "But see Queen of Portugal v. Glyn," which certainly appears to decide the contrary.

The case was not included in the extensive citation before the Court of Appeal. Since much of the rather acrimonious discussion in this House related to the technical requirements of bills in chancery, the opinion may be ventured that the case, at least since 1873, has not been regarded as authoritative; in any event it does not deal with the problem of discovery for the purpose of finding the name of a proposed defendant. This point is made in Bray on Discovery, (1885) note to p. 40, contrasting Queen of Portugal with Orr v. Diaper, 4 Ch.D. 92.

Assuming that there are some characteristics attaching to a defendant in such an issue, which will be decisive of the question whether he can be called on to make discovery in order to enable the plaintiff in that issue to maintain a just cause of action against a third party, it seems to me incredible that one of those characteristics should be the defendant's vulnerability in an action brought against him by the plaintiff. Why should A be bound to disclose to B the information which he must have before he can sue C if, and only if, B could, if he wished, also have sued A, although he has no intention of doing so ? There is no rational distinction observable here.

This may be the place to dispose of the "mere witness" rule. It is settled, rightly or wrongly, that you cannot get discovery against someone who has no connection with the litigious matters other than that he might be called as a witness either to testify or to produce documents at the trial. We are not here in that territory. The defendant is not a mere witness, or any kind of witness, because the whole basis of the application is that, until the defendant has disclosed what he knows, there can be no litigation in which he could give evidence. Furthermore, if he were to disclose, either voluntarily or under compulsion, the names of the third parties whom the plaintiff desires to pursue, even then he might well not be a witness in the ensuing litigation. He might have no evidence to give; what he knew would not necessarily be required post litem motam.

The most attractive way to state an acceptable principle, intellectually at least, may be as follows. The dispute between the plaintiff and the defendants is of a peculiar character. The plaintiff is demanding what he conceives to be his right, but that right in so far as it has patrimonial substance is not truly opposed to any interest of the defendants; he is demanding access to a court of law, in order that he may establish that third parties are unlawfully causing him damage. If he is successful, the defendants will not be the losers, except in so far as they may have been put to a little clerical trouble. If it be objected that their disclosures under pressure may discourage future customers, the answer is that they should be having no business with wrongdoers. Nor is their position easily distinguishable from that of the recipient of a subpoena, which, in total disregard of his probable loss of time and money, forces him to attend the court for the very same purpose as that for which discovery is ordered, namely, to assist a private citizen to justify a claim in law. The policy of the administration of justice demands this service from him.

But it is not necessary, in such a case as is being figured, to go as far as this. The defendants are not mere by - standers - although even if they be such they could in due time be called on to give oral evidence. The position in which they find themselves has been described in several ways; in a rather different context Lord Romilly M.R. in Upmann v. Elkan, L.R. 12 Eq. 140,147 said of the importer that he was "mixed up with the transaction," and of the dock company who were mere warehousemen, that "in many respects the position of the dock company does not differ from his [the importer's]." Again, the case of Post v. Toledo, Cincinnati and St. Louis Railroad Co. (1887) 11 N.E.Rep. 540, in which the Supreme Judicial Court of Massachusetts reviewed all the earlier English authorities, was concerned to state at p. 547

These words appear to me to provide an apt, and by no means too wide, classification of those against whom discovery may in such circumstances be obtained, though I think the court, perhaps misled by the fact that they had available only the report at 4 Ch.D. 92, may have been wrong in saying that in Orr v. Diaper the plaintiffs neither alleged that they had a cause of action nor intended to sue the defendants. But the state of the reports does not make this clear.

Turning, then, from the imaginary dock authority we have been considering to the Commissioners of Customs, do they stand in some relation to the goods which makes the commissioners bound to disclose, on an order of the court, the names of the persons who imported them in prejudice of the plaintiffs' rights, in order to enable them to sue? In my opinion they do. The goods are at the order of the commissioners from the time they enter the customs port until they go out of customs charge. The goods are reported to them in detail, are directed by them to a particular transit shed, and are constructively in their possession and control in the sense of being removable only on their authority, the commissioners have the goods under their control so that they can exact in respect of them the duties authorised by the legislature. The importation of these goods infringes the plaintiffs' property right, and the functions which they perform If must I think place the commissioners in a relation with the importers which entitles the plaintiffs to demand from them the names of the infringers.

As I have said, I do not know of any direct authority which will support such an entitlement. But the proposition seems to be not inconsistent with the ratio of the judgments in Upmann, L.R. 12 Eq. 140, Post, 11 N.E.Rep. 540, and Hunt v. Maniere, 34 Beav. 157. What is more important, if one is searching for principles rather than collating decisions, is that there are broad statements to be found in authoritative sources which are in harmony with the spirit of the decisions, and do not seem to depend on any seemingly extraneous fact, such as the liability of the defendant in discovery to be sued, which, as I have said, has in my view no bearing on the liability to discover in a suit proposed to be brought against a third party. Bray on Discovery (1885), at p. 612 says (of the old Chancery practice, with which the present action is said to be on all fours),

he cites inter alia Orr v. Diaper, 4 Ch.D. 92, Angel v. Angel, I L.J.O.S. Ch. 6, and Moodalay v. Morton, 1 Bro.C.C. 469. Mr. Justice Story, in his Commentaries on Equity Jurisprudence, 2nd Eng. ed. (1892), at p. 1011 says:

After citing, among other cases, Moodalay v. Morton, the learned editor of this edition (W. E. Grigsby) goes on to explain the effect on that exception of the Judicature Act 1873, as exemplified by Orr v. Diaper. The first edition of this work was published in 1838, and Snell (whose 1st edition is dated 1868) appears to adopt Story freely: his account is very similar.

In another jurisdiction a similar principle has been applied. In Colonial Government v. Tatham (1902) 23 Natal L.R. 153, while the familiar relationship of agency could perhaps have been said to make the defendants liable in discovery, the basis is put much more broadly, first by Bale C.J. and Finnemore J. After quoting Orr v. Diaper they say at p. 157:

agency does not seem to have been founded on. Beaumont A.J. refers to the passages in Story to which I have adverted, and says, at p. 158:

I observe that here the duty is said to lie rather on the court to make an order necessary to the administration of justice than on the respondent to l satisfy some right existing in the plaintiff. In Hart v. Stone (1883) 1 Buch. App.Cas. 309, 314, de Villiers C.J. had cited Voet as authority for saying that "the judges had very large powers of ordering a disclosure of facts where justice would be defeated without such a disclosure." And in another civil law system, though the example is rather on the margin of relevance, Erskine, in his Law of Scotland (1838 ed.), at III, Tit. VIII, 54, 55, after pointing out that Scots law had borrowed from Rome the doctrine that the heir is entitled, on succeeding, to deliberate whether his heriditas is to be damnosa or lucrosa (for he will be liable unless he renounce the succession, for his ancestor's debts), says (56) that the heir has

In my opinion, accordingly, the respondents, in consequence of the relationship in which they stand, arising out of their statutory functions, to the goods imported, can properly be ordered by the court to disclose to the appellants the names of persons whom the appellants bona fide believe to be infringing these rights, this being their only practicable source of information as to whom they should sue, subject to any special right of exception which the respondents may qualify in respect of their position as a department of state. It has to be conceded that there is no direct precedent for the granting of such an application in the precise circumstances of this case, but such an exercise of the power of the court seems to be well within broad principles authoritatively laid down. That exercise will always be subject to judicial discretion, and it may well be that the reason for the limitation in practice on what may be a wider power to order discovery, to any case in which the defendant has been "mixed up with the transaction," to use Lord Romilly's words, or "stands in some relation" to the goods, within the meaning of the decision in Post, 11 N.E.Rep. 540, is that that is the way in which judicial discretion ought to be exercised.

I will now turn to an aspect of that public policy which, exceptionally, protects from disclosure, either by discovery or testimony, communications which public policy decrees shall be held confidential. The commonest example arises from the relationship between attorney and client. The aspect relied on by the respondents in the present appeal is that usually but not very happily called "Crown privilege."

The defendants base their claim to refuse discovery on two broad grounds. First, they say they are not permitted by law to disclose matters which they have acquired in the course of the exercise of their statutory functions and have no statutory authority to disclose. They found on section 3 of the Finance Act 1967, as authorising limited disclosure, and impliedly by therefore forbidding wider disclosure. But we are here considering the power of the court to make an order. Rowell v. Pratt [1938] A.C. 101 provides an instance of a statute which authorises the gathering of information, and also limits disclosure of it so as to prevent the court from exercising such a power. This is not such a case. It was conceded that, for example, the information here called for would in practice be disclosed by the respondents on their own responsibility if that course were shown to be necessary for the prosecution of, or the defence in, criminal proceedings of a grave character, other than customs prosecutions. If that be so, the court must, in my opinion, be entitled to call for the same sort of information in order to make possible the prevention of a civil wrong.

The other objections were, if I may say so, of a rather stereotyped and unconvincing character. It was said that disclosure of names would, as it were, drive future infringements underground, giving rise to falsehoods, frauds, forgeries and circumventions, so that, as experience in the U.S.A. has shown, the last state of matters would he worse than the first. Even if this plea involved no element of exaggeration, I would not favour refusing to stop one glaring fraud lest another be substituted for it. Lastly came the "candour" point-that if the persons now under statutory obligation to make disclosure to customs in the course of their business come to appreciate that, in certain circumstances, the names of importers may have to be disclosed to the court, the good relations which now exist between them and the defendants would be endangered, and they might not give the information required by statute with their customary candour. Some such argument is generally accepted as convincing when the confidential relationship between the tax-payer and the Inland Revenue is in question. The information here sought is, however, to be found in documents very different from income tax returns. It exists in bills of lading, ships' manifests, masters' "reports," and the records of the keepers of transit sheds, quite apart from "entries" made by importers. This is not a conclusive factor, but it is in my opinion an important factor which the court should take into account in exercising its judgment as to whether public policy demands that this information be treated, exceptionally, as confidential and immune from disclosure on an order of the court. In my opinion, public policy does not so demand.

I agree with the judgment of Graham J., and would accordingly allow this appeal. I also agree with the order as to costs proposed by my noble and learned friend on the Woolsack.


Appeal allowed.