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See: Norwich Pharmacal order / relief

[HOUSE OF LORDS]

NORWICH PHARMACAL CO. AND OTHERS APPELLANTS AND CUSTOMS AND EXCISE COMMISSIONERS RESPONDENTS

Appeal allowed with costs.

Action dismissed with costs.

Certificate for three counsel refused.

Leave to appeal refused.

Solicitors: Solicitor, Commissioners of Customs and Excise; Allen & Overy.

C. N.

November 7. The Appeal Committee of the House of Lords (Lord Morris of Borth-y-Gest, Lord Simon of Glaisdale and Lord Cross of Chelsea) allowed a petition by the plaintiffs for leave to appeal.

Anthony Walton Q.C., Robin Jacob and Peter Prescott for the appellants.

[LORD REID said that their Lordships desired first to hear argument on whether the appellants could establish a prima facie right to the discovery sought.]

The appellants seek from the commissioners and seek only the names of the importers into this country of the chemical compound furazolidone, of which the appellants are the owners and licensees of the patent relating thereto. They seek discovery of no documents. This is the distinction between the present case and numerous cases on discovery. The reported decisions on discovery merely afford guidance. It is conceded that as a general rule one cannot obtain discovery from a witness. The question arises: are there exceptions to that rule? There is a duty in certain circumstances on any member of the public who has knowledge of the commission of a tort to communicate such information that he may possess to any person who has suffered damage in consequence of its commission. If asked, he has a duty to disclose. The rules of discovery were invented by equity for the purpose of furthering the due administration of justice: see Holdsworth's History of English Law, 3rd ed., vol. 5 (1947), pp. 281, 282, 332, n. 8.

The respondents are liable to give the limited discovery sought in the present circumstances, namely, the identity of the parties proper to be sued, because they would before the Judicature Acts have been liable to give discovery thereof in a suit by bill for discovery. The Court of Appeal wrongly dealt with this issue by applying the mere witness rule.

The respondents contended that there were only “two animals,” mere witnesses and infringers, and that there was no “third animal.” This is plainly incorrect and entirely overlooks the protective jurisdiction of equity. The appellants rely on the statement of principle by Buckley L.J., ante, pp. 145H–146B, citing Upmann v. Forester, 24 Ch D 231.

The first and principal case on which the appellants rely to characterise the defendant as someone other than an infringer is Orr v. Diaper (1876) 4 Ch D. 92; 25 WR 23. That case has been reported in several reports, and the Court of Appeal had before them the report in the Weekly Reporter which they preferred as being fuller than the authorised Law Report which was the only report before Graham J. Their Lordships held that this fuller report threw a further light on the decision to that thrown by the Law Report, but they insufficiently analysed that further light.

The facts in that case were that the defendants were shippers, that is, carriers who were acting on behalf of unknown exporters. The plaintiffs discovered that spuriously marked goods were being exported from the United Kingdom to their foreign markets, and that they had been shipped by the defendants. They accordingly sought the names of the exporters on whose behalf they were shipped. That is why in that case the names sought were those of the exporters rather than the importers. It is of importance in understanding the nature of the decision, however reported, that all the shipments in respect of which discovery was sought were shipments which were past (some of them by as much as two years) at the date of the proceedings. It follows that the defendants had parted (or at the lowest could freely part, since no injunction was sought) with all the goods in respect of which discovery was sought. No doubt an injunction could have been obtained in respect of any future shipments, and then the true owners would have had to come forward and reveal themselves if they wanted their goods. But the discovery sought of past shipments could not have been relevant to an injunction to restrain future ones.

Against the background of the whole case it is plain that Hall V.-C. can have held only one of two things, either sufficient for the appellants' purpose, namely, either (i) it is possible to have discovery against persons against whom no suit for any relief (other than discovery) could be brought (this is the ratio that appears from the Law Report which is the revised report and the one most likely to reflect the true views of the judge), or (ii) that it is possible to have discovery against persons in the position of the defendants. because against them some relief other than relief in respect of infringement could be obtained, even in the case where no such other relief was prayed.

The Court of Appeal rejected the first of the two possible views of Hall V.-C. In so doing, they misunderstood the effect of Mitford on Pleadings, 4th ed. (1827), p. 191, of which they considered only an extract devoid of its context. All Mitford is stating in the part of his treatise relied on against the appellants (Part V) is that no action for discovery can be brought where the information to be gained is irrelevant for the purposes of an actual or intended litigation. Even where he deals with the “mere witness” rule (Part III) he is only stating that no discovery can be sought of evidence which would be inadmissible. The Court of Appeal moreover failed to realise that the appellant should also succeed on the alternative view of Hall V.-C.'s decision, since they failed to appreciate the implications with respect to the respondents of the cause of action they found to exist against Diaper. In effect, the Court of Appeal held that there was a “third animal” who, not being himself an infringer was nevertheless liable to equitable relief, explaining Orr v. Diaper on this basis but failing to appreciate that this cause of action also existed against the respondents. In this action the appellants rely on the observations of Buckley L.J. quoted above. In the present case the Court of Appeal did not follow this principle.

Where a person is not a party to proceedings and discovery is required against him, he is made a respondent to the bill of discovery and entitled to his costs: see Beames on Costs, 2nd ed. (1840), section IV, p. 17, and Bray on Discovery (1885), p. 618. The importance of this is to answer the query “why should a person be put to expense in answering proceedings of this kind?” The answer is that he is not. It is akin to the position of witnesses who are called on subpoena who also obtain their costs.

The reasons given in the old cases for holding that one cannot obtain discovery against a mere witness because for example, if evidence were obtained before the trial a counter-story might be concocted, and because a hill of discovery put a stay to proceedings at law, do not apply to where all that is required are the names of tortfeasors.

It is conceded that Orr v. Diaper, 4 Ch D 92 has not been commented upon in any subsequent reported case, but it is pertinent to observe that the standard textbooks support the appellant's proposition: see Story's Equity Jurisprudence, 2nd Engl. ed. (1892), p. 1011, para. 1483 and paras. 1486, 1499, 1500, 1501; Bray on Discovery, pp. 609, 612; Halsbury's Laws of England, 3rd ed., vol. 12 (1955), p. 10, para. 11; Ross on Discovery (1912), pp. 10, 11; Sichel & Chance, Interrogatories and Discovery (1883), p. 180; Snell's Equity, 1st ed. (1874), p. 516.

As to the authorities, in Upmann v. Elkan (1871) L.R. 12 Eq. 140 there were two defendants, Messrs. Elkan who were forwarding agents, and the London & St. Katharine's Dock Company who were warehousemen in possession of the spuriously marked imported goods. Neither of these parties was guilty of infringement and neither was held guilty of infringement. Yet Lord Romilly M.R. said, at p. 145, that after such an innocent person was given notice of the fact that the goods bore spurious marks and was requested to give all information respecting them: “It is his duty at once to give all the information required,” and on appeal, 7 Ch App. 130, 133, Lord Hatherley L.C. said in relation to Messrs. Elkan: “I hold them to be innocent of any part of this contrivance on the part of the consignor; but still it was their duty, from the first moment, to give all the information they possibly could.” Lord Hatherley L.C.'s observation is entirely consistent with Orr v. Diaper, 4 Ch D 92. Further, Lord Romilly M.R.'s statement shows that the innocence or guilt of the “third animal” is not a relevant factor. Moreover, Hunt v. Maniere (1864) 34 Beav. 157 shows that when a person has physical possession of goods whose dissemination would infringe another's patent or trade mark, the proprietor of the patent or mark has a right to proceed in equity to prevent the person in whose custody the goods in question are from parting with them, and that the custodian of the goods is protected from actions at law by the rightful owners, whose rights are thus overriden. See also the observations of Stirling J. in Washburn and Moen Manufacturing Co. v. Cunard Steamship Co. (1889) 6 R.P.C. 398 on the practice of the old Court of Chancery in the exercise of its protective jurisdiction.

There is a line of English cases which illustrates the proposition that the obtaining of the name of a prospective party to proceedings is an exception to the rule that discovery cannot be obtained against a witness: Heathcote v. Fleete (1702) 2 Vern. 442; Morse v. Buckworth (1703) 2 Vern. 443; Moodalay v. Morton (1785) 1 Bro C.C. 469; Angel v. Angel (1822) 1 L.J.O.S.Ch. 6; The Murillo (1873) 28 L.T. 374; Tetley v. Easton (1856) 18 C.B. 643; Bovill v. Cowan (1867) 15 W.R. 608; Hancocks & Co. v. Lablache (1878) 3 C.P.D. 197; Spokes v. Grosvenor and West End Railway Terminus Hotel Co. Ltd. [1897] 2 QB 124; Hillman's Airways Ltd. v. Société Anonyme d'Éditions Aéronautiques Internationales [1934] 2 K.B. 356.

The Law of Scotland. By means of the accessory action of exhibitio ad probandum it has long been possible to enforce production of documents in the hands of third parties where they are required in evidence in a principal action which it is desired to bring: see Maclaren, Court of Session Practice (1861) 644. But it has been largely superseded by the modern procedure of motion for diligence against havers, now available under the Rules of the Court of Session, II, 95–97. The haver need not himself be liable in any way. Examples of such third party havers include: Leven v. Board of Excise, March 3, 1814, F.C.; Vass v. Board of Customs, Feb. 20, 1818, F.C.; McDade v. Glasgow Corporation,1966 S.L.T. (Notes) 4.

Under Scots law, therefore, a plaintiff is entitled to discovery of names against persons participating in infringement of trade marks, patents, passing off and copyright. This proposition covers innocent participation.

South African law. his is based on the English law of discovery, although as pointed out by Bale C.J. in lonial Government v. Tatham (1902) 23 Natal L.R. 153 the latter was itself probably adapted from the Roman law. The applicants must have “a bona fide claim against some person or persons whose names he seeks to discover, and whose name can be supplied by the respondent, and that he has no other appropriate remedy” (p. 157). See also uart v. Ismail, 942 A.D. 327. The South African cases are put on the basis that it would be a denial of justice not to grant the relief sought.

American Law. A number of cases have held that “the jurisdiction of this court to entertain a bill in equity for discovery … will still be exercised even in aid of an action at law, if the plaintiff cannot without it find out whom he should sue”: per Judge Learned Hand in essed Steel Car Co. v. Union Pacific Railway Co. (1917) 240 F. 135, 136. See also the observations of Cardozo J. in Sinclair Refining Co. v. Jenkins Petroleum Process Co. (1933) 53 S.Ct. 736. For examples of an application of the principle, see Brown v. McDonald (1905) 133 F. 897 and Coca-Cola Co. v. City of Atlanta (1922) 110 S.E. 730.

Position of the Customs. It is common ground that the Customs never had possession of the infringing goods in this case. The fact that even if they had had possession, an injunction could not have been granted against them, they being the Crown. ought not to make any difference to the exercise of the jurisdiction to grant discovery, if they had sufficient control to bring them within the scope of the protective equitable jurisdiction. They plainly did have such control.

The powers of the Customs derive in the first instance from the Customs and Excise Act 1952 and Regulations made thereunder. When goods are imported, they are automatically by operation of law placed into what the Act describes as “Customs charge.” This term is not defined, but under section 294 (5) “If any imported goods … are without the authority of the proper officer removed from customs charge before they have been examined, those goods shall be liable to forfeiture.” It is also an offence to remove any imported goods from Customs charge before they have been examined. In the case of goods imported by sea, they may not be “unloaded, landed or removed from the place of landing or from a transit shed … without the authority of the proper officer”: see the Ship's Report, Importation and Exportation by Sea Regulations 1965,S.I. No. 1993, regulation 6. other relevant provisions are sections 22, 26, 33, 34, 38, 44 and 70.

In the light of the above, it is plain that the charge that the Customs have over goods entering into this country amounts to that control which brings the principle in Upmann v. Elkan, L.R. 12 Eq. 140 into operation.

There is no statutory right of an importer to receive a clearance through the Customs. Any duty on the part of the Customs, if satisfied that the law has been complied with, to grant a clearance comes from the common law. An arbitrary refusal, or one based on unjustifiable grounds would be a denial of that right: see Zachariassen v. The Commonwealth (1917) 24 C.L.R. 166. In the case of importation of infringing goods, however, their refusal to allow the goods to enter would not be arbitrary, nor could the importers obtain any relief in court in respect of such refusal in order to further their wrongdoing.

The Court of Appeal erred in viewing the matter in the light of the assumption that the Customs were being asked to assume to themselves a positive power to stop the importation, rather than being asked negatively to refuse unreasonably to exercise their powers to allow the importation. The Court of Appeal also erred in holding that the Customs' powers were conferred only for the purpose of collecting revenue and did not exist for any other purpose.

In fine, the cases on discovery do not support the decision of the Court of Appeal. It is sufficient if the plaintiff can show that the Customs are in some way mixed up with the goods and it is not necessary for the plaintiff to show that he must be able to sue the Customs before he can establish any right to ask the court to exercise its discretion in his favour for relief.

If it be said that the Customs are using their powers for the purpose not contemplated by the statute, then reliance is placed on the observations of Lord Watson in Metropolitan Asylum District v. Hill (1881) 6 App Cas. 193, 213.

Robin Jacob followed.

Peter Oliver Q.C., Peter Gibson and W. Bruce Spalding for the respondent commissioners. (1) This is an action solely for discovery and must be approached in the same way as, before 1873. the Court of Chancery would have approached a bill for discovery. (2) Discovery is an example of the equitable auxiliary jurisdiction and consists of the extraction on oath, whether by answering interrogatories or identifying and producing documents, of information material to a pending (or, in rare cases, an anticipated) proceeding. (3) In general, it is not and never has been available against anyone except a party to the pending or anticipated proceedings and it has always been held to be improper to join as a party a person against whom nothing can be alleged except that he is in possession of the relevant documents or information simply for the purpose of obtaining discovery against him, even in cases where that person may have an indirect financial or other interest in the proceedings. (4) Exceptions to this rule have been made in the case of: (i) officers or members of corporations and similar bodies in actions contemplated or pending against the body; (ii) attorneys alleged to be implicated in fraudulent transactions for improperly detaining documents; (iii) auctioneers, agents for sale and possibly other agents, in actions against their principals; (iv) arbitrators in cases where it is sought to satisfy an award on the ground of fraud. In these cases, discovery has been ordered although the officer, attorney, agent or arbitrator is not himself and (in some cases) cannot properly be a party to the proceedings. (5) A further exception arises where the person against whom the discovery is sought has a direct interest in the pending or contemplated action, and for this purpose a “direct interest” means either (i) that a decree can be made against him in respect of some part which he is playing or has played in the matters in issue in the pending or contemplated proceedings or (ii) that any decree made is going directly to affect him so that he could properly be joined as a party: e.g., an administration order will affect directly beneficiaries under a trust; an order in respect of a first mortgage may affect a second mortgagee. (6) There is no further relevant exception. In particular it is not and never has been sufficient, in order for A to obtain discovery from B, for him to allege nothing more than that he needs certain information to enable him to commence or proceed with an action, that B has that information, and that he cannot get that information from any other source.

The respondents in this case do not fall within any relevant exception. In particular, nothing that they do, have done, or can lawfully do, renders them in relation to any matter with which the appellants' proposed proceedings are concerned, liable to a decree, nor would anything that they do have done, or can lawfully do, render them liable to a decree independently of the provisions of the Crown Proceedings Act 1947.

In so far as any duty to give information arises as a matter of law from the possession or control of goods and in so far as such duty is enforceable by an action for discovery simpliciter, the respondents do not have and never have had any such control as is capable of giving rise to such duty.

Discovery, like all equitable remedies, is a discretionary remedy, but that does not mean that it is an arbitrary remedy: and over the past 300 years the courts have resolved distinct and clear rules as to the circumstances in which orders for interrogatories or production and inspection of documents can be made, including what has been referred to as the “mere witness” rule. There were two ways in which it could be obtained before the Judicature Act. One was by a bill in equity praying for relief; in which event one would get as part of the process that discovery which was relevant to the relief which was claimed. The other was by a bill, referred to as a bill of discovery, not claiming any relief but asking for the defendant to the bill to answer certain interrogatories, disclose documents or both.

By the mid-18th century, the courts had evolved the rule that the procedure could not be used to interrogate before trial (either by making an additional defendant to a bill for relief or by launching a bill for discovery against him) one who had no interest in the suit, but who was a mere witness.

The rule was applied as early as 1749 in Plummer v. May (1750) 1 Ves Sen. 426 where there is found a clear differentiation drawn between a mere witness and a party interested. A number of exceptions were made — perhaps not wholly logically. One was the officer or book-keeper of a corporation — an exception subsequently extended to a member. Others were attorneys, arbitrators and agents. The agency exception seems to have been confined at first to auctioneers holding deposits, but later became extended to other agents: see Fenton v. Hughes (1802) 7 Ves Jun. 287 where there is a rationalisation of Plummer v. May.

The rule was accepted by the appellants, but it is claimed (in their case) that it only applies where the plaintiff has his action and not when he has not got his action, but desires the information to enable him to start it. That this clearly is not or was not the law appears from Lord Eldon L.C.'s decision in Mayor and Commonalty and Citizens of London v. Levy (1803) 8 Ves Jun. 398.

In paragraph 95 of the appellants' printed case, it is said that the rule was excluded whenever the defendant had an interest in the proposed action sufficient to be recognised by equity las excluding the rule. This is true so far as it goes, but it tells us nothing at all about the type of interest recognised. It is evident from Fenton v. Hughes, 7 Ves Jun. 287 that a mere interest in the outcome, even though the action be brought by the plaintiff at law as agent for the defendant in equity, is not sufficient. This was recognised and adopted by this House in Queen of Portugal v. Glyn (1840) 7 Cl. & F. 466 where Lord Cottenham L.C. reviews the authorities and emphasises the rule. This case is of particular importance, not only because it is a decision of this House, but because it decisively rejected once and for all the very principle for which the appellants contend — namely, that there is some general equity to obtain discovery whenever the needs of justice require it. The House rejected the observations of Lord Abinger C.B. in the court below. There was a clear recognition by this House of the mere witness rule. The rule was stated by Wickens V.-C., in Dixon v. Enoch, L.R. 13 Eq. 394, 399 in 1872 as being that a bill “can only be maintained against a person who is, or is to be, a party to the record at law, and not against a witness whose evidence may go to charge some third person.” See also Burchard v. MacFarlane [1891] 2 QB 241 where it is restated, thus showing that it survived the Judicature Act.

The appellants, however, contend that there is a further exception to the rule beyond those recognised exceptions in Fenton v. Hughes, 7 Ves Jun. 287. But the submission rests in the ultimate analysis on Orr v. Diaper, 4 Ch D 92 and nothing but Orr v. Diaper.

The principles are conveniently summarised in Bray on Discovery. It is conceded that Orr v. Diaper is treated by Bray as an additional exception, but this is wrong. It was not an additional exception at all. It was a case where an agent, who was himself actively engaged in infringing the plaintiff's rights by participating with knowledge in passing off goods as ìthose of the plaintiffs, was properly stopped by injunction and made to disclose, as part of the relevant discovery in aid of that cause of action, the details of his wrongdoing. For the comparable position of one who has in his hands goods bearing a false trade mark: see Upmann v. Forester, 24 Ch D 231.

In effect, three propositions are based on Orr v. Diaper, 4 Ch D 92. First, it is said that Diaper was not a person who had any “interest” in the proposed action in the sense that a decree could be made against him. An alternative way of putting it is that, even if there was an interest (in the sense of a liability to a decree arising out of the matter for which the proposed action was concerned), this was not treated by Hall V.-C. as of any materiality. Therefore, it is said, this is a case where the ratio of the decision was that Diaper was not a mere witness because (i) Orr did not know who the consignors were; (ii) Diaper did know; (iii) Orr could not obtain the information he needed from anywhere else. The proposition is sought to be supported thus: it is true, it is said, that Diaper might (consistently with the authorities) have been enjoined under what has been referred to as “the protective jurisdiction of equity” from parting with the goods: and, in that context, the discovery of the names of the consignors of those goods which had been shipped after notice might be material. But it is said the discovery actually ordered was discovery of the particulars of the consignments right back to 1874 when the defendants were wholly innocent. No cause of action could be established in relation to that period. Therefore, what was in the Vice-Chancellor's mind was not cause of action at all. This, it is said, is demonstrated by the reference to Mitford on Pleading. What counsel and the judge were discussing was materiality, not cause of action.

There is an unproven assumption underlying this, namely, that the discovery ordered did go back to 1874. The whole of the proposition, however, even on that assumption, is based upon two complete fallacies. The first is that the case was one in which the only relief claimable against the defendants was an injunction under the “protective jurisdiction of equity” (whatever that may mean — if it means anything beyond the right of equity to injunct a wrongdoer or a threatening or intending wrongdoer). This was a case of actual infringement by the defendants for two reasons: (a) This was a demurrer and it therefore admitted every allegation in the statement of claim. By admitting this the defendants admitted that they themselves had been deliberately assisting in the passing off of spurious goods, that is, that they were actual wrongdoers. Whether they were acting as principals or agents is wholly immaterial. (b) Secondly, quite apart from knowledge, the fraudulent goods had been exported by the defendants. The decision in Upmann v. Forester, 24 Ch D 231 shows that guilt or innocence is immaterial. A person may be perfectly innocent, but he can still be sued for an injunction to resìtrain passing off. The defendant in Orr v. Diaper, 4 Ch D 92 had not only rendered himself liable to an injunction, but, by admission, to an account of profits or damages, the usual relief in a passing off action where knowledge is established. The discovery back to 1874 was clearly material to this claim if the plaintiff had sought to pursue it. Here is a man who says: “I admit for the past two years I have been acting as agent in helping another person to pass off his goods as yours and have caused you damage.” It is self-evident that the identity of his principal or principals is material: but in any event the courts are not too tender of the susceptibilities of wrongdoers, nor when discovery is a matter of indifference to the defendant will the court weigh in golden scales the question of materiality or immateriality: see Carver v. Pinto Leite (1871) 7 Ch App. 90.

The second fallacy is that the Vice-Chancellor was considering only the question of materiality. Whatever the passage in Mitford was directed to by its author, both counsel and judge were quite clearly considering it in the context of whether there was any claim for relief which could be made against the defendant, and the interjection of the Vice-Chancellor in the report in the Law Reports shows that he was not prepared to allow the case to go off on the point that the plaintiffs did not say in their statement of claim that they were going to join the defendant as parties to the proposed action. The Court of Appeal's analysis of this case was entirely correct, once it is appreciated that it was a case of a wrongdoer caught red-handed and knowingly in the act of wrongdoing (which was what was admitted for the purposes of the demurrer); it then becomes apparent that it is an example of, and not an exception from, the rule. True, Bray treats Orr v. Diaper, 4 Ch D 92 as if it were an exception, but in so doing he was wrong. In the hundred-odd years which have passed since Orr v. Diaper there does not appear to be any recorded case in England of a claim like the present one having been made.

As to the reconciliation of Orr v. Diaper with Queen of Portugal v. Glyn, 7 Cl. & F. 466, Queen of Portugal v. Glyn was concerned with the bill of discovery, not a bill of relief. In the case of a bill of relief, one could obtain discovery from a defendant against whom one claimed relief and also against a person who though not joined for relief, was “interested” in the sense that a decree could be made against him. In dealing with the pure bill of discovery, one must either have a pending proceeding in which the defendant to the bill is a party or one must aver that one intends to bring an action against him. But in a bill of relief, one can join as defendant for discovery a person who is “interested in the suit” in the sense that a decree can be made against him. Now all this is swept away by the Judicature Acts, and in Orr v. Diaper, Hall V.-C. is applying not the rule applicable to a bill of discovery, but the rule applicable to a bill of relief, where the test is: can the court make a decree?

It is accepted that Orr v. Diaper, 4 Ch D 92 went further than was warranted by previous cases in the sense that it was the first and only case in which discovery was accorded to a person against whom the plaintiff disclaimed the intention of seeking any relief either at law or in equity. The interesting question is why it went further. There are three possible explanations: (1) Hall V.-C. was simply wrong; (2) the rule had developed and changed since 1840 when Queen of Portugal v. Glyn, 7 Cl. & F. 466 was decided; (3) the Vice-Chancellor was applying a totally different principle. The difficulty in relation to both situations (2) and (3) is that there is no warrant from the reports for saying that the rule had changed of developed and that Hall V.-C.'s judgment is based on the predicate that he was in fact applying the rule. The inference is therefore that he was, if not wrong, at least a pioneer and the reason why he became a pioneer was that he fell into the self-same error as did Lord Wynford in Queen of Portugal v. Glyn, 7 Cl. & F. 466 in failing to make the distinction between a bill of relief and a bill of discovery. The distinction was clearly drawn in the cases which have been referred to. The distinction is clearly drawn in Bray on Discovery: see pp. 19, 20, 40. A litigant or prospective litigant might want discovery in aid of an action at law or of relief in equity. If the former, he had to bring a bill of discovery simpliciter; and to support it, he had to show not that the defendant was “mixed up” in the thing, but that the defendant actually was a party or intended to be a party to the record at law. Otherwise, he was met with the answer that he could obtain his evidence in the ordinary way. If what he desired was relief in equity, he brought a bill of relief and joined the person from whom he sought discovery as a defendant to the bill. The question was, then, was he properly joined: had he a sufficient interest in the suit to keep him there: and “interest” came to be defined in terms of the possibility of a decree being made (apart from a decree for discovery merely). What he could not do was to join a defendant for the purpose of discovery for some suit at law to which he did not intend to make him a party. With this in mind, it is interesting to peruse the report of the argument in Orr v. Diaper, to be found in 25 WR 23, 24. The logic of Hall V.-C.'s position is that where one has detected one malefactor who knows the name of his confederate or associate, one does not let him resort to the rather technical rule relating to discovery before the Judicature Act in order to escape giving the name of his confederate. But that is no ground for extending the notion beyond the rule which equity applied even in the case for a hill of relief.

The two further propositions based on Orr v. Diaper, 4 Ch D 92 are these: (1) if, the appellants say, they are wrong about the necessity to show a claim for relief against the person from whom information is sought, then they contend that there is such a claim in the instant case against the respondents because wherever a civil wrong is being committed and a third person has a power to prevent it being committed or perfected, equity will interfere in the course of its “protective jurisdiction,” at any rate where the wrong is concerned with goods and the goods are capable of being held back by the third person concerned exercising a control which he has in this situation. (2) either cumulatively or alternatively, it is contended there is a general duty on one who has controlling powers over goods or who is, as it is put, “mixed up” with them to give all information about the goods to one who claims that their release or delivery or further transmission would constitute an infringement of his private rights. The authority for these two propositions comes from three cases: first, Hunt v. Maniere, 34 Beav. 157, the case of the wharfinger. There is nothing very special about this case. All that it decides is that a person who is in possession of goods as an agent for another and who may subject himself to action if he delivers them up to his principal for purposes which he knows to be tortious has a defence in equity to an action in detinue by the principal if he declines to deliver them. Secondly, Upmann v. Elkan, L.R. 12 Eq. 140 on which a great deal has been made to turn, but which is in essence a very simple case. It has nothing whatever to do with discovery and the only questions were: (i) should the court grant an injunction in the circumstances; (ii) the defendants not having opposed the claim, but submitted to act as the court directed, whether they ought properly be made to pay the costs. It is in this context of this that Lord Romilly's judgment has to be read. The case went to appeal ( 7 Ch App. 130) where one finds the Lord Chancellor emphasising in terms that the defendants, albeit perhaps unwittingly, were wrongdoers against whom the plaintiffs had a right to an injunction. Accordingly, all that can be deduced from this decision is that if one finds a man actively and voluntarily engaged in importing spurious goods, one can obtain an injunction against him as a wrongdoer and if he wants to avoid that result and avoid paying the costs, he must give the plaintiff information which will enable him to put a stop to the matters complained of before the bill is filed. It does not establish any right of action or duty arising simply from the fact of the defendant having a power to stop the goods from proceeding further, and certainly it establishes no such duty in the case of the person who has not voluntarily engaged in the transaction. Thirdly, Washburn and Moen Manufacturing Co. v. Cunard Steamship Co., 6 R.P.C. 398, a clear case of infringement by an agent who had control of the goods in question, which does not assist the appellants, for the respondents are in the same position as were the defendants in Nobel's Explosives Co. v. Jones, Scott & Co. (1882) 8 App Cas. 5, where it was held that the mere facilitating of the passage of infringing material by lodging documents was not an involvement in the importation which would subject a Customs House agent to an injunction.

If (contrary to the respondents' submissions) there is a duty arising from possession or control of goods, and if equity will interfere to stop the goods against anyone who has possession or control, do the respondents have, in any relevant sense “control” of goods unloaded at a port or airport? What has to be postulated in the context of this particular proposition advanced by the appellants is: (a) that the commissioners have a power which they can lawfully use for the purpose solely of preventing goods from getting into the hands of a consignee; (b) that the respondents have a duty to exercise that power for that purpose; (c) that a court of equity can and will issue a decree that will (for effective purposes) result in the exercise of that power.

If the powers conferred by the Customs and Excise Act 1952 be examined, two things become apparent. The first is that the powers conferred at no stage enable the respondents themselves either to take possession of the goods (except in the case of goods liable to forfeiture) or to influence their final destination: and the second is that the powers — all the powers — are conferred solely for the purpose of the statutory functions of collecting the proper duty or such other functions as may, by statute, be vested in the respondents. [Reference was made to sections 28 and 34 of the Act.] In Reg. v. Lord Leigh [1897] 1 QB 132 it was held that the police authorities could not use a statutory power conferred upon them for a collateral purpose.

It was said that Buckley L.J. put the appellants' argument in its widest form. The way it is put in the appellants' printed case is that the mere witness rule applies only where the plaintiff is seeking to obtain evidence. When what is required is simply a sworn statement from the defendant of a name of another person, the rule does not apply. If this be right, it must be because the mere possession of knowledge in circumstances in which the prospective plaintiff does not have it and cannot obtain it from anywhere else (which is not accepted in the present case) gives rise to a duty in the person having the knowledge to give the information and a right in the injured person not having the knowledge to receive it. This must be so, because courts of law or equity do not interfere merely for convenience. It is a necessary prerequisite to obtaining relief that the plaintiff seeking it should establish a duty in the defendant to accord that relief. The concept of such a duty is not an easy one to envisage in the present circumstances. Although there is no authority for the proposition in English law, which may be deemed fortunate because the implications are far reaching, the duty, if it exists, must be one which arises regardless of the circumstances in which the information was obtained.

As to the older cases which it is said support the appellants' first proposition and Bray's treatment of Orr v. Diaper, 4 Ch D 92 as an additional exception to the “mere witness” rule, Moodalay v. Morton, 1 Bro C.C. 469 is of no assistance. There the plaintiff was seeking to sue the company and was seeking discovery in relation to that suit, that is, it was a bill for discovery against a wrongdoer. The plaintiff knew who had done him wrong: he was merely endeavouring to find out the status of the actual wrongdoers: it is interesting to observe that in both reports of the case it appears that the bill was supported by a distinct allegation that the company had done wrong — presumably because the pleader thought this a necessary allegation. Accordingly, it is merely an example of the auxiliary jurisdiction of equity at work in aid of an action at law.

Angel v. Angel, 1 L.J.O.S.Ch. 6 is of no importance except for its reference to Moodalay v. Morton Heathcote v. Fleete, 2 Vern. 442 and Morse v. Buckworth, 2 Vern. 443 seem to be merely examples of a well-known exception to the mere witness rule — (a) the defendants were themselves persons against whom relief was to be sought and (b) they were agents for a wrongdoing principal. The Murillo, 28 L.T. 374 depended upon the special rule relating to discovery in the Admiralty Court. Tetley v. Easton, 18 C.B. 643 was an example of an action against a wrongdoer. Bovill v. Cowan, 15 W.R. 608 is of no assistance for there the plaintiff required names from a defendant who was already before the court. Hancocks & Co. v. Lablache, 3 C.P.D. 197 is even more remote. There is no doubt whatsoever that the defendant was liable. There was a demurrer on the ground of misjoiner. Leave was given to amend by joining the husband, and interrogatories were ordered to enable this to be done. Match v. Keith (1860) 30 L.J.Ch. 127 is simply a decision where the inquiry is as to whether there are other persons, in addition to those already joined, whose interest may be affected by the decree.

The Scottish Cases.Leven v. Board of Excise, March 3, 1814, and Vass v. Board of Customs, Feb. 20, 1818, F.C. were both cases of diligence in an existing action where the question was one of Crown privilege. McDade v. Glasgow Corporation,1966 S.L.T. (Notes) 4 was also a case of diligence in an existing action for the production of documents which would, it was hoped, prove that the defendants were (as they were allegedly) the persons responsible for the accident.

The South African Cases.Colonial Government v. Tatham, 23 Natal L.R. 153 was the case of an agent for a syndicate, and the court assumed that at the material time he himself was a member and therefore liable on the contract. It is interesting to observe that the Chief Justice thought that there was no difference in principle between discovery of names of parties and any other discovery. Stuart v. Ismail,1942 A.D. 327 is an even clearer case. There the person from whom the names were required was himself a defendant in the action.

The United States Cases.Sinclair Refining Co. v. Jenkins Petroleum Process Co., 53 S.Ct. 736 and Pressed Steel Car Co. v. Union Pacific Railway Co., 240 F. 135 are relevant simply for their statements of general principle. The respondents concede that Walker v. Pennsylvanian Railway Co. (1944) 36 A. 2d 597, goes further than any English case and it does so in reliance, at any rate in part, on the older English cases. But the statement at p. 601 shows that the approach of the courts of New Jersey had by 1944 become that a man is not a “mere witness” unless the evidence which he has to give is evidence which can be useful at the trial. That is a gloss for which the English cases give no support at all. In Brown v. McDonald, 133 F. 897 it is true, there is a reference to Orr v. Diaper, 4 Ch D 92 but merely in the context of there being no pending action; there was a specific finding that the defendants were not mere witnesses. Coca-Cola Co. v. City of Atlanta, 110 S.E. 730 is plainly distinguishable, for it proceeded on the view that the civil code showed a policy to reveal the property of debtors. In the Walker case, 36 A. 2d 597 reliance was placed on Post v. Toledo,Cincinnati and St. Louis Railroad Co., 11 N.E.Rep. 540. There there was an action to compel a corporation to disclose the names of its stockholders in order that the plaintiff could institute a suit against the corporation and its stockholders. There is really nothing peculiar about the decision which is in fact in accordance with principle. It is strongly in favour of the respondents. It distinguishes the respondents' position from that of the wharfinger. Further, the court had a full citation of the relevant authorities in that case.

It is plain that there is no general principle that merely because a person has information that discovery can be obtained against him. Such a principle cannot stand in view of the libel cases: see, for example, Plymouth Mutual Co-operative and Industrial Society Ltd. v. Traders' Publishing Association Ltd. [1906] 1 KB 403.

The respondents' case may be summarised as follows: (1) The appellants' case rests on Orr v. Diaper, 4 Ch D 92 alone. (2) That case was wrongly decided at the time. But assuming that it is a sound proposition, and it has become the law by being adopted and cited by textbook writers here and in common law jurisdictions outside England, it is authority only for this: where one finds a wrongdoer one can obtain discovery from him of the names of his associates in the wrongdoing without the necessity either of suing him personally for other relief, or by averring that one means to do so. (3) The respondents are not wrongdoers and are therefore in any event outside the proposition for which Orr v. Diaper is authority. (4) If it is to be said that Orr v. Diaper is authority for a wider proposition, namely, that one can apply to a bill of discovery the rule previously applicable to a bill of relief, namely, that one can obtain discovery against a person “interested” in the action (in the sense that a decree can be made against him) then the respondents are not such persons. (5) They are not such persons because although equity will interfere by injunction to restrain a wrongdoer or, quia timet, one who is going to be a wrongdoer if an injunction is not granted, it will not interfere against one who has no voluntary connection at all with the wrong, but who simply has the ability, by activity or inactivity, to prevent or delay other persons from doing wrong. No authority whatever has been cited for the proposition that one can obtain an order against such a person. All the cases cited are cases of persons who: (a) are agents of, or, bailees for, wrongdoers; (b) have voluntarily assumed that position; and (c) have either possession or the power to say finally what shall be done with the goods; and (d) are actively assisting, or (unless restrained) will actively assist, in the wrongdoing. There is no third animal. One is either an infringer or a threatened infringer or one is nothing: Nobel's case, 8 App Cas. 5. (6) If it is said that there is some duty to give information arising from the mere existence of the statutory powers conferred on the respondents for the fulfilment of their functions (because this is “control” of the goods), these powers do not constitute “control” in any relevant sense. “Control” must mean possession either actual or constructive in the sense of having someone else possessing on one's behalf to whom one can give directions at to the final disposition of the goods. (7) The appellant's own formulation involved, as a necessary ingredient of discovery in the postulated circumstances, the inability of the plaintiff to get the action on foot without the information he seeks. The respondents do not accept that he is so able. Their evidence is that obtaining the information from the respondents would be the »st direct method and (b) that it is difficult to obtain it in any other way. (8) The innovation which the appellants seek would cause manifest inconvenience to the citizens of this country whose only fault is that they happen to have some information that the plaintiff wants — no doubt a popular conception in these egalitarian days. hut not an innovation to which this House should lend its assistance.

Walton Q.C. in reply. This House is only concerned with rights and duties. It is not a court of morals. There is a general duty on persons to give evidence: see Wigmore on Evidence, 1st cd. vol. IV (1905), sect 2192; “… there is a general duty to give what testimony one is capable of giving, and … any exemptions which may exist are distinctly exceptional …” That statement represents the truth. What difference is there in the present proceedings, provided the court has full control and the witness obtains his expenses? If the appellants have a right, then there must be a method of enforcing that right. The appellants only need names, and this is all that they will obtain for the court will only give minimum relief. This is an application of what is called “judicial parismony”: see per Judge Learned Hand in the Pressed Steel case, 240 F. 135.

The Plymouth Mutual Co-operative case [1906] 1 KB 403 is also an example of application of judicial parsimony for there the plaintiff had a defendant and why should the plaintiff have his damages twice? There is an historical explanation for the attitude taken by the courts in libel cases. Defamation was originally a crime. Equity refused to aid the obtaining of evidence in relation to criminal proceedings or evidence which would result in self-incrimination.

The reasons for the mere witness rule must be one or more of the following: (1) because one does not want litigants “fishing” into the other side's evidence in advance, since they would be tempted to concoct contrary evidence; (ii) because any evidence thus obtained would be hearsay evidence; (iii) because otherwise before the Judicature Act it would have enabled defendants to bring actions for discovery against persons who were unwilling to comply, with the object of delaying their own substantive proceedings indefinitely, which is the real explanation of Queen of Portugal v. Glyn, 7 Cl. & F. 466; (iv) because it would subject innocent persons having nothing to do with the litigation to trouble and expense. The first three reasons cannot apply here.

In Dummer v. Chippenham Corporation (1807) 14 Ves Jun. 245 Lord Eldon L.C. gives failure of justice as the reason for the exception to the mere witness rule in relation to corporations.

In Queen of Portugal v. Glyn, 7 Cl. & F. 466 it is important to observe that discovery was sought by the defendant and not the plaintiff. It is suggested that the reason for the delay in delivering judgment in that case was that a conflict arose between giving a hard decision in that case and making a bad law. Because if discovery were given to the defendant in that case, discovery would be sought by a defendant in every case of a bill of exchange and this would hold up proceedings on the bill. Nevertheless the House of Lords recognised at p. 486 that there are exceptions to the mere witness rule.

There are three reasons for granting discovery here: (1) the case forms an exception to the mere witness rule; (2) the respondents are so mixed up in the relevant transaction, to use the words of Lord Romilly, as to entitle the appellants to discovery; (3) the appellants could bring an action against the respondents. A person is mixed up in the transaction if innocently or not he facilitates the commission of the wrong complained of. A test of whether a person is mixed up in a transaction is to see whether if that person had not acted as he did the tort would not have been committed.

It was said that the respondents were not volunteers, but neither are dock companies. In In re Uzielli (1863) 33 L.J.Ch. 371 an injunction was granted against persons who were acting involuntarily under statutory duties. Dock companies are no more volunteers than are the Customs. orr v. Diaper, 4 Ch D 92 was a case of the defendant being mixed up in the transaction in question, which also applies to Brown v. McDonald, 133 F. 897. The Customs are mixed up in these transactions. They play a vital role. The court could order the respondents to stop these goods leaving the docks, which shows that the Customs have sufficient control both for enabling the mixed-up principle to be invoked and also for the purpose of the appellants obtaining a declaration under the equitable protective jurisdiction of the court. [Reference was made to sections 44 and 261 of the Customs and Excise Act 1952.]

The protective jurisdiction of equity. It was said: (1) that this jurisdiction never existed; (2) that the protective jurisdiction was abolished by Nobel's Explosives Co. v. Jones, Scott & Co., 8 App Cas. 5; (3) if the jurisdiction still exists, it extends only to agents and bailees, As to (1), for this to succeed, it would be necessary to show that all the defendants in the relevant cases were infringers. In other words, for example, that Diaper was an infringer and that the Cunard Company were infringers. But a carrier, like a shipper, is never an infringer unless he is particeps criminis. In Orr v. Diaper, 4 Ch D 92, the defendant could be enjoined against, but damages could not be obtained against him. Even if Diaper knew all about the transactions, damages could not be obtained against him, but merely an injunction. He was not a tortfeasor at law but a wrongdoer in equity and an injunction could be granted against him under the equitable protective jurisdiction: see also the observations of Stirling J. in Washburn and Moen Manufacturing Co. v. Cunard S.S. Co., 6 R.P.C. 398. As to (2), it is almost impossible to differentiate between the defendants in Upmann v. Elkan, L.R. 12 Eq. 140 and Nobel's Explosives Co. v. Jones, Scott & Co., 8 App Cas. 5 where there was no attempt by a side wind to abolish the equitable protective jurisdiction. The question of innocence is irrelevant in relation to the equitable protective jurisdiction. All that matters is whether the defendant has the goods under his possession or control.

In Washburn's case, 6 R.P.C. 398, Stirling J. put the basis of jurisdiction on power or control. There is no case where it has been put on the basis of the defendant being an agent or carrier. Accordingly, there is no foundation for proposition (3) above.

It is relevant to ascertain whether a declaration could be obtained against the respondents because if an injunction could be obtained under the equitable protective jurisdiction, then a declaration could be obtained and a declaration is sufficient to enable a party to obtain discovery: see Barnard v. National Dock Labour Board [1953] 2 QB 18.

Moodalay v. Morton, 1 Bro C.C. 469 is similar to Orr v. Diaper, 4 Ch D 92. The report of Moodalay in 2 Dick. 652 makes plainer than does the report in Brown that it was the case of obtaining names in order to know whom to sue and it was so understood by Story in the edition that came out before Orr v. Diaper and was so understood also in the first edition of Snell.Mayor of London v. Levy, 8 Ves Jun. 398 unlike Moodalay v. Morton was a pure “fishing” case. In Fenton v. Hughes, 7 Ves Jun. 287 the facts were not sufficient to warrant making an exception to the rule. Burchard v. MacFarlane [1891] 2 QB 241 states the general rule. There was no full citation of authority. Post v. Toledo, Cincinnati and St. Louis Railroad Co., 11 N.E.Rep. 540 assists the appellants, for there discovery was obtainable against someone who had some relation to the property. Similarly the respondents have some relation to the goods in question here. Bovill v. Cowan, 15 W.R. 608 involved a defence association and the persons in question were not co-infringers. There was no conspiracy to infringe. There were merely persons who had a common interest.

[Their Lordships conferred. Lord Reid intimated that their Lordships desired to hear argument on the other issues raised in the appeal.]

The appellants have made out a prima facie case for the information they seek. This information involves a contempt of the Crown and is a serious tort. The information required is contained in documents which are mundane. Ship owners and ships masters and dock and harbour authorities and even stevedores handle them. Thus it can be seen that a wide class of persons are in possession of the required information. Without there being an express or implied obligation not to divulge, there is no questìon of general confidentiality in this case.

As to the respondents' contention on candour, the consignors are required by law to disclose the identity of the product under threat of a penalty. This is factual information that is sought and not what is a mere matter of opinion: contrast Reg. v. Lewes Justices,Ex parte Secretary of State for Home Department [1973] A.C. 388.

The reliance placed by the Court of Appeal upon the fact that documents might be forged or that the importations might be in the names of nominees does not stand up to examination. Forgery merely at the moment of entry could not be effective and, further, in so far as the importers might give the names of nominees, it is not understood how this could constitute an evil of any kind or lead to evasion of Customs dues. Importers may well be nominees at present. It is conceded that there may be an importation which is licensed. The respondents should give all the names because the possibility that importation of this substance being lawful is a remote possibility.

The respondents rely on this branch of the case on section 3 of the Finance Act 1967. This statutory prohibition is over-ridden by the principle that it is not to be so construed as to hinder the due administration of justice. It is an enabling section, directed to promiscuous publication. That is why it contains safeguards of honest men's secrets.

The Court of Appeal took a wrong approach in that it failed altogether to appreciate that the appellants came before them clothed in a very high public interest. Lord Denning M.R. weighed the matter as primarily one between the appellants' private benefit by way of financial gain, and the public benefit of keeping the information secret. But that fails to appreciate that behind the private rights of any individual litigant there always stands the extremely important public interest that justice must be done. That is an over-riding interest: see Conway v. Rimmer [1968] AC 910. The cases show that not all functions of public departments are to be treated in the same way, that is, they do not all have the same weight. There is a very strong public interest that the affairs of taxpayers should not be disclosed and, therefore, it would need a very strong case indeed before a court would order the disclosure of a taxpayer's income tax return. In the present case, the public interest against disclosure of these names to the court is minimal. The principle on which the appellants rely is, namely, that the disclosure of wrongdoing is more essential to public justice than the fact that the Crown Revenue might suffer from the future failure of the wrongdoers to share the proceeds of their wrongdoing with the Government: see Reg. v. Snider [1953] 2 D.L.R. 9, 36.

As to the over-riding power of the court, the authority in this House is Rowell v. Pratt [1938] A.C. 101 which shows that there is no presumption either way, but that the court considers the individual statutory provision in each case. In Cowan v. Stanhill Estates Pty. Ltd. [1966] V.R. 604 there is a review of the English authorities.

In conclusion, the House should decide that “court” is not a person in these circumstances, particularly in a section like section 3 which is not a prohibiting section at all, but an enabling section. Strong reliance on this part of the case is placed on Conway v. Rimmer [1968] AC 910.

Oliver Q.C. Confidence in the present context is a head of public policy. Where information is furnished to a government department (i) for a particular purpose or (ii) under the compulsion (or possible compulsion) of a statute, then in the absence of express statutory power is there a bar upon the use of that information for other than the statutory purpose and, in particular, upon its disclosure either (a) to other government departments or (b) to other persons? To express the issue thus is to put it much more widely than it was put by the respondents below and much more widely than is necessary for the purposes of the present case. For present purposes, it is sufficient to rely on specific statutory provision. But on the wide issue, there are three classes of statutes: (1) An Act requiring the furnishing of information, but not containing any prohibition, express or by necessary implication, on disclosure by the recipient, e.g. the Customs and Excise Act 1952, s. 65; (2) an Act containing power to require information and a specific prohibition on disclosure either absolute or with specific exception, e.g. the Agricultural Marketing Act 1931, s. 17; (3) an Act containing power to require information but with an express provision authorising disclosure in limited cases or to a limited extent and thereby by implication prohibiting disclosure in other cases, e.g. the Finance Act 1967, s. 3.

To the question “is there an absolute bar on the disclosure of information collected pursuant to statutory powers?” the answer is “No.” The respondents do not claim this as a general principle. The appellants accept that there is a general obligation of confidence, but it is said that this is subject to the general principle, that it will yield to a strong case of public interest (Conway v. Rimmer [1968] AC 910). This is not disputed subject to this qualification that if there is a statutory prohibition, either express or implied, on the disclosure of information or on the disclosure of information except in particular circumstances, then the statutory prohibition prevails.

Rowell v. Pratt [1938] A.C. 101 is a case of an express prohibition and the following principles are deducible from it: (i) there is no rule of construction which imposes a limitation on a statutory prohibition to the effect that it is only to apply unless a court in legal proceedings otherwise orders; (ii) prohibition may be implied, for example, by imposing a criminal penalty on disclosure; (iii) where there is a statutory prohibition, the court will not over-ride it on the footing that it is transcended by the requirements of the administration of justice. Examples of express prohibitions are: section 11 of the Parliamentary Commissioner Act 1967; section 111 of the Companies Act 1967; and section 21 of the Agriculture Act 1970.

It is conceded that the Customs and Excise Act 1952 contains no express prohibition regarding the disclosure of information gathered under the Act. Prima facie, therefore, the position would be that applicable to any other statutorally gathered information, that is, it is non-disclosable except in the event of the court finding a balance of public interest in favour of disclosure. The difficulties about accepting this, however, arise principally from the provisions of section 3 of the Finance Act 1967. As to this section, it is to be noted: (a) it is permissive, so that it recognises by implication the general confidential nature of the information to which it relates; (b) the disclosure authorised is “to persons other than the Commissioners” so that the implication is that apart from this power there is no power to disclose to any other person (and prima facie) that would include a party to litigation before the court; and (c) the information which can be disclosed is strictly limited in nature, and even the power to increase the ambit of disclosable information cannot be extended to name and price. As to (c), the fact that there is an express prohibition in relation to the factors of name and price shows a very strong public policy against disclosure. If it be said that the information required here is disclosed to many persons, it is information to persons concerned with the transmission of the goods in question. They cannot use it for any other purpose. In relation to the question of confidentiality, it is important to consider section 127 of the Finance Act 1972 which shows that there is nothing very strange in imposing an increasingly strict policy in relation to confidentiality. Further, section 16 (9) of the Agriculture Act 1970 underlines the practice of confidentiality. It indicates the confidentiality of statutory information. A perusal of the relevant statutory provisions shows a thread running through them, that information required to be disclosed to a statutory body is to be deemed confidential. The respondents concede, however, that despite the language of section 3 of the Finance Act 1967, the public interest may over-ride the provisions of the section in certain circumstances, for example, where the information is required in prosecuting a charge of serious crime or in preparing a defence of a charge to serious crime.

For there to be disclosure the factor in favour of disclosure must be very weighty. In the respondents' submission the disclosure of names for the prosecution of private rights is not a sufficient factor. Public policy has two aspects: there is the moral aspect in that a person is entitled to believe that his private affairs will not be disclosed. Secondly, there is the expediency aspect, for it is a relevant consideration what would be the effect of disclosure on the interests of the State.

If it be said that sections 111 and 112 of the National Insurance Act 1965 show a relaxation in the relation of the disclosure of names, the answer is albeit there has been a shift in public policy against the general prohibition of the disclosure of names it is a shift away from that position only in relation to matrimonial proceedings.

The contest in the present case, assuming that it is proper in proceedings where no other relief can be claimed to seek disclosure at all, really comes down to a balancing of interests. One starts from the position that there is a strong public interest in maintaining the confidentiality of information extracted from citizens under statutory compulsion. This is no more than the recognition by the legislature and by the courts that if the individual is to be asked to disclose his private affairs to the organs of the State, it is only right that the information so divulged should be used only for the purpose for which, under the statutory power, it has been called. This is something quite separate and apart from the candour argument. It is in the public interest — it is part of public policy and the policy of the law that private confidences should not be abused — this is a moral policy, not an expediency one. There is always this dual aspect of public policy both facets of which were present in Rowell v. Pratt [1938] A.C. 101.

The countervailing public interest which it is said over-balances this, is the interest of the private litigant in establishing his individual private rights in a civil action in a court of law. So stated the proposition subjects the obligation of confidence to an exception which would reduce it to a mere shell. “This information should be kept confidential except where its disclosure would assist another person to assert a private right.”

If it be said that the appellants' right is more than a private right, it can be equally said that it is in the public interest generally that the rights of individuals should be protected.

To the suggestion that the information required by the appellants is purely mundane information, the answer to this is that this is a meaningless concept. It carries the appellants nowhere. The public interest in confidentiality cannot depend solely or even principally on the content of the information sought divorced from the context in which it was imparted or the consequences of its disclosure. On this test, a great deal of highly secret information is “mundane,” for example, the name and telephone number of a police informer.

In summary: (1) Information provided under statutory compulsion is to be treated as confidential, although, in the absence of expressed statutory prohibition, the court may order disclosure if the public interest requires it. (2) Whether the court in any given case will order disclosure depends not on any general rule, but on the individual circumstances. Among other things the following factors will be relevant for consideration: (a) The type of information sought; (b) the degree of confidentiality imposed by the legislature so far as deducible from the statutory provisions; (c) the purposes for which the information is sought — for instance, how far can the Department of Social Security disclose names and addresses for proceedings other than maintenance proceedings? (3) The confidentiality of information statutorily obtained is not affected by the fact that that information may, and often is, imparted to other persons not under statutory compulsion, e.g., the Inland Revenue may obtain details of invoices and vouchers, etc. which could in fact be obtained from the traders who furnished them in the first instance; (4) Names and addresses of informants in an area to which the legislature has indicated a particular sensitivity. Thus section 3 does not allow the veil to be lifted even in the national interest. (5) It is not in the public interest to foster litigation: Weld-Blundell v. Stephens [1920] A.C. 956.

Walton Q.C. in reply. The appellants accept as a general proposition that information primarily given for statutory purposes should not be disclosed without a strong case being made out for such disclosure. Such a strong case must necessarily be furnished where disclosure is necessary to ensure justice. Specifically on Crown privilege the onus of showing that this exists is upon the respondents: see Reg. v. Lewes Justices,Ex parte Secretary of State for Home Department [1973] A.C. 388. Further, the law of confidence does not apply to guilty secrets. Equity will not protect the guilty secret by whomsoever disclosed.

The appellants concede that the present proceedings are ex parte in so far as the Customs cannot be expected to challenge the validity of the patent. But prima facie evidence of validity has been given amply sufficient to secure the grant of an interlocutory injunction. Interlocutory injunctions have been granted in patent matters only in the last decade, and there have only been about six granted. This answers any suggestion that the granting of the present appeal would open the floodgates for applications of the present character.

If the respondents in any case were to consider that it would be prejudicial to disclose names, they could always refuse and be brought before the court where their costs would have to be paid by the applicant. This procedure protects the Customs. Further, the public interest is served if the discovery is sufficiently discriminate, that is, that it is only granted on the making out of a prima facie case of wrongdoing. Practice Note (Wardship: Summons) [1973] 1 W.L.R. 60, 63 shows that a number of government departments are prepared to give names and addresses in certain circumstances.

If it be said that the giving of names is the thin end of the wedge and that applicants will require further evidence, the answer is that the principle of judicial parsimony is applicable: the Pressed Steel case, 240 F. 135, 137, per Judge Learned Hand. If names are sufficient for the purpose, the court will not grant the giving of any further information.

As to the respondent's summary of their argument on this issue: (1) this is not disputed save for a change of onus and emphasis; (2) there is no dispute here, save on the application of the principles; (3) this conflicts with proposition 2 (a). It must help to clarify the question whether information should be disclosed by ascertaining in whose hands the information is. The information here is mundane and is not of that character contemplated by Lord Salmon in Reg. v. Lewes Justices [1973] A.C. 388 as being immune from disclosure. This information is not like income tax returns; it is information already known to ships masters among others; (4) is not accepted; (5) is stated far too widely.

Their Lordships took time for consideration.

Appeal allowed.

Solicitors: Allen & Overy; Solicitor, Customs and Excise.

J. A. G.