Court refuses to order Defendant to disclose names and addresses of suppliers of infringing
goods

Whether disclosure of the Defendant's suppliers should be ordered depends on the balance
of irreparable harm to both parties.

The IPEC found that the Defendant would suffer irreparable harm if an order for disclosure of
its suppliers were made.
What's it about?
The Defendant admitted liability for trade mark infringement and passing off in respect of the sale of
goods bearing the WILKO trade mark. The question was whether the relief granted should include an
order for disclosure in the form granted in Norwich Pharmacal [1974] AC 133. This type of order
requires the respondent to disclose documents or information where the respondent is either involved
or mixed up in a wrongdoing. The Defendant admitted infringement and undertook not to sell WILKO
branded products. The proposed draft consent order put forward by the Claimant to settle
proceedings did not require the Defendant to disclose any information about its suppliers. Nor did the
Particulars of Claim seek an order for disclosure.
The Court held that the Defendant had accepted the Claimant's offer to settle on the terms of the
proposed draft consent order. That was a binding contract between the parties. Nevertheless the
Claimant was not barred from seeking an order for disclosure in the proceedings. In considering
whether disclosure should be ordered, the Court considered the balance of irreparable harm to both
parties. The Claimant argued that without disclosure of the Defendant's suppliers, it would be unable
to take action against other infringers to protect its trade marks. However, the Claimant did not
provide evidence of whether chains of supply other than through the Defendant could cause
irreparable harm.
The Defendant's evidence was that the retail industry is a small and close knit community. It was not
suggested that the Defendant had purchased products knowing them to be infringing. If it were
ordered to make disclosure of its suppliers, this would lead to a lack of trust in the Defendant and
would undermine its reputation with its suppliers who would be concerned about future disclosures
the Defendant may make. The Judge agreed and refused to order disclosure of the Defendant's
suppliers.
Why does it matter and now what?
A Claimant will frequently ask a Defendant to disclose the names and addresses of the Defendant's
suppliers of infringing products, so that the Claimant can trace up the chain of supply and take legal
action against suppliers. This case confirms that a Norwich Pharmacal disclosure order can be made
in proceedings even though it does not form part of the relief sought in the Particulars of Claim.
However, the Claimant will need to show that the balance of irreparable harm lies in the Claimant's
favour. This decision provides useful ammunition for Defendants who wish to resist an order that they
provide disclosure of their suppliers on the grounds that (a) they had no reason to believe the
suppliers' products were infringing; and (b) disclosure of the suppliers' details would lead to a lack of
trust and irreparable harm to the Defendant's reputation.
Wilko Retail Limited v Buyology Limited [2014] EWHC 2221 (IPEC)
For further information on this or any other IP related matter please contact Emma Armitage on +44
(0)20 7788 5521.
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