BASF AG v Me2 Crop Protection Ltd & Anor

Norwich Pharmacal-type disclosure is discretionary and may be deferred where an interlocutory injunction adequately protects the claimant’s market, there is no significant immediate threat of further supply, and the defendant has a properly arguable non-infringement case. The court need not resolve the strength of that case at the interlocutory stage. If the product is ultimately held non-infringing, the basis for the disclosure relief falls away. Refusal at that stage does not prevent a renewed application if circumstances materially change.

BASF AG sought an order requiring Me2 Crop Protection Ltd to disclose the source of metazachlor sold in the United Kingdom as BOUNTY. Me2 had initially alleged that the product originated from BASF or an authorised source and was lawfully available under the European Community exhaustion doctrine, but later accepted that it did not. BASF wished to identify the foreign supplier for possible proceedings abroad.

The jurisdiction to make the order was conceded. The issue was whether disclosure should be ordered immediately, given an existing interlocutory injunction and Me2’s unresolved contention that its product did not infringe BASF’s patent.

1. Application refused. Although the jurisdiction to grant the requested disclosure was undisputed, the question was one of timing and discretion.
2. The interlocutory injunction protected BASF’s market against the alleged infringement, and the evidence disclosed no significant immediate threat that the foreign supplier would supply further product in the United Kingdom.
3. The court could not determine, or assess the strength of, Me2’s non-infringement argument at that stage. Neither side contended that the argument was plainly right or plainly wrong. If the product were ultimately found not to infringe, the basis for Norwich Pharmacal-type relief would fall away.
4. The balance of those circumstances made immediate disclosure inappropriate. The refusal applied to the circumstances then existing and did not prevent BASF from making a further application if there were a material change in circumstances.