Wilko Retail Ltd v Buyology Ltd

Where parties settle pleaded trade mark infringement proceedings, the settlement generally concludes claims falling within the pleaded case. It does not necessarily prevent a claimant seeking separate Norwich Pharmacal disclosure which was outside the pleaded claim and was not included in the settlement terms.

The disclosure jurisdiction is discretionary. The court must weigh the relevant factors, including whether the information can be obtained elsewhere and the competing risks of irreparable harm. Evidence of possible further wrongdoing is insufficient where the claimant cannot show the likely extent or seriousness of the harm, while disclosure-related harm to the respondent may be substantial.

Wilko Retail Ltd brought proceedings against Buyology Ltd for infringement of three registered WILKO trade marks and passing off. Buyology admitted infringement. The parties exchanged correspondence and agreed terms based on a draft consent order, but those terms did not require disclosure of Buyology’s suppliers.

Wilko subsequently sought an order requiring Buyology to disclose the names and addresses of its suppliers under the Norwich Pharmacal jurisdiction. The issues were whether the settlement barred that application and, if not, whether disclosure should be ordered.

1. Settlement. The letters of 6 and 20 November 2013 created a binding agreement. Buyology’s proposals concerning collection of infringing stock and negotiation of compensation were implementation suggestions, not counter-offers.
2. The agreement settled claims within the four corners of the pleaded claim. Since the Particulars of Claim contained no claim for supplier disclosure, the agreement did not prevent Wilko seeking that relief. The application was made within the existing proceedings, so the rule in Henderson v Henderson did not bar it.
3. Jurisdiction and discretion. The court had jurisdiction to grant supplier disclosure. Article 8 of Directive 2004/48/EC had been implemented in Scotland by regulation 4 of the Intellectual Property (Enforcement, etc.) Regulations 2006, but not in England and Wales. The English and Welsh position instead rested on the Norwich Pharmacal jurisdiction. The factors identified in Rugby Football Union v Consolidated Information Services Ltd were relevant, including whether information could be obtained from another source.
4. The decisive assessment was the balance of irreparable harm, analogous to the approach on an interim injunction. Wilko’s evidence showed a possible need to investigate other supply chains but did not establish their existence, likely impact, or the seriousness of any resulting harm. Buyology’s evidence showed that disclosure could damage its reputation and commercial relationships with suppliers, who might face investigation or litigation.
5. Buyology had admitted the infringement, accepted the settlement promptly, and was subject to an injunction preventing recurrence through its supply chain. The balance therefore favoured refusing disclosure. The application for supplier disclosure was dismissed.