Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd & Ors

Permission to make collateral use of documents disclosed in English proceedings requires special circumstances constituting cogent reasons. The court must balance the interests of justice in permitting the proposed use against any injustice to the party who disclosed the documents.

Where the proposed use is in civil proceedings in another Council of Europe state, the court ordinarily presumes that the foreign court will act fairly, absent cogent evidence to the contrary. Use for advice from foreign lawyers is particularly difficult to restrain. The court need only decide whether the documents are likely to be relevant to the foreign proceedings. It need not determine their ultimate weight or whether the foreign lawyers will deploy them.

The claimants brought a passing-off claim concerning the get-up and packaging of inhalers. They sought permission under CPR 31.22(1)(b) to use documents disclosed by the Sandoz defendants in related Belgian proceedings and to obtain Belgian legal advice about possible further proceedings against additional parties.

The Belgian proceedings concerned the validity and alleged infringement of a Benelux colour trade mark, including a claim for unfair advantage. The court considered whether the documents were likely to be relevant, whether their use might cause injustice, the differences between English and Belgian disclosure, confidentiality, and the orderly conduct of the Belgian appeal.

1. The application was granted under CPR 31.22(1)(b). The claimants could use the redacted documents in the two bundles produced on 2 November 2018, except for the documents specifically excluded.
2. The governing question was whether special circumstances supplied cogent reasons for collateral use. That required a balance between the interests of justice in allowing the use and the risk of injustice to the disclosing party.
3. For foreign proceedings, the court presumed that the Belgian court would conduct the proceedings fairly. The agreed confidentiality arrangements, the closed Belgian court file, the involvement of Belgian lawyers, and the agreed procedure for additional briefs materially reduced the risk of unfairness.
4. The relevant threshold was likely relevance. The court was not required to decide whether a document would ultimately be admitted, given weight, or deployed by the Belgian lawyers. Because the documents concerned different issues and uses, individual review was required; sampling would be suitable only for a genuinely homogeneous class of documents.
5. Most documents were likely to be relevant to the Belgian proceedings. Relevance included material bearing on colour coding, distinctiveness, Sandoz’s use of purple, knowledge of the claimants’ rights, unfair advantage, public policy, manufacturing difficulties, and the involvement of other companies. The coordination issue concerning Novartis was not a useful relevance marker.
6. The intended use to obtain advice about possible proceedings against additional parties was especially compelling. The limited nature of Belgian disclosure was relevant but carried limited weight. There was no suggestion that the English claim had been brought to obtain disclosure for foreign use or that the proposed use abused the English court’s process.