Sony Kabushiki Kaisha and Another v. Attorney General

HCMP000987/1983

Prohibition contained in section 17 of the Trade Descriptions Ordinance Cap. 362 against the disclosure of information obtained by "an officer" during the course of his duties.

Factors which have to be weighed and considered by the Court in determining whether or not an Order should be made by the Court authorising and requiring the officer to make such disclosure In the present case partial disclosure was ordered.

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

MISCELLANEOUS PROCEEDINGS

________

_______

BETWEEN

_______

Coram: The Hon. Mr. Justice Mayo.

Date: 20th June, 1983

__________

JUDGMENT

__________

1. The plaintiffs are an internationally known company who manufacture and sell a wide variety of equipment including cassette magnetic tapes.They are constantly having to take legal action against parties who infringe their rights. For this purpose they secure the services of inquiry agents to assist them in investigations.

2. In October 1982 the plaintiffs made available certain information to the Commissioner of Customs & Excise relating to goods which they had reason to.suppose bore a false or forged trade mark. The Commissioner then caused raids to be made at various premises and various parties.were arrested and goods and records were seized. Thereafter a representative of the plaintiffs, a Mr. Siu Pui Lok attended at the customs & Excise Department and inspected. goods which had been seized and verified that they were in fact not authentic goods of the plaintiffs.

3. The plaintiffs inquiry agents informed them that in March 1983 the Customs & Excise Department seized a container from a lighter which contained suspected infringing goods. Again Mr. Siu was required to inspect the goods and he came to a similar conclusion in respect of these goods.

4. The plaintiffs then, with a view to commencing civil proceedings concerning the apparent infringement of their rights approached the Customs & Excise Department and requested information concerning the action which had been taken by them including documentary evidence in their possession. The Commissioner of Customs & Excise has refused to comply with this request. In support of this refusal he has referred to section 17(2) of the Trade Descriptions Ordinance Cap. 362. This section reads as follows:-

commits an offence unless the disclosure was made -

5. Mr. Stock for the Crown argued that as the Court was not specifically empowered under section 17 to make such orders as were referred to in section 17(2)(ii) I had no jurisdiction to make such an order. During the course of the hearing I made a Ruling to the effect that I did have such power and I gave my reasons for this.

6. Mr. Stock then indicated what the material consisted of. The material included statements from witnesses, some of which were cautioned statements.There were also statements from representatives of the plaintiffs, photographs, correspondence from solicitors and correspondence with the agents of the manufacturers of other articles which had been seized. In the container case there were also some other documents and records. Mr. Stock's main concern appeared to relate to the statements which had been taken. Under the Ordinance parties are required to cooperate with the Commissioner. That being the case anyone providing information should be able to place reliance upon the protection afforded by section 17 which would mean that they could have a reasonable measure of confidence that they would not suffer untoward consequences as a result of their candour. If parties do not have this assurance the Commissioner's efforts and endeavours in the future may be frustrated as witnesses or potential witnesses may feel inhibited from giving full and frank disclosure of all information available to them. However notwithstanding this Mr. Stock stated that the Crown would not have any objection to the following details being provided.

The position concerning addresses of parties named was more difficult. The addresses would have been obtained as a result of information given by the party. However in the context of Hong Kong a simple Chinese name without being accompanied by an address may be of little assistance to anyone.

7. Mr. Stock conceded that there were some aspects of this application which were undoubtedly favour able to the plaintiffs. In the first place no trade secrets or secret manufacturing processes were likely to be involved. In the second place it was likely that the parties from whom the cassettes had been seized were tortfeasors and accordingly it was less important that they should be protected. This is the same contention which was advanced by Mr. Rogers to the effect that any civil litigation instituted by the plaintiffs would have the same objectives as the intention of the Trade Descriptions Ordinance.

8. Mr. Stock argued that it was clearly necessary for there to be protection along the lines of that provided in section 17. He referred to the speech of Lord Maughan at page 113 in Rowell v. Partt ⁽¹⁾. This case concerned information being kept confidential relating to returns made by farmers to the Milk Marketing Board. Lord Maughan said:

"The reason for such a provision in a marketing scheme is obvious - namely, that farmers and other producers as a class are so reluctant to disclose the details of their business that such a scheme would have poor prospects of being brought into successful operation unless they were given an assurance that the information contained in the estimates, returns, accounts and so forth furnished by them would not be divulged to rivals or competitors."

9. All of this is in conformity with the views which were expressed by Mr. Douglas Arthur Jordan, the Commissioner of Customs & Excise in his affidavit sworn on the 30th May 1983. He was particularly concerned to protect information provided to him during the course of operations conducted pursuant to the Ordinance. The case law on this aspect of public interest is not entirely satisfactory. It is difficult to reconcile the case law. The speeches of law lords in the House of Lords case Norwich Pharmacal Co. and Others v. Customs and Excise Commissioners ⁽²⁾ all seem to me to be unsympathetic to the view that witnesses are unlikely to reveal all information available to them unless they are protected by secrecy. On the other hand there is a body of law to the opposite effect Lord Diplock had this to say at page 637 in Lonrho Ltd. v. Shell Petroleum ⁽³⁾:

"Many judges have at some time in their lives had experience of conducting official inquiries or investigations in   private. Even without the Minister's certificate I should not have needed evidence to satisfy me that the likelihood of success of an inquiry of this kind in discovering the truth as to what happened is greatly facilitated if those persons who know what happened come forward to volunteer information rather than waiting to be identified by the inquiry itself as likely to possess relevant information and having it extracted from them by question and answer. Nor would I need any evidence to satisfy me that without an assurance of complete confidentiality information is less likely to be volunteered particularly where the inquiry is directed to matters that are the subject matter of a pending civil action to which the possessor of the information is a defendant."

In Reg. v. Lewes Justices, Ex parte Secretary of State for Home Department ⁽⁴⁾ Lord Reid said at page 401:

"There are very unusual features about this case. The board require the fullest information they can get in order to identify and exclude persons of dubious character and reputation from the privilege of obtaining a licence to conduct a gaming establishment. There is no obligation on anyone to give any information to the board No doubt many law-abiding citizens would tell what they know even if there was some risk of their identity becoming known, although many perfectly honourable people do not want to be thought to be mixed up in such affairs. But it is obvious that the best source of information about dubious characters must often be persons of dubious character themselves. It has long been recognised that the identity of police informers must in the public interest be kept secret and the same considera-tions must apply to those who volunteer information to the board. Indeed, it is in evidence that many refuse to speak unless assured of absolute secrecy."

10. It would appear that what is required in all cases is that the Court must weigh and balance on the one hand the considerations which suggest that it is in the public interest that the documents in question should be disclosed and on the other those which suggest that it is in the public interest that they should not be disclosed and to balance one against the other. I take this from the speech of Lord Cross of Chelsea on page 433 of his speech in Alfred Crompton Amusement Machines Ltd. v. Customs and Excise Commissioners⁽⁵⁾.

11. Mr. Rogers who was representing the plaintiffs conceded that the Commissioner should only divulge information to his clients pursuant to a Court order. The question which it is necessary for me to determine is the nature and extent of the disclosure required Mr. Rogers submitted that his clients had a legitimate interest in the information which was being sought. In the present two situations they could in all probability have obtained the information had they applied to the Court for injunctions and Anton Piller orders. It would appear to be likely that the persons or firms who had been in possession of infringing tapes had been in breach of the law and the plaintiffs should not be precluded from instituting legal proceedings against them. If the information was withheld it may prove to be impracticable to commence such proceedings.  This would lead to an unsatisfactory situation as the intentions of the plaintiffs were entirely consistent with the overall objectives of the Trade Descriptions ordinance.

12. If I understood him correctly Mr. Rogers agreed that in determining what information should be made available I should weigh and consider the factors which were dealt with in Conway v. Rimmer and Another ⁽⁶⁾. This was an important case and the relevant factors were referred to by the law lords in their speeches. The main factor which has to be borne in mind is whether or not it is in the public interest that the information should be made available. Clearly such documents as Cabinet minutes could never in the public interest justifiably be made available for the purpose of litigation. At the other end of the spectrum the documents might consist of routine day to day records where there was little likelihood of there being any prejudice to the public interest if the documents were divulged. Mr. Rogers suggested that if the type of test envisaged in Conway v. Rimmer and Another is adopted to the material being held by the Commissioner in the present cases it was likely that the majority of the material could be provided to the plaintiffs without prejudice to the public interest.

13. Mr. Rogers referred to all of the cases which had been cited by Mr. Stock and argued that the circumstances of each of the cases was different. Where it had been held that disclosure should be withheld the situation had been different to the present case. In addition to this all of the available evidence would indicate that these are bad cases and if in effect the plaintiffs find themselves unable to take civil action against the offenders the good name of the colony may be called in question. The plaintiffs have established a legitimate interest in the information and the purposes for which they seek to obtain it are in conformity with the objectives of the relevant legislation. There are no secret processes involved and many of the documents can accurately be described as commercial documents. All of these matters have to be weighed with the arguments which were advanced by Mr. Stock.

14. I am satisfied that the test propounded in all of the cases cited and in particular Conway v. Rimmer and Another is the correct test. Equally I am satisfied that in the present case the plaintiffs are able to make out a good case for disclosure of much of the material they are seeking. In this respect I consider that the Crown has adopted a very sensible attitude and I would not find myself at much, if any, variance with the indications of concessions which have been made by Mr. Stock.

15. Statements which have been made by any party to the Commissioner, whether or not a caution has been administered, should be protected. On the other hand accounts and records which could have been seized if the plaintiffs had obtained an Anton Piller order should be made available to the plaintiffs. They should also be given particulars of the seizure and persons arrested as indicated by Mr. Stock. Names and addresses of persons arrested or from whom goods have been seized should also be given. If the information is confined to this I do not consider that the public interest will have been prejudiced.

16. I accordingly make an order under section 17 authorising and requiring the Commissioner to make such disclosure.

17. At the conclusion of the hearing Mr. Stock requested me to make it clear that the order should not apply to any material seized which related to other manufacturers. I confirm that this is the case. I also order that there be a stay of my order pending the time in which an appeal can be lodged and that there be liberty to apply. There will be no order for costs.

Representation:

Mr. A. Rogers (Baker & McKenzie) for Plaintiffs

Mr. F. Stock, S.A.C.P. & Mr. S. Franklin, C.C. (Legal Dept.) for Defendant

(1)    (1938) A.C. 101.

(2)    (1974) A.C. 133.

(3)    (1980) 1 W.L.R. 627.

(4)    (1973) A. C. 388.

(5)    (1974) A. C. 405.

(6)    (1968) A. C. 910.