[1992] 4 All ER 47

Practice - Parties - Adding defendant - Foreign defendant - Action in tort - Plaintiffs applying to join foreign defendant for purpose of obtaining discovery - Prospective defendant alleged to be joint tortfeasor - Test to be applied in permitting joinder of defendant in cases within scope of European jurisdiction convention - Whether plaintiffs required to show good arguable case or merely that claim would not be struck out - Whether joinder to obtain discovery an abuse of process - Civil Jurisdiction and Judgments Act 1982,Sch 1, art 5(3) - RSC Ord 11, r 1, Ord 18, r 19.

The plaintiffs, a Swedish company which was the registered proprietor of a United Kingdom patent relating to disposable nappies and an English company which was the exclusive licensee under the patent, brought an action for infringement against two companies belonging to a well-known multinational group which also marketed disposable nappies in the United Kingdom. The first defendant was the English subsidiary of the group and was involved in the marketing of the alleged infringing product, while the second defendant was the United States parent company of the group and, as such, controlled the worldwide manufacture and marketing of the product. In the course of the proceedings the plaintiffs sought discovery of certain documents relating to the group's manufacture of disposable nappies which were in the possession of the group's German company, which manufactured the nappies in Germany and supplied them to the first defendant for marketing in England. The plaintiffs applied to have the German company added as a defendant in the action both to obtain discovery of the documents and on the basis of a common design between the defendants to market their infringing product in the United Kingdom which the German company had furthered by its acts. The judge allowed the joinder of the German company, holding that since it was domiciled in Germany, which was a party to the Convention on Jurisdiction and the Enforcement of Civil and Commercial Judgments 1968 (which had the force of law in the United Kingdom by virtue of s 2(1) of the Civil Jurisdiction and Judgments Act 1982 and was set out in Sch 1 thereto), it could be served out of the jurisdiction without leave, with the result that the plaintiffs were entitled as of right to join the German company in the action subject only to the possibility that their claim might be struck out under RSC Ord 18, r 19, and that the criterion in Ord 11, r 1 of showing 'a good arguable case' did not apply to the application for joinder. The defendants appealed, contending (i) that although patent infringement fell within the subject matter of art 5(3)^a of the 1968 convention, which enabled a party domiciled in a convention country to be sued in the courts of another convention country 'in matters relating to tort, delict or quasi-delict' where the 'harmful event' (ie the marketing of the infringing product) occurred in that country, it would be an abuse of process to allow the plaintiffs to rely on art 5(3) when their only purpose in joining the German company in the action was to obtain discovery and not any substantive remedy and (ii) that it was an abuse of process for the German47 company to be joined in the action unless the pleadings or evidence disclosed that the German company probably was a joint tortfeasor.

Held - Where a plaintiff brought an action in England for a tort committed in the United Kingdom and, in reliance on art 5(3) of the 1968 convention, he sought to join an alleged joint tortfeasor who was domiciled in another convention country as an additional defendant, he had only to show a good arguable case by satisfying the court that there was a serious question which called for a trial for its proper determination, but it was not sufficient to show simply that the claim would not be struck out. However, the fact that the plaintiff's only purpose in joining the proposed additional defendant was to obtain discovery of relevant documents which were not in the possession of the original defendants did not make it an abuse of process or improper for the plaintiff to rely on art 5(3) of the 1968 convention, since the process of the English court was well capable of preventing oppressive demands against a party who had been joined in such circumstances. On the facts, the plaintiffs had shown a good arguable case that the German company and the first defendant had a common design, with or without the second defendant, to market a product in the United Kingdom which infringed the plaintiffs' patent and, if they succeeded in proving the common design at trial, there would be little difficulty in proving that the German company furthered the common design by manufacturing and supplying the infringing product. Accordingly, there was no abuse of process in joining the German company in the action with the particular aim of obtaining discovery of documents relevant to the claims against the first and second defendants as well as the claim legitimately pleaded against the German company. The defendants' appeal would therefore be dismissed (see p 54 h j, p 57 c to f j to p 58 a f to h and p 60 g j, post).
   Kalfelis v Bankhaus Schršder MŸnchmeyer Hengst & Co Case 189/87 [1988] ECR 5565 considered.
   Per Dillon LJ. The test for a good arguable case is whether there is a genuine and real dispute to be tried (see p 56 d e and p 57 e, post); Unilever plc v Gillette (UK) Ltd [1989] RPC 583 and Tesam Distribution Ltd v Schuh Mode Team GmbH [1990] IL Pr 149 applied.
   Per Woolf LJ. Where the court has to determine whether there is a good arguable case and the affidavit evidence conflicts, the court will have to draw a conclusion whether one view is preferable to the other (see p 59 f g, post); dictum of Staughton LJ in Attock Cement Co Ltd v Romanian Bank for Foreign Trade [1989] 1 All ER 1189 at 1197 explained.

Notes
For jurisdiction in respect of foreign torts, see 8 Halsbury's Laws (4th edn) para 616, and for cases on the subject, see 11 Digest (Reissue) 493-494, 936-942.
   For the general jurisdiction of courts in cases under the Brussels Convention, see Supplement to 8 Halsbury's Laws (4th edn) para 768B.
   For the Civil Jurisdiction and Judgments Act 1982, Sch 1, art 5, see 11 Halsbury's Statutes (4th edn) (1991 reissue) 1136.
   As from 1 December 199l Sch 1 to the 1982 Act was substituted by the Civil Jurisdiction and Judgments Act 1982 (Amendment) Order 1990, SI 1990/2591, art 12(1), Sch 1. The text of art 5 is modified in respect of matters relating to individual contracts of employment.

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Interlocutory appeal
The defendants, Procter & Gamble Ltd (an English company belonging to the Procter & Gamble multinational group), Procter & Gamble Co (the American parent company of the group), and Procter & Gamble GmbH (a German subsidiary), appealed from the decision of Hoffmann J made on 22 March 1991 whereby he granted the plaintiffs, Molnlycke AB, a Swedish company, and Peaudouce (UK) Ltd (its English subsidiary), leave to amend the writ to join Procter & Gamble GmbH as the third defendant in their action against the defendants for infringement of a United Kingdom patent relating to a device for fastening disposable nappies. The grounds of appeal were, inter alia, that the judge had applied the wrong criterion in granting the plaintiffs' application for joinder, namely the test for striking out under RSC Ord 18, r 19, instead of the test of a good arguable case under RSC Ord 11, r 1 The facts are set out in the judgment of Dillon LJ.

27 June 1991. The following judgments were delivered.

DILLON LJ. This is an appeal by the defendants in the action against an order of Hoffmann J made on 22 March 1991. By that order the judge directed that the plaintiffs have leave to amend the writ to join Procter & Gamble GmbH (which I shall call GmbH) as third defendant in the action and to make consequential reamendments of the statement of claim.
   The action is a patent action for infringement of a United Kingdom patent relating to disposable nappies. The first plaintiff, a Swedish company, is the registered proprietor of the patent. The second plaintiff, an English company, is exclusive licensee under the patent. The two defendants and GmbH, the added third defendant, are companies in a well-known multinational group. The first defendant, Procter & Gamble Ltd, is the English company which is a member of the group. The second defendant, Procter & Gamble Co, is the American parent company of the group. GmbH is the German company in the group.
   The infringement relied on in the statement of claim is the marketing in the49 United Kingdom, by the first defendant, of nappies manufactured by GmbH in Germany; they were sold under the name Pampers. The first and second defendants and GmbH were at all material times well aware of the patent. Their position is that they say that their products do not infringe.
   The judge, in allowing the joinder of GmbH, applied the test for striking out under RSC Ord 18, r 19. He said:

In effect he is saying that as the joinder of the third defendant did not require leave under Ord 11, the striking-out criterion was the criterion to apply. It is of course well known that a claim will only be struck out in a plain and obvious case. It is a difficult criterion for defendants.
   This is however a Brussels Convention case. Under the Civil Jurisdiction and Judgments Act 1982, the Brussels Convention, under s 2(1), has the force of law in the United Kingdom and judicial notice is to be taken of it. Under s 3(1):

There are certain further matters in s 3 as to taking judicial notice of decisions of the Court of Justice of the European Communities and as to the travaux prŽparatoires that were antecedent to the original convention, the 1971 protocol and the accession convention.
   Section 42(1) provides:

Under s 42(6) it is provided:

It is not in doubt that the seat and therefore the domicile of GmbH is in Germany and nowhere else.
   I come then to the convention itself. Article 2 provides:

Article 3 provides:

These include, as the only possible alternative candidates to pursuing GmbH in Germany, arts 5(3) and 6. As to art 6 it is provided:

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In relation to art 6, we have the benefit of the decision of the European Court in Kalfelis v Bankhaus Schršder MŸnchmeyer Hengst & Co Case 189/87 [1988] ECR 5565 and also of the decision of this court in The Rewia [1991] 2 Lloyd's Rep 325. I should refer briefly to the views expressed in relation to art 6 in the Kalfelis case in answer to the first question raised in that case.
   I shall read paras 8, 10 and 11 of the judgment ([1988] ECR 5565 at 5583):

   It follows from the Kalfelis case and The Rewia that, where art 6 is concerned, the test to be applied for joinder must be, what I would call briefly, the Ord 11 test-the test that would have been applied had permission for service had to be obtained under Ord 11.
   In the present case there are certain facts which are put in evidence on behalf of the plaintiffs in the eleventh affidavit of their solicitor, Mr Wood. He says in the opening sentences of para 22 of the affidavit:

   The history of the matter was that a motion was issued claiming, as the primary relief, specific discovery of certain classes of documents as against the second defendant, which had been added at an earlier stage under Ord 11. The motion also sought in the alternative that GmbH should be added as a party to the action with consequential relief. In the event it appeared that the second defendant did not have the relevant documents but GmbH did or probably did. Accordingly, the plaintiffs proceeded with their alternative claim rather than with their claim for further discovery against the second defendants.
   We have not heard arguments on this appeal from counsel for the plaintiffs. Subject to that however I would take the view that if the plaintiffs rested only on art 6, it would be improper to join GmbH merely to obtain discovery especially as there seems to be no doubt that the requisite discovery could be obtained from GmbH in Germany by an application in Germany under the Convention on the Taking of Evidence Abroad on Civil or Commercial Matters (The Hague, 18 March 1970; TS 20 (1977); Cmnd 6727), to which Germany is also a party.
   However, art 5(3) is an independent ground for special jurisdiction under the Brussels Convention. It provides:

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   Article 5(3) was also considered in the Kalfelis case on the second question which the European Court there had to consider. I shall read paras 16 to 19 of the decision in the Kalfelis case [1988] ECR 5565 at 5585:

   It is not in doubt that patent infringement falls within the rubric in art 5(3), matters relating to tort, delict or quasi-delict. It is also not in doubt that, for the purposes of art 5(3), the 'harmful event' was the marketing of the allegedly infringing nappies in England; so the 'harmful event' occurred in England.
   Infringement is not within the exclusive jurisdiction provisions of art 16, para (4) of which refers to proceedings concerned with the registration or validity of patents and other similar rights. In these proceedings registration and validity are not in issue.
   But, from the nature of a United Kingdom patent, proceedings for infringement of a United Kingdom patent can only be brought in a United Kingdom court, in the present case the English court, and could only be founded on infringement in England. The German court could entertain an action for infringement of the comparable German patent, but could not entertain a claim for infringement of an English patent. Conversely the English court could not entertain a claim for the infringement of a German patent. English patent law as embodied in the Patents Act 1977 is founded on international convention, not just European Community convention, but, subject to certain special provisions of the Act, its application by the English court is a matter of English law.
   The relevant law has recently been further developed. For a very long time there has been a dichotomy applied between 'procuring' and 'facilitating' an infringement of a patent: see Townsend v Haworth (1875) 12 Ch D 831n, Dunlop Pneumatic Tyre Co Ltd v David Moseley & Sons Ltd [1904] 1 Ch 164, 612 and Belegging -en Exploitatiematschaappij Lavender BV v Witten Industrial Diamonds Ltd52[1979] FSR 59 at 65, where Buckley LJ said: 'Facilitating the doing of an act is obviously different from procuring the doing of the act.' A person who merely facilitated but did not procure the infringement was not a joint tortfeasor with the infringer and so was not liable if, for instance, he sold articles which could be used for infringing or non-infringing purposes even though he knew that they would probably be used and were intended to be used for the infringing purposes.
   More recently however a new concept has been developed. Parties will be regarded as joint tortfeasors if on the facts they had a common design to market in the United Kingdom articles which in truth infringe a United Kingdom patent. The first appearance of this doctrine seems to have been in Morton-Norwich Products Inc v Intercen Ltd [1978] RPC 501; a decision of Graham J. There the common design was shared by a Dutch company, which wanted to market in the United Kingdom infringing goods for which it had no licence from the patentee, and the Dutch company's English distributor. This common design, which the Dutch company had furthered by its acts, rendered the Dutch company liable as a tortfeasor in the English courts, although the Dutch company's own acts in furtherance of the common design had all taken place abroad and the plaintiff patentees had chosen not to sue the English distributor. That concept of common design was adopted and elaborated by this court in Unilever plc v Gillette (UK) Ltd [1989] RPC 583. That decision is of course binding on us as to the concept of joint infringement as a result of common design. The case was concerned with the group arrangements of a multinational group of companies. But it did not involve the Brussels Convention as only the United Kingdom subsidiary and the United States parent were brought before the English court.
   The factors on each side are summed up by Mustill LJ (at 609-610). Shortly before that summary he said (at 609):

   In the present case the plaintiffs rely as the foundation of the common design on the allegations in para 5 of the reamended statement of claim elaborated by fairly lengthy voluntary particulars. In para 5 they assert:

   In the voluntary particulars, which I do not intend to read here in full, reliance is placed on a number of matters including the following under heading A:

Then under heading B:

   The question then is: to what criterion must the plaintiffs establish that case on an application by them to join GmbH in the action, or on an application by GmbH or the defendants to have the joinder of GmbH or service on GmbH set aside? I have no doubt that in a Brussels Convention case, as opposed to a case where all the alleged joined tortfeasors are domiciled in this country, the plaintiffs must show that they have 'a good arguable case'.
   For the purposes of the present case, I agree with the interpretation of that phrase given by Nicholls LJ in giving the leading judgment in this court in Tesam Distribution Ltd v Schuh Mode Team GmbH [1990] IL Pr 149. The plaintiffs' claim there was that the defendants (a supplier of shoes) and a bank, both domiciled in Germany and not in England or Wales, had made a contract with the plaintiffs (an English domiciled importer and distributor of shoes) to supply the plaintiffs54 with shoes in England and had broken that contract by failing to deliver the shoes in England. The plaintiffs therefore relied, for material purposes, on art 5(1) of the Brussels Convention, which provides:

The defendant bank disputed the existence of the alleged contract. Nicholls LJ said ([1990] IL Pr 149 at 154):

He then turned to the convention and he referred among other authorities to the Kalfelis case. He set out (at 157) submissions for the bank that-

   Nicholls LJ rejected that formulation. After referring to the decision of the European Court in Effer SpA v Kantner Case 38/81 [1982] ECR 825, he said (at 158):

He then continued in a section of his judgment headed 'A serious question to be tried' (at 158):

   Nicholls LJ then examined the evidence in the case before him, and reached his conclusion where he said (at 160):

Stocker LJ delivered a concurring judgment. He said (at 166):

I have no doubt that Stocker LJ was using the phrase 'a good arguable case' in the sense used by Nicholls LJ. O'Connor LJ agreed.
   That is in line with the tests stated by Mustill LJ in Unilever plc v Gillette (UK) Ltd [1989] RPC 583 at 602 when he said:

He picked that up later (at 610):

   Mr Thorley QC, for the defendants, has urged on us what he submits is a more stringent criterion for the purposes of Ord 11 laid down in the judgment of Staughton LJ in Attock Cement Co Ltd v Romanian Bank for Foreign Trade [1989] 1 56All ER 1189, [1989] 1 WLR 1147. There Staughton LJ, with whose judgment the other members of the court agreed, said ([1989] 1 All ER 1189 at 1197, [1989] 1 WLR 1147 at 1155):

   Staughton LJ's test would certainly, I apprehend, be the prudent course if, as in many Ord 11 cases, the issue under consideration on the Ord 11 application is one which will never be tried at the trial of the action if leave under Ord 11 is granted. But I have difficulty in treating it as a ruling of general application in all cases under Ord 11 or the Brussels Convention, and as displacing authoritatively the approach adopted by Nicholls LJ and the members of the court in Tesam Distribution Ltd v Schuh Mode Team GmbH [1990] IL Pr 149, and Mustill LJ and the other members of the court in Unilever plc v Gillette (UK) Ltd [1989] RPC 583. Indeed if an action for patent infringement is brought alleging infringement of claims in a highly complicated chemical or mathematical patent, or a patent in the field of genetic engineering for example, it would be strange if the court really had to form the view on the application for joinder of parties, if service was to stand, that the plaintiff is probably right that the patent has been infringed as alleged.
   For my part for the purposes of this case I would prefer and apply the test set out by Nicholls LJ. When the action comes on for trial the plaintiffs will, in the absence of admissions, have to prove at the trial their pleaded allegation that GmbH and the first defendant had a common design, with or without the second defendant, to market the infringing products in England. If the common design is proved there will no doubt not be much difficulty in proving that GmbH furthered the common design by manufacturing and supplying the nappies and doing such other of the acts relied on in the pleading as are proved at the trial. In my judgment, on the evidence before us, the plaintiffs have shown a good arguable case, by Nicholls LJ's criterion, that GmbH had a common design with the first defendant as pleaded.
   Hoffmann J in his judgment in the court below said:

With the qualification that the test for joinder is a good arguable case rather than the striking-out test which Hoffmann J applied, I would agree with that paragraph.
   Does the fact that the plaintiffs' only purpose in joining GmbH is to obtain discovery of relevant documents which are not in the possession of the first or second defendants, as candidly stated by Mr Wood in the passage I have read from his affidavit, make it an abuse of process or improper for the plaintiffs to rely on art 5(3) as opposed to art 6 of the Brussels Convention? Having heard and considered the arguments of Mr Thorley, I am firmly of the view that it does not. 57The English court has power to control the process of discovery in English proceedings. In the present case GmbH has merely been ordered to disclose the documents covered by the request for additional discovery originally aimed at the second defendant; there has been no general order for discovery. The process of the English court is well capable of preventing oppressive demands against a party who has been joined in such circumstance as those of the present case. I should however also proceed to read the next two sentences in Mr Wood's affidavit after the passage which I have already cited. He says:

   Article 5(3) is an independent qualification of art 2 of the convention. It applies where there is a remedy in tort, delict or quasi-delict available against, on the facts of this case, GmbH in this country. It is long-established that a plaintiff who has been injured by a number of joint tortfeasors can choose which he will sue. He does not have to sue all of them. But the defendants have no right whatsoever to dictate which the plaintiff shall sue or to make the choice for him. If at the trial the plaintiffs succeed in establishing infringement and common design they will be entitled to judgment for damages for infringement against GmbH as well as against the first and possibly second defendants. They will be able to choose which to enforce the judgment against. It is unnecessary to consider some of the more sophisticated alternative forms of relief which might or might not be available to the plaintiffs against GmbH separately from other relief available against the first defendant.
   I see no abuse in these circumstances, where there is a good arguable case for a cause of action by English law, in joining GmbH in the action with the particular aim of obtaining discovery of documents relevant to the claims against the first and second defendants as well as to the claim now legitimately pleaded against GmbH. The existence of rights under the Hague Convention does not deprive the plaintiffs of their right to sue GmbH as a joint tortfeasor. It is not enough for Mr Thorley to say that the plaintiffs do not need to sue GmbH to get the discovery they desire.
   I have considered whether we should direct a reference to the European Court for a ruling on the interpretation of the Brussels Convention under arts 1 and 2(2) of the 1971 Protocol in Sch 2 to the 1982 Act. But having formed a firm view on all the issues, I do not find that necessary.
   I would accordingly dismiss this appeal.

WOOLF LJ. I agree in general that the appeal should be dismissed for the reasons given by Dillon LJ. I should however say something about the vexed question of what constitutes an arguable case to which reference has been made by Dillon LJ in the context of the Brussels Convention and which is also a matter of considerable importance in relation to RSC Ord 11.
   In Tesam Distribution Ltd v Schuh Mode Team GmbH [1990] IL Pr 149, to which Dillon LJ has referred, in addition to the passage which he cited from the judgment of Stocker LJ, Stocker LJ said (at 165):

   As I understand the judgments of both Stocker and Nicholls LJJ in that case, they were presupposing a situation when the issue which was determinative of jurisdiction would also, if the case proceeded to trial, be subject to a final determination at the trial.
   In Attock Cement Co Ltd v Romanian Bank for Foreign Trade [1989] 1 All ER 1189, [1989] 1 WLR 1147, to which Dillon LJ has already referred, and to which I was a party, the situation before the court was somewhat different and the judgment of Staughton LJ was given in the light of an argument which was fully presented to the court having regard to the issue which was there being considered. The vital issue going to jurisdiction in the Attock Cement case was a conflict of oral evidence as to the existence of an oral agreement which, if one party was right, would confer a jurisdiction the existence of which the other party denied. If the court in the Attock Cement case had come to the conclusion that there was jurisdiction, then that issue would not in all probability have been redetermined at the trial.
   The fact that there was a conflict before the court-where one witness said in his evidence that there was an oral agreement and the other witness said there was no oral agreement-meant that the court, in Staughton LJ's language, were in a situation where the 'nettle must be grasped' (see [1989] 1 All ER 1189 at 1197, [1989] 1 WLR 1147 at 1155). In a situation where what has to be established is jurisdiction in those circumstances, in order to decide whether or not there is a good arguable case, the court has to come to a conclusion (without trying the matter in the same way as it would do if the situation was one where there was to be a full trial) on the affidavit evidence concluding that one view was preferable to another. It is in that context, as I understand it, that the passage in the judgment of Staughton LJ has to be understood. Staughton LJ began by saying ([1989] 1 All ER 1189 at 1194, [1989] 1 WLR 1147 at 1152):

He then goes on to deal with the argument which was advanced by counsel who was seeking to establish jurisdiction, which Staughton LJ summarises in these terms ([1989] 1 All ER 1189 at 1194, [1989] 1 WLR 1147 at 1153):

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   The argument which was being put forward there was that in effect the court was required to disregard the evidence contrary to the owner's evidence when evaluating the evidence on which the owners were seeking to rely.
   Staughton LJ then cited extensively from the House of Lords decision in Vitkovice Horni a Hutni Tezirstro v Korner and said ([1989] 1 All ER 1189 at 1196, [1989] 1 WLR 1147 at 1155):

   The surprising reference there to 'all reasonable doubt' is understandable because of the reference to 'beyond all reasonable doubt' which appears in certain of the speeches in the House of Lords in the Vitkovice case. It is after those passages from his judgment which I have cited that Staughton LJ went on to say ([1989] All ER 1189 at 1197, [1989] 1 WLR 1147 at 1155):

I agreed with the judgment of Staughton LJ in the Attock Cement case. In the context of the comments which I have just made, I find no reason to alter my agreement with that passage of the judgment. Where there is a conflict of the sort that was before the court in the Attock situation, the court, in my judgment, has no alternative but to tackle the matter on the lines indicated by Staughton LJ.
   In practice however I venture to think that whether you apply the test indicated by Nicholls LJ, or the test which was slightly differently expressed in a passage I have cited from Stocker LJ, or the test indicated by Staughton LJ, in the majority of, if not virtually all, cases the court will come to exactly the same conclusion. In this case I would have come to the same conclusion whichever test was applied.
   The only other matter to which I should refer is art 6(1) of the Brussels Convention. The relationship of that article with the Convention on the Taking of Evidence Abroad on Civil or Commercial Matters (The Hague, 18 March 1970; TS 20 (1977); Cmnd 6727) is a matter on which, in the absence of full argument-indeed we have not heard any argument from the respondent on this appeal-I would like to reserve my position.

LEGGATT LJ. I express no opinion about the standard of proof required when for the purposes only of discovery a corporation is sought to be joined as a joint tortfeasor which has its domicile within the jurisdiction. With that reservation I agree that, for the reasons given by Dillon LJ, this appeal should be dismissed.

end of selection