Federal Court Decisions

Date: 19971127

Docket: T-1613-97

BETWEEN:

     GLAXO WELLCOME PLC

     Applicant

     - AND -

     THE MINISTER OF NATIONAL REVENUE

     Respondent

     REASONS FOR ORDER

McKEOWN, J.

[1]      The applicant seeks to examine the respondent Minister to obtain the names of importers of certain shipments of the drug ranitidine hydrochloride into Canada in 1995, 1996 and 1997. The applicant is the owner of two patents for the drug and seeks to identify the alleged infringers in order to protect its patents.

[2]      The issue is whether this Court should grant the equitable remedy of a bill of discovery.

[3]      This Court has never granted the equitable remedy of a bill of discovery; in jurisdictions where it has been granted, it is recognized as an exceptional remedy.

[4]      In my view, the basic threshold for the granting of an equitable bill of discovery is the inability of the applicant to ascertain the desired information through other Court procedures or by its own means. The applicant has judicial review available to it and it was heard concurrently with this application.

[5]      Furthermore, the applicant has not made use of all the means available to it. It made a request under the Access to Information Act which was refused. This could have been pursued to this Court under section 41 of the Access to Information Act. All of the arguments made here could have been made under this procedure.

[6]      There are other procedural alternatives. The applicant has discovered one possible infringer, Torpharm, without the aid of the Minister. The applicant could have hired private investigators as it has in the past, albeit with unsatisfactory results. It has the right under its compulsory licence to require a second audit of its licensees. See paragraph 7 of compulsory licence agreement. Again this step has been taken by the applicant in the past. There is an admission by one of the applicant's licensees that, in the third quarter of 1996, its sales were understated by almost 3,000 kilograms and yet the applicant did not pursue a further audit. Another potential avenue for the applicant to pursue lies under the Patented Medicines (Notice of Compliance) Regulations for the names of these companies which received a Notice of Compliance (NOC) for the drug. I attach no weight to this avenue.

[7]      The applicant based much of his submission on Norwich Pharmacal Co. v. Commissioners of Customs and Excise, [1973] 2 All E.R. 943 (H.L.) but, in my view, the case is distinguishable because the Minister was not granted the discretion to make public the information received by him and, accordingly, it was in the Court's discretion. Lord Morris of Borth-y-Gest made this clear when he stated in Norwich Pharmacal, supra, at 954:

... In this respect the provisions of s 3 of the Finance Act 1967 are of importance. The commissioners are given power to disclose some information to some others if the Secretary of State is satisfied that it would be in the national interest, but no power is given to sanction the disclosure of 'the price of the goods or the name of the importer of the goods'. This shows that the names of importers come within an area indicated by the legislature as being one of special sensitivity. (See also s 127 of the Finance Act 1972).

The next step is to consider whether the court should make the desired order and whether it would be in the public interest or against the public interest to make the order. If there was some statutory prohibition (such as that contained in s 17(2) of the Agricultural Marketing Act 1931: see Rowell v Pratt) then that, of course, would be conclusive. In the absence of any such prohibition it seems to me that in the special circumstances of this case, and with some support from authority, the interests of justice warrant the court in making the desired order unless there are some features of the public interest which are of such weight as to outbalance the public interest of advancing the cause of justice. I can well appreciate the importance of the considerations which were advanced and which undoubtedly carry some weight, but having considered them in relation to the very limited order now sought I am firmly of the view that the balance of the public interest warrants the making of the order as now requested ...

[footnote omitted]

[8]      In my view, Lord Cross of Chelsea, in Alfred Crompton Amusement Machines Ltd. v. Customs and Excise Commissioners (No. 2), [1974] A.C. 405 (H.L.) - a case decided two weeks after Norwich Pharmacal, supra, - set out the appropriate principles to be applied by the Minister in the case before me when he confirmed the submissions made at 428:

... The grounds upon which privilege is claimed for the 2(c) documents are, briefly stated, as follows: (1) that the commissioners are not entitled to disclose documents and information obtained by them pursuant to the powers conferred on them by section 24(6) of the Act, (2) even if the commissioners are entitled to disclose such documents and information it would be contrary to the public interest that they should do so because such material is confidential in character, that it would cause general resentment if it were known that information of this sort obtained by the exercise of compulsory powers was liable to be disclosed to other persons including trade competitors of the informant, that traders hereafter asked for information of this sort would be tempted to withhold it and that the good relations which usually exist between the commissioners and their officers, on the one hand, and the traders with whom they deal, on the other, would be impaired.

[9]      He then goes on at page 433 to review Norwich Pharmacal, supra, and points out that the "objection to their disclosure is not based on their character but on the manner in which they were obtained."

[10]      The Minister is performing his statutory duty in collecting this information and, unlike in Great Britain, the Minister is the person the Canadian Parliament has designated to decide if the information should be released. His decision is subject to judicial review. By granting the bill of discovery, I would be ignoring Parliament's view in this area. I also note in passing that the applicant's representative admitted that the applicant expects the government to maintain confidentiality over information supplied to it pursuant to legislation. The question of whether the Minister has properly exercised his discretion is the question for judicial review.

[11]      The three Canadian cases, Re Johnston and Johnston's Restaurants Ltd. (1980), 93 A.P.R. 333 (P.E.I.S.C.) and 341 (C.A.), Leahy v. Dr. A.B. (1992), 113 N.S.R. (2d) 417 (S.C.T.D.) and Re Comeau (1986), 77 N.S.R. (2d) 57 (S.C.T.D.), where the bill of discovery was granted, came from the provinces of Prince Edward Island and Nova Scotia where pre-action discovery is granted by the rules. The Federal Court Rules, like those of Ontario and British Columbia and the other Canadian provinces, do not have provisions for pre-action discovery. Their test is essentially the same as the English test and I have reviewed why, in equity, I should not grant the bill.

[12]      In light of my dismissal of the request for the bill of discovery on substantive grounds, I need not make any findings with respect to the question as to whether the common law Crown prerogative which did not permit the Crown to be examined on discovery still exists.

[13]      The application is dismissed.

                             ___________________________________

                             JUDGE

OTTAWA, ONTARIO

November 27, 1997