Mr Justice Newey :
- This case concerns edible infused oils (basil-flavoured sunflower oil, for example). The claimant, Kerry Ingredients (UK) Limited ("Kerry"), alleges that the defendants have misused confidential information relating to the manufacture of such oils and seeks injunctive and other relief. The defendants both deny misuse of confidential information and take issue with the relief sought by Kerry.
The parties
- Kerry is a wholly-owned subsidiary of the Irish company, Kerry Group plc. The group headed by Kerry Group plc carries on a very large food business. Kerry is part of the group's ingredients division.
- The defendants all belong to the Bakkavor group of companies. The Bakkavor group is a leading provider of fresh prepared foods. It has 32 sites in the United Kingdom and another 18 overseas and employs, in all, more than 18,000 people. Its main trading entity in the United Kingdom is the third defendant, Bakkavor Foods Limited, which was called Geest Foods Limited before the Bakkavor group acquired Geest plc in 2005. For the purposes of this judgment, the distinctions between the group and the individual companies that make it up are unimportant. I shall therefore refer to the group and the defendants simply as "Bakkavor".
The alleged confidential information
- The information at issue in this case relates to the methods Kerry employs to produce its edible infused oils.
Kerry's products
- Kerry produces more than 30 infused oils at its Padiham plant in Burnley. Its main products, each of which is a clear liquid, are infused with mint, chilli, basil, lemon, garlic, rosemary or coriander. The oils have a variety of uses. They can, for instance, be added to salads or pizzas, used as an ingredient of ready meals or diluted with olive oil for resale as an infused oil product.
- Kerry's oils are flavoured by infusing the relevant herb or other ingredient in the oil. In the case of a herb-flavoured oil, four levels of flavour declaration are possible: flavouring, natural flavouring, extract and the named herb. Kerry's production methods enable it to adopt a named herb declaration and to identify the ingredients on the packaging simply as the oil and the herb, giving a "clean" label.
- Food products can be either chilled or ambient. A chilled food needs to be kept at a temperature of less than 8ºC, and preferably less than 4ºC, while an ambient food can be stored at room temperature. The infused oils that Kerry makes are ambient.
- In 2014, Kerry sold [detail redacted] of infused oil. Around [detail redacted] were to Bakkavor.
Food safety issues
- Bacteria can bring about food poisoning in two ways: by infection, where the bugs grow in the gut and cause illness, or by producing toxins, which are ingested when the food is consumed. Salmonella, Listeria, Campylobacter and E. coli fall into the former category, Clostridium botulinum the latter.
- [Detail redacted]
- Most food-poisoning bacteria can be destroyed by quite mild heat treatment (or "pasteurisation"), which typically involves holding the food at 70ºC for two minutes. A higher temperature is, however, needed if Clostridium botulinum is to be controlled in this way. An ambient food requires treatment of 121ºC for three minutes (or equivalent) to eliminate Clostridium botulinum bacteria and spores.
- [Detail redacted]
- Other techniques can be used to inhibit [detail redacted] the growth of bacteria and production of toxin. One possibility is to add an acid (e.g. vinegar) to lower the pH of the food. Another is to reduce the amount of "available water" (or "Aw") in the food, by drying it or adding salt or sugar. [Detail redacted]
- [Detail redacted]
Kerry's production method
- Kerry's production method is designed to address food safety issues while also achieving good flavour and shelf life and a "clean label". Its features include the following:
i) [detail redacted] ;
ii) [detail redacted] ;
iii) [detail redacted] ;
iv) [detail redacted] ;
v) [detail redacted].
The pleaded confidential information
- The allegedly confidential information is described in these terms in an annex to the amended particulars of claim (as explained in a response to a request for clarification of the particulars of claim):
"a. [detail redacted].
a2. [detail redacted].
b. [detail redacted]:
i. [detail redacted];
ii. [detail redacted];
iii. [detail redacted] .
c. [detail redacted]:
i. [detail redacted];
ii. [detail redacted].
- The flow chart in the annex includes, among others, steps described as [detail redacted].
- Kerry's case is that an actionable breach of confidence can arise from use of the entire suite of information or one or more elements of it. It has further explained, in response to the request for clarification, that the word "approximately", as used in relation to the "Confidential Proportions", means:
"in respect of the proportions of the oil and of the infusion ingredients, within a range of ±5% of the figures stated … , [detail redacted]".
Events leading to the present litigation
- The techniques that Kerry uses to produce its oils were originally developed by a company called SpringThyme plc ("SpringThyme"). In 1994, Mr John Graham ("Mr Graham Senior"), an employee and later director of SpringThyme, and Mr David Beswick, who was already a director of the company, set about developing a process that could be used to add fresh herbs to oils to create a safe product with a shelf life of at least three months. In the course of their work, [detail redacted].
- By a process of trial and error, Mr Graham Senior and Mr Beswick arrived at the conclusion that the oil and ingredient mixture should [detail redacted].
- A test batch of infused oil was produced at the end of May 1996 and the first sales were made by Christmas of that year. Over time, more infused oils were added to the range and improvements were made in terms of flavour and yield. Oils sold in 1997 had about a level 5 flavour intensity. Later on, a level 9 flavour intensity was achieved.
- By 2004, Mr Graham Senior and Mr Beswick wished to go their separate ways as a result of personal differences. As a result, there was a management buy-out in which the business, assets and liabilities of SpringThyme were transferred to SpringThyme Oils Limited ("SpringThyme Oils").
- In 2010, Kerry Ingredients Holdings (UK) Limited (another company in the Kerry group) bought the issued share capital of SpringThyme Oils. At the beginning of 2011, the assets of SpringThyme Oils were transferred to Kerry.
- In 2015, a German company called GEA Westfalia Separator Group GmbH ("GEA Westfalia"), which is part of the GEA group ("GEA"), approached Mr Johnathan Graham ("Mr Graham Junior"), who is the site manager of the Padiham plant as well as being Mr Graham Senior's son, about the possibility of setting up trials of equipment of theirs that could be used as part of the production of infused oils. The GEA Westfalia representative, Mr Lee Blake, mentioned that the company had already completed similar trials with another producer of infused oils and, at a meeting on 3 September, Mr Blake allowed Mr Graham Junior to see a report relating to that work. Mr Graham Junior saw that the report included information which he regarded as confidential to Kerry.
- At that stage, Mr Barry Synnott, who is employed by Kerry Group plc as business president of dairy & culinary for the EMEA region, arranged to meet Mr Richard Briers of Bakkavor on 28 September 2015. At the meeting, Mr Synnott told Mr Briers that Kerry was aware that Bakkavor was embarking on the manufacture of infused oils. Mr Briers confirmed that that was the case and said that Bakkavor would stop buying oils from Kerry early in 2016.
- On 20 November 2015, Kerry issued the present proceedings and also applied for an interim injunction. On 25 November, the defendants consented to the grant of an injunction until a full hearing, which took place before Judge Havelock-Allan QC, sitting as a Judge of the High Court, the next month. On 14 December, Judge Havelock-Allan made an order which, among other things, barred the defendants until final judgment from importing, exporting, putting on the market or offering for sale any edible oil product infused with herbs and/or spices the making of which was enabled or assisted by the use of the alleged confidential information.
Bakkavor's plans to produce infused oils
- Kerry and its predecessors have supplied Bakkavor and its predecessors with infused oils since the 1990s. In 2010, however, Bakkavor decided to explore alternative sources of infused oils. It evidently felt that SpringThyme Oils' position (and, later, that of Kerry) as the only supplier of infused oils in the United Kingdom was enabling it to charge prices higher than Bakkavor wished to pay.
- In April 2010, Bakkavor engaged a company called Kalsec Europe Limited to see whether oleoresins could be used to achieve flavour comparable to that of the SpringThyme Oils products. In October 2010, however, Kalsec Europe Limited reported that the project was "by far more complex than originally thought" and that the "samples of basil oil received so far are all missing the fresh intense grassy character that dominates the bench product [i.e. a SpringThyme Oils' oil]". At that stage, therefore, Bakkavor decided to continue buying oils from SpringThyme Oils.
- In 2012, Bakkavor returned to the possibility of obtaining infused oils from a source other than Kerry. As Mr Jason England, who has had overall responsibility for Bakkavor's Welcome Foods business division since 2010, has explained in a witness statement, Bakkavor saw Kerry as continuing to exploit SpringThyme Oils' position in the infused oils market.
- On 18 January 2012, Mr Matthew Peberdy, a purchasing manager with Bakkavor, sent Mr England an email referring to infused sunflower oil bought from Kerry. Mr Peberdy said of the oil:
"The process is as follows:
He attached a "raw material specification" containing some of this information that SpringThyme Oils had completed for Bakkavor. As to this document, Mr Peberdy said:
"I have attached a spec (which doesn't give away much)".
Other information given in Mr Peberdy's email came from a supplier audit report that Geest's company technical auditor had prepared in respect of SpringThyme in May 2004. The report included, for example, this:
[detail redacted]
- In an email of 30 March 2012, Ms Rachel Holmes of Bakkavor referred to a colleague at Bakkavor having "mentioned that she thought that Springthyme [detail redacted] and to Ms Holmes and another colleague thinking that "that might have something to do with improving the flavour".
- In about May 2012, Bakkavor decided to launch a project, known as "Project Aequo", to identify and put into commercial use at least one new source of supply for the group's requirements of infused oils. Mr Peberdy was given primary responsibility for managing and overseeing the venture, which, he explained, was his concept.
- By September 2012, Bakkavor had identified three independent third party suppliers and one intra-group supplier (Welcome Foods) as potentially able to produce an infused oil comparable to that being purchased from Kerry. Bakkavor also worked with Sheffield Hallam University to improve its understanding of how to manufacture infused oils. On 29 November, Ms Holmes sent Sheffield Hallam University an email that included bullet points in the terms of those set out in paragraph 30 above. On 4 December, Sheffield Hallam reported that it was "unlikely that you will be able to match the Current process and achieve a broadly similar product without [detail redacted]".
- Early in 2013, Mr Nicholas Taylor, the business improvement manager for Welcome Foods, was approached by Mr England and Mr Bill Varney, who was then Bakkavor's new product development technologist, and asked to evaluate the costs of producing infused oils in-house. He was handed two sheets of paper which (although he did not initially appreciate this) were taken from documents completed by Kerry or its predecessors. Among other things, these specified the ingredients as [detail redacted] and gave an outline of the manufacturing process which included [detail redacted].
- Mr Taylor explained in cross-examination that he was more involved in engineering than microbiological issues. He also observed that he had not developed a recipe himself but had been given one to make.
- Having reviewed the proposals for a replacement product put forward by the potential suppliers, Miss Bridgette Clarke, Bakkavor's group biologist, sent an email to Mr Peberdy and others on 1 May 2013 in which she said this:
"I have now looked at the information supplied and I think without exception all suppliers are relying upon [detail redacted]"
- That same day, Mr Peberdy sent an email to a colleague at Bakkavor in which he said:
"I have … just searched for [detail redacted] in the central technical files on Springthyme, and found the attached from a 2004 audit …. This backs up what Bridgette [Clarke] is requesting.
Charlotte – do you know if Joanne Swales has anything similar but from a more recent Springthyme audit?"
- Quite soon afterwards, it was decided to take forward for consumer testing a product developed by Leathams Limited and oils that Welcome Foods had made. In the event, none of these scored as highly in testing as the Kerry equivalent, but they were all considered to be acceptable alternatives. On 23 August 2013, Bakkavor decided to pursue the option of making infused oils within the group and not to progress the Leathams product.
- On 27 September 2013, Mr Taylor sent Mr Peberdy an email in which he identified some points that he "would like [Mr Peberdy] to watch out for" when he went on a factory tour. Mr Peberdy's reply provided his answers to Mr Taylor's questions as well as saying that he had "searched [his] archives and found a process flow from Springthyme, and old audit report which is particularly insightful" and that both those and "some product specs" were attached. Some of Mr Taylor's questions and Mr Peberdy's answers to them are set out in the table below:
| Question |
Answer |
| [detail redacted] |
[detail redacted] |
| [detail redacted] |
[detail redacted] |
| [detail redacted] |
[detail redacted] |
| [detail redacted] |
[detail redacted] |
| [detail redacted] |
[detail redacted] |
| [detail redacted] |
[detail redacted] |
| [detail redacted] |
[detail redacted] |
| [detail redacted] |
[detail redacted] |
- In October 2013, a trial was conducted at Mr Taylor's instigation by GEA Westfalia. The report that was prepared by GEA Westfalia identified the task as:
"Clarification of infused basil oil. [Detail redacted] ".
The report then gave this summary:
"[detail redacted] …."
- Mr Taylor explained in a witness statement that GEA Westfalia had recommended trialling [detail redacted].
- In an email of 7 November 2013, Bakkavor asked Campden BRI, a research association serving the food and drink industry, "[detail redacted]". Mr Greg Jones of Campden BRI replied:
"[Detail redacted] but it may be worth a shot if you can overcome this issue."
- Early in 2014, Bakkavor commissioned a company called FMA Process Engineering Limited ("FMA") to produce a full feasibility study. This was completed in October 2014 and gave Bakkavor the information it needed to start a tender process. An invitation to tender was sent out on 9 January 2015. It had annexed to it Kerry's specifications for chilli and basil oil and a flow diagram of the proposed manufacturing process.
- In February 2015, the tender was awarded to FMA. Given, however, the success of the 2013 trial and its standing as a leading provider of separation technology, it was decided that GEA should supply the separation stage equipment. One distinguishing feature of GEA's tender was that it recommended the use of a piece of equipment which chopped, mixed, heated and cooled the mixture in one vessel.
- On 10 March 2015, Mr Taylor sent Mr Peberdy an email in which he said:
"We are going to have a go at making some Chilli Infused Oil in the NPD [i.e. new product development] Kitchen next week to understand if we can use the same process as the Basil Oil as the Kerry process tree is very different.
I've had a good look through the spec but it doesn't give any indication of chilli type (it just says red chillis) and percentage as an ingredient."
Mr Peberdy replied:
"Sorry Nick no. Adam uses this at Caledonian [i.e. a Bakkavor site] and is checking if they have any more information on file than I do."
Mr Adam Tindall, a business procurement manager with Bakkavor, responded:
"I can fill this gap – I looked out some old notes from a visit and they had been producing chilli oil when I was there. [Detail redacted] I'd noted that because they were using a supplier that we also use."
Mr Peberdy then emailed:
"Nick – it might be worth me asking for all copies we have on file of the lemon, garlic and chilli around the group (current and out of date versions).
The data on recipe is a section that Springthyme/Kerry intentionally leave blank for %ages, but they made the mistake of including it on one copy of the basil spec I had which is how we got to the original recipe. Quickly pouring over any other copies that exist might save you some time. I'll put a note out."
- On 23 March 2015, Mr Taylor sent FMA an email in which he said:
"Incidentally I have an interesting piece of information that has come to light regarding the Chilli Oil which is a recent spec that has been issued by Kerry showing the use of [detail redacted] and also uses the same process as Basil. So we may use the same for garlic also. It's beginning to look like we only need one process after all."
- A further trial was conducted by GEA between 1 and 3 June 2015. The trial resulted in the production of 100-125 litres of sample basil and chilli oil.
- On 10 June 2015, Mr Peberdy sent an email to Mr Briers in which he said:
"Given our discussions on IP on infused oils, and the problems I have with my laptop deleting files randomly, attached in the screenshot I took of the Springthyme website showing the process information in the public domain so you have it on file too!"
- Plant installation was completed at the Welcome Foods site in Huthwaite, Nottinghamshire in mid-October 2015. Mr Taylor pointed out in his witness statements that the process adopted by Bakkavor differs from Kerry's in the following respects:
i) [detail redacted] ;
ii) [detail redacted] ;
iii) [detail redacted] ;
iv) [detail redacted] ;
v) [detail redacted].
- Production was initially focused on basil oil. The plan was for chilli and other oils to follow. In due course, Bakkavor hopes to use its plant to supply oils to third parties as well as to meet its own needs.
- On 12 November 2015, however, Miss Sarah Dawson, a technical manager at Bakkavor, sent Miss Clarke the draft "hazard analysis and critical control points" (or "HACCP") analysis for Bakkavor's infused oil. Miss Clarke said in her reply:
"Also need to talk to you about infused oils. I'm still concerned that [detail redacted] is not under complete control. From the info that was sent, [detail redacted]"
- On 16 December 2015, Miss Dawson sent an email to, among others, Mr England and Mr Taylor in which she said:
"Despite all the information and work completed so far No product we made is guaranteed as safe to risks of [detail redacted]"
- Miss Clarke frankly said in her witness statement that she was "somewhat disappointed and frustrated that Welcome had built a plant to implement a process that was flawed from a safety point of view". She said in cross-examination that it was quite surprising that she had not been consulted before the capital expenditure was incurred.
- On 14 December 2015, of course, Judge Havelock-Allan had granted Kerry an injunction that prohibited Bakkavor from making use of the alleged confidential information.
Provision of information to customers in the food industry
- It is also relevant to note at this stage that it is common practice in the food industry for suppliers to provide their customers with product information so that the customers can satisfy themselves (and their own customers) that the product is safe and appropriately labelled. The point can be seen from, for example, evidence given by Miss Dawson. She explained in a witness statement that one of her key responsibilities as technical manager is:
"ensuring Bakkavor's compliance with food legislation and regulations in respect of ingredients purchased by Bakkavor from suppliers (including the claimant, Kerry), and in respect of Bakkavor products into which those ingredients are incorporated and which we sell to retailers".
Miss Dawson went on:
"In order to do this, I obtain technical and food safety information from suppliers concerning ingredients purchased. This includes microbial data, processing information and HACCP … to establish what makes the material safe for further risk assessment work, as well as recipe information to assist in creating the labelling for the end product as per retail requirements and food labelling legislation. This information is provided in the form of a technical specification. We are then able to perform food safety risk assessments on any ingredients coming onto a Bakkavor site, to ensure that we understand a product's safety parameters and the 'critical control points' (CCPs) we need to use for that particular product. We need to be comfortable that all products supplied are safe and that adequate measures are in place to guarantee the safety and integrity of the production process from 'field to fork'. Many of these products are sold on to other Bakkavor sites to be incorporated into their products for onward sale to retailers."
Miss Dawson also said:
"Just as Bakkavor must be comfortable that ingredients and products are safe, so too must retailers. As part of my role I am therefore obliged to pass information on to retailers, as required by them for their own risk assessments, food safety legislation compliance and traceability reasons."
- As Miss Dawson also explained, Bakkavor sometimes audits suppliers. She said:
"Another way in which we commonly satisfy ourselves of the safety of the processes being implemented by our suppliers would be to carry out an on-site technical audit …. We would then use the information collated from an audit to prepare a Supplier Audit Report, which would be used as a point of reference …. Reports of this kind are commonly shared amongst groups of customers, as this saves the need for every customer to carry out the same audit process, as well as easing the burden on suppliers such as SpringThyme."
- As for HACCPs (mentioned in both paragraph 51 and paragraph 55 above), these hazard analysis and critical control point documents contain detailed information on process steps and safety parameters. Miss Dawson noted that Bakkavor commonly receives these from its suppliers, sometimes with a specification and on other occasions separately.
Legal principles
- In Coco v A.N. Clark (Engineers) Ltd [1968] FSR 415 (at 419), Megarry J identified three elements as normally required if, apart from contract, a case of breach of confidence is to succeed:
"First, the information itself, in the words of Lord Greene, M.R. in the Saltman case on page 215, must 'have the necessary quality of confidence about it'. Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it."
Quality of confidence
- Megarry J said this in Coco v A.N. Clark (Engineers) Ltd (at 419-420) about the "necessary quality of confidence":
"As Lord Greene said in the Saltman case at page 215 'something which is public property and public knowledge' cannot per se provide any foundation for proceedings for breach of confidence. However confidential the circumstances of communication, there can be no breach of confidence in revealing to others something which is already common knowledge. But this must not be taken too far. Something that has been constructed solely from materials in the public domain may possess the necessary quality of confidentiality: for something new and confidential may have been brought into being by the application of the skill and ingenuity of the human brain. Novelty depends on the thing itself, and not upon the quality of its constituent parts. Indeed, often the more striking the novelty, the more commonplace its components. [Counsel for the plaintiff] demurs to the concept that some degree of originality is requisite. But whether it is described as originality or novelty or ingenuity or otherwise, I think there must be some product of the human brain which suffices to confer a confidential nature upon the information: and, expressed in those terms, I think that [counsel for the plaintiff] accepts the concept."
- The "Saltman case" is Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203. Having made the observation that information must have "the necessary quality of confidence about it", Lord Greene MR said (at 215):
"it is perfectly possible to have a confidential document, be it a formula, a plan, a sketch, or something of that kind, which is the result of work done by the maker upon materials which may be available for the use of anybody; but what makes it confidential is the fact that the maker of the document has used his brain and thus produced a result which can only be produced by somebody who goes through the same process".
- The fact that some members of the public may already know the information is not necessarily fatal to a breach of confidence claim. In Stephens v Avery [1988] Ch 449, Browne-Wilkinson V-C noted (at 454), "Information only ceases to be capable of protection as confidential when it is in fact known to a substantial number of people". Similarly, in Mills v News Group Newspapers Ltd [2001] EMLR 41 Lawrence Collins J said (at paragraph 25):
"Information which has entered the public domain is not subject to confidentiality. But all that means is that there may be circumstances in which the information is so generally accessible that, in the circumstances, it cannot be regarded as confidential: see Att.-Gen. v Guardian Newspapers (No 2) [1990] 1 AC 109 at 281, per Lord Goff of Chieveley. So the fact that information may be known to a limited number of members of the public does not of itself prevent it having and retaining the character of confidentiality, or even that it has previously been very widely available…."
- Mr Chris Aikens, who appeared for Bakkavor, pointed out the Mills case concerned publication of information rather than its mere use. However, I do not see why the principles seen in Mills and Stephens v Avery should be capable of applying only to publication cases.
- It can also be possible to maintain a breach of confidence claim even though the information in question could be gleaned by reverse engineering. In Saltman, drawings of tools for the manufacture of leather punches were provided to the defendants so that they could make some of the tools and supply some of the punches. In the event, the defendants also used the drawings to enable them to produce tools for themselves so that they could manufacture and sell punches on their own account. The plaintiffs succeeded in the Court of Appeal. Lord Greene MR said (at 215):
"What the Defendants did in this case was to dispense in certain material respects with the necessity of going through the process which had been gone through in compiling these drawings, and thereby to save themselves a great deal of labour and calculation and careful draughtsmanship. No doubt, if they had taken the finished article, namely, the leather punch, which they might have bought in a shop, and given it to an expert draughtsman, that draughtsman could have produced the necessary drawings for the manufacture of machine tools required for making that particular finished article. In at any rate a very material respect they saved themselves that trouble by obtaining the necessary information either from the original drawings or from the tools made in accordance with them. That, in my opinion, was a breach of confidence."
- Again, in Ackroyds (London) Ltd v Islington Plastics Ltd [1962] RPC 97, Havers J said (at 104):
"No doubt a time may come when information is generally available for the public. But the mere publication of an article by manufacturing it and placing it upon the market, whether by means of work done in it or calculation or measurement which would enable information to be gained, is not necessarily sufficient to make such information available to the public. The question in each case is: Is such information available to the public? It is not, in my view, if work would have to be done upon it to make it available."
- That case can be contrasted with Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch), where a breach of confidence claim failed. In the course of his judgment, Jacob J said (in paragraph 54):
"[N]ormally if one finds an employee or ex-employee using unpublished formulae to the detriment of his former employer it is an open and shut case. Cross J, for instance, specifically instanced to a specifically remembered chemical formula as subject of protection (Printers & Finishers v Holloway [1965] RPC 239 at p.255). Indeed before I heard the evidence I thought this was going to be such a case. And the well-established rule of thumb used to test whether information is to be regarded as confidential — 'given for one purpose, not to be used for another' — seemed well in point. But the more I heard the evidence the more I became satisfied that the information here, in the hands of the ex-Borden team, could not be regarded as confidential. So much was published, so much was second nature to the team, so much of the recipes were not critical and were so easy to reverse engineer, that a man of conscience would not say 'here is a specific trade secret which I may not use.'"
Ease of reverse engineering was thus amongst the factors that led Jacob J to take the view that the information in question was not confidential.
- A passage from the judgment of Arnold J in Force India Formula One Team Ltd v 1 Malaysia Racing Team Sdn Bhd [2012] EWHC 616 (Ch), [2012] RPC 29 is relevant here. Arnold J said (in paragraph 222):
"In cases concerning design drawings … , much will depend on the level of generality of the information asserted to be confidential. If the claimant contends that information relating to the shape and configuration of the article depicted in the drawings is confidential, but the shape and configuration of the article can readily be ascertained from inspection of examples of the article which have been sold or are otherwise publicly accessible, then the claim will fail. If, on the other hand, the claimant contends that detailed dimensions, tolerances and manufacturing information recorded in the drawings are confidential, that information cannot readily be ascertained from inspection, but only by a process of reverse engineering and the defendant has used the drawings as a short cut rather than taking the time and effort to reverse engineer, then the claim will succeed."
- In the circumstances, it seems to me that the fact that information could be obtained by reverse engineering will not of itself prevent it from being regarded as confidential if at least the reverse engineering would involve a significant amount of work. Mr Aikens adopted a similar test when he explained in submissions that it was his case that information could not be confidential if it could be arrived at "without any special labours".
Circumstances importing an obligation of confidence
- Megarry J said in Coco v A.N. Clark (Engineers) Ltd (at 420-421):
"It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence. In particular, where information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind, such as a joint venture or the manufacture of articles by one party for the other, I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence: see the Saltman case at page 216."
- In the Saltman case, Lord Greene MR said (at 216):
"I find as a fact, without hesitation, that there was a contract; but, contract or no contract, the Defendants got those drawings into their hands knowing, or knowing shortly afterwards, that they belonged to Saltmans, that they were obviously confidential matter, and they knew that they had got them into their hands for a strictly limited purpose. How on that basis they could say that the fact that there was no contract released them from any obligation of confidence I do not know …."
- Mr Aikens referred me in this context to a passage from Gurry on Breach of Confidence, 2nd ed.. The authors of that work say this (in paragraph 7.03):
"In this edition, … we depart from the 'limited purpose' test as the preferred basis upon which equitable duties of confidence are imposed in favour of a 'notice of confidentiality' test. This test asks itself whether the circumstances in which the information was acquired or received indicate (objective) knowledge or notice of the confidentiality of the information. The factors that may be relevant to establishing knowledge or notice of confidentiality include: the nature of the information (whether it is banal, trivial, commercially valuable, or intimately personal); the steps taken to preserve or emphasize the secrecy of the information (eg whether it is marked 'confidential' or 'private'; or if special care is taken that there is a restricted disclosure to others); the manner in which the information was disclosed or obtained (eg at a business meeting rather than a social occasion); the understanding of the parties involved; and where the information is disclosed for a specific, limited purpose and it is understood, from the legal and cultural context of the disclosure, that the information will not be used for another purpose. In other words, the 'limited purpose' of the disclosure is a factor to be considered as part of the 'notice of confidentiality' test."
- The core test is, as I see it, to be found in Arnold J's judgment in the Force India case. He said (in paragraph 224):
"An equitable obligation of confidence will arise as a result of the acquisition or receipt of confidential information if, but only if, the acquirer or recipient either knows or has notice (objectively assessed by reference to a reasonable person standing in his shoes) that the information is confidential."
Unauthorised use
- The fact that a defendant has not precisely replicated the relevant confidential information need not mean that he did not use it. This point can be seen from a passage from the Court of Appeal's decision in Force India Formula One Team Ltd v Aerolab SRL [2013] EWCA Civ 780, [2013] RPC 36 referring to Terrapin Ltd v Builders Supply Company (Hayes) Ltd [1967] R.P.C. 375. In the course of his judgment in the Force India case, Lewison LJ said:
"75 The reach of the obligation of confidence is shown by Terrapin Ltd v Builders Supply Company (Hayes) Ltd …. In that case the plaintiff contracted the first defendant to manufacture prefabricated portable buildings to the plaintiff's designs, and in particular a design referred to as the Mark 24. The plaintiff disclosed to the first defendant all the drawings, specifications, technical information and know-how needed to make the Mark 24 in confidence and solely for the purpose of the contract. Subsequently the plaintiff also disclosed to the first defendant in confidence proposals for a new and improved design featuring a flat roof and a stressed skin construction, later referred to as the Mark 36, which the plaintiff originally proposed to make itself, but later suggested that the first defendant should manufacture. Subsequently negotiations between the parties for a renewal of the contract broke down, and it expired. Four months after the end of the contract the defendants launched a portable building called the Swiftplan with a flat roof and stressed skin construction, the design of which it had commenced during the currency of the contract. They said that the Swiftplan had been designed by their works manager, Mr Chambers. Roxburgh J. said at p.390:
'…Mr Chambers knew every stage in the actual production of the Mark 24 unit … and accordingly his mind must have been saturated with every detail of its design, features and methods of construction; and if his mind was so saturated from observing the work in progress on the manufacture of Mark 24 buildings, obviously that information was either directly or indirectly derived from the original confidential communications made by the plaintiffs to the first defendants. Moreover, upon what were Mr Chambers' first efforts now directed? – to improve the floor of the Mark 24; not to make some new building unit. If, therefore, his mind was not already saturated with the Mark 24, his efforts to improve it must assuredly have completed that process. There is no better way of really understanding something [than] to try and improve it, and if you produce a different result it is absurd to say that you made no use of the thing which you set out to improve.'
76 On the same page Roxburgh J. added:
'…information is none the less used if it serves as a starting point for a new design, because in the end the design wholly or partially discards the information from which it was originally built up.'"
Remedies
- Both sides referred me to the decision of Arnold J in Vestergaard Frandsen A/S v Bestnet Europe Ltd [2009] EWHC 1456 (Ch), [2010] FSR 2 for its detailed and searching examination of the availability of injunctive relief for breach of confidence.
- Arnold J said this in paragraph 41 of his judgment:
"in the absence of specific discretionary reasons for the refusal of an injunction, where the claimant has established that the defendant has acted in breach of an equitable obligation of confidence and that there is a sufficient risk of repetition, the claimant is generally entitled to an injunction save in exceptional circumstances. In deciding whether there are exceptional circumstances which justify the refusal of an injunction, the approach laid down in Shelfer is applicable, if not directly then by analogy."
- The "Shelfer" to which there is reference in this passage is Shelfer v City of London Electric Lighting Co [1895] 1 Ch 287. There, A. L. Smith LJ said (at 322-323):
"Many Judges have stated, and I emphatically agree with them, that a person by committing a wrongful act (whether it be a public company for public purposes or a private individual) is not thereby entitled to ask the Court to sanction his doing so by purchasing his neighbour's rights, by assessing damages in that behalf, leaving his neighbour with the nuisance, or his lights dimmed, as the case may be.
In such cases the well-known rule is not to accede to the application, but to grant the injunction sought, for the plaintiff's legal right has been invaded, and he is prima facie entitled to an injunction.
There are, however, cases in which this rule may be relaxed, and in which damages may be awarded in substitution for an injunction as authorized by this section.
In any instance in which a case for an injunction has been made out, if the plaintiff by his acts or laches has disentitled himself to an injunction the Court may award damages in its place. So again, whether the case be for a mandatory injunction or to restrain a continuing nuisance, the appropriate remedy may be damages in lieu of an injunction, assuming a case for an injunction to be made out.
In my opinion, it may be stated as a good working rule that —
(1.) If the injury to the plaintiff's legal rights is small,
(2.) And is one which is capable of being estimated in money,
(3.) And is one which can be adequately compensated by a small money payment,
(4.) And the case is one in which it would be oppressive to the defendant to grant an injunction:—
then damages in substitution for an injunction may be given.
There may also be cases in which, though the four above-mentioned requirements exist, the defendant by his conduct, as, for instance, hurrying up his buildings so as if possible to avoid an injunction, or otherwise acting with a reckless disregard to the plaintiff's rights, has disentitled himself from asking that damages may be assessed in substitution for an injunction.
It is impossible to lay down any rule as to what, under the differing circumstances of each case, constitutes either a small injury, or one that can be estimated in money, or what is a small money payment, or an adequate compensation, or what would be oppressive to the defendant. This must be left to the good sense of the tribunal which deals with each case as it comes up for adjudication. For instance, an injury to the plaintiff's legal right to light to a window in a cottage represented by £15 might well be held to be not small but considerable; whereas a similar injury to a warehouse or other large building represented by ten times that amount might be held to be inconsiderable. Each case must be decided upon its own facts; but to escape the rule it must be brought within the exception. In the present case it appears to me that the injury to the Plaintiff is certainly not small, nor is it in my judgment capable of being estimated in money, or of being adequately compensated by a small money payment."
- With regard to A. L. Smith LJ's paragraph (4), Mr Aikens pointed out that Jacob J expressed the view in the Cray Valley case that the injunction sought by the claimant in that case would be "unworkable and oppressive" (paragraph 46 of his judgment). "Even," Jacob J said (in paragraph 47), "if there had been some minor breach of confidence giving [the first defendant] a short head-start, I would have thought it quite wrong to grant an injunction". He continued (in paragraph 48):
"In this case, even if (contrary to my opinion) the information should be regarded as confidential I am quite satisfied that its worth is low, that the 'time and trouble' saved was of the order of a few days or perhaps at most a couple of weeks in the case of one or two resins. Given [the first defendant's] slow entry into the market (only a few customers in the first three months) this was insignificant."
- Reverting to Vestergaard, after reviewing authorities relating to the "springboard doctrine", Arnold J observed that that expression could refer to circumstances in which "information may have a limited degree of confidentiality even though it can be ascertained from public sources" or circumstances in which "an injunction may be granted to prevent the defendant from benefiting from past misuse of confidential information even if it is no longer confidential" (paragraph 76(iv) of the judgment). Arnold J went on to say (in paragraph 78):
"if the springboard doctrine is understood to be that information may possess a limited degree of confidentiality even though it can be ascertained by reverse engineering or by a process of compilation from public domain sources, then I consider that it is soundly based".
- Where information has a limited degree of confidentiality, then "an injunction may be granted, but only for a limited period" (Vestergaard, at paragraph 79). Arnold J explained (in paragraph 80) that if, at the time of the hearing, the defendant is still misusing the confidential information:
"an injunction can be granted to restrain the defendant from continuing to misuse the confidential information. The duration of the injunction should be limited, however, to the time it would take someone starting from public domain sources to reverse engineer or compile the information. This reflects the limited degree of confidentiality that is being enforced. In my view, this principle extends more widely: even technical trade secrets can have a limited 'shelf-life', such that the information may be expected to come into the public domain after (say) five or 10 years."
- Arnold J considered derivative products in paragraphs 94-96 of his judgment. In paragraph 96, he endorsed propositions which he had extracted from the judgment of Laddie J in Ocular Sciences Ltd v Aspect Vision Care Ltd (No. 2) [1997] RPC 289. As can be seen from paragraph 95 of Arnold J's judgment, these were:
"i) the purpose of an injunction to restrain disclosure or use of confidential information is to prevent further disclosure or use of the confidential information in the future;
ii) where a product embodies or discloses confidential information, or is manufactured using confidential information, then an injunction to restrain use of the confidential information will automatically restrain the continued manufacture and sale of the product;
iii) an injunction may also be granted to restrain the manufacture or sale of a derived product where the manufacture of it represents a continued use of the information having regard to the extent and importance of the use of the information;
iv) otherwise, the appropriate remedy in respect of the manufacture and sale of products derived from a past misuse of confidential information is a financial one."
The present case
Quality of confidence
- In skilful advocacy, Mr Aikens denied that any of the allegedly confidential information has the requisite quality of confidence.
- As a preliminary point, Mr Aikens pointed out that the relevant information is alleged in Kerry's pleadings to include [detail redacted] greater than or equal to … [detail redacted] (emphases added) and ingredient proportions "within a range of ±5%" of the stated figures. Mr Aikens submitted that there is no evidence of any disclosure to Bakkavor of a minimum [detail redacted] or of a range of ingredient proportions. The information imparted to Bakkavor gave specific figures for [detail redacted] and ingredients.
- In my view, however, this point does not matter. The pleadings can, as I see it, properly be read as including the claim that the particular [detail redacted] and ingredient figures were disclosed and confidential.
- More importantly, Mr Aikens stressed the extent to which Kerry's methods draw on a small number of recognised food safety techniques. He argued that [detail redacted]. You would then, he said, almost inevitably end up with [detail redacted]. On top of all that, Mr Aikens pointed out that certain of the steps given in the flow chart annexed to the particulars of claim ("Store Ingredients" and "Debox", for instance) are obvious. He said, too, that the combination of [detail redacted] was no more than a matter of trial and error.
- These submissions were largely based on the helpful expert evidence given by Dr Belinda Stuart-Moonlight (called by Kerry) and Professor Paul Berryman (called by Bakkavor). In the concluding section of his report, Professor Berryman said, among other things, that he considered that "Kerry's manufacturing process uses fairly standard industry techniques and common unit operations", [detail redacted] that the "combination of [detail redacted] could be calculated using the normal NPD [i.e. new product development] process" and that [detail redacted].
- In contrast, Dr Stuart-Moonlight said:
"If someone had unlimited resources and time they may well come up with a similar process flow and HACCP to that used by Kerry. However, the ifs and buts could take years to test and reject before stumbling on Kerry's precise combination."
Dr Stuart-Moonlight also said:
"Safety criteria for [detail redacted] in foods include: for elimination; filtration and thermal treatment, for inhibition: water availability (often through the use of salt or sugar), thermal treatment (where spores survive), acidity, and chilling. Where spores survive thermal treatment, an additional control or hurdle is needed for their suppression. The critical limits for these strategies individually are established in the food industry and available in the public domain. Professor Berryman refers to these as 'the basic tools' and I agree that the existence of these basic tools is not confidential. I reiterate my points … that [detail redacted] and that 'When a product is designed, there is no formula for a default strategy for development accounting for safety factors. In other words, one process developer's design for the entire process is likely to be different from another's. They may have the same final objective, e.g. to make an oil with certain colour, flavour, shelf life, etc. characteristics, but will not necessarily arrive at the final product through the same route'."
- Dr Stuart-Moonlight drew attention to [detail redacted] as a "clever feature". She said in cross-examination:
"what has happened and what is quite unusual in the whole process is that [detail redacted] and then comes the clever stage, which is to [detail redacted]".
She added that she knew of no other product where [detail redacted].
- In my view, someone wishing to match Kerry's products but lacking the information Bakkavor had as to how Kerry makes them would not be able to discover Kerry's methods without substantial work or "special labours". As Mr Thomas St Quintin, who appeared for Kerry, pointed out, none of Kerry's competitors seems to have used [detail redacted]. Questions would also arise as to how to [detail redacted]. Further, the likelihood is that a developer would experiment with a variety of proportions of oil and infusion ingredient (possibly over quite an extended period) before arriving at the ratio adopted by Kerry, and he could not tell that [detail redacted] without conducting tests (after all, there is no microbiological reason for that [detail redacted]).
- It appears from Dr Stuart-Moonlight's evidence that Kerry's combination of [detail redacted] is unique to it. While it may be easy to understand the logic of it now that it has been devised (compare Mills & Rockley (Electronics) Ltd v Technograph Printed Circuits Ltd [1971] FSR 188, at 191 and 203), I do not think it can be considered to be obvious, to be in the public domain, to be capable of being reverse-engineered without considerable work or "special labours" or to be second nature to a developer.
- Mr Aikens also relied on an article published in "Food Manufacture" magazine in September 2004. The article, which had the title "They steep to conquer", was based on an interview with Mr Graham Senior and included the following:
"SpringThyme has spent 10 years developing its own bulk process, which uses nothing but oil and fresh herbs, spices or fruit ….
'The other key point is that our infused oils are derived from fresh ingredients so there's an opportunity to keep the label clean. Even in dried seasonings you often get compound flavours or anti-caking agents but with our oil there are no additives. They can be described as simply herb and olive oil. That's driving increased usage.'
…
HTST process means no 'stewing'
SpringThyme's infusion process uses a mix of technologies in a totally enclosed system to maximise flavour intensity while retaining the 'fresh' taste of the herb or spice.
Mr John Graham explains: 'Traditionally, manufacturers would chop up the herb then mix it with oil and process it in a big, sealed cooking vessel or jacket pan.
'That gives a more stewed effect because the vessel can take up to 30 minutes just to come up to temperature. Imagine a teabag. As it's brewed for longer the tea gets stronger but it also gets more bitter. Also, if you size-reduce the herbs first you don't get such good oil extraction.'
In SpringThyme's method, whole fresh herb leaves are combined with oil in a sealed vessel and then chopped in the oil. No heat is used at this stage so that few flavour volatiles are lost.
The herb and oil mixture is then pumped into a continuous cooker – known as an high temperature, short time or HTST pasteuriser –where it is rapidly brought up to temperature in less than three minutes under high pressure (6-9 bar).
The final part of the process is to remove the vegetable matter and, crucially, as much water as possible to minimise spoilage.
SpringThyme uses a bespoke, basket centrifuge to separate water, vegetable waste and oil. The progressive filtration to below 2 microns removes any remaining potential spores before the flavoured oil is finally blended."
- Mr Peberdy said in cross-examination that he was aware of the "They steep to conquer" article before these proceedings. I am afraid that I do not believe him. There is no reference to it in the contemporary documents or even in the witness statements filed in connection with last year's injunction application. The truth must, I think, be that Bakkavor discovered the article in the course of investigations undertaken during the present litigation.
- In her report, Dr Stuart-Moonlight said of "They steep to conquer":
"The article outlines some elements of the manufacturing process but, [detail redacted] it does not detail any of the specific critical limits that make the HACCP plan unique. Furthermore, it specifically does not refer to [detail redacted]. I therefore believe that it does not provide sufficient information to make a safe, ambient-stable, infused oil product."
- Professor Berryman attached more significance to the article in his report, but in cross-examination he said:
"clearly the tone of the article is saying: 'Look, guys, we are great because we have got this new product that is only herbs and oil,' so they are not really going to start talking about processing aids and things that they would put in behind the scenes which there is no legal reason why they should declare … on the label".
- It is fair to say that the article told its readers that SpringThyme used a centrifuge and filtration. [Detail redacted]. The article also suggested that SpringThyme used "nothing but oil and fresh herbs, spices or fruit": there was no mention of [detail redacted]. The reference to a "pasteuriser" was also misleading since heating was not needed for any microbiological reason.
- In the end, it seems to me that the "They steep to conquer" article does not detract from the confidentiality of the information at issue in these proceedings. There is no question of its having disclosed the whole suite of information that Kerry alleges is confidential. Nor, in the end, do I think that it can be said to have revealed any significant part of it since the accurate information was both relatively unimportant and mixed with the inaccurate or misleading.
- In all the circumstances, I have concluded that the alleged confidential information has the "necessary quality of confidence".
Circumstances importing an obligation of confidence
- At the heart of Kerry's submissions on this part of the case is the proposition that Kerry and its predecessors only ever supplied the confidential information to Bakkavor for safety and regulatory purposes and that a reasonable person standing in the shoes of Bakkavor would have realised that the information was being provided just for those purposes and was not to be used for Bakkavor's own product development.
- In my view, this proposition is borne out by the evidence. Bakkavor does not dispute that the relevant information was, as suggested, provided for compliance reasons and not to enable it to develop a process of its own. There is, moreover, evidence indicating that it was understood in the food industry that information imparted on this basis should not be used by the recipient in other ways. Mr Synnott said in his witness statement that "[a]cross the industry, the information contained in a HACCP is always respected as being confidential and is, generally, only shared between respective technical teams to enable the safety and ingredient sources of a process to be understood". Mr Damian Wilkinson, the technical manager at Kerry's Padiham plant, said in a witness statement that there is "a common understanding across the food industry that people have worked hard to develop the technical information for a product that is recorded in a specification, HACCP or process flow documentation and it should therefore be treated as confidential" and that "any reasonable person working within the food industry would have understood the information to be confidential". Pressed on the point in cross-examination, Mr Wilkinson adhered to the view that a HACCP or process flow was to be considered "privileged information". Further, Miss Dawson came close to accepting this in her oral evidence. She agreed that such information was received for a particular purpose and said:
"We would receive HACCP information as part of understanding the raw materials that we are bringing in and the aspects that make them safe, so that we know when we bring a raw material to site how … we need to treat it and look after it ourselves and then subsequently process it further, and then any finished product that we would be using it in, how do we ensure that we subsequently make that safe for our customers. That is really why we are getting the information."
When asked whether there was a policy of reviewing HACCPs to see if they contained ideas that would be useful for Bakkavor's production, Miss Dawson said:
"No, not at all."
- Mr St Quintin also sought support for his submissions in confidentiality statements contained in, for example, data sheets, product specifications, email footers and specific confidentiality agreements. In her evidence, Miss Dawson said that, whilst she could see that Kerry had on occasions made attempts to assert confidentiality, it had "far from followed any consistent or uniform approach". Mr Aikens spoke of Kerry's efforts having been "erratic and inconsistent". While, however, these points are by no means without force, the assertions of confidentiality made by Kerry and its predecessors do assist its case somewhat.
- It is noteworthy, too, that Mr Peberdy appears to have recognised that Kerry wanted to limit the dissemination of its information. Thus, Mr Peberdy said in the email of 18 January 2012 quoted in paragraph 30 above that the specification he was attaching "doesn't give much away" and, more importantly, in March 2015 Mr Peberdy noted that Kerry "intentionally leave blank" a section on recipe but had "made the mistake of including it in one copy of the basil spec" (see paragraph 45 above). In cross-examination, Mr Peberdy came to accept that the reason that Kerry would not have wanted to disclose the information was probably that "they considered there was something valuable about keeping the information to themselves".
- The passage from Gurry on Breach of Confidence set out in paragraph 70 above indicates that an equitable duty of confidence is not necessarily imposed whenever information is supplied for a limited purpose. On the facts of the present case, however, it seems to me that a reasonable person would have realised that the information was not to be used otherwise than for the particular purposes for which it was being provided and, more specifically, that it could not be used to develop a rival product. That conclusion is, I think, consistent with the remarks of Megarry J and Lord Greene MR quoted in paragraphs 68 and 69 above. I consider, accordingly, that Bakkavor was (and is) subject to an obligation of confidence.
Unauthorised use
- It is abundantly clear that Bakkavor has breached the obligation of confidence that I have found to exist. Bakkavor has used the confidential information and communicated it to third parties (including Sheffield Hallam University, GEA and FMA) for reasons having nothing to do with the purpose for which the information had been supplied to it and, rather, to assist in the development of a competing product. The fact that Bakkavor may not have been trying to replicate Kerry's process exactly (as Mr Taylor observed in his 27 September 2013 email), and has not in the event done so, is unimportant. In the Terrapin case, Roxburgh J noted that information is "none the less used if it serves as a starting point for a new design" (see paragraph 72 above). Similarly, Bakkavor can have used Kerry's information without its manufacturing process being identical to Kerry's.
- Bakkavor's use of the confidential information can be seen from the summary of events given in paragraphs 27 to 54 above. For example, Mr Peberdy's email to Mr England of 18 January 2012 and Ms Holmes' to Sheffield Hallam University of 29 November 2012 were clearly based on the confidential information; the sheets that Mr Taylor was handed were taken from documents completed by Kerry or its predecessors; Mr Peberdy's email of 1 May 2013 shows him to have found an audit when he was trying to find out about [detail redacted]; the answers that Mr Peberdy gave to the questions posed in Mr Taylor's email of 27 September 2013 came from the confidential information; the GEA trial of October 2013 reflected the confidential information; Mr Taylor and Mr Peberdy drew on the confidential information in the email correspondence of 10 March 2015; and Mr Taylor's email to FMA of 23 March 2015 also made use of a specification issued by Kerry. The very considerable similarities between Bakkavor's ultimate process and Kerry's also point to Bakkavor having used the confidential information.
- While acknowledging that Kerry's specifications were used as a "placeholder" throughout Project Aequo, Mr Peberdy downplayed the significance of the information from Kerry. Had, he said, no reference been made to Kerry's information, Bakkavor "would still have been perfectly capable of identifying a viable replacement" for Kerry's products. In a similar vein, Mr Taylor said in a witness statement:
"Bakkavor spent significant time and cost developing its own infused oils process. Although I did refer to the Kerry product and production process (as I understood it to be) during my work, this was certainly not vital to Bakkavor's ability to make safe infused oil, and I do not believe that we saved time by doing so. The project followed a comprehensive (and typical) new product development process, which explored many avenues and did not take short cuts."
For her part, Miss Clarke said:
"Even if … Bakkavor had never had access to the Kerry specification at all, I have absolutely no doubt that Project Aequo would have followed broadly the same path and (with marginally more input for me and other technical personnel) we would have ended up with a safe, commercially viable replacement product to that currently produced by Kerry."
- While, however, Bakkavor might have been able to devise a replacement product without relying on the confidential information, the fact is that it made extensive use of the confidential information when developing its own process. Mr Taylor accepted that Kerry's information provided a "start point", but the evidence indicates that it influenced Bakkavor's thinking throughout. Further, I think it unlikely that Bakkavor's development work would have proceeded in quite the way it did, or that the end result would have taken its present form, or been as similar to Kerry's, if Bakkavor had not been using the confidential information.
- In short, I am satisfied that Bakkavor has misused the confidential information.
Remedies
- The key question so far as remedies are concerned is what, if any, injunctive relief should be granted. Mr St Quintin submitted that there should be a permanent injunction against Bakkavor or, failing that, one barring Bakkavor from using the confidential information for a substantial period. Mr Aikens, on the other hand, argued against any injunction and maintained that, if any such order is to be made, it should be of short duration.
- Mr Aikens' primary position was that an injunction should be denied by reference to the "good working rule" that A. L. Smith LJ articulated in Shelfer (see paragraph 75 above) and as being unworkable and oppressive (as in Cray Valley – see paragraph 76 above). Mr Aikens said that any injury to Kerry could be no more than small since the confidential information largely relates to food safety parameters which would have to be adopted in some form in any production process and that, while quantifying the loss might not be straightforward, Kerry could certainly be adequately compensated by a small money payment. He submitted, too, that it would be oppressive to force Bakkavor to find a way to make its products safe which is different from Kerry's and that the problems would be compounded by the fact that the information has been very widely distributed within Bakkavor.
- Mr St Quintin's response was in part based on concern that, if Bakkavor were allowed to proceed with its plans, Kerry's Padiham plant could become unviable and have to close. The grant of an injunction would, however, be unlikely to obviate this risk unless (which I cannot see would be appropriate) it prevented Bakkavor from developing infused oils of its own for an extended period even without using the confidential information. Supposing, say, that Bakkavor were free to employ a third party with no access to the confidential information to devise oils, it seems to me that Kerry would be likely to find itself, in time, facing a similar threat to its sales of infused oils and, hence, to the viability of the Padiham plant.
- Even so, I do not consider that it would be appropriate for me to deny Kerry any injunctive relief on the basis of oppression, unworkability or the Shelfer "good working rule". As is apparent from Vestergaard, a claimant who has established breach of confidence and a sufficient risk of repetition is generally entitled to an injunction. It is not apparent to me, moreover, that Kerry would suffer no more than small loss if no injunction were granted, and Mr Aikens himself recognised that quantifying such loss could be problematic. As for oppression and unworkability, the answer is surely to ensure that an injunction is so framed as not to be unworkable or operate oppressively rather than to decline to grant one at all.
- On the other hand, Mr St Quintin has not persuaded me that I should grant a permanent injunction. Mr Aikens submitted that such an injunction would put Kerry in a better position than if there had been no misuse of its information and that that could not be right (compare Vestergaard, at paragraph 93(iv)). I agree. Kerry's information is, as it appears to me, to be seen as having limited confidentiality. Given time, it would be possible for Bakkavor to replicate Kerry's oils using information in the public domain. Even without the confidential information, Bakkavor would be aware of what the Kerry products look like and taste like and what ingredients are declared on their labels. Coupling that knowledge with, in particular, the recognised repertoire of ways in which to address the relevant food safety issues, Bakkavor would, I think, be able to reinvent Kerry's production techniques. It may be that it would not ultimately choose to heat for exactly the same combination of [detail redacted] as Kerry and that it would adopt a different ratio of oil and herb/infusion ingredient, but that would be because it had preferred a slightly different "recipe" rather than because it had not been able to achieve Kerry's.
- In the circumstances, it seems to me that the springboard doctrine is in point. That means that the duration of injunctive relief should be calculated by reference to "the time it would take someone starting from public domain sources to reverse engineer or compile the information" (to quote from Arnold J in Vestergaard).
- Dr Stuart-Moonlight was understandably wary of committing herself on quite how long it would take to develop oils from scratch. She commented that it was difficult to say, but said that three years might be a reasonable estimate in the case of a new product development team with reasonable resources working on the project on a full-time basis. Professor Berryman was much more optimistic. He thought that the development work could be done in a year, including a month's initial reading and another three months when "you'd start off with a test at the bench where you mix different levels and so on".
- That this three-month period is too short is indicated by an email sent to Mr Peberdy on 1 May 2013 by Kerfoot, one of the third party suppliers mentioned in paragraph 33 above. Referring to sample oils that Kerfoot had produced, the author said:
"We have completed a huge amount of tests over the past 8 months using varied temps and times to complete the infusion and the 4 we submitted we feel are the closest to suit your needs."
Testing "varied temps and times" thus seems to have taken eight months.
- It is also noteworthy that none of the three third party suppliers asked to produce a sample oil in 2012-2013 came up with Kerry's combination [detail redacted].
- I bear in mind that, even with the benefit of the confidential information, it has taken Bakkavor a number of years to develop its oil. Some three and a half years had passed since the launch of "Project Aequo" by the time an injunction was granted in December of last year (see paragraph 32 above). Yet Bakkavor was not in fact ready to start commercial production even then: it was just coming to be appreciated that its product was not safe (see paragraph 52 above). While there is no evidence on the point, it seems reasonable to assume that it might have taken six months to obtain the piece of equipment that was presumably needed to remedy the problem. In contrast, SpringThyme developed the production techniques that Kerry now uses within a three-year period (see paragraphs 19-21 above).
- Even so, I think it reasonable to infer that Bakkavor will have obtained some head start by its improper use of the confidential information. Doing the best I can, it seems to me fair to estimate that a head start of a year will have been gained. That being so, I should, I think, grant an injunction running until a year after the date by which Bakkavor might have been expected to have remedied its safety issue in the absence of any injunction. I shall, accordingly, grant an injunction lasting until 30 June 2017 in essentially the terms of paragraph (2) of Judge Havelock-Allan's order. Like Judge Havelock-Allan's order, the injunction will not prohibit Bakkavor from undertaking development work.
- If Kerry wishes, I shall also give directions for an inquiry as to financial relief.
Conclusion
- I can summarise my conclusions as follows:
i) Bakkavor has misused information confidential to Kerry relating to the production of edible infused oils;
ii) an injunction along the lines of that granted by Judge Havelock-Allan should be granted and extend until 30 June 2017; and
iii) it is also appropriate to give directions, if Kerry wishes, for an inquiry as to financial relief.
