Anton piller order l6 l7-_20 dec20 2013_jeong cp_

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anton piller oder, definition condition function and comparative analysis with UK Canada Intelectual Property Rights, patent Law; Extraordinary relief by court

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Anton piller order l6 l7-_20 dec20 2013_jeong cp_

  1. 1. EQUITY & TRUST IIINJUNCTIONSANTON PILLER ORDERJeong Chun Phuoc Jeongphu@yahoo.com mobile direct: 019628869920 December 2012 – MMU Law School, Multimedia University of Malaysia20 December 2012MULTIMEDIA UNIVERSITY OF MALAYSIA Page 1 of 25
  2. 2. INJUNCTIONSANTON PILLER ORDER1 ADMINISTRATIVE ISSUES Assignment- “Guided Consultation” Initiative Exercise /2008-2013/ “Presentation Mooting Style” Initiative /2008-2013/2 LECTURE SLIDES PRESENTATION (1.40)3 Objectives /Learning Outcomes(1.40)4 Case Law Analysis (1.40)5 “Analysis Of Legal Issues In Newspapers Of National Importance” Initiative /2008- 2013/(ALI-np)6 Q & A Session (10)7 Conclusion Page 2 of 25
  3. 3. INJUNCTIONSANTON PILLER ORDERIntroductionDefinitionAnton Piller orderAnton Piller order and related ConditionsCase Law AnalysisCase ReviewComparative ObservationConcluding RemarksFurther ReadingsQ & A Session Page 3 of 25
  4. 4. INJUNCTIONSAnton Piller order“When security and equality are in conflict, it will not do tohesitate a moment. Equality must yield.” Jeremy Bentham (1748-1832) Principles of Legislation, 1789IntroductionDefinitionAn extraordinary reliefBell Expressvu Limited Partnership v. Rodgers(Tomico Industries) 52 C.P.C. (6th) 312Justice Pepall : "An Anton Piller order is extraordinaryrelief….Nature and ScopeIn a pre-litigation processAnton Piller Order is a special order of court.RangeCivil litigationTrademark cases(See Trademark Act 1976)Copyright cases(see Copyright Act 1987)Patent infringements cases, etc Page 4 of 25
  5. 5. (See Patents Act 1983)ApplicationEx parte applicationApplication by one party(Plaintiff) to preservecrucial evidence against anotherparty(Defendants).The damage if the AP order is not granted,potential or actual, must be very substantial tothe plaintiff.PurposeIn an infringement processTo permit plaintiff’s solicitor to enterDefendant’s premise.To search and collect evidence of infringementby Defendant(s).The order is designed to prevent the defendantfrom committing certain actions/activities :Activitiesconcealing, removing or destroying vitalevidence such as documents, or othermoveable property, prior to an inter parteshearing of a pending civil action. Page 5 of 25
  6. 6. PurposeThe purpose of the order is to prevent theremoval or destruction of evidence before interpartes application.Landmark Case of ReferenceAnton Piller KG v Manufacturing ProcessesLtd [1976] 1 All ER 779 Comparative Analysis Note EMI Limited v Pandit [1975] 1 All ER 418 and Celanese Canada Inc. v. Murray Demolition Corp., [2006] 2 S.C.R. 189Concept of Anton Piller OrderLord Denning MR“…if the defendant were forewarned, there is agrave danger that vital evidence will bedestroyed, that papers will be burnt or lost orhidden, or taken beyond the jurisdiction, and sothe ends of justice can be defeated…” Comparative UK Note 1 UK Procedural Law Rule 40 – interlocutory injunction or mandatory order Section 101 of UK Courts of Justice Act Rule 45.01(1) - court may make an interim order for the custody or preservation of property in question in a proceeding or relevant to an issue in a proceeding. Page 6 of 25
  7. 7. European UnionDirective 2004/48/EC of the European Parliamentand of the Council of 29 April 2004 on theenforcement of intellectual property rights (alsoknown as "(IPR) Enforcement Directive"Article 7 of (IPR) Enforcement Directive"“civil search warrant”The AP order allows the plaintiff to enter thedefendant’s premises.Search, collect and make copies ofdocuments/materials.Guiding ConsiderationAll in all, such orders are rarely made, and willonly be considered by the courts if there is nosuitable alternative method of securing justicefor the plaintiff.Obligation ComplianceFailure by DefendantFailure to comply with an Anton Piller order ispunishable by contempt of court. Comparative Note Australian Case Columbia Picture Industries v Robinson [1987] Ch 38) Page 7 of 25
  8. 8. Failure by PlaintiffEvidential value and acceptance of illegallyobtained evidence/materials/documents. Comparative Note Australian Case Columbia Picture Industries v Robinson [1987] Ch 38)Test and Legal RequirementsConditions for granting an Anton PillerorderGeneral GuidelinesThe Three Step Test- There is an extremely strong prima faciecase against the respondent, - The damage, potential or actual, must bevery serious for the applicant, and -There must be clear evidence that therespondents have in their possession relevantdocuments or things and that there is a realpossibility that they may destroy such materialbefore an inter partes application can be made.Comparative NoteNew Zealand33.3 of the High Court rules. (a) an applicant seeking the order has a strong primafacie case on an accrued case of action. (b) the potential or actual loss or damage to the applicantwill be serious if the search order is not made Page 8 of 25
  9. 9. (c) there is sufficient evidence in relation to a respondentthat -the respondent possesses relevant evidentiary aterial;and there is a real possibility that the respondent mightdestroy such material or cause it to be unavailable for usein evidence in a proceeding or anticipated proceedingbefore the court.Comparative AnalysisSupreme Court of Canada caseCelanese Canada Inc. v. Murray DemolitionCorp., 2006 SCC 36 (CanLII), [2006] 2 SCR189Four Step Test-The plaintiff has demonstrated a strong primafacie case-The damage to the plaintiff of the respondentsalleged misconduct, potential or actual, must bevery serious.-There must be convincing evidence that thedefendant has in its possession incriminatingdocuments or things-It must be shown that there is a real possibilitythat the defendant may destroy such materialbefore the discovery process can do its work Page 9 of 25
  10. 10. SummaryAn extremely strong prima facie caseDue to the extraordinary nature of theremedy(human rights and privacy concerns)the Court is always reluctant to allow such anOrder.Practice of extreme care-The merits of the case in question-Circumstances of the case-Evidence submittedPlaintiffs must prove that they have a “very” or“extremely” strong prima facie case.Very serious potential or actual damage to theplaintiffINJUNCTIONSConditions for granting an Anton Piller orderDefendants possess incriminating materials-Clear evidence of such documents/materialsPurpose AnalysisAnton Piller ordersPreservation of evidence for the purpose of civiltrial/action Page 10 of 25
  11. 11. Guiding considerationIf plaintiff gives advance notice of the remedysought/action to be taken to the defendants,there is a real danger that crucial evidence willbe destroyed, concealed or taken out of thejurisdiction by the defendants.Rationale ReviewThere is a high and real possibility thatdefendants may, unless properlyprevented/restrained(by way of Anton PillerOrder), destroy such material before thecommencement of inter partes applicationprocess.INJUNCTIONSDiscussionConditions for granting an Anton Piller orderPrevention of AbuseDue to possible abuse of process, stringentconditions must be shown by the Plaintiff in allAnton Piller Order application. Lock International plc v Beswick (1989) 1 WLR 1268, Anton Piller orders were thought to be "inherently oppressive". Page 11 of 25
  12. 12. Copyright scenarioChappell v. United Kingdom (Series A No152; Application No 10461/83 European Courtof Human Rights (1990) 12 EHRR 1 30MARCH 1989Anton Piller Order - Copyright breachesHEADNOTE:The applicant was suspected of committingsome Copyright infringements.Under an Anton Piller order made by the HighCourt against him, the applicants businesspremises which were also his home weresearched by the authorities. The order wasexecuted simultaneously with a police searchwarrant. The applicant filed suit allegingviolations of Article 8 of the EuropeanConvention on Human Rights. The court heldthat there was no breach of Article 8 of theEuropean Convention on Human Rights. Page 12 of 25
  13. 13. Case Study Analysis and ReviewUniversal Thermosensors Ltd v Hibben[1992] 1 WLR 840Sir Donald Nicholls VC laid down the strictrules which must be shown by the PlaintiffArthur Anderson & Co v Interfood Sdn Bhd[2005] 2 AMR 650, CA; [2005] 6 MLJ 239followed Universal Thermosensors Ltd vHibben [1992] 1 WLR 840The Legal RequirementsIssues1. The order should normally contain a termthat before complying the defendant may obtainlegal advice, provided this is done forthwith.•Unless this is clearly not appropriate, theexecution of orders must be restricted toworking days and normal working hours.•The order may contain an injunction to restrainthe defendant from informing others of theexistence of the order for a period as may beappropriate in the circumstances of the case,save a communication with a legal advisor forthe purposes of securing legal advice.•Except where there are good reasons for doingotherwise, the order should not be executed atbusiness premises save in the presence of a Page 13 of 25
  14. 14. responsible officer or representative of thecompany or trader in question.INJUNCTIONSConditions for granting an Anton Piller orderExecution ProcedureExecuted during office/business hours. Universal Thermosensors Ltd v Hibben [1992] 1 WLR 840A detailed list of the items/documents to beremoved by the Plaintiff from the Defendant’spremises.Defendant be given an opportunity toverify/check that list.1 Ridgewood Electric Ltd. (1990) v. Robbie 74 O.R. (3d) 514 Justice Corbett "... search warrant ... an exercise of the courts inherent jurisdiction to protect its own process. The order does not authorize entry. Rather, it commands the defendant to permit entry. The defendant may deny1 If the order is to be executed at a private house, and it is likely that a womanmay be in the house and alone, the solicitor serving the order must be, or mustbe accompanied by, a woman Page 14 of 25
  15. 15. entry, and thereafter face contempt proceedings and possible adverse inferences. However, the plaintiffs agents may not use force to effect entry in the face of the defendants denial of permission.”Proper UndertakingApplicant Plaintiff has to give an undertaking asto damages, and also to pay reasonablefees/costs to independent legalpractitioner(third party solicitor).(i) Plaintiff may be required to make anundertaking that the execution of the AP orderbe supervised by a neutral party(third partysolicitor)(ii) Solicitor is familiar and has experience incarrying out execution of Anton Piller orders;(iii) solicitor should prepare a written report withregard to the execution of the orders at theDefendants’ premise;(iv) a copy of the execution report should begiven to the defendant; and(v) plaintiff is to present that report at the interpartes hearing/application. Page 15 of 25
  16. 16. Arthur Anderson & Co v Interfood Sdn Bhd[2005] 6 MLJ 239Several interim reliefs were granted to theRespondent against the appellantMain issueAnton Piller orderAppellant applied to set aside the Order whilethe respondent sought an order to continue toretain the documents seized pursuant to theOrder.The same High Court which granted theOrder(1) allowed the respondent’s applicationto retain the documents; but (2) dismissed theappellant’s application to set aside the order.The appellant appealed against both orders.In allowing both appeals, the court viewed thateven with the absence of any Practice Direction,the application and execution of an Anton Pillerorder is subject to stringent requirements,guidelines and safeguards. In other words, anydeparture would be contrary to the common lawof Malaysia as such point has already beenwell established. Page 16 of 25
  17. 17. Anton Piller order and privilege from self-incriminationIn respect of the local law as to the applicabilityof the privilege from self incrimination and theapplication for an Anton Piller order in thecontext of interlocutory proceedings, there aretwo conflicting views.First PositionApplication : The privilege remains applicable?PMK Rajah v Worldwide Commodities SdnBhd [1985] 1 MLJ 86The court viewed that the defendants wereentitled to the privilege not to give discovery ofdocuments, the disclosure of which wouldincriminate them. In this case, the first, second,sixth and seventh defendants sought for anorder of the court to discharge an Anton Pillerorder granted on Dec 30, 1982.The defendants contended that (a) the plaintiffhad misled the court by stating in his affidavit insupport of the ex parte application that the firstdefendant was required by law to keep asegregated bank account in respect of theplaintiff & (b) it was not possible to show thetrading statements to solicitors of the plaintiffwithout disclosing particulars of other clientswhich were confidential in nature. Page 17 of 25
  18. 18. The production of the documents referred to inthe order would incriminate the defendants byproviding evidence on which they could beprosecuted for offences under the CommoditiesTrading Act 1980 and for conspiracy and fraud.Application of the privilege from selfincrimination and the application for an AntonPiller orderIn interlocutory proceedingsTwo different viewsFirst OpinionThe privilege remains applicableCase StudyRiedal-de Haen AG v Liew Keng Pang [1989]2 MLJ 400The court viewed that before the privilegeagainst self-incrimination (‘the privilege’) can beclaimed successfully, it must be shown that thatthere is a real risk that incriminating answerswould expose the person concerned to arrestor prosecution for any criminal offences.In this case, the plaintiffs obtained an AntonPiller order against the defendant ordering thedefendant inter alia to disclose the names oftheir suppliers and customers of goods bearing Page 18 of 25
  19. 19. the plaintiffs’ trademarks. The defendantapplied to discharge the order on the groundthat it infringed the privilege against self-incrimination.Case law studyFirst OpinionArjunan a/l Ramasamy & 9 Ors v KesatuanKebangsaan Pekerja-Pekerja Ladang & 12Ors [1993] 1 MLJ 326The court viewed that the defendants wereentitled to the privilege not to give discovery ofdocuments because such disclosure wouldincriminate them.In this case, one the issues before the courtwas whether the defendants must givediscovery documents which might subject themto prosecution.Counsel for the defendants argued that undersec 55(3) of the Trade Unions Act 1959, theaccount should be verified by statutorydeclaration and if not true, would subject theirmembers (of the Trade Union/defendants) toprosecution.In respect of the local law as to the applicabilityof the privilege from self incrimination and theapplication for an Anton Piller order in the Page 19 of 25
  20. 20. context of interlocutory proceedings, there aretwo conflicting viewsSecond OpinionThe privilege no longer existsCase law studyTelevision Broadcasts Ltd v MandarinVideo Holdings Sdn Bhd [1989] 2 MLJ.See also AG of Hong Kong v Zauyah WanCik [1995] 2 MLJ 620The court viewed that in Malaysia, the commonlaw privilege against self-incrimination hasbeen removed by sec 132(1) of the EvidenceAct.The section applies where a court in thiscountry is recording evidence in municipalproceedings or in aid of proceedings pendingbefore a foreign tribunal. Page 20 of 25
  21. 21. INJUNCTIONSConclusionBoth types of injunctions do play vital roles inhelping the plaintiff in his or her journey orquest for justice.ExampleA Mareva injunction would restrain a defendantfrom disposing or otherwise dealing with any oftheir assets within the jurisdiction of the court,in such a way as not to satisfy judgment infavour of the plaintiff.On the other hand, an Anton Piller order wouldprevent the defendant from concealing,removing or destroying vital evidence such asdocuments, or other moveable property, prior toan inter partes hearing of the pending actionCourts are aware of the dangers associatedwith both types of injunctions and thus rules orguidelines have been formulated in the processof granting these two types of injunctions. Page 21 of 25
  22. 22. INJUNCTIONSCase law and current Judicial UpdateGS Gill Sdn Bhd V. Descente, LtdFederal Court, PutrajayaZulkefli Ahmad Makinuddin Fcj, James Foong Fcj,Heliliah Mohd Yusof Fcj[Civil Appeal No: 02(F)-46-2008 (W)]12 April 2010Further Readings and Case StudiesEU CASE LAW RREVIEW2. BARTHOLD V GERMANY (1985) 7 EHRR 383.3. BOOKER McCONNELL plc v PLASCOW [1985]RPC 425.4. COLUMBIA PICTURES INDUSTRIES INC VROBINSON [1986] 3 All ER 338, [1986] FSR 367.5. DORMEUIL FRERES SA V NICOLIANINTERNATIONAL (TEXTILES) LTD [1988] 3 All ERl97.6. HALLMARK CARDS INC V IMAGE ARTS LTD[1977] FSR 153.7. HYTRAC CONVEYORS LTD V CONVEYORSINTERNATIONAL LTD [1982] 3 All ER 4l5.8. LEANDER V SWEDEN (1987) 9 EHRR 433.9. MALONE V UNITED KINGDOM (1985) 7 EHRR14.10. OLSSON V SWEDEN (1989) 11 EHRR 259. Page 22 of 25
  23. 23. Text, Cases and Materials on Equity and Trusts,Fourth EditionRoutledge-Cavendish; 4 edition (August 1,2005)Commonwealth Caribbean Law of TrustsThird Edition Gilbert Kodilinye, TrevorCarmichael17th 2012 by Routledge-CavendishEquity and Trusts7th Edition Alastair Hudson, Alastair Hudson28th 2012 by RoutledgeText, Cases and Materials on Equity and Trusts4th Edition Mohamed Ramjohn 23rd 2008 by Routledge-Cavendishand other current local text booksINJUNCTIONSConcluding Remarks and ConsiderationsApplication Performance AnalysisCriticismsComparative Jurisdiction AnalysisRecommendations for Reform Page 23 of 25
  24. 24. INJUNCTIONSQuestions & Answers SessionTea Break and Strategic Discussion Page 24 of 25
  25. 25. TUTORIAL QUESTIONQuestion 1Critically analyse Anton Piller v. ManufacturingProcesses [1976] Ch.55) or APO and compare itwith the legal position in BBMB v Loraine Osman[1985] 2 MLJ 236 Comparative Analysis Singapore case Computerland Corp V Yew Seng Computers Pte Ltd [1991] 3 MLJ 201Question 2Explain all practical safeguards that must beobserved by both parties (Plaintiff and Defendant) inthe execution of the Anton Piller Order.Question 3Critically compare and contrast Mareva Injunctionwith the Anton Piller Order and ascertain the currentMalaysia judicial position towards these tworemedies. Page 25 of 25

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