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

1. EQUITY & TRUST II
INJUNCTIONS
ANTON PILLER ORDER
Jeong Chun Phuoc Jeongphu@yahoo.com mobile direct: 0196288699
20 December 2012 – MMU Law School, Multimedia University of Malaysia
20 December 2012
MULTIMEDIA UNIVERSITY OF MALAYSIA
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2. INJUNCTIONS
ANTON PILLER ORDER
1 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
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3. INJUNCTIONS
ANTON PILLER ORDER
Introduction
Definition
Anton Piller order
Anton Piller order and related Conditions
Case Law Analysis
Case Review
Comparative Observation
Concluding Remarks
Further Readings
Q & A Session
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4. INJUNCTIONS
Anton Piller order
“When security and equality are in conflict, it will not do to
hesitate a moment. Equality must yield.”
Jeremy Bentham (1748-1832)
Principles of Legislation, 1789
Introduction
Definition
An extraordinary relief
Bell Expressvu Limited Partnership v. Rodgers
(Tomico Industries) 52 C.P.C. (6th) 312
Justice Pepall : "An Anton Piller order is extraordinary
relief….
Nature and Scope
In a pre-litigation process
Anton Piller Order is a special order of court.
Range
Civil litigation
Trademark cases
(See Trademark Act 1976)
Copyright cases
(see Copyright Act 1987)
Patent infringements cases, etc
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5. (See Patents Act 1983)
Application
Ex parte application
Application by one party(Plaintiff) to preserve
crucial evidence against another
party(Defendants).
The damage if the AP order is not granted,
potential or actual, must be very substantial to
the plaintiff.
Purpose
In an infringement process
To permit plaintiff’s solicitor to enter
Defendant’s premise.
To search and collect evidence of infringement
by Defendant(s).
The order is designed to prevent the defendant
from committing certain actions/activities :
Activities
concealing, removing or destroying vital
evidence such as documents, or other
moveable property, prior to an inter partes
hearing of a pending civil action.
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6. Purpose
The purpose of the order is to prevent the
removal or destruction of evidence before inter
partes application.
Landmark Case of Reference
Anton Piller KG v Manufacturing Processes
Ltd [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. 189
Concept of Anton Piller Order
Lord Denning MR
“…if the defendant were forewarned, there is a
grave danger that vital evidence will be
destroyed, that papers will be burnt or lost or
hidden, or taken beyond the jurisdiction, and so
the 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.
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7. European Union
Directive 2004/48/EC of the European Parliament
and of the Council of 29 April 2004 on the
enforcement of intellectual property rights (also
known as "(IPR) Enforcement Directive"
Article 7 of (IPR) Enforcement Directive"
“civil search warrant”
The AP order allows the plaintiff to enter the
defendant’s premises.
Search, collect and make copies of
documents/materials.
Guiding Consideration
All in all, such orders are rarely made, and will
only be considered by the courts if there is no
suitable alternative method of securing justice
for the plaintiff.
Obligation Compliance
Failure by Defendant
Failure to comply with an Anton Piller order is
punishable by contempt of court.
Comparative Note
Australian Case
Columbia Picture Industries v Robinson [1987] Ch 38)
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8. Failure by Plaintiff
Evidential value and acceptance of illegally
obtained evidence/materials/documents.
Comparative Note
Australian Case
Columbia Picture Industries v Robinson [1987] Ch 38)
Test and Legal Requirements
Conditions for granting an Anton Piller
order
General Guidelines
The Three Step Test
- There is an extremely strong prima facie
case against the respondent,
- The damage, potential or actual, must be
very serious for the applicant, and
-There must be clear evidence that the
respondents have in their possession relevant
documents or things and that there is a real
possibility that they may destroy such material
before an inter partes application can be made.
Comparative Note
New Zealand
33.3 of the High Court rules.
(a) an applicant seeking the order has a strong prima
facie case on an accrued case of action.
(b) the potential or actual loss or damage to the applicant
will be serious if the search order is not made
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9. (c) there is sufficient evidence in relation to a respondent
that -the respondent possesses relevant evidentiary aterial;
and there is a real possibility that the respondent might
destroy such material or cause it to be unavailable for use
in evidence in a proceeding or anticipated proceeding
before the court.
Comparative Analysis
Supreme Court of Canada case
Celanese Canada Inc. v. Murray Demolition
Corp., 2006 SCC 36 (CanLII), [2006] 2 SCR
189
Four Step Test
-The plaintiff has demonstrated a strong prima
facie case
-The damage to the plaintiff of the respondent's
alleged misconduct, potential or actual, must be
very serious.
-There must be convincing evidence that the
defendant has in its possession incriminating
documents or things
-It must be shown that there is a real possibility
that the defendant may destroy such material
before the discovery process can do its work
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10. Summary
An extremely strong prima facie case
Due to the extraordinary nature of the
remedy(human rights and privacy concerns)
the Court is always reluctant to allow such an
Order.
Practice of extreme care
-The merits of the case in question
-Circumstances of the case
-Evidence submitted
Plaintiffs must prove that they have a “very” or
“extremely” strong prima facie case.
Very serious potential or actual damage to the
plaintiff
INJUNCTIONS
Conditions for granting an Anton Piller order
Defendants possess incriminating materials
-Clear evidence of such documents/materials
Purpose Analysis
Anton Piller orders
Preservation of evidence for the purpose of civil
trial/action
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11. Guiding consideration
If plaintiff gives advance notice of the remedy
sought/action to be taken to the defendants,
there is a real danger that crucial evidence will
be destroyed, concealed or taken out of the
jurisdiction by the defendants.
Rationale Review
There is a high and real possibility that
defendants may, unless properly
prevented/restrained(by way of Anton Piller
Order), destroy such material before the
commencement of inter partes application
process.
INJUNCTIONS
Discussion
Conditions for granting an Anton Piller order
Prevention of Abuse
Due to possible abuse of process, stringent
conditions must be shown by the Plaintiff in all
Anton Piller Order application.
Lock International plc v Beswick (1989) 1 WLR 1268,
Anton Piller orders were thought to be "inherently
oppressive".
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12. Copyright scenario
Chappell v. United Kingdom (Series A No
152; Application No 10461/83 European Court
of Human Rights (1990) 12 EHRR 1 30
MARCH 1989
Anton Piller Order - Copyright breaches
HEADNOTE:
The applicant was suspected of committing
some Copyright infringements.
Under an Anton Piller order made by the High
Court against him, the applicants business
premises which were also his home were
searched by the authorities. The order was
executed simultaneously with a police search
warrant. The applicant filed suit alleging
violations of Article 8 of the European
Convention on Human Rights. The court held
that there was no breach of Article 8 of the
European Convention on Human Rights.
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13. Case Study Analysis and Review
Universal Thermosensors Ltd v Hibben
[1992] 1 WLR 840
Sir Donald Nicholls VC laid down the strict
rules which must be shown by the Plaintiff
Arthur Anderson & Co v Interfood Sdn Bhd
[2005] 2 AMR 650, CA; [2005] 6 MLJ 239
followed Universal Thermosensors Ltd v
Hibben [1992] 1 WLR 840
The Legal Requirements
Issues
1. The order should normally contain a term
that before complying the defendant may obtain
legal advice, provided this is done forthwith.
•Unless this is clearly not appropriate, the
execution of orders must be restricted to
working days and normal working hours.
•The order may contain an injunction to restrain
the defendant from informing others of the
existence of the order for a period as may be
appropriate in the circumstances of the case,
save a communication with a legal advisor for
the purposes of securing legal advice.
•Except where there are good reasons for doing
otherwise, the order should not be executed at
business premises save in the presence of a
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14. responsible officer or representative of the
company or trader in question.
INJUNCTIONS
Conditions for granting an Anton Piller order
Execution Procedure
Executed during office/business hours.
Universal Thermosensors Ltd v Hibben
[1992] 1 WLR 840
A detailed list of the items/documents to be
removed by the Plaintiff from the Defendant’s
premises.
Defendant be given an opportunity to
verify/check that list.1
Ridgewood Electric Ltd. (1990) v. Robbie
74 O.R. (3d) 514
Justice Corbett
"... search warrant ... an exercise of the
court's inherent jurisdiction to protect its
own process. The order does not authorize
entry. Rather, it commands the defendant
to permit entry. The defendant may deny
1
If the order is to be executed at a private house, and it is likely that a woman
may be in the house and alone, the solicitor serving the order must be, or must
be accompanied by, a woman
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15. entry, and thereafter face contempt
proceedings and possible adverse
inferences. However, the plaintiff's agents
may not use force to effect entry in the face
of the defendant's denial of permission.”
Proper Undertaking
Applicant Plaintiff has to give an undertaking as
to damages, and also to pay reasonable
fees/costs to independent legal
practitioner(third party solicitor).
(i) Plaintiff may be required to make an
undertaking that the execution of the AP order
be supervised by a neutral party(third party
solicitor)
(ii) Solicitor is familiar and has experience in
carrying out execution of Anton Piller orders;
(iii) solicitor should prepare a written report with
regard to the execution of the orders at the
Defendants’ premise;
(iv) a copy of the execution report should be
given to the defendant; and
(v) plaintiff is to present that report at the inter
partes hearing/application.
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16. Arthur Anderson & Co v Interfood Sdn Bhd
[2005] 6 MLJ 239
Several interim reliefs were granted to the
Respondent against the appellant
Main issue
Anton Piller order
Appellant applied to set aside the Order while
the respondent sought an order to continue to
retain the documents seized pursuant to the
Order.
The same High Court which granted the
Order(1) allowed the respondent’s application
to retain the documents; but (2) dismissed the
appellant’s application to set aside the order.
The appellant appealed against both orders.
In allowing both appeals, the court viewed that
even with the absence of any Practice Direction,
the application and execution of an Anton Piller
order is subject to stringent requirements,
guidelines and safeguards. In other words, any
departure would be contrary to the common law
of Malaysia as such point has already been
well established.
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17. Anton Piller order and privilege from self-
incrimination
In respect of the local law as to the applicability
of the privilege from self incrimination and the
application for an Anton Piller order in the
context of interlocutory proceedings, there are
two conflicting views.
First Position
Application : The privilege remains applicable?
PMK Rajah v Worldwide Commodities Sdn
Bhd [1985] 1 MLJ 86
The court viewed that the defendants were
entitled to the privilege not to give discovery of
documents, the disclosure of which would
incriminate them. In this case, the first, second,
sixth and seventh defendants sought for an
order of the court to discharge an Anton Piller
order granted on Dec 30, 1982.
The defendants contended that (a) the plaintiff
had misled the court by stating in his affidavit in
support of the ex parte application that the first
defendant was required by law to keep a
segregated bank account in respect of the
plaintiff & (b) it was not possible to show the
trading statements to solicitors of the plaintiff
without disclosing particulars of other clients
which were confidential in nature.
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18. The production of the documents referred to in
the order would incriminate the defendants by
providing evidence on which they could be
prosecuted for offences under the Commodities
Trading Act 1980 and for conspiracy and fraud.
Application of the privilege from self
incrimination and the application for an Anton
Piller order
In interlocutory proceedings
Two different views
First Opinion
The privilege remains applicable
Case Study
Riedal-de Haen AG v Liew Keng Pang [1989]
2 MLJ 400
The court viewed that before the privilege
against self-incrimination (‘the privilege’) can be
claimed successfully, it must be shown that that
there is a real risk that incriminating answers
would expose the person concerned to arrest
or prosecution for any criminal offences.
In this case, the plaintiffs obtained an Anton
Piller order against the defendant ordering the
defendant inter alia to disclose the names of
their suppliers and customers of goods bearing
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19. the plaintiffs’ trademarks. The defendant
applied to discharge the order on the ground
that it infringed the privilege against self-
incrimination.
Case law study
First Opinion
Arjunan a/l Ramasamy & 9 Ors v Kesatuan
Kebangsaan Pekerja-Pekerja Ladang & 12
Ors [1993] 1 MLJ 326
The court viewed that the defendants were
entitled to the privilege not to give discovery of
documents because such disclosure would
incriminate them.
In this case, one the issues before the court
was whether the defendants must give
discovery documents which might subject them
to prosecution.
Counsel for the defendants argued that under
sec 55(3) of the Trade Unions Act 1959, the
account should be verified by statutory
declaration and if not true, would subject their
members (of the Trade Union/defendants) to
prosecution.
In respect of the local law as to the applicability
of the privilege from self incrimination and the
application for an Anton Piller order in the
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20. context of interlocutory proceedings, there are
two conflicting views
Second Opinion
The privilege no longer exists
Case law study
Television Broadcasts Ltd v Mandarin
Video Holdings Sdn Bhd [1989] 2 MLJ.
See also AG of Hong Kong v Zauyah Wan
Cik [1995] 2 MLJ 620
The court viewed that in Malaysia, the common
law privilege against self-incrimination has
been removed by sec 132(1) of the Evidence
Act.
The section applies where a court in this
country is recording evidence in municipal
proceedings or in aid of proceedings pending
before a foreign tribunal.
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21. INJUNCTIONS
Conclusion
Both types of injunctions do play vital roles in
helping the plaintiff in his or her journey or
quest for justice.
Example
A Mareva injunction would restrain a defendant
from disposing or otherwise dealing with any of
their assets within the jurisdiction of the court,
in such a way as not to satisfy judgment in
favour of the plaintiff.
On the other hand, an Anton Piller order would
prevent the defendant from concealing,
removing or destroying vital evidence such as
documents, or other moveable property, prior to
an inter partes hearing of the pending action
Courts are aware of the dangers associated
with both types of injunctions and thus rules or
guidelines have been formulated in the process
of granting these two types of injunctions.
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22. INJUNCTIONS
Case law and current Judicial Update
GS Gill Sdn Bhd V. Descente, Ltd
Federal Court, Putrajaya
Zulkefli Ahmad Makinuddin Fcj, James Foong Fcj,
Heliliah Mohd Yusof Fcj
[Civil Appeal No: 02(F)-46-2008 (W)]
12 April 2010
Further Readings and Case Studies
EU CASE LAW RREVIEW
2. BARTHOLD V GERMANY (1985) 7 EHRR 383.
3. BOOKER McCONNELL plc v PLASCOW [1985]
RPC 425.
4. COLUMBIA PICTURES INDUSTRIES INC V
ROBINSON [1986] 3 All ER 338, [1986] FSR 367.
5. DORMEUIL FRERES SA V NICOLIAN
INTERNATIONAL (TEXTILES) LTD [1988] 3 All ER
l97.
6. HALLMARK CARDS INC V IMAGE ARTS LTD
[1977] FSR 153.
7. HYTRAC CONVEYORS LTD V CONVEYORS
INTERNATIONAL LTD [1982] 3 All ER 4l5.
8. LEANDER V SWEDEN (1987) 9 EHRR 433.
9. MALONE V UNITED KINGDOM (1985) 7 EHRR
14.
10. OLSSON V SWEDEN (1989) 11 EHRR 259.
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23. Text, Cases and Materials on Equity and Trusts,
Fourth Edition
Routledge-Cavendish; 4 edition (August 1,
2005)
Commonwealth Caribbean Law of Trusts
Third Edition Gilbert Kodilinye, Trevor
Carmichael
17th 2012 by Routledge-Cavendish
Equity and Trusts
7th Edition Alastair Hudson, Alastair Hudson
28th 2012 by Routledge
Text, Cases and Materials on Equity and Trusts
4th Edition Mohamed Ramjohn
23rd 2008 by Routledge-Cavendish
and other current local text books
INJUNCTIONS
Concluding Remarks and Considerations
Application Performance Analysis
Criticisms
Comparative Jurisdiction Analysis
Recommendations for Reform
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24. INJUNCTIONS
Questions & Answers Session
Tea Break and Strategic Discussion
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25. TUTORIAL QUESTION
Question 1
Critically analyse Anton Piller v. Manufacturing
Processes [1976] Ch.55) or APO and compare it
with 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 201
Question 2
Explain all practical safeguards that must be
observed by both parties (Plaintiff and Defendant) in
the execution of the Anton Piller Order.
Question 3
Critically compare and contrast Mareva Injunction
with the Anton Piller Order and ascertain the current
Malaysia judicial position towards these two
remedies.
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