[13.

70] 13: Preserving and Inspecting Subject-Matter of Litigation 571

A proceeding should not be frustrated or rendered useless from either of the

parties destroying or disposing of the subject-matter. The property, depending
on its nature, may be detained in the possession of a person nominated by the
court, or it may be deposited in court. Given this as the object of the rule, the
court should not concern itself too deeply with the merits of the proceeding
when it is asked to preserve or detain property. At least this is the view
expressed in Johnson v Tobacco Leaf Marketing Board [1967] VR 427 at 430
per Gowans J.7 However, Forrest J noted in Greenberg v State of Victoria
[2008] VSC 357 that, where a proceeding has not been issued, the plaintiff must
demonstrate at least an arguable case to found a preservation order: at [14].
There are limits to what the court will do to preserve property. The court will
not make an order if its effect would extend beyond the determination of the
dispute. In Johnson v Tobacco Leaf Marketing Board to preserve the tobacco
leaf that was the subject of the dispute the leaf had to be dried. Drying would
permanently change its character and would affect third parties. The
preservation order would, in effect, become the final relief in the action. Since,
in the court’s opinion, this fell outside the scope of the rule it refused to make
the order. Neither did the court have the power to consider the merits of the
dispute. The court held that the preservation and detention procedures under
the rules allowed neither an examination of the merits of the dispute, nor an
order extending beyond the immediate resolution of the dispute. Subject,
however, to this limitation the court will make whatever order is required for
the preservation or detention of the subject-matter of the proceedings.
A preservation order has to be made on notice to the opposite party.8
While it is usually the plaintiff who resorts to this procedure, it applies equally
to the defendant, if the defendant has to compel the plaintiff to preserve
property that the plaintiff may destroy.

Breach of contract in Tasmania

[13.60] In Tasmania the plaintiff may apply for an order for the preservation
of property when there is a prima facie liability for breach of contract, and the
defendant asserts a right to be relieved from that liability: r 436.9 The
conditions for the court to make a preservation order under this rule are:
• the proceeding must be for breach of contract;
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• the plaintiff must show a prima facie case; and

• the defendant must have denied liability.
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It seems that the plaintiff alone has the right to apply for this remedy. The right
to apply appears from the pleadings, but in a proceeding without pleadings
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applications are supported by an affidavit showing the need for a preservation

9CA9 2

order. Generally, the scope of this remedy is too narrow to be useful. It has been
assimilated under the general rules for the preservation of property in the other
jurisdictions.
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Inherent jurisdiction
[13.70] An inherent power to order the inspection, detention or preservation
2

of property supplements the power under the rules. The inherent power extends
E4

7 See also Centre Refrigeration and Air-Conditioning Services Pty Ltd v Lincoln (1983) 70
FLR 200 at 204 per O’Leary J.
8 ACT: r 715; FCR: r 14.02; NT: r 37.03; Qld: r 253; SA: r 131; Tas: r 439; Vic: r 37.03.
( 6

9 For an example of the operation of the rule see Parakalo Pty Ltd v E M Redmond & Co Pty
Ltd [1983] 2 Qd R 604 at 610-612.
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 572 Australian Civil Procedure [13.70]

to property that is likely to be destroyed if the court does not intervene. The
court may act either under the rules, or the inherent jurisdiction. Breaches of
industrial and intellectual property rights illustrate the scope of the inherent
jurisdiction.
There is a difference of substance between the rules and the inherent
jurisdiction. While the plaintiff must show a prima facie case under the inherent
jurisdiction, according to the opinion of Gowans J in Johnson v Tobacco Leaf
Marketing Board [1967] VR 427 merits need not be shown under the rules.
Cases decided under the inherent jurisdiction show an urgency that if an
application is made on notice the defendant will destroy the property. Such
orders are often made in copyright infringement suits, such as where illicit
copies of copyright material are being made from a master disk or tape or other
electronic source. As orders under inherent jurisdiction usually dispose of the
proceeding, at least in practice, the court must act cautiously in making the
order. Such orders are unnecessary for ordinary articles of trade that the
defendant can be trusted not to destroy if an application is made on notice.

Anton Piller orders

[13.80] In an extreme case the court has an inherent jurisdiction to make an ex
parte order if the defendant is likely to destroy documents or property if given
notice of the proceeding. The court may issue a mandatory injunction that
operates to preserve documents or property that are crucial in the conduct of a
proceeding. The court may order the defendant to permit the plaintiff’s
representatives to search the defendant’s premises. A refusal is dealt with as
contempt of court. The value of the inherent jurisdiction is that the order, in a
proper case, is made ex parte, thereby denying the defendant the opportunity to
conceal or destroy documents or property. An order in this form is known as an
Anton Piller order: Long v Specifier Publications Pty Ltd (1998) 44 NSWLR
545 at 547 per Powell JA. Stephen J observed in Simsek v MacPhee (1982) 148
CLR 636 at 640-641 that the court has a wide inherent power to prevent justice
being denied to litigants. This includes the power to make an Anton Piller order.
While the rules of court provide an adequate procedure for inspection where
the parties act honestly, they do not cater for a dishonest party. The rules cannot
procure inspection where a party is prepared to destroy material on being
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served with a request for inspection. Issues concerning destroying and

concealing documents and property first arose in intellectual property litigation.
Music and movies were illegally copied and sold in breach of copyright. To help
,CC A

the copyright owner trace the source of the copying the courts made ex parte
orders that permitted the plaintiff’s representatives to inspect the defendant’s
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premises and seize offending material. The Court of Appeal approved this form
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of order in Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55. An

order in this form is called an Anton Piller order.
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At first Anton Piller orders were made on ex parte applications in the Chancery
jurisdiction in England. An early example is EMI Ltd v Pandit [1975] 1 WLR
302. The defendant in a breach of copyright case filed a dishonest affidavit of
documents. The plaintiff lodged an ex parte application under the rules of
2

court10 for permission to enter the defendant’s premises to inspect documents

and items relevant to the proceeding. The court accepted that the defendant
E4

would destroy or conceal the material in question on being served with the
( 6

10 RSC, Ord 29 r 2. For the corresponding Australian rules see: ACT: r 715; FCR: r 14.11;
NSW: r 25.3; NT: r 37.01; Qld: r 250; SA: r 248; Tas: r 437; Vic: r 37.01; WA: O 52 r 2.
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 [13.80] 13: Preserving and Inspecting Subject-Matter of Litigation 573

application. In Templeman J’s opinion, if the ends of justice are likely to be

frustrated, the court has jurisdiction to act on an ex parte application to order
the defendant to permit a search of the defendant’s premises. In form the order
was a mandatory injunction. The defendant could refuse to permit the entry,
but to do so would be contempt of court. In Anton Piller KG v Manufacturing
Processes Ltd the plaintiff brought an ex parte appeal to the Court of Appeal
when an inspection order was refused at first instance. The court recognised a
jurisdiction to act to preserve documents or property that the defendant might
otherwise destroy or conceal. Lord Denning MR thought that the rules of court
did not cover a situation where the defendant is likely to destroy or conceal
documents. An order for inspection must of necessity be based on the inherent
jurisdiction. Lord Denning MR did, however, impose conditions. Inspection
orders are limited to cases where inspection is essential to achieve justice, where
the defendant will destroy or hide the material if forewarned and that
inspection will do no real harm to the defendant or the defendant’s case: at 61.
Despite the terms of an inspection order the order is not a search warrant. The
defendant is entitled to deny the plaintiff entry, but to do so might constitute
contempt of court. An Anton Piller order does not authorise the plaintiff to
carry out a forcible entry: at 61 per Lord Denning MR, 62 per Ormerod LJ.
Instead an Anton Piller order operates on the defendant personally. The search
cannot proceed without the defendant’s concurrence. However, in refusing
permission the defendant may commit contempt of court: Long v Specifier
Publications Pty Ltd (1998) 44 NSWLR 545 at 548 per Powell JA.
The Court of Appeal upheld a contested application for an Anton Piller order in
Rank Film Distributors Ltd v Video Information Centre (a firm) [1982] AC
380. Templeman LJ explained that a court of equity has jurisdiction to make
“mandatory and other peremptory and penal orders” if damages are inadequate
and the plaintiff’s rights, property or remedies are in jeopardy. An injunction, as
a discretionary remedy, is granted only where an injunction is necessary to
safeguard the plaintiff. The court must balance the harm that the plaintiff may
sustain if an injunction is withheld against possible harm to the defendant if the
injunction is granted. The injunction must be no more onerous than is necessary
to protect the plaintiff.11 Further, the plaintiff must satisfy the court that secrecy
is essential. The more severe the order sought the greater the onus of persuasion
on the plaintiff: at 417. On further appeal the House of Lords accepted the
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existence of the Anton Piller jurisdiction: at 439 per Lord Wilberforce, 444-445
per Lord Fraser.
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Although the Anton Piller order originated in copyright and other intellectual
property cases, an Anton Piller order may be made in other cases as well. For
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example, in Yousif v Salama [1980] 2 All ER 405 and Emanuel v Emanuel

[1982] 1 WLR 669 the court ordered evidentiary documents to be removed for
9CA9 2

copying. In Cook Industries Inc v Galliher [1978] 3 WLR 637 the court
ordered the inspection of a flat.
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Until the Court of Appeal decision in EMI Ltd v Sarwar [1977] FSR 146 Anton
Piller orders were limited to the inspection and seizure of property or
documents. In this case, however, the order required the defendant to disclose
2

the names and addresses of the person who had supplied tapes in breach of
copyright. In effect the order allowed extemporary discovery of documents and
E4

answers to interrogatories. Two forms of Anton Piller order were therefore

created: the wide form which requires the defendant to answer questions and
( 6

11 See also Long v Specifier Publications Pty Ltd (1998) 44 NSWLR 545 at 548 per Powell JA.
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 574 Australian Civil Procedure [13.80]

produce documents, and the narrow form which simply allows the plaintiff to
search the defendant’s premises and seize documents.

Search orders or Anton Piller orders under rules of court

[13.90] Rules of court supplemented by comprehensive practice
directions12 establish a legislative basis for the court to issue an Anton Piller
order, or as it is styled in the rules, a search order. The court may issue a search
order in an existing or anticipated proceeding authorising a search of premises
to secure or preserve evidence that might otherwise be destroyed or withheld
from the court at a trial.13 The conditions for making a search order are:
• the applicant for the order must have a strong prima facie case on an accrued
cause of action;
• the potential or actual loss or damage to the applicant will be serious if the
order is not made;
• there is sufficient evidence that the respondent to the search order application
possesses important evidentiary material; and
• that there is a real possibility that the respondent will destroy the material or
cause it to be unavailable at a proceeding or anticipated proceeding.14
A search order permits the person executing the order to search the respondent’s
premises and take possession of any items that fall within the terms of the order.
Except for taking legal advice, the respondent is barred from disclosing any
information about the order for up to three days after it was served.15 In
making a search order the court must appoint an independent solicitor to
supervise its execution.16
A search order resembles an Anton Piller order. However, a search order directs
whoever is in charge of the premises to permit an inspection and to provide
those executing the order with the information, things or service that the order
describes.17 Entry to the premises cannot be denied. Neither is a search order
limited to the defendant’s premises. The court may order a search of
“premises”.
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12 ACT: Court Procedures Practice Note (Search Orders) 2008 (No 2); FC: Practice Note
,CC A

CM 11, Search orders (also known as Anton Piller orders); NSW: Practice Note SC Gen 13,
Search orders (also known as Anton Piller orders); NT: Practice Direction No 6 of 2006,
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Search orders (also known as Anton Piller orders); Qld: Practice Direction No 2 of 2007,
Search orders (also known as Anton Piller orders); SA: Direction 4.3 – Search Orders (also
9CA9 2

known as Anton Piller type orders); Tas: Practice Direction No 4 of 2006, Search orders
(also known as “Anton Piller orders”); Vic: Practice Note No 6 of 2010, Search orders
(“Anton Piller orders”); WA: Consolidated Practice Directions 9.6.2, Search Orders (“Anton
A E9C ,

Piller orders”).
13 ACT: r 751; FCR: r 7.42; NSW: r 25.19; NT: r 37B.02; Qld: r 261A; SA: r 148; Tas: r 937J;
Vic: r 37B.02; WA: O 52B r 2.
14 ACT: r 752; FCR: r 7.43; NSW: r 25.20; NT: r 37B.03; Qld: r 261B; SA: r 148; Tas: r 937K;
2

Vic: r 37B.03; WA: O 52B r 3.

15 ACT: r 753; FCR: r 7.45; NSW: r 25.22; NT: r 37B.05; Qld: r 261D; SA: r 148; Tas: r 937M;
E4

Vic: r 37B.05; WA: O 52B r 5.

16 ACT: r 754; FCR: r 7.46; NSW: r 25.23; NT: r 37B.06; Qld: r 261E; SA: r 148; Tas: r 937N;
Vic: r 37B.06; WA: O 52B r 6.
( 6

17 ACT: r 753; FCR: r 7.45; NSW: r 25.22; NT: r 37B.05; Qld: r 261D; SA: r 148; Tas: r 937M;
Vic: r 37B.05; WA: O 52B r 5.
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 [13.110] 13: Preserving and Inspecting Subject-Matter of Litigation 575

The rules concerning search orders do not diminish any other inherent, implied
or statutory jurisdiction of the court to make a search order.18

Conditions for making search order or Anton Piller order

[13.100] For the court to make an Anton Piller order the plaintiff must show:
• a strong prima facie case;
• that the plaintiff stands to suffer considerable damage;
• that the defendant has the property and is likely to destroy it before an
application on notice can be made, or that the property will be destroyed if
an application on notice were made.19
The rules clarify that the plaintiff must demonstrate a prima facie case on an
accrued cause of action. Equally though, as Lord Denning MR pointed out, the
order cannot be such that it will do “real” harm to the defendant or the
defendant’s case: Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55
at 61. In deciding whether to grant an Anton Piller order the court has to
determine a balance between the plaintiff’s entitlement that normal civil
remedies be “attainable” and the defendant’s entitlement not to be deprived of
property without a formal hearing: Columbia Pictures Industries Inc v
Robinson [1987] Ch 38 at 76.20 An Anton Piller order is not an investigatory
process to assist the applicant to decide whether there is enough evidence to sue
or decide whether there is a cause of action.
As with any ex parte application, the applicant must fully disclose all relevant
facts and circumstances, including any matters that tend against granting the
order: Thomas A Edison Ltd v Bullock (1912) 15 CLR 679.21 Before applying
for an Anton Piller order the applicant must carry out reasonable inquiries to
ascertain the need for an order and describe them in the affidavit in support of
the application: Lego Australia Pty Ltd v Paraggio (1993) 44 FCR 151 at
169-173.

Form of search order or Anton Piller order

[13.110] The practice directions concerning search orders set out a suggested
form of order. Even so the court still has to fashion the terms of the order to suit
the circumstances of the case. The terms of a search order are within the court’s
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discretion.22
A search order is made on an ex parte application in an existing or proposed
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proceeding so that important evidence can be preserved pending the trial or

other determination of the proceeding. Given the nature of a search order the
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court sets a return date when the court will review the order and give directions
after hearing all parties. Directions include directions concerning the custody of
9CA9 2

and access to the items removed during the search. Either on the return date or
on an earlier application the defendant may ask the court to set aside the search
A E9C ,

order.

18 ACT: r 727; FCR: r 7.44; NSW: r 25.21; NT: r 37B.04; Qld: r 261C; SA: r 148; Tas: r 937L;
2

Vic: r 37B.04; WA: O 52B r 4.

19 Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55; Long v Specifier Publications
E4

Pty Ltd (1998) 44 NSWLR 545; EMI Ltd v Pandit [1975] 1 WLR 302.
20 See also Long v Specifier Publications Pty Ltd (1998) 44 NSWLR 545 at 560.
21 See also Columbia Pictures Industries Inc v Robinson [1987] Ch 38 at 77.
( 6

22 For an example of an Anton Piller order, see TSG Corporation Pty Ltd v Islami [2011] FCA
1545.
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 576 Australian Civil Procedure [13.110]

The order lists the items that are the subject of the search. The defendant must
disclose the location of and facilitate access to the listed items, including items
that are not within the premises. This includes computers and computer disks
and any other electronic information, storage devices or systems.
A search order is limited to preserving the documents or items enumerated in
the order. A party cannot inspect documents seized under an order as an adjunct
to discovery or to amend pleadings or seek particulars. Flick J observed in
Metso Minerals (Australia) Ltd v Kalra (No 3) [2008] FCA 1201 that once a
search order is executed the documents are no longer at risk of being destroyed
or concealed. The search order itself cannot be the authority to further inspect
the items seized other than to ensure that the order was properly executed. The
court may thus permit the plaintiff’s representatives to inspect material seized:
• to assess whether there was a proper compliance with the order or whether a
further search order ought to be sought;
• to identify from the documents that were seized those documents that do or
may provide evidence and separate them from any documents that do not
provide evidence and which may be returned to the defendant.
In searching in this manner inspection is not limited to those documents that
relate directly to the precise cause of action then known to the plaintiff: at [28].
There is though a limit to inspection. In as much as a search order preserves
evidence Flick J was impelled to reject the plaintiff’s application to conduct an
inspection of the seized documents in tandem with discovery and as an aid to
giving particulars. A search order cannot be used to formulate a request for
particulars or to request discovery of documents. Discovery of documents,
particulars and access to the subject-matter of a proceeding are specifically
dealt with in other provisions of the rules of court. The parties must act under
those provisions as the occasion arises: at [29], [34]-[36], [49], [86].

Undertakings in support of search order

[13.120] As a condition of making a search order the court requires
undertakings to compensate the defendant or anyone else who is affected by the
order if the plaintiff fails at the trial or if the order was unnecessarily obtained
or improperly executed. The plaintiff and the plaintiff’s solicitor, the
independent solicitor and the independent computer expert must give an
L

undertaking. The court has discretion to release a party from an undertaking:

Websyte Corporation Pty Ltd v Alexander (2012) 95 IPR 344 at [13]-[15].
,CC A

Breach of an undertaking, however, may constitute contempt of court: CT

Sheet Metal Works Pty Ltd v Hutchinson (2012) 201 FCR 275.
0A A

The plaintiff must undertake to submit to a court order for the payment of
compensation to any person, whether or not a party to the proceeding, who is
9CA9 2

affected by the operation of the order. Further, the plaintiff undertakes to use
the material obtained at the search only for the purpose of the proceeding. An
A E9C ,

irrevocable undertaking (for an amount determined by the court when making

the order) issued by a bank must be lodged at the court. In addition to the
plaintiff’s undertaking, the plaintiff’s solicitor has to undertake to pay the
reasonable costs of the independent solicitor and the independent computer
2

expert, provide to the independent solicitor the order and the supporting
affidavits, act in conformity with the terms of the order and not disclose to the
E4

plaintiff any information acquired in executing the order. The plaintiff’s

solicitor also undertakes to follow the independent solicitor’s directions.
( 6

Putting it generally, the independent solicitor undertakes to perform the duties

that the order prescribes for the independent solicitor. These duties include
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 [13.130] 13: Preserving and Inspecting Subject-Matter of Litigation 577

serving the order, retaining custody of items removed from the premises
pending further direction from the court, reporting to the court on the
execution of the order, and using best endeavours to ensure that members of the
search party comply with the order. The independent solicitor also undertakes
not to use any information obtained otherwise than for the purposes of the
proceeding.
The independent computer expert must undertake to comply with the order,
not to use any information obtained for any other purpose and to follow the
independent solicitor’s directions.
Any premature disclosure of the making of a search order or Anton Piller order
might allow the defendant to alert other defendants or wrongdoers to the
operation of the order. All undertakings include a requirement not to disclose
the making of the order until after the return date.

Executing a search order or Anton Piller order

[13.130] An Anton Piller order can be intrusive and there are examples of
oppressive execution. For example in ITC Film Distributors Ltd v Video
Exchange (1982) 126 SJ 672 a team of four with an Anton Piller order
representing the plaintiff, and a team of 16 police with a search warrant
concerning the same and similar property arrived at the same time to search a
small business conducted from the defendant’s home. In Lock International plc
v Beswick [1989] 1 WLR 1268 the court set aside an Anton Piller order because
of material non-disclosure when the order was made. Former employees of the
plaintiff proposed to set up business in competition with the plaintiff. Searches
of the defendants’ homes were unnecessary and not justified by the evidence
produced on the application for the order.
To reduce the damaging effect of an Anton Piller order Scott J suggested in
Columbia Pictures Industries Inc v Robinson [1987] Ch 38 that an Anton Piller
order should go no further than the minimum necessary to preserve documents
or property that are likely to be destroyed or concealed. The plaintiff cannot,
for example, be authorised to detain all of the defendant’s records. An
independent responsible person such as a solicitor, not the plaintiff, should have
custody of any material seized in executing the order: at 76. While upholding
the plaintiff’s application for an injunction the court awarded damages to the
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defendant because of the plaintiff’s material non-disclosure and excessive

execution of the order. As Scott J observed, an improperly granted or
improperly executed Anton Piller order is capable of closing the defendant’s
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business before there is a hearing on the merits: at 74-76. Full disclosure in an

application for an Anton Piller order is thus crucial; in the view of Scott J
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disclosure should be “excessive”: at 77. Scott J further suggested that there

9CA9 2

should be a detailed record of the material removed and whatever material is

removed must fall strictly within the terms of the order: at 77.23
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The court appoints an independent solicitor to supervise the search. If a

computer has to be searched the court also appoints an independent computer
expert. In a particular case if additional expertise is necessary to identify
particular items the court will appoint an additional appropriately qualified
2

expert. The independent solicitor and the independent experts must ensure that
the search is confined within the limits of the order. They must give the court an
E4

undertaking in this respect. The court regards the independent solicitor’s role as
( 6

23 See also Long v Specifier Publications Pty Ltd (1998) 44 NSWLR 545 at 559 per Powell JA;
Universal Thermosensors Ltd v Hibben [1992] 1 WLR 840 at 860-861.
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 578 Australian Civil Procedure [13.130]

important and an appropriately experienced commercial litigation solicitor is

usually appointed: Metso Minerals (Australia) Ltd v Kalra (No 3) [2008] FCA
1201 at [11]-[16].
Before the search begins the independent solicitor must explain the terms of the
order to the defendant and allow the defendant the opportunity to obtain legal
advice. All material removed during the search must remain in the independent
solicitor’s custody until the court makes another order. A personal defendant
(but not a corporation) may, before handing it to the independent solicitor, seal
any incriminatory material, confidential legal advice or documents that may
expose the defendant to a civil penalty. Normally a search order has to be
executed during ordinary business hours and never concurrently with a search
warrant or similar process. The independent solicitor must prepare a full
inventory of all documents and items removed during the search. In Long v
Specifier Publications Pty Ltd (1998) 44 NSWLR 545 the New South Wales
Court of Appeal upheld a fine imposed on the plaintiff’s solicitor for failing to
comply with a direction to make a sufficient inventory of material removed
during a search and who left the material in the plaintiff’s custody. A similar
penalty might be imposed on an independent solicitor who fails to discharge the
duties imposed under the search order.
Not only must the defendant permit the search party to search for and inspect
the items listed in the order, the defendant must disclose the location of those
items irrespective of whether they are in the defendant’s possession, custody or
power or whether they are at the premises or otherwise. Disclosure extends to
computers, computer disks and electronic storage devices or systems in which
any of the listed items are or may be stored. The defendant must permit any
stored document to be printed. The search party is entitled to copy, photograph,
test or take a sample of any listed item. Once the listed items are identified the
independent solicitor may remove them and any copies from the premises.
Where a computer has to be searched the independent computer expert may
copy, and remove, the computer hard drive or remove the computer. Before the
return date the independent computer expert must deliver to the independent
solicitor a report of the computer search together with any computer or
computer hard drive removed from the premises.
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In addition to permitting a search of the premises, the defendant must, within

the time specified in the order, serve the plaintiff with an affidavit disclosing the
,CC A

name and address of anyone who has supplied or offered to supply to the
defendant any of the items listed in the order. A personal defendant may object
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if making this affidavit might incriminate the defendant or make the defendant
liable to a civil penalty. Officers of a corporation may similarly object if making
9CA9 2

the affidavit might incriminate them or make them liable to a civil penalty. The
court decides whether the objection is valid.
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Information gained in executing an Anton Piller or search order is subject to an

implied undertaking by the party executing the order that restricts the use of the
information to the conduct of the proceeding. Material seized in executing an
2

order is produced to the court or held in custody approved by the court.

Independent experts executing an order, such as a computer expert or a
E4

solicitor, are precluded from disclosing to the plaintiff or another party any
material or contents of material seized. The court may, under strict conditions,
( 6

grant a release from the undertaking: Alanco Australia Pty Ltd v Higgins
(2010) 81 ACSR 234.
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Privilege and search orders and Anton Piller orders

[13.140] A search order or Anton Piller order is subject to self-incrimination
privilege or privilege against a disclosure that may subject the defendant to a
civil penalty: Rank Film Distributors Ltd v Video Information Centre (a firm)
[1982] AC 380.24 There the House of Lords affirmed that a party need not
answer questions or produce documents if to do so would create the risk of a
criminal prosecution. The court should not make a search order or Anton Piller
order that might require the defendant to disclose incriminating information. In
the absence of statutory intervention25 it is submitted that this reasoning
applies in Australia.26
Accepting that privilege as to self-incrimination and exposure to a civil penalty
apply to searches the suggested form of order in the practice directions affords
the defendant the opportunity to apply to the court before disclosing privileged
material. The defendant may seal this material before delivering it to the
independent solicitor. At or before the return of the order the defendant may
apply to the court for a ruling as to whether privilege was validly claimed.
This procedure should apply where the defendant intends to assert any other
privilege, such as legal professional privilege, that would prevent the plaintiff’s
representatives from inspecting the defendant’s documents: Metso Minerals
(Australia) Ltd v Kalra (No 3) [2008] FCA 1201 at [14] per Flick J.

Injunctions
Basis for granting injunction
[13.150] The court’s jurisdiction to grant an injunction supplements its power
to order the preservation or detention of property. An interim or interlocutory
injunction holds the status quo until the court gives a final judgment. An
injunction is similar to, but much wider than, the court’s jurisdiction to grant
an order for the preservation of property under the rules of court. An injunction
may be made to apply not only to property, but to activities as well.
An interim injunction, often granted on an ex parte application, is appropriate
in an emergency, when it is clear that rights will be destroyed unless relief is
L

granted immediately. Normally an interim injunction applies only for a short

period, specified in the order.27
If on the return of an interim injunction the court sees a need for an injunction
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pending the trial, it may grant an interlocutory injunction. An interlocutory

injunction extends to the trial and is granted only on notice to the opposite
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party.
9CA9 2

An interlocutory injunction must in turn be distinguished from a perpetual

injunction. A perpetual injunction finally decides the rights of the parties. It is
A E9C ,

granted as final relief.

The court has an equitable jurisdiction to grant an interlocutory injunction
where it is just and convenient in the circumstances.28 Of course in granting an
2

24 See [10.500] for a discussion of self-incrimination privilege.

E4

25 For example the Supreme Court Act 1981 (UK), s 72.

26 BPA Industries Ltd v Black (1987) 11 NSWLR 609; Television Broadcasts Ltd v Thi Phuong
Nguyen (1989) 15 IPR 97 at 103.
( 6

27 As to interim injunctions, see Spry, Equitable Remedies (8th ed, 2010), pp 505-514.
28 ACT: Court Procedures Act 2004, s 62; FC: Federal Court of Australia Act 1976 (Cth), s 23;
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 580 Australian Civil Procedure [13.150]

injunction the court does not conduct a preliminary trial or pre-empt the final
decision in the principal proceeding. It merely satisfies itself that the plaintiff
should have an injunction pending the trial. An injunction may be either
positive or negative in nature. The defendant may be ordered to do or refrain
from doing a specified act.
The value of an injunction in civil litigation is that it holds the situation between
the parties until the trial. For example, in tracing funds the defendant can be
prevented from operating bank accounts and mixing the funds in dispute with
other money. Similarly, goods may be held in an accessible condition pending a
future hearing. When the defendant is likely to dispose of money or property
quickly the plaintiff can act pre-emptively before the defendant frustrates the
proceeding.
In deciding an application for an injunction the court must consider where the
balance of convenience falls. An injunction is inappropriate if it is merely
possible that at some future time the defendant will act to damage the plaintiff.
A threat of damage alone is not sufficient to induce the court to grant an
injunction. The plaintiff must show that the defendant intends to carry out the
threat or claim the right to do so. The court must consider the damage that
could be done to the defendant by granting an injunction, especially if it is
mandatory, as against the damage to the plaintiff if it is withheld. Any
irreversible consequences of granting the injunction must also be considered.
More particularly, the court will not grant an injunction if other forms of relief,
such as damages, would be adequate. The plaintiff may fail in seeking an
injunction by not applying promptly. Acquiescence in the defendant’s conduct
may also induce the court to refuse an injunction.
In granting an interim or interlocutory injunction the court asserts an opinion
that there is a substantial matter to be tried if the evidence on which the
injunction is granted is accepted at the trial.
Although any party may apply for an injunction, the defendant cannot obtain
an injunction against the plaintiff unless the injunction is related to some relief
claimed by the plaintiff. However, if the defendant counter-claims against the
plaintiff the defendant may apply for interim, interlocutory or final injunctive
relief against the plaintiff. The defendant has the same right as the plaintiff to
apply for an injunction. An injunction based on a counter-claim need not be
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connected with the relief applied for by the plaintiff.29

As an injunction is a discretionary remedy, the nature and source of that
discretion can be significant in the court’s decision. A discretion must be
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exercised in the context of and for the purpose for which it was created. This is
especially true where the court is exercising an express statutory jurisdiction to
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grant an injunction: Samsung Electronics Co Ltd v Apple Inc (2011) 286 ALR
9CA9 2

257 at [44]-[48] per Dowsett, Foster and Yates JJ.

Interlocutory injunctions
A E9C ,

[13.160] An interlocutory injunction is proper if:

• the plaintiff has a prima facie case such that, if the evidence stays the same
2

there is a probability that the plaintiff will succeed at the trial;

E4

NSW: Supreme Court Act 1970, s 66; NT: Supreme Court Act, s 69; Qld: Civil Proceedings
Act 2011, s 9; SA: Supreme Court Act 1935, s 29; Tas: Supreme Court Civil Procedure Act
1932, s 11(12); Vic: Supreme Court Act 1986, s 37; WA: Supreme Court Act 1935, s 25(9).
( 6

29 Carter v Fey [1894] 2 Ch 541; Des Salles D’Epinoix v Des Salles D’Epinoix [1967] 1 WLR
553.
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 [13.160] 13: Preserving and Inspecting Subject-Matter of Litigation 581

• the inconvenience or injury the plaintiff is likely to suffer if the injunction is

refused outweighs the injury the defendant might suffer if the injunction is
granted; and
• the balance of convenience indicates an injunction.30
In American Cyanamid Co v Ethicon Ltd [1975] AC 396 the House of Lords
thought that the proper criterion for granting an interlocutory injunction was
whether there is a serious question to be tried: at 407 per Lord Diplock. In an
application for an interlocutory injunction the court cannot undertake a
preliminary trial on incomplete evidence given by way of affidavits, often
without the opportunity to cross-examine the deponents. Beyond determining
whether the plaintiff’s claim is frivolous or vexatious the court cannot estimate
the plaintiff’s prospects of success at the trial. As Lord Diplock expressed it,
expressions such as “a prima facie case”, “a strong prima facie case” or “a
probability” confuse the court’s function in deciding whether to grant an
interlocutory injunction. Whether the plaintiff might succeed at the trial cannot
be determined on the type of material before the court on an interlocutory
application. The court can, however, decide whether there is a serious question
to be determined: at 406-407. Mason ACJ, at first instance in the High Court in
Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153-154
accepted Lord Diplock’s formulation as the proper approach. While the House
of Lords’ approach in American Cyanamid Co v Ethicon Ltd may describe
what happens in practice on an application for an interlocutory injunction the
decision conflicts with the High Court decision in Beecham Group Ltd v Bristol
Laboratories Pty Ltd (1968) 118 CLR 618, which adheres to the prima facie
case requirement: at 622-623.31
Whether a proceeding raises a prime facie case or involves a serious question is
determined, not according to what individual persons might think is fair or just,
but according to recognised principles of law and the doctrines of equity. In
Patrick Stevedores Operations No 2 Pty Ltd v Maritime Union of Australia
(1998) 195 CLR 1 at 47-48 the majority observed that courts cannot resolve
disputes that extend beyond legal rights and obligations. There the court
modified an interlocutory injunction that compelled a company administrator
to keep insolvent companies trading. Whether an administrator should keep a
company trading is within the administrator’s discretion. An interlocutory
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injunction granted at first instance deprived the administrator of that discretion.

The High Court modified the injunction to reinstate the administrator’s
discretion. In Australian Broadcasting Corporation v Lenah Game Meats Pty
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Ltd (2001) 208 CLR 199 the High Court affirmed that for the court to grant an
interlocutory injunction there must be a legal or equitable right to be
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9CA9 2

30 Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 at 622-623;
Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 at 68 per Gleeson CJ
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and Crennan J, 82-84 per Gummow and Hayne JJ; Australian Coarse Grain Pool Pty Ltd v
Barley Marketing Board (1982) 57 ALJR 425; Castlemaine Tooheys Ltd v South Australia
(1986) 161 CLR 148; Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd
(2001) 208 CLR 199; Australian Competition and Consumer Commission v TPG Internet
2

Pty Ltd [2010] FCA 1478; Plaintiffs M168/10 v Commonwealth (2011) 85 ALJR 790 at
[14]-[19] per Crennan J; Samsung Electronics Co Ltd v Apple Inc (2011) 286 ALR 257 at
[44]-[74] per Dowsett, Foster and Yates JJ; Yu v Australian Community Pharmacy Authority
E4

[2013] FCA 713; Warner-Lambert Co LLC v Apotex Pty Ltd (2014) 106 IPR 218 at
[68]–[70] per Allsop CJ, Jagot and Nicholas JJ.
31 For a discussion of this issue and extensive citation of authority see: Spry, Equitable
( 6

Remedies (8th ed, 2010), pp 462-468; Meagher, Gummow & Lehane, Equity: Doctrines &
Remedies (4th ed, 2002), pp 776-783.
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 582 Australian Civil Procedure [13.160]

determined at the trial. The court denied the plaintiff an interlocutory

injunction because in maintaining a right to privacy the plaintiff was asserting a
cause of action not known to the law.

Preserving the status quo

[13.170] An interlocutory injunction may be granted to preserve the status
quo between the parties until the trial of the proceeding.
The status quo may refer to the situation between the parties when a proceeding
commences or to the situation between the parties before the dispute arose:
Spry, Equitable Remedies (8th ed, 2010), pp 453-456. An interlocutory
injunction may be proper where property or rights may be damaged in such a
way that renders the proceeding useless. A disputed contract for the sale of land
is an example. If the vendor is in possession pending completion of the contract
and is carrying out work that would defeat the purchaser’s objectives the court
might grant an injunction pending determination of the contractual issue.
Equally, an interlocutory injunction may be indicated to prevent an apprehended
breach of contract or to restrain tortious activity pending a trial.
Whether the court should preserve the status quo is discretionary. It depends on
the circumstances of the case. In Liquorland (Aust) Pty Ltd v Anghie (2001) 20
ACLC 58 Warren J accepted that what actually constitutes the status quo
requires the court to exercise a wide discretion. In deciding as to the status quo
the court must consider:
• the degree of probability that the plaintiff’s rights exist;
• the degree of probability that the defendant will damage the plaintiff’s rights;
• the inadequacy of other remedies;
• other matters that bear on hardship between the parties or that may affect
third persons: at [72].32
The status quo is not necessarily the position of the parties when the proceeding
was commenced. Warren J thought that the status quo was one part of multiple
factors that might invoke the discretion to grant an interlocutory injunction: at
[74]. The facts of the case illustrate the position. The plaintiff mounted a
takeover for another liquor trading company. The defendants were directors of
the takeover target company. The plaintiffs alleged that the defendants made
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misleading representations about the target company’s finances. The plaintiffs

applied to the court for an order under the Corporations Act 2001 that the
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consideration for the takeover be held back pending a determination about the
misleading representations. The plaintiffs attempted to restrain the defendants
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from dealing with the proceeds of the sale of their shares pending the trial.
Warren J refused an injunction. While the plaintiffs were concerned to ensure
9CA9 2

the availability of funds to meet any judgment in their favour, an injunction

cannot be used to convert the plaintiff into a secured creditor, especially as the
A E9C ,

defendants gave undertakings as to preserving the funds in question: at

[75]-[77]. In Walsh v The Police Association (2000) 140 IR 58 the issue was
whether The Police Association validly terminated an employee’s contract of
2

employment. In granting an interlocutory injunction Gillard J ruled that the

relevant status quo was the relationship between the parties before the
E4

Association passed the resolution dismissing the employee: at [58]-[59]. That

status should be preserved pending the trial of the proceeding. The court
( 6

32 Quoting from Spry, Equitable Remedies (6th ed, 1997), p 454.

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 [13.180] 13: Preserving and Inspecting Subject-Matter of Litigation 583

refused an interlocutory injunction in Yu v Australian Community Pharmacy

Authority [2013] FCA 713 where the plaintiff attempted to preserve rights that
might come into existence in the future. There was no existing right to
constitute the status quo.

Balance of convenience
[13.180] In Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118
CLR 618 the High Court affirmed that the balance of convenience is an
important discretionary consideration in the court’s decision as to whether to
grant an interlocutory injunction. The balance of convenience involves the
question whether the inconvenience or injury that the plaintiff might suffer if
the injunction is refused outweighs the injury that the defendant might suffer if
the injunction is granted: at 623.
The House of Lords explained the nature of the balance of convenience in
American Cyanamid Co v Ethicon Ltd [1975] AC 396. A decision whether to
issue an interlocutory injunction has to be made while the rights of the parties
are uncertain and the evidence, virtually always in affidavits, is incomplete. The
plaintiff is thus usually required to give an undertaking to pay damages to the
defendant if the plaintiff fails at the trial. An interlocutory injunction protects
the plaintiff from injury pending the trial where an award of damages could not
provide adequate compensation. Correspondingly, the defendant needs an
adequate remedy if the plaintiff fails at the trial and damages under the
plaintiff’s undertaking could not adequately compensate the defendant. The
court must weigh the competing needs of the plaintiff and the defendant and
decide the balance of convenience: at 406 per Lord Diplock. In determining the
balance of convenience the court should also weigh the effect of an injunction
on third parties who are not before the court: Patrick Stevedores Operations
No 2 Pty Ltd v Maritime Union of Australia (1998) 195 CLR 1 at 41-43 per
Brennan CJ, McHugh, Gummow, Kirby and Hayne JJ.
Where common law damages properly compensate the plaintiff and the
defendant is financially capable of paying them an interlocutory injunction
should normally not be granted. The counterpart of this is where the defendant
succeeds at the trial. If damages assessed under the plaintiff’s undertaking
L

would adequately compensate the defendant and, if the plaintiff is financially

capable of paying them, the adequacy of damages would not be a reason for the
court to deny an injunction to the plaintiff. Where there is a doubt about the
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adequacy of these respective remedies the court must determine the balance of
convenience in deciding whether to issue an interlocutory injunction: American
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Cyanamid Co v Ethicon Ltd [1975] AC 396 at 408 per Lord Diplock.

9CA9 2

What constitutes the balance of convenience varies among cases. In American

Cyanamid Co v Ethican Ltd Lord Diplock thought that it was imprudent to
attempt to exhaustively list all relevant matters. His Lordship did though
A E9C ,

proffer some practical guidelines.

• If matters between the parties are evenly balanced an injunction might be
indicated.
2

• Lord Diplock distinguished prohibiting the defendant from performing a

E4

new act from prohibiting the defendant from continuing with an established
course of conduct:
( 6

– if the defendant succeeds at the trial an injunction as to a new act

merely postpones the act until the court gives judgment;
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 584 Australian Civil Procedure [13.180]

– whereas an injunction that interrupts an established course of conduct

may occasion the defendant unnecessary disruption: at 408.
• Granting or refusing an interlocutory injunction is likely to cause some
disruption to the parties. Refusing an injunction may disadvantage the
plaintiff. Granting an injunction may disadvantage the defendant. The extent
to which damages cannot compensate the party who succeeds at the trial for
that disruption is relevant in deciding the balance of convenience: at 409.
In American Cyanamid Co v Ethicon Ltd the plaintiff was an American
pharmaceutical manufacturing company. It had a patent, also registered in the
United Kingdom, for absorbable surgical sutures. It started to market the
sutures in England and acquired about 15% of the market. The defendant was
also a pharmaceutical manufacturing company. It held about 80% of the
United Kingdom market for catgut, also a surgical suture. Catgut, however, was
not absorbable into the wound. In view of the absorbable sutures that the
plaintiff had developed, the defendant developed its own absorbable suture.
The plaintiff alleged that the defendant’s suture infringed the plaintiff’s patent.
It applied for a permanent and an interlocutory injunction. The House of Lords
upheld the interlocutory injunction. At the time the plaintiff’s action was
commenced in the court the defendant’s sutures were not on the market. An
interlocutory injunction would not stop a manufacturing process that the
defendant was already operating. Factories would not be closed and employees
would not be put out of work. In any event the defendant held a dominant
position in the market for sutures. On the other hand, the plaintiff was in the
course of developing a market for its sutures. Lord Diplock reasoned that if the
defendant was allowed to establish a market for its sutures pending the
determination of the patent infringement proceeding, which might take two or
three years of litigation, the plaintiff might lose the chance of expanding its
market. Damages were not an adequate remedy. The balance of convenience
indicated an interlocutory injunction: at 409-410. The High Court similarly
proceeded in Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118
CLR 618. The plaintiff had a patent for and manufactured a form of penicillin
in Australia. The defendant commenced manufacturing and selling a form of
penicillin that the plaintiff claimed infringed the plaintiff’s patent. Were the
defendant not restrained by an interlocutory injunction the defendant would
L

have the opportunity to establish itself in the market and subject the plaintiff’s
goodwill to the “prejudice of competition”. Merely requiring the defendant to
keep an account of its profits was inadequate to maintain the status quo. The
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High Court imposed an interlocutory injunction: at 626.

Considerations concerning the balance of convenience are further instructively
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illustrated in the Full Court decision in Barker v Perpetual Trustees Australia

9CA9 2

Ltd (2003) 85 SASR 263. There the balance of convenience favoured an

interlocutory injunction. The plaintiff mortgaged a parcel of land to the
A E9C ,

defendant to secure finance for the plaintiff to complete the construction of an

almost finished house. Payments on the mortgage loan fell into arrears and the
defendant attempted to sell the property to pay off the loan. There was an issue
as to whether the defendant was entitled to proceed with the sale. The plaintiff
2

as the mortgagor had a statutory right to claim relief from the power of
sale.33 When the defendant refused to postpone the auction the plaintiff sought
E4

an interlocutory injunction to restrain the defendant from proceeding with the

sale. For the plaintiff, matters relevant to the balance of convenience were that
( 6

33 Law of Property Act 1936 (SA), s 55A.

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 [13.200] 13: Preserving and Inspecting Subject-Matter of Litigation 585

if the sale proceeded immediately the plaintiff would lose a first home buyer’s
grant to which he was entitled, if the house were completed it might be sold at a
higher price than in an unfinished state, and the plaintiff would lose the
opportunity to live in the house as his residence. On the defendant’s side selling
expenses had increased the amount of the loan, but some of the defendant’s
conduct as the mortgagee had created uncertainty about the final amount
secured by the mortgage. A short interlocutory injunction was proper to enable
the plaintiff to apply to the court for relief from the exercise of the power of
sale: at 272-273 per Bleby J.

Irreparable damage
[13.190] The possibility that the plaintiff may suffer irreparable damage if the
court denies an injunction is a material consideration for the court in reaching
its decision. If an interlocutory injunction is to prevent a common law claim
from being frustrated irreparable damage may occur where damages at law are
an inadequate remedy.
In Aristoc Industries Pty Ltd v R A Wenham (Builders) Pty Ltd [1965] NSWR
581 the plaintiff was a building sub-contractor engaged to manufacture and
supply chairs specifically designed for a lecture theatre in a building under
construction by the head contractor. The plaintiff delivered the seats to the site
but before the plaintiff was paid the head contractor went into liquidation. The
plaintiff attempted to regain possession of the seats to offer them directly to the
building owner. The head contractor assigned the contract with the plaintiff to
the defendant. The plaintiff wanted to offer the seats directly to the building
owner for an amount near to the contract price. However, the defendant
refused the plaintiff permission to remove them from the site. Given that the
head contractor was in liquidation and had assigned the contract to the
defendant, confining the plaintiff to a claim in the liquidation was an
inadequate remedy. Jacobs J granted an injunction to the plaintiff restraining
the defendant from unlawfully interfering with the plaintiff’s right to deal with
the seats. Conversely, in Lincoln Hunt Australia Pty Ltd v Willesee (1986) 4
NSWLR 457 Young J refused an interlocutory injunction where a television
reporter and a camera crew entered the plaintiff’s premises without permission
and began filming. The plaintiff argued that the defendant’s action was a
trespass, that the content of the commentary was defamatory and that
L

screening the film would constitute the tort of injurious falsehood. In Young J’s
view damages, if necessary exemplary damages, were adequate to compensate
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the plaintiff.

Restraining an apprehended wrong

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[13.200] Where the plaintiff reasonably expects the defendant to commit a

9CA9 2

wrong, the court may issue an injunction, usually called a quia timet injunction,
to restrain the defendant from proceeding with the wrongful act. A quia timet
A E9C ,

injunction operates before a breach actually occurs: Spry, Equitable Remedies

(8th ed, 2010), pp 377-382. In CSL Ltd v GlaxoSmithKline Australia Pty Ltd
(2006) 70 IPR 128 at [94] Weinberg J agreed that the “imminence” of the act to
be prohibited must be “clearly established” for the court to grant a quia timet
2

injunction. Once the applicant establishes that a wrongful act is imminent it is

necessary to demonstrate that the balance of convenience favours an
E4

interlocutory injunction: at [98]-[99]. The court has regard to the “degree of

seriousness of the injury” and the “justice” between the parties: at [93].
( 6

In CSL Ltd v GlaxoSmithKline Australia Pty Ltd the plaintiff participated in

the development of a vaccine to prevent certain cancers. The Therapeutic
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 586 Australian Civil Procedure [13.200]

Goods Authority gave the plaintiff permission to market the product. The
defendant developed a similar vaccine which it proposed to seek Therapeutic
Goods Authority permission to market. Before the Therapeutic Goods Authority
granted that permission the defendant promoted its vaccine to medical
practitioners. The plaintiff alleged that the defendant made disparaging and
incorrect comparisons of the two vaccines that were misleading within the
meaning of s 52 of the Trade Practices Act 1974 (Cth). Weinberg J thought that
a speedy trial offered the plaintiff sufficient protection and that the balance of
convenience was against an injunction: at [105].34 Different circumstances in
John Holland Pty Ltd v Construction, Forestry, Mining and Energy Union
(2005) 144 IR 418 resulted in an interlocutory quia timet injunction. The
plaintiff sought an injunction to restrain the defendant from conducting strike
action that allegedly contravened the Workplace Relations Act 1996 (Cth). The
plaintiff’s principal causes of action were in tort, for which it sought a
permanent injunction. The defendant, so the plaintiff alleged, interfered with
contractual relations between the plaintiff and its employees and interfered
with the plaintiff’s business by directing and procuring the plaintiff’s employees
to go on strike. Le Miere J issued an interlocutory injunction to apply until the
action came on for trial. For Le Miere J the degree of probability of future
injury was not absolute. Justice between the parties, having regard to the
circumstances, is the court’s aim. There must be a “real” risk of wrongful
conduct causing more than “trivial” injury: at [77].

Ex parte application for injunction

[13.210] The court may grant an interim injunction ex parte if it is satisfied
that the delay caused by proceeding inter partes would cause irreparable
damage.35 Although an interim injunction is usually given for only a short
period, it may apply until the trial of the action. Normally it is granted for a
short period, until a named day, when all parties are heard as to whether an
interlocutory injunction should be granted pending the trial of the proceeding.
Urgency is the first and most basic requirement for granting an interim
injunction.
The applicant may establish a case for an interim injunction by showing that
L

delay, even of short duration, will cause irreparable damage or by showing that
notice to the other party will of itself cause harm. If the court believes that the
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defendant will destroy evidence, or in some other way frustrate the proceeding
an interim injunction is appropriate. An ex parte injunction was granted in Ex
parte Island Records Ltd [1978] 3 WLR 23. Unauthorised recording and sale of
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music was causing the plaintiffs damage in their rights of copyright. They
9CA9 2

established that if the defendants were given notice of the proceeding they
would destroy the evidence and move the illegally made recordings to another
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address. In view of this probability the court was prepared to grant an ex parte
injunction.
An interim ex parte injunction is usually made either before the main
2

proceeding is served or at the same time as service is effected. The court may, in
unusual circumstances, grant an injunction to the plaintiff, before the plaintiff
E4

34 See also John Holland Pty Ltd v Construction, Forestry, Mining and Energy Union (2005)
144 IR 418 at [77].
( 6

35 ACT: r 729; FCR: r 7.01; NSW: r 25.2; NT: r 38.02; Qld: r 259; SA: r 246; Tas: r 444; Vic:
r 38.02; WA: O 52 r 1.
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commences a proceeding, on the plaintiff’s undertaking to promptly initiate a

court process. It is different after the defendant has filed an appearance or some
other form of notice of intention to defend. Then there is an address for service,
and the defendant should be served.
In an application for an ex parte injunction, the applicant must fully disclose all
relevant facts to the court. This includes disclosing facts that are unfavourable
to the application as well as of those that support it. Equitable remedies being
discretionary, the court must be apprised of all matters relevant to the exercise
of its discretion. When the court acts in the absence of a party, the burden on
the moving party to fully and accurately apprise the court of the truth is
increased. Facts must not be withheld, nor may the court be in any way misled,
either in what is said in support of the application or as to what is left
unsaid.36
Consequences of a misleading ex parte application are serious. The court will
dissolve an injunction on the return date if, because of a failure to disclose a
material fact, it is clear that the injunction was improperly granted: Grant
Matich & Co Pty Ltd v Toyo Menka Kaisha Ltd (1978) 3 ACLR 375. There is
no need for the applicant to disclose remote facts that may in unlikely events
become relevant. If there is a clear nexus between the facts and the relief sought,
those facts must be disclosed. The court will not dissolve an injunction unless
by suppression of facts or by misleading statements a different case has been put
from what actually exists: O’Brien v Australasian Temperance & General
Mutual Life Assurance Society Ltd (1891) 24 SALR 128.

Undertaking as to damages
[13.220] The court normally refuses to grant an interlocutory or interim
injunction unless the plaintiff gives an undertaking as to damages. The plaintiff
must agree to be liable for any damage suffered by the defendant because of the
operation of the injunction if the plaintiff fails at the trial: Air Express Ltd v
Ansett Transport Industries (Operations) Pty Ltd (1981) 146 CLR 249.
Damages are assessed under the undertaking and payment is enforced in the
same way as a judgment.
In rare circumstances the court might have a discretion to dispense with an
undertaking in damages: Spry, The Principles of Equitable Remedies (8th ed,
L

2010), p 483.
If the plaintiff fails as to principal relief, the question is then whether the court
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will enforce the undertaking. Unless there are special circumstances, damages
are assessed. At the assessment the onus is on the defendant to show that
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damage was suffered because of the injunction. It seems that damages cannot be
assessed unless the plaintiff gives an undertaking: Chisholm v Rieff (1957) 2
9CA9 2

FLR 211.
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Defendant’s undertaking in lieu of injunction

[13.230] There are instances where the court will accept the defendant’s
undertaking to refrain from the impugned conduct instead of formally granting
2

an injunction. In most cases, however, once the plaintiff establishes grounds for
an injunction it is unlikely that the court will deprive the plaintiff of an
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injunction simply because the defendant offers an undertaking not to persist

( 6

36 Thomas A Edison Ltd v Bullock (1912) 15 CLR 679; Town & Country Sports Resorts Pty
Ltd v Partnership Pacific Ltd (1988) 20 FCR 540.
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 588 Australian Civil Procedure [13.230]

with the enjoined conduct. But in a proper case the court could refuse an
injunction where the defendant offers an acceptable undertaking.
Whether the court will accept an undertaking depends on its assessment of the
circumstances of the case. The matter is discretionary. Possible harm to the
plaintiff and the reliability of the defendant are relevant in the court’s
consideration of whether to accept the defendant’s undertaking in lieu of an
injunction.37 The court must decide what is needed for the plaintiff’s
protection.38
The court has a discretion to release a defendant from an undertaking or to
accept another undertaking where circumstances change.39

Preserving Property to Satisfy Judgment

Mareva orders
[13.240] The court has jurisdiction to prevent a party from disposing of assets
with the intention of frustrating the enforcement of a judgment. An order of this
nature was approved by the Court of Appeal in England in Nippon Yusen
Kaisha v Karageorgis [1975] 1 WLR 1093 and Mareva Compania Naviera SA v
International Bulkcarriers SA [1975] 2 Lloyds Rep 509. The court assumed an
inherent equitable jurisdiction to prevent a foreign defendant from moving
assets out of the jurisdiction so that execution could not be levied on them.
Originally an order of this type was referred to as a Mareva injunction.
However, in Cardile v LED Builders Pty Ltd (1999) 198 CLR 380 the High
Court thought that the correct doctrinal basis for a Mareva order lies in
protecting the administration of justice and preventing an abuse of process,
which in a proper case includes preserving assets. An injunction was an
inappropriate identification of this process. The term “Mareva order” is
preferable: at 393, 399-401 per Gaudron, McHugh, Gummow and Callinan JJ.
A Mareva order restricts rights appertaining to private property. Equity
recognised this and it was established during the 19th century that the Court of
Chancery would not grant an injunction to restrain a debtor from dealing with
property in which the creditor did not have an interest.40 With the greater
mobility of goods, money and persons the courts had to act when the defendant
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intends to move assets out of the jurisdiction to prevent a judgment being

enforced. The power to prevent an abuse of process extends to ordering the
preservation of assets. Mareva orders are justified under the court’s inherent
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jurisdiction.41
At first a Mareva order was granted only against a foreign defendant. As it
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became recognised that the purpose of the jurisdiction was to prevent the
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dissipation of assets to frustrate the enforcement of a judgment that limit was

relaxed. A domestic defendant may be restrained from disposing of assets
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37 Attorney-General (Ex rel Lumley) v T S Gill & Son Pty Ltd [1926] VLR 414; Smith v Baxter
[1900] 2 Ch 138.
2

38 For examples of cases where the court accepted an undertaking see Spry, The Principles of
Equitable Remedies (8th ed, 2010), pp 479-481.
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39 Chanel Ltd v F W Woolworth & Co Ltd [1981] 1 WLR 485; Adam P Brown Male Fashions
Pty Ltd v Philip Morris Inc (1981) 148 CLR 170.
40 Lister & Co v Stubbs (1890) 45 Ch D 1; The Siskina [1979] AC 210 at 260-261.
( 6

41 Riley McKay Pty Ltd v McKay [1982] 1 NSWLR 264; AJ Bekhor & Co Ltd v Bilton [1981]
QB 923; Jackson v Sterling Industries Ltd (1987) 162 CLR 612.
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 [13.240] 13: Preserving and Inspecting Subject-Matter of Litigation 589

situated inside the jurisdiction.42 An order can probably be granted even where
there is a sufficient risk that assets will be moved outside the jurisdiction.43 In
England any doubt about this is resolved by statute: Supreme Court Act 1981
(ENG), s 37.
The jurisdictional foundation for a Mareva order was explained by the High
Court in Jackson v Sterling Industries Ltd (1987) 162 CLR 612. There needs to
be a basis for preventing an owner from dealing with property in the exercise of
property rights. As Wilson and Dawson JJ noted, the initial basis was the
jurisdiction to grant an injunction where it was just and convenient. This is
flawed with the difficulty that an injunction under this head is intended to
protect existing legal and equitable rights, not a mere chose in action. A broader
justification was required to grant a Mareva order against a domestic defendant
to restrain dealing with assets inside the jurisdiction. So, according to Wilson
and Dawson JJ, the jurisdiction to grant a Mareva order is the court’s power to
prevent an abuse of its process. Any attempt by a defendant to frustrate the
enforcement of a judgment is an abuse of process. This includes moving assets
outside the jurisdiction, which might put them beyond enforcement processes.
If this is the basis of the jurisdiction to grant a Mareva order it falls within the
court’s inherent jurisdiction. The statutory power to grant an injunction where
it is just and convenient is irrelevant in this context: at 617. The High Court
reaffirmed in Cardile v LED Builders Pty Ltd (1999) 198 CLR 380 that
preventing abuse of process and protecting the administration of justice is the
basis of a Mareva order. Abuse of process is the relevant doctrinal basis for a
Mareva order where a party to a proceeding is restrained from dealing with
property: at 400-401 per Gaudron, McHugh, Gummow and Callinan JJ.44
A Mareva order may restrain a non-party from dealing with property where a
restraint is necessary to protect the administration of justice. In Cardile v LED
Builders Pty Ltd the appellants were the sole shareholders in a building
company. In a proceeding for infringement of copyright the Federal Court held
that the respondent had copyright in building plans and that the company had
infringed that copyright. The respondent was entitled to an account of profits
derived from the copyright infringement. Before the account was taken the
company distributed substantial dividends to the appellants. The issue was
whether the appellants, as shareholders in the company but who were not
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parties to the infringement proceeding, could be restrained by a Mareva order

from dealing with the dividends. More generally, the issue was whether a
non-party or, as the High Court put it, a third party can be restrained by a
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Mareva order. Cases where a court would restrain a non-party are rare, but the
facts demonstrate a need to prevent a party in the position of the appellants
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from acting to make a judgment useless. Gaudron, McHugh, Gummow and

Callinan JJ stated a principle that a third party may be restrained by a Mareva
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order where
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42 AJ Bekhor & Co Ltd v Bilton [1981] QB 923; Patterson v BTR Engineering (Aust) Ltd
(1989) 18 NSWLR 319.
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43 Z Ltd v A-Z [1982] QB 558; CBS United Kingdom Ltd v Lambert [1983] Ch 37; Patterson
v BTR Engineering (Aust) Ltd (1989) 18 NSWLR 319.
44 Similarly in Riley McKay Pty Ltd v McKay [1982] 1 NSWLR 264 the New South Wales
( 6

Court of Appeal found jurisdiction under s 23 of the Supreme Court Act 1970 that gave the
court all the jurisdiction necessary to do justice in New South Wales.
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 590 Australian Civil Procedure [13.240]

• the third party has power to dispose of property of the judgment debtor or
potential judgment debtor; or

• there is a legal process (for example bankruptcy or company liquidation)

accessible to the judgment creditor as a consequence of a judgment against
the judgment debtor pursuant to which the third party may be obliged to
disgorge the property or otherwise contribute funds or property to satisfy the
judgment against the judgment debtor.

There is, though, a limit to the Mareva jurisdiction. The injunction must be
expressed so as to come within the limits of the purpose it is intended to
achieve: Jackson v Sterling Industries Ltd (1987) 162 CLR 612 at 625. In other
words, it cannot go beyond preventing the abuse of process committed in
making assets inaccessible to frustrate the enforcement of a judgment.

In Jackson v Sterling Industries Ltd the Federal Court, in a proceeding for

damages under s 87 of the Trade Practices Act 1974 (Cth), ordered the
respondent to give security of $3 million. The order made no reference to
whether the respondent had control of that amount, it simply ordered security
of that amount to be given. Had a fund of at least that amount been in the
respondent’s possession or if he had been ordered to pay $3 million from an
identified fund, the order would have stood. As it was, the order did not require
the preservation of property, at least not in express terms. While the Federal
Court has jurisdiction to grant a Mareva order, the order it made went beyond
what a Mareva order is intended to achieve. It does not create new rights of
property, or convert the plaintiff into a secured creditor. The order merely
preserves property where it is likely to be disposed of to frustrate the
enforcement of a judgment. Spender J in the Federal Court refused an
application for a Mareva order in Australian Competition and Consumer
Commission v Chaste Corporation Pty Ltd (in liq) (2003) 127 FCR 418 to aid
the enforcement of a statutory penalty under the Trade Practices Act 1974.
Enforcing payment of a statutory penalty is not preserving assets to satisfy a
civil judgment. The Federal Court had no jurisdiction to order a Mareva order
in these circumstances.
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Jurisdiction to grant a Mareva order is recognised in most Australian

jurisdictions.45
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Freezing orders under rules of court

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[13.250] Rules of court46 accompanied by detailed practice

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directions47 introduce a statutory basis for Mareva orders, or as they describe

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45 ACT: Barisic v Topic (1981) 37 ACTR 1; FC: Hiero Pty Ltd v Somers (1983) 47 ALR 605;
Jackson v Sterling Industries Ltd (1987) 162 CLR 612; NSW: Riley McKay Pty Ltd v
McKay [1982] 1 NSWLR 264; Qld: Bank of NZ v Jones [1982] Qd R 466; SA: Devlin v
2

Collins (1984) 37 SASR 98; Vic: Praznovsky v Sablyack [1977] VR 144; WA: Sanko
Steamship Co Ltd v DC Commodities (Australasia) Pty Ltd [1980] WAR 51.
46 These rules are a valid exercise of the power to make rules of court: PT Bayan Resources
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TBK v BCBC Singapore Pte Ltd (2015) 89 ALJR 975.

47 ACT: Court Procedures Practice Note (Freezing Orders) 2008 (no 1); FC: Practice Note
CM 9, Freezing Orders (otherwise known as “Mareva orders” or “asset preservation
( 6

orders”); NSW: Practice Note No SC Gen 14, Supreme Court – Freezing Orders; NT:
Practice Direction No 5 of 2006, Freezing Orders (otherwise known as “Mareva orders” or
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 [13.250] 13: Preserving and Inspecting Subject-Matter of Litigation 591

them, freezing orders.48 They preserve the inherent jurisdiction as to Mareva

orders.49 The purpose of the rules concerning freezing orders is to stop court
processes being frustrated. Assets of a judgment debtor may be frozen so that
they cannot be removed or made inaccessible to court or enforcement
processes.50
The court may make a freezing order against a judgment debtor if there is a
danger51 that a judgment will be unsatisfied in full or part because the judgment
debtor might abscond or remove or dispose of assets or diminish their value. A
freezing order may be made before judgment is given or before a proceeding is
commenced. It may impose on a “prospective defendant” the same restraints as
an actual defendant: PT Bayan Resources TBK v BCBC Singapore Pte Ltd
(2015) 89 ALJR 975. The rules take up the principle that the High Court
explained in Cardile v LED Builders Pty Ltd (1999) 198 CLR 380 for directing
a Mareva order to a third party. The court may direct a freezing order to a third
party if the third party holds, or has power to dispose of or influence the
disposition of, the judgment debtor’s assets. A third party may also be bound if
there is a process open to the judgment creditor by which the third party may be
compelled to disgorge assets or contribute towards satisfying the judgment. A
prospective judgment is sufficient to found a freezing order against a third
party.52
Apart from making a freezing order, the court may issue an ancillary order as
well. An ancillary order is to elicit information about assets relevant to the
freezing order or to determine whether a freezing order should be made.53
An intentional failure to comply with a Mareva order is contempt of court:
Wexford v Doolub [2008] NSWSC 952.
Bell J summarised the considerations relevant for deciding whether to grant a
Mareva order in Deputy Commissioner of Taxation v Gashi (2010) 27 VR 127
at [11]:54
• A freezing order is a drastic remedy and the court must exercise a high degree
of caution in deciding whether to grant it.

“asset preservation orders”); Qld: Practice Direction 1 of 2007, Freezing Orders (otherwise
L

known as “Mareva orders” or “asset preservation orders”); SA: Direction 4.5, Freezing
Orders (otherwise known as “Mareva orders” or “asset preservation orders”); Tas: Practice
Direction No 3 of 2006, Freezing Orders (otherwise known as “Mareva orders” or “asset
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preservation orders”); Vic: Practice Note No 5 of 2010, Freezing Orders (known as “Mareva
orders” or “asset preservation orders”); WA: Consolidated Practice Directions 9.6.1,
Freezing Orders (“Mareva orders”).
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48 For an example of the terms of a freezing or Mareva order see: Deputy Commissioner of
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Taxation v Seabrooke [2012] FCA 1158.

49 ACT: r 727; FCR: r 7.36; NSW: r 25.15; NT: r 37A.06; Qld: r 260E; SA: r 247; Tas: r 937F;
Vic: r 37A.06; WA: O 52A r 6.
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50 ACT: r 741; FCR: r 7.35; NSW: r 25.11; NT: r 37A.02; Qld: r 260A; SA: r 247; Tas: r 937B;
Vic: r 37A.02; WA: O 52A r 2.
51 Curtis v NID Pty Ltd [2010] FCA 1072 at [8]-[10].
2

52 ACT: r 743; FCR: r 7.35; NSW: r 25.14; NT: r 37A.05; Qld: r 260D; SA: r 247; Tas: r 937E;
Vic: r 37A.05; WA: O 52A r 5.
53 ACT: r 742; FCR: r 7.33; NSW: r 25.12; NT: r 37A.03; Qld: r 260B; SA: r 247; Tas: r 937C;
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Vic: r 37A.03; WA: O 52A r 3.

54 Accepting the principles Forrest J set out in Zhen v Mo [2008] VSC 300 at [22]-[30]. See also
MG Corrosion Consultants Pty Ltd v Gilmour (2012) 202 FCR 354 at [37]-[47]; Severstal
( 6

Export GmbH v Bhushan Steel Ltd (2013) 84 NSWLR 141 at [57]–[59] per Bathurst CJ;
Samimi v Seyedabadi [2013] NSWCA 279 at [67]–[75] per McColl JA.
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 592 Australian Civil Procedure [13.250]

• A freezing order is solely for preserving assets from being dissipated,

frustrating the court’s process. It is not designed as security for the
applicant’s claim.
• The applicant has the onus of proving that the order should be made or
continued.
• A freezing order can be made only on the basis of admissible evidence.
Speculation and guesswork are insufficient.
• The applicant must establish
– an arguable case against the defendant; and
– there is a danger that the prospective judgment will be wholly or
partially unsatisfied by the defendant removing, disposing of or dealing
with the assets.
• The balance of convenience must favour granting the order.
• The order must be framed according to the circumstances of the case.
• The applicant must establish with “some precision” the value of the
prospective judgment. The order must not unnecessarily tie up a party’s
assets or property.
• Discretionary considerations may militate against granting a freezing order,
for example delay in applying for the order or a lack of candour in the
material placed before the court.

Application for Mareva order

[13.260] Usually the plaintiff applies for a Mareva order by an ex parte
application. A return date is set on the making of the interim order so that the
defendant and any interested third parties can be heard. A plaintiff who
proceeds ex parte must fully disclose all known facts and circumstances that
could affect the court’s decision: Third Chandris Shipping Corporation v
Unimarine SA [1979] QB 645.
If the plaintiff applies before judgment, the plaintiff must show a strong case for
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relief in the proceeding and that the benefit of the judgment will be lost if the
injunction is refused.55 An adequate undertaking in damages is also necessary.
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This may extend to the protection of third parties who have an interest in the
subject-matter of the injunction, or who may incur expense to comply with it.
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Where appropriate, a bond may have to be given to support the undertaking: Z

Ltd v A-Z [1982] QB 558.
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Ordinary dealing with assets in the course of legitimate business will not
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ground a Mareva injunction: Parakalo Pty Ltd v E M Redmond & Co Pty Ltd
[1983] 2 Qd R 604. Neither will an order be granted so as to make the plaintiff
a secured creditor.56
2
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55 Minema Maritime Corporation v Tave Schiffahrtsgesellschaft mbH & Co KG [1983] 1 WLR

1412; Patterson v BTR Engineering (Aust) Ltd (1989) 18 NSWLR 319.
( 6

56 AJ Bekhor & Co Ltd v Bilton [1981] QB 923; Jackson v Sterling Industries Ltd (1987) 162
CLR 612.
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