AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
generally the appropriate Court for matters involving equitable claims whereas the Federal Court more typi - cally hears contractual claims. If additional IP rights are being asserted, then the proceedings will need to
• There is a real possibility that the plaintiff may destroy such material or cause it to be unavailable in a proceeding or prospective proceeding. Search orders are carried out by an independent legal adviser. In cases where the search orders include the seizure of electronic devices, an independent forensic expert will also be included in the search party. 5.7 Obtaining Information and Evidence Pre-Trial Discovery In both the Federal Court and state/territory Supreme Courts, pre-trial discovery is permitted by order of the Court and is known as “preliminary discovery”. Pre - liminary discovery is an order requiring a prospective defendant to give discovery of documents that are directly relevant to whether the prospective plaintiff has a claim against the prospective defendant. To obtain preliminary discovery, the prospective plain - tiff must show that after making reasonable enquir - ies, they do not have sufficient information to decide whether to commence a proceeding and they reason - ably believe that they may have a right to relief ( Aristo- crat Technologies Australia Pty Ltd v Ainsworth Game Technology Ltd (2018), FCA 1511). Preliminary discovery can be a very useful mecha - nism, particularly for employers who believe that a for - mer employee has misappropriated its trade secrets but may not have sufficient evidence (such as foren - sic evidence) to bring proceedings (see, for example, Aristocrat Technologies Australia Pty Ltd v Light & Wonder Inc (2024), FCA 439). The party giving discovery must serve on other parties a list of documents that describes the: • categories of documents in its control; • documents previously but no longer in its control; and • privileged documents. The list of documents must be verified by affidavit. The party giving discovery then produces the non-privi - leged documents. If this party does not produce the documents, the other parties can apply for an order for production of these documents.
be commenced in the Federal Court. 5.5 Initial Pleading Standards
In Australia, in order to commence a claim in relation to trade secret theft or misappropriation, the trade secret owner must be able to satisfy the four elements of the claim prior to commencing proceedings. The four elements are: • the trade secret owner must be able to identify with specificity, and not merely in global terms, that which is said to be the information in question; • must be able to show that the information has the necessary quality of confidence (and is not, for example, common or public knowledge); • the information was received by the defendant in such circumstances as to import an obligation of confidence; and • there is actual or threatened misuse of that infor - mation, without the consent of the plaintiff. The pleadings filed by the plaintiff are required to address each for the four elements. Given the nature of trade secrets, it is common that the information in issue is separately referred to in a confidential plead - ing. 5.6 Seizure Mechanisms Australian courts have broad powers to make orders, including search orders (Anton Piller orders), at vari - ous stages of a proceeding. Search orders can be made by the court ex parte (see, for example, Aris- tocrat Technologies Australia Pty Ltd v Tran , Federal Court No NSD10 of 2024). A court can grant a search order if the following condi - tions are met. • There is a strong prima facie case. • The damage (potential or actual) to the plaintiff will be serious of the order is not made. • There is sufficient evidence that the plaintiff has in their possession important evidentiary material.
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