AUSTRALIA Trends and Developments Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
In light of the first element above, a recurring theme in Australian case law is the need to particularise the information which is the subject of the claim with pre - cision, and courts are applying ever more scrutiny to the alleged “secret” in breach-of-confidence cases. This presents an inherent difficulty for applicants because they often do not know exactly which infor - mation has been misappropriated when commenc - ing proceedings. This is a common stumbling block for those seeking to rely on the equitable action (and rights under contract as well). A recent example is Engadine Medical Imaging Ser- vices Pty Ltd as trustee for the Engadine Unit Trust v Mena Ibrahim (2024), NSWSC 1399, where McGrath J considered the applicants’ claim for breach of con - fidence to be “fatally flawed for numerous reasons”, including because “the Applicants have failed to iden - tify what precise information Mr Ibrahim is said to have (mis)used, having only done so in global terms.” (This decision was appealed, though not on the breach-of- confidence aspect). Establishing the necessary quality of confidence Even if the information can be identified and particu - larised, the applicant must also demonstrate that the information has the “necessary quality of confidence”. That is, the information must be “secret” and not in the public domain. As Finn J stated in Australian Medic- Care Co Ltd v Hamilton Pharmaceutical Pty Ltd (2009), FCA 1220 at [633], “the essential attribute of con - fidential information is what has been described as ‘relative secrecy’. Whether this attribute exists in a given case will be often a question of degree and a variety of criteria have been invoked in varying con - texts to sharpen the inquiry to be made”. His Honour set out a list of criteria, notably includ - ing whether “the information in question is widely known, or publicly available in the relevant industry, trade, etc”, and the “steps... the confider has taken to preserve the secrecy of the information and to prevent it becoming public knowledge.” This list is broadly similar to that of Kirby P in Wright v Gasweld Pty Ltd (1991), 22 NSWLR 317 at 333–334. These criteria have been applied, expanded, and restated in numerous subsequent decisions – but importantly, are not rigid
checklists and are not a substitute for application of the legal test by the court. In order to maximise the prospects of success in liti - gation, it is essential to adopt a proactive approach. Remedial measures are often of limited efficacy once proceedings are underway. The authors set out below a number of steps that a prudent corporate entity may consider implementing. The application of the settled principle: New Aim Pty Ltd v Leung The recent decision in New Aim Pty Ltd v Leung (No 4) (2025), FCA 747 (“ New Aim ”) highlights the scrutiny applied by courts when examining whether informa - tion alleged to be confidential is, in truth, confidential. Like much of the case law in Australia relating to trade secrets, the New Aim proceedings arose in the con - text of a former employment relationship. New Aim commenced proceedings against a former employee, Mr Leung, alleging breach of confidence, breach of contract, and contravention of Section 183 of the Corporations Act 2001. The information alleged to be confidential was the identity and contact details of certain suppliers to New Aim , recorded in the WeChat application on Mr Leung’s personal mobile phone. Justice Neskovcin found against New Aim, concluding that the identity and contact details of its suppliers did not have the necessary quality of confidence. Several factors proved fatal to New Aim’s case. • The “confidential information” was defined too broadly, including historical and unprofitable sup - pliers, making it implausible that employees would understand all this information was “confidential” or that New Aim genuinely treated it as such. • New Aim’s own practices during the relevant period – employees used personal devices with no restrictions on storing supplier contacts, were not required to delete supplier data upon leaving, and were not required to sign employment agree - ments with appropriate confidentiality provisions. New Aim’s internal policy did not extend to supplier lists, and it did not enter non-disclosure or exclu - sivity agreements with suppliers.
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