AUSTRALIA Law and Practice Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin
5.2 Limitations Period There are no specific statutory limits in relation to trade secret rights in Australia. In circumstances where there has been an unau - thorised use or disclosure of information which is the subject of a confidentiality arrangement, then a limitation period will apply (six years for Queensland, New South Wales, Victoria, Tasma - nia, South Australia, Western Australia and the Australian Capital Territory, and three years for the Northern Territory). 5.3 Initiating a Lawsuit Once a trade secret owner becomes aware that its trade secrets have been taken or misappro - priated, it can commence proceedings in either the Federal Court or a state/territory Supreme Court. Trade secret proceedings, like other civil pro - ceedings, are commenced by way of pleadings which require the plaintiff to set out its case and the remedies it seeks. 5.4 Jurisdiction of the Courts Australia has a tiered court system which includes a federal court system, state/territory courts and specialist courts. Proceedings for misappropriation and breach of trade secrets and confidential information can be brought in either the Federal Court of Australia, which is a national court, or the Supreme Court of the relevant state/territory. The choice of juris - diction will depend on whether the party initiating the proceedings has an equitable, contractual or statutory claim and whether there are any addi - tional IP rights, such as copyright infringement, being asserted. The Supreme Court is generally the appropriate Court for matters involving equi - table claims whereas the Federal Court more
(Liberty Financial Pty Ltd v Jugovic [2021] FCA 607). 4.2 New Employees In order to protect itself from claims of trade secret misappropriation, companies will often include contractual obligations in employment contracts requiring that no third party trade secrets or information not in the public domain is used by the employee. Larger companies will also often have robust IT policies and procedures in place to limit any potential misuse by employees of both the com - pany’s and any third parties’ IP. This will often include restricting use of data transfer devices such as USBs and monitoring of employees’ document activity. 5. Trade Secret Litigation 5.1 Prerequisites to Filing a Lawsuit When a party believes that its trade secrets and/or confidential information may have been misappropriated or taken, it must first deter - mine with specificity the information in issue. The party must then identify whether there is an equitable, contractual and/or statutory breach of confidence and ensure that it can positively make out its case prior to commencing proceed - ings. Prior to commencing proceedings, a trade secret owner may send a cease and desist letter to the potential defendant outlining its case and requesting the return of its trade secrets together with an undertaking that the potential defendant will not use the trade secrets. Whether a cease and desist letter is sent will turn on the facts of the case and extent of any potential damage.
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