AUSTRALIA Law and Practice Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin
typically hears contractual claims. If additional IP rights are being asserted, then the proceedings will need to 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 commenc - ing proceedings. The four elements are: • the trade secret owner must be able to iden - tify 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 knowl - edge); • the information was received by the defend - ant in such circumstances as to import an obligation of confidence; and • there is actual or threatened misuse of that information, without the consent of the plain - tiff. 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 pleading. 5.6 Seizure Mechanisms Australian courts have broad powers to make orders, including search orders (Anton Piller orders), at various stages of a proceeding. Search orders can be made by the court ex parte (see, for example, Aristocrat Technologies Aus - tralia Pty Ltd v Tran, Federal Court No NSD10 of 2024).
A court can grant a search order if the following conditions are met. • There is a strong prima facie case. • The damage (potential or actual) to the plain - tiff will be serious of the order is not made. • There is sufficient evidence that the plaintiff has in their possession important evidentiary material. • 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 permit - ted by order of the Court and is known as “pre- liminary discovery” . Preliminary 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 plaintiff must show that after making reasonable enquir - ies, they do not have sufficient information to decide whether to commence a proceeding and they reasonably believe that they may have a right to relief (Aristocrat Technologies Australia Pty Ltd v Ainsworth Game Technology Ltd [2018] FCA 1511). Preliminary discovery can be a very useful mech - anism, particularly for employers who believe that a former employee has misappropriated
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