AUSTRALIA Law and Practice Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin
Requirements To obtain an order for an interlocutory injunction, a plaintiff must demonstrate that it has a prima facie case and that the “balance of convenience” favours the granting of an injunction (Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618). To establish that there is a prima facie case, the plaintiff must show that it has a real, credible case and that it would be entitled to relief at trial. In considering the “balance of convenience” , the court weighs the harm that may be suffered by the plaintiff if the preliminary injunction is not granted against the harm that may be suffered by the defendant if the preliminary injunction is granted. An important factor is whether financial compensation will be an adequate remedy to the plaintiff if infringement is established. Duration of Permanent Injunctions In Australia, permanent injunctions are subject to review. While a permanent injunction is ordered to remain in effect indefinitely, the courts retain the authority to modify or vacate the orders giv - ing effect to the injunction based on changes in circumstances or other relevant factors. There - fore, the duration of a permanent injunction is not fixed and can be subject to judicial review and adjustment. Undertaking as to Damages To obtain a preliminary injunction, the plaintiff must give to the court what is known as the “usual undertaking as to damages” , namely, an undertaking that the plaintiff will pay compensa - tion to be assessed by the court to any person (including the defendant and third parties) that is adversely affected by the injunction if the plain - tiff is unsuccessful at the final hearing. There is
no requirement to provide any security, bond or guarantee with the undertaking. Other Processes Australian courts also have the power to make freezing orders (Mareva orders). The purpose of a freezing order is to prevent the frustration or abuse of a court’s process by seeking to meet a danger that a judgment (or prospective judg - ment) of the court will be wholly or partly unsat - isfied. The freezing order can be limited to Aus - tralia or can extend to anywhere in the world. A freezing order can only be obtained if the plaintiff has a cause of action that is justiciable within the jurisdiction; it cannot stand on its own. 7.2 Measures of Damages Damages in trade secret proceedings based on an equitable breach of confidence broadly fall into the category of equitable compensation. The principle of equitable compensation is to restore the injured party to the position it would have been in had the theft or disclosure of its trade secrets not occurred. The courts have shown reluctance to follow a rigid formula, pre - ferring to assess the amount required to restore the injured party depending on the circumstanc - es of the case, such as: • the commercial value of the trade secrets at issue; • potential profits lost because of disclosure of the trade secrets; and • the gain the wrongdoer has enjoyed by its misuse of the trade secrets. To claim equitable compensation successfully, a plaintiff must show: • the relevant trade secrets have commercial value;
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