AUSTRALIA Law and Practice Contributed by: John Lee, Michael Williams, Siabon Seet and Vanessa Farago-Diener, Gilbert + Tobin
• it suffered loss and damage (eg, lost profits or market share) as a result of the theft or disclo - sure of its trade secrets; and • the wrongdoer benefited by misuse of the trade secrets, such as by developing a new product it would not otherwise have been able to produce. Exemplary damages are available in Australia including for copyright infringement and breach of contract. This means that, in circumstances where trade secrets are protected by clauses in a contract preventing disclosure, which are then breached, a plaintiff may seek exemplary dam - ages for the breach of contract alone. 7.3 Permanent Injunction In Australia, permanent injunctions are an avail - able mechanism of relief for trade secret plain - tiffs. There are broadly two types of injunctions available. Types of Permanent Injunctions • Prohibitory injunctions – these can prevent the person injuncted from taking a speci - fied action, such as releasing a product to the market that has been developed using improperly obtained trade secrets or disclos - ing those trade secrets (such as ex-employ - ees who might seek to take trade secrets from former employers and provide them to a new employer). • Mandatory injunctions – these can compel the subject to take a specified action for the purpose of enforcing a legal right, such as withdrawing a product developed using improperly obtained trade secrets from the market. Obtaining a Permanent Injunction To successfully obtain a permanent injunction, a plaintiff must demonstrate that:
• the balance of convenience is in its favour, which requires showing that the defendant’s compliance with an injunction would be pos - sible, not unreasonably burdensome, and that there would be minimal adverse effect on any third parties; • damages alone would not be a sufficient remedy; and • an injunction is necessary to prevent irrepara - ble harm to its business or reputation. 7.4 Attorneys’ Fees Australian courts generally operate under “loser pays” system, meaning that legal costs, includ - ing attorney/solicitor fees, are recoverable from the losing party. The extent of recovery is usu - ally about 60% to 70% of the successful party’s actual legal costs. The award of costs is a dis - cretionary exercise. When making a costs order, the court can consider the degree of success that each side has attained and any other rel - evant factors, such as the conduct of the parties during the proceedings, in determining whether to apportion costs. In making a costs order, the court can consider what is referred to in Australia as “Calderbank” offer (that is, an offer to settle) and formal offers of compromise made during the proceedings. If the Calderbank offer or offer of compromise was reasonable in light of the final outcome of the proceedings and was made at an appropriate time in the proceedings, the court could poten - tially find that rejection was unreasonable and order the successful party to the proceedings to pay the unsuccessful party’s legal costs from the date of the offer. Additionally, a successful party to a proceeding may seek an indemnity costs order. These are awarded in exceptional circumstances, such as when the losing party has conducted the litiga -
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