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EQUITY & TRUST II INJUNCTIONS ANTON PILLER ORDER Jeong Chun Phuoc Jeongphu@yahoo.com mobile direct: 0196288699 20 December 2012 – MMU Law School, Multimedia University of Malaysia

20 December 2012

MULTIMEDIA UNIVERSITY OF MALAYSIA

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INJUNCTIONS

ANTON PILLER ORDER 1 ADMINISTRATIVE ISSUES

Assignment- “Guided Consultation” Initiative Exercise /2008-2013/

“Presentation Mooting Style” Initiative /2008-2013/

2 LECTURE SLIDES PRESENTATION

(1.40)

3 Objectives /Learning Outcomes(1.40)

4 Case Law Analysis (1.40)

5 “Analysis Of Legal Issues In Newspapers Of National Importance” Initiative /2008-2013/(ALI-np)

6 Q & A Session (10)

7 Conclusion

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INJUNCTIONS ANTON PILLER ORDER Introduction Definition Anton Piller order Anton Piller order and related Conditions Case Law Analysis Case Review Comparative Observation Concluding Remarks Further Readings Q & A Session

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INJUNCTIONS Anton Piller order “When security and equality are in conflict, it will not do to hesitate a moment. Equality must yield.”

Jeremy Bentham (1748-1832) Principles of Legislation, 1789

Introduction Definition An extraordinary relief Bell Expressvu Limited Partnership v. Rodgers (Tomico Industries) 52 C.P.C. (6th) 312 Justice Pepall : "An Anton Piller order is extraordinary relief…. Nature and Scope In a pre-litigation process Anton Piller Order is a special order of court. Range Civil litigation Trademark cases (See Trademark Act 1976) Copyright cases (see Copyright Act 1987) Patent infringements cases, etc

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(See Patents Act 1983) Application Ex parte application Application by one party(Plaintiff) to preserve crucial evidence against another party(Defendants). The damage if the AP order is not granted, potential or actual, must be very substantial to the plaintiff. Purpose In an infringement process To permit plaintiff’s solicitor to enter Defendant’s premise. To search and collect evidence of infringement by Defendant(s). The order is designed to prevent the defendant from committing certain actions/activities : Activities concealing, removing or destroying vital evidence such as documents, or other moveable property, prior to an inter partes hearing of a pending civil action.

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Purpose The purpose of the order is to prevent the removal or destruction of evidence before inter partes application. Landmark Case of Reference Anton Piller KG v Manufacturing Processes Ltd [1976] 1 All ER 779

Comparative Analysis Note EMI Limited v Pandit [1975] 1 All ER 418

and Celanese Canada Inc. v. Murray Demolition Corp.,

[2006] 2 S.C.R. 189 Concept of Anton Piller Order Lord Denning MR “…if the defendant were forewarned, there is a grave danger that vital evidence will be destroyed, that papers will be burnt or lost or hidden, or taken beyond the jurisdiction, and so the ends of justice can be defeated…”

Comparative UK Note 1 UK Procedural Law

Rule 40 – interlocutory injunction or mandatory order

Section 101 of UK Courts of Justice Act Rule 45.01(1) - court may make an interim order for the

custody or preservation of property in question in a proceeding or relevant to an issue in a proceeding.

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European Union

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (also known as "(IPR) Enforcement Directive" Article 7 of (IPR) Enforcement Directive" “civil search warrant” The AP order allows the plaintiff to enter the defendant’s premises. Search, collect and make copies of documents/materials. Guiding Consideration All in all, such orders are rarely made, and will only be considered by the courts if there is no suitable alternative method of securing justice for the plaintiff. Obligation Compliance Failure by Defendant Failure to comply with an Anton Piller order is punishable by contempt of court.

Comparative Note Australian Case

Columbia Picture Industries v Robinson [1987] Ch 38)

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Failure by Plaintiff Evidential value and acceptance of illegally obtained evidence/materials/documents.

Comparative Note Australian Case

Columbia Picture Industries v Robinson [1987] Ch 38) Test and Legal Requirements Conditions for granting an Anton Piller order General Guidelines The Three Step Test - There is an extremely strong prima facie case against the respondent, - The damage, potential or actual, must be very serious for the applicant, and

-There must be clear evidence that the respondents have in their possession relevant documents or things and that there is a real possibility that they may destroy such material before an inter partes application can be made. Comparative Note New Zealand 33.3 of the High Court rules. (a) an applicant seeking the order has a strong prima facie case on an accrued case of action. (b) the potential or actual loss or damage to the applicant will be serious if the search order is not made

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(c) there is sufficient evidence in relation to a respondent that -the respondent possesses relevant evidentiary aterial; and there is a real possibility that the respondent might destroy such material or cause it to be unavailable for use in evidence in a proceeding or anticipated proceeding before the court.

Comparative Analysis Supreme Court of Canada case Celanese Canada Inc. v. Murray Demolition Corp., 2006 SCC 36 (CanLII), [2006] 2 SCR 189 Four Step Test -The plaintiff has demonstrated a strong prima facie case -The damage to the plaintiff of the respondent's alleged misconduct, potential or actual, must be very serious. -There must be convincing evidence that the defendant has in its possession incriminating documents or things -It must be shown that there is a real possibility that the defendant may destroy such material before the discovery process can do its work

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Summary An extremely strong prima facie case Due to the extraordinary nature of the remedy(human rights and privacy concerns) the Court is always reluctant to allow such an Order. Practice of extreme care -The merits of the case in question -Circumstances of the case -Evidence submitted Plaintiffs must prove that they have a “very” or “extremely” strong prima facie case. Very serious potential or actual damage to the plaintiff INJUNCTIONS Conditions for granting an Anton Piller order Defendants possess incriminating materials -Clear evidence of such documents/materials Purpose Analysis Anton Piller orders Preservation of evidence for the purpose of civil trial/action

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Guiding consideration If plaintiff gives advance notice of the remedy sought/action to be taken to the defendants, there is a real danger that crucial evidence will be destroyed, concealed or taken out of the jurisdiction by the defendants. Rationale Review There is a high and real possibility that defendants may, unless properly prevented/restrained(by way of Anton Piller Order), destroy such material before the commencement of inter partes application process. INJUNCTIONS Discussion Conditions for granting an Anton Piller order Prevention of Abuse Due to possible abuse of process, stringent conditions must be shown by the Plaintiff in all Anton Piller Order application.

Lock International plc v Beswick (1989) 1 WLR 1268, Anton Piller orders were thought to be "inherently

oppressive".

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Copyright scenario Chappell v. United Kingdom (Series A No 152; Application No 10461/83 European Court of Human Rights (1990) 12 EHRR 1 30 MARCH 1989 Anton Piller Order - Copyright breaches HEADNOTE: The applicant was suspected of committing some Copyright infringements. Under an Anton Piller order made by the High Court against him, the applicants business premises which were also his home were searched by the authorities. The order was executed simultaneously with a police search warrant. The applicant filed suit alleging violations of Article 8 of the European Convention on Human Rights. The court held that there was no breach of Article 8 of the European Convention on Human Rights.

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Case Study Analysis and Review Universal Thermosensors Ltd v Hibben [1992] 1 WLR 840 Sir Donald Nicholls VC laid down the strict rules which must be shown by the Plaintiff Arthur Anderson & Co v Interfood Sdn Bhd [2005] 2 AMR 650, CA; [2005] 6 MLJ 239 followed Universal Thermosensors Ltd v Hibben [1992] 1 WLR 840 The Legal Requirements Issues 1. The order should normally contain a term that before complying the defendant may obtain legal advice, provided this is done forthwith. •Unless this is clearly not appropriate, the execution of orders must be restricted to working days and normal working hours. •The order may contain an injunction to restrain the defendant from informing others of the existence of the order for a period as may be appropriate in the circumstances of the case, save a communication with a legal advisor for the purposes of securing legal advice. •Except where there are good reasons for doing otherwise, the order should not be executed at business premises save in the presence of a

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responsible officer or representative of the company or trader in question. INJUNCTIONS Conditions for granting an Anton Piller order Execution Procedure Executed during office/business hours.

Universal Thermosensors Ltd v Hibben [1992] 1 WLR 840

A detailed list of the items/documents to be removed by the Plaintiff from the Defendant’s premises. Defendant be given an opportunity to verify/check that list.1

Ridgewood Electric Ltd. (1990) v. Robbie 74 O.R. (3d) 514 Justice Corbett "... search warrant ... an exercise of the court's inherent jurisdiction to protect its own process. The order does not authorize entry. Rather, it commands the defendant to permit entry. The defendant may deny

1 If the order is to be executed at a private house, and it is likely that a woman may be in the house and alone, the solicitor serving the order must be, or must be accompanied by, a woman

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entry, and thereafter face contempt proceedings and possible adverse inferences. However, the plaintiff's agents may not use force to effect entry in the face of the defendant's denial of permission.”

Proper Undertaking Applicant Plaintiff has to give an undertaking as to damages, and also to pay reasonable fees/costs to independent legal practitioner(third party solicitor). (i) Plaintiff may be required to make an undertaking that the execution of the AP order be supervised by a neutral party(third party solicitor) (ii) Solicitor is familiar and has experience in carrying out execution of Anton Piller orders; (iii) solicitor should prepare a written report with regard to the execution of the orders at the Defendants’ premise; (iv) a copy of the execution report should be given to the defendant; and (v) plaintiff is to present that report at the inter partes hearing/application.

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Arthur Anderson & Co v Interfood Sdn Bhd [2005] 6 MLJ 239 Several interim reliefs were granted to the Respondent against the appellant Main issue Anton Piller order Appellant applied to set aside the Order while the respondent sought an order to continue to retain the documents seized pursuant to the Order. The same High Court which granted the Order(1) allowed the respondent’s application to retain the documents; but (2) dismissed the appellant’s application to set aside the order. The appellant appealed against both orders. In allowing both appeals, the court viewed that even with the absence of any Practice Direction, the application and execution of an Anton Piller order is subject to stringent requirements, guidelines and safeguards. In other words, any departure would be contrary to the common law of Malaysia as such point has already been well established.

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Anton Piller order and privilege from self-incrimination In respect of the local law as to the applicability of the privilege from self incrimination and the application for an Anton Piller order in the context of interlocutory proceedings, there are two conflicting views. First Position Application : The privilege remains applicable? PMK Rajah v Worldwide Commodities Sdn Bhd [1985] 1 MLJ 86 The court viewed that the defendants were entitled to the privilege not to give discovery of documents, the disclosure of which would incriminate them. In this case, the first, second, sixth and seventh defendants sought for an order of the court to discharge an Anton Piller order granted on Dec 30, 1982. The defendants contended that (a) the plaintiff had misled the court by stating in his affidavit in support of the ex parte application that the first defendant was required by law to keep a segregated bank account in respect of the plaintiff & (b) it was not possible to show the trading statements to solicitors of the plaintiff without disclosing particulars of other clients which were confidential in nature.

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The production of the documents referred to in the order would incriminate the defendants by providing evidence on which they could be prosecuted for offences under the Commodities Trading Act 1980 and for conspiracy and fraud. Application of the privilege from self incrimination and the application for an Anton Piller order In interlocutory proceedings Two different views First Opinion The privilege remains applicable Case Study Riedal-de Haen AG v Liew Keng Pang [1989] 2 MLJ 400 The court viewed that before the privilege against self-incrimination (‘the privilege’) can be claimed successfully, it must be shown that that there is a real risk that incriminating answers would expose the person concerned to arrest or prosecution for any criminal offences. In this case, the plaintiffs obtained an Anton Piller order against the defendant ordering the defendant inter alia to disclose the names of their suppliers and customers of goods bearing

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the plaintiffs’ trademarks. The defendant applied to discharge the order on the ground that it infringed the privilege against self-incrimination. Case law study First Opinion Arjunan a/l Ramasamy & 9 Ors v Kesatuan Kebangsaan Pekerja-Pekerja Ladang & 12 Ors [1993] 1 MLJ 326 The court viewed that the defendants were entitled to the privilege not to give discovery of documents because such disclosure would incriminate them. In this case, one the issues before the court was whether the defendants must give discovery documents which might subject them to prosecution. Counsel for the defendants argued that under sec 55(3) of the Trade Unions Act 1959, the account should be verified by statutory declaration and if not true, would subject their members (of the Trade Union/defendants) to prosecution. In respect of the local law as to the applicability of the privilege from self incrimination and the application for an Anton Piller order in the

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context of interlocutory proceedings, there are two conflicting views Second Opinion The privilege no longer exists Case law study Television Broadcasts Ltd v Mandarin Video Holdings Sdn Bhd [1989] 2 MLJ. See also AG of Hong Kong v Zauyah Wan Cik [1995] 2 MLJ 620 The court viewed that in Malaysia, the common law privilege against self-incrimination has been removed by sec 132(1) of the Evidence Act. The section applies where a court in this country is recording evidence in municipal proceedings or in aid of proceedings pending before a foreign tribunal.

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INJUNCTIONS Conclusion Both types of injunctions do play vital roles in helping the plaintiff in his or her journey or quest for justice. Example A Mareva injunction would restrain a defendant from disposing or otherwise dealing with any of their assets within the jurisdiction of the court, in such a way as not to satisfy judgment in favour of the plaintiff. On the other hand, an Anton Piller order would prevent the defendant from concealing, removing or destroying vital evidence such as documents, or other moveable property, prior to an inter partes hearing of the pending action Courts are aware of the dangers associated with both types of injunctions and thus rules or guidelines have been formulated in the process of granting these two types of injunctions.

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INJUNCTIONS Case law and current Judicial Update GS Gill Sdn Bhd V. Descente, Ltd Federal Court, Putrajaya Zulkefli Ahmad Makinuddin Fcj, James Foong Fcj, Heliliah Mohd Yusof Fcj [Civil Appeal No: 02(F)-46-2008 (W)] 12 April 2010 Further Readings and Case Studies EU CASE LAW RREVIEW 2. BARTHOLD V GERMANY (1985) 7 EHRR 383. 3. BOOKER McCONNELL plc v PLASCOW [1985] RPC 425. 4. COLUMBIA PICTURES INDUSTRIES INC V ROBINSON [1986] 3 All ER 338, [1986] FSR 367. 5. DORMEUIL FRERES SA V NICOLIAN INTERNATIONAL (TEXTILES) LTD [1988] 3 All ER l97. 6. HALLMARK CARDS INC V IMAGE ARTS LTD [1977] FSR 153. 7. HYTRAC CONVEYORS LTD V CONVEYORS INTERNATIONAL LTD [1982] 3 All ER 4l5. 8. LEANDER V SWEDEN (1987) 9 EHRR 433. 9. MALONE V UNITED KINGDOM (1985) 7 EHRR 14. 10. OLSSON V SWEDEN (1989) 11 EHRR 259.

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Text, Cases and Materials on Equity and Trusts, Fourth Edition Routledge-Cavendish; 4 edition (August 1, 2005) Commonwealth Caribbean Law of Trusts Third Edition Gilbert Kodilinye, Trevor Carmichael 17th 2012 by Routledge-Cavendish Equity and Trusts 7th Edition Alastair Hudson, Alastair Hudson 28th 2012 by Routledge Text, Cases and Materials on Equity and Trusts 4th Edition Mohamed Ramjohn 23rd 2008 by Routledge-Cavendish and other current local text books INJUNCTIONS Concluding Remarks and Considerations Application Performance Analysis Criticisms Comparative Jurisdiction Analysis Recommendations for Reform

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INJUNCTIONS Questions & Answers Session Tea Break and Strategic Discussion

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TUTORIAL QUESTION Question 1 Critically analyse Anton Piller v. Manufacturing Processes [1976] Ch.55) or APO and compare it with the legal position in BBMB v Loraine Osman [1985] 2 MLJ 236

Comparative Analysis Singapore case

Computerland Corp V Yew Seng Computers Pte Ltd [1991] 3 MLJ 201

Question 2 Explain all practical safeguards that must be observed by both parties (Plaintiff and Defendant) in the execution of the Anton Piller Order. Question 3 Critically compare and contrast Mareva Injunction with the Anton Piller Order and ascertain the current Malaysia judicial position towards these two remedies.