DISCUSSION
38 On the return of the application, the applicant had not yet searched or examined the Adrenaline shoes at any of the respondents' many retail stores save for the respondents' head office in Homebush, and could not determine which, if any, Adrenaline shoes in those other retail locations were counterfeit. It thus sought to restrain, for a short period, the sale of any shoes bearing both any of the trademarks and the word "Adrenaline", until it ascertained a means of discrimination between genuine and counterfeit shoes enabling it to frame an application for interlocutory relief sought with sufficient precision.
39 The applicant sought access to the invoices to determine the source of supply for the various Adrenaline shoes, as that information was likely to permit the identification of counterfeit shoes independently of physical inspection. It would also facilitate the restraint of further potential infringements which could arise because the respondents regularly placed further orders for Adrenaline shoes, an indefinite quantity of which could arrive pursuant to orders already placed or placed in the near future.
40 Following the execution of the search order, the respondents had removed all Adrenaline shoes in their stores to a central location and undertook not to sell them before affording the applicant an opportunity to examine them. The applicant submitted, however, that although the respondents were willing to extend that regime to all future supplies of Adrenaline shoes pending the determination of the proceeding (or an early mediation), disclosure of the source of supply of the shoes would constitute the most effective means of discrimination, and would require the input of representatives of the applicant with the requisite industry knowledge.
41 Further, the applicant sought disclosure of the numbers of the respondents' past sales of Adrenaline shoes and some means of determining whether they were infringing sales of counterfeits or, rather, sales of genuine Adrenaline shoes. The applicant accordingly proposed a regime for its legal representatives, subject to the respondents' claims to privilege or other objections, to have access to the results of the independent computer interrogation of the respondents' stock records by reference to the words "Brooks" or "Adrenaline".
42 The respondents resisted an order for injunctive relief, contending that their undertaking not to sell any "Adrenaline" shoes prior to affording the applicant an opportunity to inspect them sufficiently addressed the applicant's concerns, while permitting the respondents to continue to sell genuine "Adrenaline" shoes.
43 The respondents resisted disclosure of the confidential exhibits to Mr Dwyer's affidavit to representatives of the applicant (although it contained information required to be disclosed to the applicant by the Anton Piller order), and resisted access to computer search results by the applicant's legal representatives.
44 The respondents contended that they, as retailers of many brands of shoes, were trade rivals of the applicant (a designer and wholesaler of one brand sold by the respondents) and of its exclusive distributor, Texas Peak. Accordingly, disclosure of the source of the supplies of the Adrenaline shoes to the applicant would hinder the respondents' ability to obtain lawful parallel imports, and disclosure of information about dates and places of sales of shoes would advantage Brooks as a trade rival. Disclosure of the results of the computer search, even if, at this stage, only to the applicant's legal representatives, would require the respondents first to assess the material in order to make any necessary objections, which would be unduly burdensome.
45 The respondents submitted that the scope of the material in question potentially extended beyond the Adrenaline shoes, and their examination would exceed the legitimate goal of an Anton Piller order, which was simply to preserve evidence. In the present case, the measures to preserve the evidence were already in place and the information should be available to the applicant only through discovery and particulars. The respondents relied, in that context, on Metso Minerals (Australia) Ltd v Kalra (No 3) [2008] FCA 1201 ("Metso Minerals").
46 In Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2006] FCA 1707 ("Aristocrat Technologies"), Jacobson J observed that consistently with the usual practice which had evolved in relation to search orders, although provision were made for protection of privileged or confidential material, an applicant could typically examine the seized materials without a prior determination of relevance. While it could be a matter of concern where the seized materials were obtained from a trade competitor, the applicant must satisfy stringent conditions laid down in O 25B r 3, and, in the case at hand, the search was not limited to the precise cause of action known to the applicants at the date of the order.
47 His Honour rejected the respondents' contention that, on a proper construction, the purpose of a search order previously made against them was simply to preserve evidence, and that access to the materials should be only through the usual discovery process.
48 Jacobson J observed that in Microsoft Corp v Adelong Electronics Pty Ltd (1997) 37 IPR 283, Lindgren J indicated that a copyright owner could ordinarily inspect all the evidence in the possession of an alleged infringer without being confined to documents relating to the cause of action then known to the copyright owner.
49 In Metso Minerals, the Anton Piller order was confined to the applicants' own documents allegedly remaining in the possession of their former employees and contractor. Following seizure, the applicants' solicitors had access to the documents, essentially by consent, and drafted an amended statement of claim facilitated by that access.
50 The applicants subsequently sought continuing access to the seized materials as an aid to the discovery process and to further particularise their claims. The respondents, who had also consented to an order for general discovery, resisted the applicants' application.
51 Flick J noted the extraordinary nature of relief under O 25B. His Honour acknowledged that applicants could, with leave, inspect seized documents, for the identified purposes of assessing whether there was compliance with the order, whether any further order was warranted, and ascertaining whether those documents did or did not provide evidence, pending the hearing and determination of the proceeding.
52 In Metso Minerals, it was necessary to determine whether, and the extent to which, a review of seized documents could proceed in tandem with, and as an adjunct to, the discovery process and as an aid to the provision of particulars.
53 Flick J observed that Aristocrat Technologies did not authorise, in the absence of consent, the inspection of the seized documents as an adjunct to the discovery process or to facilitate the provision of particulars (at [43]).
54 His Honour concluded that O 25B did not permit the seizure of documents to isolate and preserve a pool from which the applicants could conduct a self-determined regime of preliminary discovery.
55 Further, in the case before him, the respondents had consented to an order for general discovery, which was sufficient in the circumstances, so his Honour declined to exercise any discretion to permit continued access in order to facilitate discovery and the provision of particulars.
56 In the present case, I was satisfied that it was unnecessary to order the interim relief sought by the applicant, because the respondents' alternative regime of quarantining the Adrenaline shoes (with their undertaking, until an early mediation was concluded, not to sell the Adrenaline shoes currently in stock, or which come into their possession pursuant to the orders already placed, without affording the applicant an opportunity to examine them prior to an early mediation), would sufficiently address the problem of discriminating between counterfeit and genuine shoes in the very short term.
57 The respondents did not comply, in terms, with the Anton Piller order which required the respondents to inform the applicant in writing of the location of the shoes, the name and address of everyone who had supplied or offered to supply the respondents with the Adrenaline shoes, the names and addresses of those to whom they were supplied and the details of the supply. Mr Dwyer's affidavit failed to state the locations, other than in the most general way (although that deficiency was largely overtaken by the quarantining of all Adrenaline shoes in a central location). Further, while the exhibits to Mr Dwyer's affidavit contained information as to sources of supply and details of sales, they were provided only to the applicant's legal representatives, as the respondents asserted that the exhibits were commercially confidential.
58 In contrast to Metso Minerals, on which the respondents relied, the applicants in the present case did not seek access to the seized documents as an alternative or supplementary means of discovery, but merely sought compliance with the terms of the Anton Piller order.
59 Non-privileged documents are protected by the obligation recognised in Home Office v Harman [1983] 1 AC 280 ("Harman") and Hearne v Street (2008) 235 CLR 125 not to make use of documents save for the purposes of the action, and ordinarily, they are not exempt from disclosure. It is, however, recognised that the Harman undertaking may be difficult to apply or may afford insufficient protection in the case of a trade rival, as information once learnt may not be forgotten and the obligation not to use secrets may be impossible for the trade rival to perform.
60 Consequently, where trade rivals are involved, it will be necessary to strike a fair balance between the needs of the party wishing to litigate and the legitimate concerns of a party to maintain the secrecy of commercially sensitive information. The court should, in such cases, inspect the documents in question and consider their nature, content, who is proposed to inspect them and the reason why such inspection is said to be necessary in assessing whether they may be inspected.
61 In this case, the evidence did not permit me to determine whether the respondents were trade rivals of the applicant. Further, the provision of the information required by paragraph 23 of the Anton Piller order prior to trial was, in my view, appropriate, and the respondents' interest in keeping it confidential, if established, would be outweighed by the applicant's interest in assessing prior to trial the likely source or sources, and the likely extent of past sales, of any counterfeit Adrenaline shoes. The applicant required access to the respondents' relevant documents and computer records principally due to the respondents' failure to provide the required information only in the form of confidential exhibits. Noting the respondents' claim to the commercial confidentiality of the exhibits, I accepted that access by someone with industry knowledge would be necessary but restricted access to a single nominated representative of the applicant. I accepted the respondents' undertaking that they would provide the information required in the Anton Piller order to the applicant.
I certify that the preceding sixty-one (61) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dodds-Streeton.