EX-PARTE INJUNCTION & ANTON PILLER ORDER — A NEW CONSERVATISM?

• Date: 01 December 1990
• Published date: 01 December 1990
• Author: TAN TEE JIM

There is, I observe, a recent trend in Singapore towards greater candour and greater circumspection required for applications for interim injunctions and Anton Piller Orders. This observation is made following a trilogy of cases1 decided recently against plaintiffs whose conduct fell below the minimum standards.

This trend is welcome. When the Anton Piller Order was conceived in the mid-1970s, the hope was that the Order would be rarely granted.2 However, the hope is futile as, in the event, the Order has proven to be a popular and effective weapon in the armoury against interlopers of intellectual property rights. It is “in daily use.”3

Still, English courts, realising that the Anton Piller Order lay at the extremity of their powers, did lay down certain ground rules. They are that:

1. (1) there must be an extremely strong prima facie case of infringement;

2. (2) damage to the plaintiff, potential or actual, as a result of the infringement, must be very serious;

3. (3) there must be clear evidence that the defendant has in his possession incriminating documents or things, and there is a real possibility that he may destroy such material before any inter partes application can be made.

There are, to be sure, additional safeguards for the beleaguered defendant. The plaintiffs cause of action against the defendant must have crystallised when the application for the Anton Piller Order is made. The Order is not permitted to be used as a fishing expedition to determine whether or not the plaintiff has a cause of action.4 The application for the interim injunction and the Order must contain full and frank disclosure of all

material facts.5 The Order will be discharged even though the failure to disclose any material fact is due to error of judgement and not deliberate.6 Service of the Order must be attended by the plaintiff’s solicitor acting as an officer of the court. The solicitor should not be related to the plaintiff.7 His duty is to ensure that the order of court is carried out with circumspection and with care. The defendant should be given the opportunity to consult his solicitor. If the defendant refuses permission to enter the premises or to inspect and seize documents and things, the plaintiff must not force his way in but must accept the defendant’s refusal and bring it to the attention of the court in, for instance, proceedings for contempt of court.

All these ground rules are well-known and simple enough to follow. Yet, in practice, they are more often honoured in their breach than compliance, as reflected in the following remarks which apply equally to Singapore:

“A situation is developing where I think rather too free is being made by the plaintiffs of the Anton Piller provision. I do not say that there are not many cases where without the Anton Piller relief, the plaintiffs would be in a hopeless position. However, where alleged infringement is taking place and the alleged infringer is operating perfectly openly his business, as this was in a shop where people can go, the only evidence that there is as to infringement is a sale and a suspicion that other sales may be taking place, where there is nothing to show that the business is being conducted in so underhand and surreptitious a way that there may be a very good ground for supposing that unless Anton Piller action is taken at the end of the day, there will be nothing left to fight on, applications of this kind will be made at the peril of a plaintiff so far as the question of costs is concerned.”8

Rule against self-incrimination

These abuses aside, does not the Anton Piller Order run counter to the rule against self-incrimination? Is it not a man’s home his castle and therefore sacrosanct? Must a person be compelled to convict out of his own mouth?

These and other issues were ventilated before Mr Justice Chan Sek Keong last year in the case of Riedel-de Haen AG v Liew Keng Pang.9 In the case,

the Plaintiffs alleged that the Defendants infringed their “Riedel-de Haen” trademark in respect of chemical products. By an ex parte application, they obtained an Order compelling the Defendant to discover documents and to reveal the names and addresses of suppliers and customers.

The Defendant applied to discharge the Order of Court and was successful. In discharging the previous Order, Justice Chan held as follows:

1. (1) the rule against self-incrimination is one of the principles of English law received in Singapore by virtue of the 1826 Charter of Justice;

2. (2) the rule may be invoked if there is a real risk that the incriminating answers given would...