Civil Trials Bench Book — Procedure generally

Search orders are governed by detailed rules in UCPR Pt 25, Div 3 (rr 25.18–25.24) and Practice Note SC Gen 13 (“PN 13”) available on the Supreme Court website at http://supremecourt.justice.nsw.gov.au/.

The practice note applies to the Court of Appeal and, Equity and Common Law divisions of the Supreme Court and includes example forms of ex parte orders which are complex. They should not be significantly varied without good reason.

An object of the rules, practice notes and forms is to strike a fair balance between the legitimate objects of these drastic orders and the reasonable protection of respondents and third parties.

Search orders are also known as Anton Piller orders. The title “search orders” follows the title used in the English rules. The original name “Anton Piller order” derives from the seminal case of Anton Piller KG v Manufacturing Processes Ltd [1976] 1 Ch 55.

The object of a search order is to preserve evidence needed to prove the applicant’s claim which is in danger of destruction, concealment or removal from the jurisdiction. It does so by ordering the respondent to permit the applicant’s representatives and an independent supervising solicitor to enter, search, copy documents and remove property from the respondent’s premises for safekeeping. A species of discovery of the most extreme kind, it lies at the limit of a court’s civil jurisdiction. The heartland of the search order is copyright infringement and breach of confidence.

A search order is normally obtained ex parte without notice to the respondent and before service of the originating process, because notice or service may prompt the feared destruction or disappearance of evidence.

The execution of a search order is a serious invasion of people’s privacy. While it is an important tool in ensuring that evidence is preserved so that justice may be done, such orders should only be made on an ex parte basis if the applicant discharges their duty of candour so that the court is fully appraised of all relevant matters to the exercise of its discretion in such an important decision. The need for candour is particularly acute on duty judge applications, where judges often have insufficient time to review affidavits and documentary evidence in detail: Showcase Realty Pty Ltd v Nathan Circosta [2021] NSWSC 355 at [36].

The characteristics of a search order are secrecy, mandatory form and virtually immediate execution. A search order does not permit forcible entry. In that crucial respect it differs from a search warrant. A search party encountering resistance to entry or search must depart: Anton Piller KG v Manufacturing Processes Ltd at 61. The main sanction for disobedience to a search order is contempt of court.

Concern about the draconian effect of search orders, and the fact that they are made against respondents who have not been notified or heard, have led to detailed safeguards being built into the example form of order in Practice Note 13.

Although a search order is normally ex parte and granted before service of the originating process, it has also been granted after judgment in order to obtain documents essential to the execution of the judgment where there was a serious risk that a respondent would remove or destroy them in order to frustrate enforcement: Distributori Automatici Italia SPA v Holford General Trading Co [1985] 1 WLR 1066.

The court may make a search order if the following requirements set out in r 25.20 are satisfied (they are modelled on those stated in Anton Piller per Ormiston LJ):

In every case, the court will balance the strength of the case, the seriousness of the damage, the gravity of the risk of destruction, and the potential injury to the defendant. These are factors to be taken into account in the exercise of a discretion, rather than essential proofs: Brags Electrics Ltd v Gregory [2010] NSWSC 1205 at [18]. See Global Medical Solutions Australia v Axiom Molecular [2012] NSWSC 1262 at [11]–[24] for an example of how the court weighed these considerations in determining that the requirements of r 25.20 had been made good. The crux of the evidence required to obtain a search order often concerns the third requirement that there is a “real possibility” that the respondent might destroy the material or cause it to be unavailable for use unless an ex parte order is made. This will usually require clear evidence of matters such as dishonesty, fraud or contumacy or the transitory nature of the respondent’s business, but such cases may be quite common.

Safeguards for the protection of respondents have been built into the example form attached to Practice Note 13. The most important is the appointment of one or more independent solicitors to supervise the search and report to the court. This is a mandatory requirement and the only safeguard expressly mentioned in the rules: r 25.23. Other safeguards appear in the example form and are mentioned in Practice Note 13. The responsibilities of a supervising solicitor are set out in the example form and are summarised in Practice Note 13 [11] as follows:

The applicant’s solicitor is required to undertake to the court to pay the reasonable costs and disbursements of the independent solicitor and any independent computer expert: PN 13 example form Sch B [1].

Other safeguards for the respondent include the following:

It has become common for search orders to require respondents to provide information and documents as to their suppliers and customers. Such a provision appears in the PN 13 example form [23]:

Except for the sole purpose of obtaining legal advice, the respondent is usually prohibited until 4.30 pm on the return date from informing anyone of the proceedings or of the contents of the order or from telling anyone that a proceeding has been or may be brought by the applicant: PN 13 example form [25]. A similar obligation is cast on the applicant by undertaking (3) in Sch B to the example form. Such a gagging order has been rationalised on the basis that it gives the applicant an opportunity to use information obtained from the search so as to locate and preserve evidence and assets in the possession or control of others.

As in freezing order cases, the court may grant leave to cross-examine a respondent on disclosures.

An applicant seeking to set aside an ex parte order bears the onus of showing why it should be set aside: Brags Electrics Ltd v Gregory [2010] NSWSC 1205 at [10], [17]. It may be a sufficient reason to set aside the order that the grounds for such an order were not satisfied. Where search orders have already been executed, the court may set aside the orders ab initio if there has been bad faith or material non-disclosure. Otherwise a discharge will operate in futuro only: Brags Electrics Ltd at [17] per Brereton J. The court may take into account on the hearing of the application the “fruits of the order” — that is to say, any evidence or admission procured as a result of the order — and any further evidence adduced in the meantime. The test for determining whether a non-disclosure is “material” was explained by Ball J in Principal Financial Group Pty Ltd v Vella [2011] NSWSC 327 at [17].

See further r 36.16(2)(b) and Showcase Realty Pty Ltd v Nathan Circosta [2021] NSWSC 355.

Applicants or their solicitors, who do not comply with requirements imposed on them by a search order or who act scandalously on its execution, are in contempt of court, and may be liable in damages to the respondent, and run the risk that the search order may be set aside or not continued. In Long v Specifier Publications Pty Ltd (1998) 44 NSWLR 545 in which the New South Wales Court of Appeal dismissed an appeal from a finding of contempt of court for breaches of undertakings to the court given by a solicitor for the applicant when he obtained a search order for his client.

Another risk eventuated in Canadian Bearings Ltd v Celanese Canada Inc (2006) SCC 36. There privileged documents obtained pursuant to a search order came into the possession of the applicant’s lawyers. The Supreme Court of Canada ordered that those lawyers no longer act for the applicant. This risk should be minimised under points 12 and 13 of the Example Form of Search Order in PN 13, which permit the respondent to give the independent solicitor any documents for which privilege is claimed in a sealed container, and require the independent solicitor not to inspect or permit anyone to inspect them, and to deliver them to the court on the return date.

The court has a wide discretion as to costs orders under r 25.24:

Practice Note

Rules