EQUITY & TRUST I
LAWS 3330
ANTON PILLER ORDER
DEFINITION
• An Anton Piller order is normally sought by an intending
plaintiff who believes that if he were to give the intended
defendant notice of his intention to apply for an order of
discovery, the intended defendant would either destroy or
conceal evidence that is vital to the success of the case which the
intending plaintiff is proposing to bring against him.
• Applied ex parte before the commencement of the action against
the defendant.
• The Anton Piller order is not a search warrant. It does not
authorise the plaintiff to enter and search the defendant’s
premises. Rather, the order directs the defendant to permit the
plaintiff to enter and search the defendant’s premises.
• If the defendant refuses such permission to the plaintiff, the
defendant will be ‘guilty of contempt of court’.
• These orders are often, but not always, obtained in the course of
copyright infringement and counterfeit goods cases. Many of the
cases also involve the search and seizure of electronic material.
ANTON PILLER v. MANUFACTURING
PROCESSES LTD & ORS [1976] 1 ALL ER 779
• Ds, an English company and their two directors, were the UK
agents of Ps, German manufacturers of frequency converters for
computers. Ps claimed that Ds were in secret communication
with other German manufacturers and were giving them
confidential information about Ps’ power units and details of a
new converter, the disclosure of which could be most damaging
to Ps.
• In order to prevent the disposal by Ds, before discovery in an
action, of documents in their possession relating to Ps’ machines
or designs, Ps applied ex parte for:
(i) an interim injunction to restrain Ds from infringing their
copyrights and disclosing confidential information; and
(ii) for an order for permission to enter Ds’ premises to
inspect all such documents and to remove them into Ps’
solicitors’ custody.
CONT.
• The learned judge granted the interim injunction BUT refused to
order inspection or removal of documents. Ps appeal.
• Court of Appeal: Allowed the appeal, laid down three essential
pre-conditions for granting the Order:
(i) where Ps had a very strong prima facie case;
(ii) actual potential damage to them was very serious; and
(iii) there was clear evidence that Ds possessed vital material
which they might destroy or dispose of so as to defeat the
ends of justice before any application inter partes could be
made.
• The court had inherent jurisdiction to order Ds to “permit” Ps’
representatives to enter Ds’ premises to inspect and remove such
material; and that in the very exceptional circumstances the
court was justified in making the order sought on the Ps’ ex
parte application.
FURTHER CONDITIONS
TO SAFEGUARD THE DEFENDANT
• Further requirements were added by Lord Denning:
(i) The inspection will do no real harm to D. Using Anton
Piller Order to gather information will not be entertained.
(Hytrac Conveyors v. Conveyors International Ltd [1983] 1
WLR 44)
(ii) In the enforcement of the order, P must act in caution. He
should be attended by his solicitor.
(iii) P must undertakes in damages, to safeguard D’s rights.
(iv) Once the documents are in P’s solicitor’s custody, no
third party can have access to them without D’s authority or
the leave of court.
EXTENSION OF ANTON PILLER ORDER (APO)
• Rank Film Distributors Ltd and Ors v. Video Information
Centre and Ors [1981] 2 All ER. 76 (HL): Although Anton
Piller order was designed to deal with situations created by
infringements of patents, trade marks and copyright and
more particularly with acts of commercial piracy in these
fields; but the English decisions show that the procedure
has been extended to other classes of cases as well.
• Yousif v. Salama [1980] 1 WLR 1540: An Anton Piller
order was made for the preservation of documents which
were “the best possible evidence to prove the plaintiffs
case” (but which were not the subject matter of the action)
in a commercial dispute between a supplier of goods for re-
sale and his distributor under a profit-sharing agreement.
DIFFERENCES BETWEEN ANTON PILLER ORDER
AND SEARCH WARRANT
Anton Piller Order Search Warrant
Search warrant in civil action. Normally granted in criminal cases.
(Exceptional rare cases. Only granted
when there is no alternative way of
ensuring that justice is done to P)
Permission of defendant is vital. Permission is not required.
However, if the defendant refuses entry,
he would be guilty of contempt of court.
Does not allow Plaintiff/his solicitor to Allows police officers to enter premises
enter defendant’s premises against their by force.
will.
Can only take materials relating to the Can take any item that they feel
case which already listed. important
RULE OF PRIVILEGE AGAINST
SELF-INCRIMINATION
• General rule: A person is not bound to answer question
which may render him liable to punishment. (criminal
prosecution against him).
• In the case of Anton Piller Order, if the Order merely
requires D to allow P’s solicitor for an entry and search of
the premises then the privilege has no relevance.
• However, where other Orders are made in conjunction with
Anton Piller Order, D can plead the privilege if an
disclosing documents or answering questions he exposes
himself to criminal charges.
CONT.
• Rank Film Distributors Ltd and Ors v. Video Information
Centre and Ors [1981] 2 All ER76 (HL): Ps were owners of
copyright in certain cinematograph films. On the basis of
evidence that, in breach of that copyright, Ds were making and
selling video cassette copies of the films, Ps, on an ex parte
motion before the judge, obtained orders permitting them to
enter Ds’ premises and seize infringing copies of the films and
requiring Ds to answer to interrogatories relating to the
supply and sale of infringing copies. At the first instance, Ds
applied unsuccessfully to have the orders discharged or varied
on the ground, inter alia, that by disclosing the documents and
answering the interrogatories Ds might expose themselves to
criminal proceedings. On appeal by Ds, contending further that
there was no jurisdiction to make the orders, the Court of Appeal
allowed the appeal. P appealed against the decision.
• Held: Ds were entitled to rely on the privilege against self-
incrimination by answering interrogatories since if they
complied with orders of that nature there was in the
circumstances a real and appreciable risk of criminal
proceedings for conspiracy to defraud being taken against them.
POSITION IN ENGLAND
• Section 14 (1) of the Civil Evidence Act 1968: “A person
has the right to refuse to answer any question which
amounts to self-incriminating”.
• Legislative intervention: Section 72 of the Supreme Court
Act 1981 abrogates the privilege.
• Privilege cannot be invoked in intellectual property cases
where APO was granted.
POSITION IN MALAYSIA
• The Anton Piller Case was first cited with approval in
Lian Keow Sdn Bhd v. C Paramjothy & Anor [1982] 1
MLJ 217: A case concerning a claim for land held in
trust for the Plaintiff, wherein the Court granted an order
to prevent the first defendant from destroying the trust
deed and file relating to the said land.
WITNESS IN SECTION 132
OF THE EVIDENCE ACT 1950
• “A witness shall not be excused from answering any
question as to any matter relevant to the matter in issue
in any suit, or in any civil or criminal proceeding, upon
the ground that the answer to that question will
criminate or may tend directly or indirectly to criminate,
him, or that it will expose, or tend directly or indirectly to
expose, the witness to a penalty or forfeiture of any kind, or
that it will establish or tend to establish that he owes a debt
or is otherwise subject to a civil suit at the instance of the
Government of Malaysia or of any State or of any other
person.”
CONT.
• Whether the term ‘witness’ covers D? There are two views:
Television Broadcast, Ltd v. Mandarin Video Sdn Bhd
[1983] 2 MLJ 346: Witness covers D. The judge was of the
view that a witness is a person who gives or ‘furnishes’
evidence. If a person gives or is compelled by a court order
to give evidence then he is witness. Privilege not applicable.
P.M.K. Raja v. Worldwide Commodities [1985] 1 MLJ 65:
Witness does not covers D. Section 132 of the Evidence
Act explicitly refers to a ‘witness’, a person who testifies on
oath or affirmation in a court of law or in a judicial tribunal.
He is subject to examination in chief, cross-examination
and re-examination under Section 138 of the Evidence Act.
Privilege is applicable.
THANK YOU
