problematic question injuction a prohibitory injunction. Can pf prohibit injunction authority entering her premise. PDF

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ANSWER (1)The main legal issue ​is whether ED Design Ltd can plead a prohibitory injunction to enforce the negative agreement for Dr. Guzel to not work at Mob Pro Ltd, a rival company to ED Design Ltd since Dr. Guzel still has another one year left to run on her contract with ED Design Ltd. The rele...

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ANSWER (1) The main legal issue is whether ED Design Ltd can plead a prohibitory injunction to enforce the negative agreement for Dr. Guzel to not work at Mob Pro Ltd, a rival company to ED Design Ltd since Dr. Guzel still has another one year left to run on her contract with ED Design Ltd. The relevant law is under Section 20 (1) (b) of SRA, which stated that a contract which is so dependent on the personal qualification or volition of the parties cannot be specifically enforced. In addition, under Section 54 (f) of SRA which stated that injunction cannot be granted to prevent the breach of the contract the performance which would not be specifically enforced. However, there is an exception which stated in Section 55 of SRA, it stated notwithstanding paragraph 54(f), where a contract comprises an affirmative agreement to do a certain act, coupled with a negative agreement, express or implied, not to do a certain act, the circumstance that the court is unable to compel specific performance of the affirmative agreement shall not preclude it from granting an injunction to perform the negative agreement provided that the applicant has not failed to perform the contract so far as it is binding that injunction can be granted in matters involving the breach of negative undertaking on him. Therefore, an Injunction can be granted to enforce a negative agreement. The relevant case is Lumley v Wagner [1852] 1 De GM & G 604 which held that an injunction should be granted to restrain the breach of a negative agreement which is to restrain Defendant from singing at Covent Garden and Gye because it was agreed that she would not sing elsewhere without Plaintiff written permission nevertheless it was not possible to obtain specific performance of promise to sing. In case of Warner Bros v Nelson [1937] 1 KB 209 the court held that an injunction was granted but only to prevent Bette Davis from acting or performing for another but she was still free to earn a living in other ways than acting because the term relating to no employment of any kind was severed and did not form part of the injunction even though the actress agreed to act exclusively for Warner Bros for two years and no employment of any kind. In addition, in the case of Evening Standard Co. Ltd v Henderson [1987] 1 IRLR 64 the court held that an injunction was granted however it only served or enforced the notice

requirement which is a one year contract. In the case Pertama Cabaret Nite Club Sdn Bhd v Roman Tan [1981] 1 MLJ 149 the court held that an injunction was granted to prevent Defendant from singing elsewhere in Kuala Lumpur during the period of the agreement but unable to compel Specific Performance of affirmative agreement which was for the Defendant to sing at Plaintiff’s club because it does not preclude the court from granting an injunction to compel performance of negative undertaking Defendant not to sing elsewhere if the Plaintiff himself has not failed to perform the contract so far as it is binding on him. In application, it can be seen that the by virtue of Section 55 of SRA, the contract  entered between Dr Guzel and ED Design Ltd is a contract that comprises an affirmative agreement to do a certain act, coupled with a negative agreement, express or implied, not to do a certain act because it is stated clearly in her contract that she is required not to work for any other company during her term of employment and one year thereafter. However, Dr Guzel had breached her contract by resigning from ED Design Ltd while she still had another one year left to run on her contract and she also accepted the employment offer at Mob Pro Ltd. Therefore, by virtue of Section 55 of the SRA and cited cases, an injunction will be granted which prohibits Dr Guzel from working at Mob Pro Ltd but only for 2 years as in accordance with the period left on her contract with ED Design Ltd. In addition, a Specific Performance to compel Dr Guzel to work with the ED Design Ltd again and restrain her from working with another company after her contract has ended cannot be granted because the clause negative stipulation of “and one year thereafter” is severed. In conclusion for the main legal issue, it is advisable for ED Design Ltd to proceed to plead for an injunction to enforce the negative agreement as Dr Guzel had breached her contract of employment. Nonetheless, it must be highlighted that the Specific Performance will not be granted to compel Dr Guzel from working with ED Design Ltd again and restrain her from working with other company after her contract of employment has ended because it would amount to unfairness and slavery.

ANSWER (2)

The Main legal issue is whether an Anton Piller Order can be granted to ED Design Ltd to enter Dr Guzel’s and Mob Pro Ltd. premises to search for all of the materials worked on by Dr Guzel and a list of clients during her employment at ED Design Ltd. There are two sub legal issues to be discussed in answering the main legal issue. First and foremost, an Anton Piller Order is defined as an order of the court which requires the defendant under the threat of contempt of court to permit the plaintiff to enter the defendant’s premises or vehicles under his control and search, inspect, copy or retain for safekeeping anything described in the order. It is an order made ex parte upon application of the plaintiff with the purpose of to search and remove items or to obtain relevant documents form the defendant. It is a mandatory injunction, it prevents the defendant from removing or destroying any incriminating material before or during trial.

The first sub legal issue is whether the conditions for granting the Anton Piller Order has been fulfilled. The relevant case is Anton Piller KG v Manufacturing Processes Ltd and others [1982] 1 MLJ 217 which the court held that there are three essential pre conditions for granting the order which are; Where plaintiffs had a very strong prima facie case, Actual potential damage to them was very serious; and There was clear evidence that defendants 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 relevant case is in the case of Lian Keow Sdn Bhd v C Paramjothy & Anor [1982] 1 MLJ 217 the court held that all of the requirements for grant an Anton Piller Order existed because there was indeed a serious danger of the Defendant to destroy the trust deed and files relating to the said land and the defendant was in possession of such trust deed and files. Therefore, the Order to permit the plaintiff to enter the defendant’s office and to prevent the defendant from destroying the trust deed and file relating to the said land was granted.

In application for the first pre conditions which is an extremely strong prima facie case, the material developed by Dr Guzel belongs to ED Design Ltd because it was worked on during her course of employment for a period of 3 years with ED  Design Ltd. However, all of the materials that Dr. Guzel has been working on have disappeared from the office and it was discovered that ED Design Ltd’s clients have received advertisements from Mob Pro Ltd. In addition, there are only 25 workers at ED Design Ltd and assuming that all of them had entered the same contract of employment like Dr Guzel thus there is no probability that the other workers had disclosed such information to Mob Pro Ltd. Hence, there is a strong prima facie case that the list of clients and materials belonging to ED Design Ltd are now in possession of Dr Guzel and Mob Pro Ltd. In application for the second requirement that is a very serious potential or actual damage to ED Design Ltd which can be proved when Mob Pro Ltd have access to the materials worked on by Dr Guzel during her course of employment at ED Design Ltd as well as the list of potential clients from ED Design Ltd. This would cause an unfair competition towards the business of ED Design Ltd that they have worked from the beginning. In addition, it would cause serious damage to ED Design Ltd’s business as the clients will now favor its rival Mob Pro Ltd assuming that Mob Pro Ltd will offer a lower price with discount on the materials to the clients. In application, for the third requirement which is a clear evidence that Dr Guzel and/ or Mob Pro Ltd possessed the 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 can be proved because Dr Guzel and/or Mob Pro Ltd may destroy such materials and the list of ED Design Ltd clients before ED Design Ltd can make an inter partes application because assuming that if those materials were found in Dr Guzel and/or Mob Pro Ltd premises thus Dr Guzel had infringed ED Design Ltd rights. However, it must be highlighted that there were a few developments took place after the decision made by the court in the case of Anton Piller KG v Manufacturing Processes Ltd and others [1982] 1 MLJ 217, which was the fourth requirement that must also be fulfilled by any person who plead for the Anton Piller Order.

The fourth requirement is the harm likely to be caused by the execution of the Anton Piller Order to the respondent and his business affairs must not be excessive or out of proportion to the legitimate object of the order. This can be divided into two parts first, the inspection will not do real harm to the defendant and secondly, an Anton Piller Order does not authorise the plaintiff to enter into the premise against the defendant will. The relevant case is in EMI v Pandit (1975) 1 All ER 418, it was held that placing of the defendant’s documents in a safe custody of the Plaintiff’s solicitor is a really part of the process of delivery. Lastly in the case Columbia Pictures v Robinson [1987] Ch. 38, the court held that there are 5 safeguards which should be considered before granting the order namely: APO should be focused only to the purpose for which they are granted, Execution of detailed records, Only confined materials covered by APO, Seized material whose ownership still in dispute should not be retained and lastly, supporting affidavit is needed to support errors on excessive disclosure. In application, the execution of the Anton Piller Order to Dr Guzel must not be excessive or out of proportion to the legitimate object of the order which means that the inspection will not do real harm to Dr Guzel and secondly, ED Design Ltd is not authorised to enter Dr Guzel and/or Mob Pro Ltd without their wills although the Anton Piller Order has been granted. In addition, assuming that ED Design Ltd had taken possession of all of the materials and list of clients name from Dr Guzel premise, the materials must be secure in a safe custody of ED Design Ltd’s solicitor and moreover, ED Designed can only make inspection on the purpose of Anton Piller Order was granted and search for the materials that are potentially being destroyed by Dr Guzel only no other documents or materials which belongs to Dr Guzel can be retained by ED Design Ltd. In conclusion for the first sub legal issue is the conditions for granting the Anton Piller Order has been fulfilled.

The second sub legal issue is whether the rule of “privilege against self-incrimination” can be applicable to Dr Guzel to protect herself from being incriminated for other offenses.

Privilege against self incrimination is a rule which enables the party to claim privilege in respect of documents or information which could be used to begin proceedings in court. The effect is that an Anton Piller Order will be either refused or varied. There are two different situations apply in England and Malaysia In Malaysia the privilege is provided under Section 132 of the Evidence Act 1950 which stated that “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.” The position in Malaysia on privilege is unclear as there are two conflicting judgements from two cases. The first case which is Television Broadcast, Ltd v Mandarin Video Sdn Bhd [1983] 2 MLJ 346 the court held that the Defendant was not entitled to the privilege because Section 132 applies to affidavit evidence and thus a witness is a person who gives or ‘furnishes’ evidence orally or by affidavit. On the other hand in the second case which is P.M.K. Raja v Worldwide Commodities [1985] 1 MLJ 65 the court held that the privilege is applicable because Section 132 of Evidence Act explicitly refers to a ‘witness’ therefore a witness in the context of Section 132 of Evidence Act is a person who testifies on oath or affirmation in a court of law or in a judicial tribunal and he is subject to examination in chief, cross-examination and re-examination in accordance to Section 132 of Evidence Act. In application, Dr Guzel’s right on the privilege is provided under Section 132 of the Evidence Act 1950. It must be noted that the position in Malaysia on privilege is unclear therefore in determining whether Dr Guzel can use the privilege to protect herself from being incriminated for other offenses will be accessed by using a hypothetical approach in which if the court proceed with the approach in Television v Mandarin case therefore the privilege cannot be used, however if the Court proceed with P.M.K v Worldwide approach therefore the privilege

can be used by Dr Guzel thus she can refused to answer question which may render her liable to punishment. In conclusion for the second sub issue, the rule of “privilege against self-incrimination” can be applicable to Dr Guzel to protect herself from being incriminated for other offences depending on the approach that the court will take into consideration.

In conclusion for the second main legal issue is the Anton Piller Order can be granted to ED Design Ltd to enter Dr Guzel’s and Mob Pro Ltd. premises to search for all of the materials worked on by Dr Guzel and a list of clients during her employment at ED Design Ltd provided that the four requirements have been fulfilled, nonetheless Dr Guzel can apply for rule of “privilege against self-incrimination” to protect herself from being incriminated for other offenses. ANSWER (3) The Third Main Legal Issue is whether Dr. Guzel had breached her confidential information with ED Design Ltd on the invention of ‘HET20’ to Mob Pro Ltd. First and foremost confidential information is defined as information that is not to be shared with the public. The Malaysian courts define confidential information as the object of an obligation of confidence and is used to cover all information of a confidential character. There are four classification of confidential information based on the decision made in the case Electro Vad Australia Pty Ltd & 2 Ors v Mejati RCS Sdn Bhd [1998] 3 AMR 2555, namely; ‘personal secret or information’, ‘trade or business secret’, ‘public or government secret’ and ‘literary and artistic secrets information’. Nonetheless, the most relevant classification of confidential information for the current situation is trade or business secret because it is stipulated on the business information from the invention of the product called HET20 between Dr Guzel and ED Design Ltd. There are three elements that must be fulfilled to prove there is a breach of confidence which was listed down from the decision of the case Coco v AN Clark Engineering Ltd [1969]

RPC 41 namely; information must be confidential in nature, it must have been communicated in circumstances importing an obligation of confidence; and there must have been an unauthorised use of it to the detriment of the party communicating it. In application for the first element which is the information must be confidential in nature can be proved because there are only 25 workers in ED Design Ltd who similarly entered into an agreement which consists of the clause stating that they are not required to work for any other company during their term of employment and one year thereafter and the rationale of such clause is to ensure that any secret information about the products in ED Design Ltd will not be easily disclosed to other company by any of its employees. Therefore, it can be seen clearly that the information about the invention of HET20 is confidential in nature. In application for the second element which is it must have been communicated in circumstances importing an obligation of confidence can be proved because the only individual that have the probability to communicate with Mob Pro Ltd in regards to the confidential information of ED Design Ltd is Dr Guzel because right after she resigned and left ED Design Ltd, all the materials that Dr. Guzel has been working on have disappeared from the office and some of the clients have received advertisement from Mob Pro Ltd. In addition, she was the only individual that had accepted an offer of employment at Mob Pro Ltd. Therefore, it is proven clearly that there was a communication in circumstances importing an obligation of confidence by Dr Guzel to Mob Pro Ltd. In application for the third element which is there must have been an unauthorised use of it to the detriment of the party communicating it can be proven because the information was used to send advertisement to the list of clients from Mob Pro Ltd. In addition, the information about the invention of the product HET20 that is used to charge a mobile phone without using a conventional charger was plagiarized by Mob Pro Ltd because it was stated that Mob Pro Ltd will be launching their product ‘HOT20’ that is similar to “HET20”. Therefore, it is clear that the unauthorised information disclosed by Dr Guzel are detriment to ED Design Ltd because it will cause a loss of income to them as the potential clients will no longer in favour of ED Design Ltd as they will be attracted to the new product ‘HOT20’ launched by MOB Pro Ltd. In conclusion for the First Main Legal Issue, Dr. Guzel had breached her confidential

information of ED Design Ltd with regards to the invention of HET20 to Mob Pro Ltd because the three elements to prove that there is a breach of confidence has been fulfilled. The Second Main legal issue is Whether ED Design Ltd can apply for an Interlocutory Injunctions coupled with Quia Timet Injunction and Prohibitory Injunction to prevent the launching of a product called “HOT20” by MOB Pro Ltd which is similar to “HET20”. There are two sub legal issues that will be further discussed. First and foremost, it is important to highlight that ED Design Ltd should apply for Interlocutory Injunction because the definition of interlocutory is a pre-trial remedy that is usually granted before the full merits of the case are tried , likewise in the current case the injunction should be applied by ED Design Ltd since the full merits of the case have not been tried yet because it was not proven yet that the product called “HOT20” by MOB Pro Ltd is completely similar to the ED Design Ltd product which is “HET20”. The relevant case is American Cynamid v Ethicon Ltd [1975] AC 396, HL to which the court held that an interlocutory injunction was granted because the plaintiff is only required to show that there is a serious question to be tried because the defendants invention of surgical sutures would infringe the plaintiff intellectual rights. In addition there are several principles laid down in the decision. Firstly, a real prospect of success in which the plaintiff must show a good arguable case in the sense that it is not frivolous or vexatious. In application, it is a good arguable case that will have real prospect of success because in reliance to the other Main Legal issues it has been proven that ED Design Ltd can succeed for full injunctio...