Search Orders - an important tool to stop counterfeits & more
Updated: Nov 20, 2021
There are many reasons why someone might want to get a search order. It is a very draconian remedy that gives a successful applicant the ability to enter a property and seize goods for use in court proceedings. As it is such an extreme remedy, the requirements in order to get a court order are very high and the level of supervision required by the court and a supervising solicitor is significant.
As the Covid lockdown took effect in March and physical stores closed, two risks which might lead to an increased need for search orders took shape. First, more people turned to online shopping and in turn, more counterfeit products were released onto the market. Second, the transition to home working made it much harder for employers to manage employee breaches of confidential information.
Because search orders are super invasive, they are reserved for the most extreme cases. In order for a court to grant a search order, you need to prove:
That you have a very good case (on the current facts available to you).
The infringing activity (by e.g. the employee or counterfeiter) is causing you significant harm.
It's clear that the infringer has material in their possession which will be essential to succeeding in your case and this material is likely to be destroyed if a search order is not obtained.
For obvious reasons, you don't normally tell someone that you have applied for a search order. In legal terms, this means that they are made “without notice”.
A recent case, TBD (Owen Holland) v Andrew Simons & Ors highlighted the importance of having a balanced approach towards search orders. Andrew Simons was a former employee of a company which manufactured equipment for the aviation industry. He was suspected of disclosing trade secrets and product designs to a competitor.
TBD was granted a search order by the court but they overstepped the line when they collected the evidence in the course of getting the search order. Instead of asking the court's permission to search the information, TBD searched the documents without the court's permission and even used it as evidence in the proceedings.
Because TBD did not follow the court order (and did not get the court's permission to extend it), the court told TBD that it could not use the information they had obtained.
The moral of this story is that search orders are a very useful remedy but you need to be careful to always stay within the limits of the court order otherwise there can be significant sanctions. TBD lost its application, had to pay a significant sum in costs.