United Beverage Co-Packers Pty Ltd v Proclear International Pty Ltd; Proclear International Pty Ltd v United Beverage Co-Packers Pty Ltd (No 5)

I gave judgment in this matter on 18 November 2024. [1] I shall use the same abbreviations here.

I found that each of Proclear’s cases failed. I made final orders disposing of the proceedings on 21 November 2024.

One of Proclear’s claims concerned the alleged confidentiality of the MFI-20 Formula.

Although Proclear’s claim concerning the MFI-20 Formula was at one stage put more widely, it was accepted in final closing submissions that each element of the MFI-20 Formula was in the public domain, the debate then being as to whether the combination of those elements was nonetheless Confidential Information for the purposes of the Agreement.

I held it was not.

Following delivery of judgment, Proclear sought an order under s 7 of the Court Suppression and Non-Publication Orders Act 2010 (NSW) (the “Act”) redacting identified paragraphs of the judgment.

Proclear sought that order on the basis that it was contemplating whether to appeal from my decision, and was concerned that any appeal from that part of my judgment concerning the MFI-20 Formula would be rendered nugatory were the nominated passages to be published. Proclear’s concern is that these passages would reveal the nature of the elements of the MFI-20 Formula and thus the allegedly confidential nature of their use in combination.

Proclear was also concerned that one other document was confidential for the separate reason that its publication might reveal how Proclear makes its products.

An order under s 7 of the Act can only be made if, relevantly, the order is “necessary” to prevent prejudice to the proper administration of justice. [2]

In Hogan v Australian Crime Commission, [3] the High Court considered s 50 of the Federal Court Act 1976 (Cth) which is relevantly in the same terms as s 8(1)(a) of the Act. The Court said that “necessary” is a “strong word” and requires more than that an order be “convenient, reasonable or sensible”. [4] In this context, the term “necessary” does not have the meaning of “essential”; rather it is to be “subjected to the touchstone of reasonableness”. [5] This will depend on the nature of the information and the circumstances.

In deciding whether to make the order, the Court must take into account that a primary objective of the administration of justice is to safeguard the public interest in open justice. [6]

One circumstance in which it may be necessary to make a non-publication order so as to prevent prejudice to the proper administration of justice is when there would otherwise be disclosure of commercially sensitive or confidential information. So much was recognised in Hogan v Australian Crime Commission, [7] where the Court expressed agreement with the judgment below of the Full Court of the Federal Court, in which it was said: [8]

I received detailed submissions from Mr Michael, for Proclear, as to what redactions Proclear sought and why those redactions were sought. I will not set out the detail of those submissions as to do so would reveal the information that Proclear contends to be confidential.

I was persuaded that it was necessary to make most of those redactions for a limited time in order to preserve the alleged confidential nature of the combination of the MFI-20 Formula, lest my conclusion that such combination is not confidential be wrong, and to give Proclear an opportunity to consider whether it wishes to test that conclusion on appeal.

A version of my judgment, with those redactions, was published on 25 November 2024.

The redactions are expressed to expire at 5pm on 16 December 2024.