Interlocutory injunctions can be a critical tool to help protect intellectual property rights by restraining alleged infringement while a substantive infringement proceeding is run.
In 2024, the Federal Court determined five applications for interlocutory injunctions in IP matters (Table 1). This article summarises the general principles underpinning the grant of interlocutory injunctions in IP cases and sets out our key takeaways from those applications.
Table 1: overview of the interlocutory injunction application determinations made in 2024.
| Decision | Date of judgment | Area | Injunction granted? |
| Canview Pty Ltd v Gilmore [2024] FCA 551 | 22 May 2024 | Copyright / confidential information | Yes |
| Transportable Shade Sheds Australia Pty Ltd v Aussie Shade Sheds Pty Ltd [2024] FCA 584 | 4 June 2024 | Copyright / designs / confidential information | Yes |
| Maxim Media Inc. v Nuclear Enterprises Pty Ltd [2024] FCA 1443 | 13 December 2024 | Trade marks | No |
| Hix Investment Pty Ltd v Wong [2024] FCA 1461 | 16 December 2024 | Copyright / confidential information | No |
| Abbey Laboratories Pty Ltd v Virbac (Australia) Pty Ltd [2024] FCA 1488 | 17 December 2024 | Patents | No |
Interlocutory injunctions in IP cases
The principles relevant to granting interlocutory injunctions are well-settled. In determining whether to grant an interlocutory injunction, the Court will consider two interrelated questions:
- whether there is a serious question to be tried (a ‘prima facie case’) and
- whether the balance of convenience favours the grant of injunctive relief, including whether the applicant is likely to suffer injury for which damages will not be an adequate remedy.[1]
Serious question to be tried
There is a serious question to be tried (or a prima facie case) if the applicant can show sufficient likelihood that they would eventually be able to make out their case at trial. While the applicant does not need to establish their case on the balance of probabilities, they must demonstrate that there is a probability that they will be found to be entitled to relief at trial.[2]
Balance of convenience
In weighing the balance of convenience, the Court assesses and compares the inconvenience, hardship or injury likely to be suffered by the applicant if an interlocutory injunction were refused against the inconvenience, hardship or injury likely to be suffered by the respondent (and third parties and the public) if an injunction were granted.[3]
Many factors may weigh in on the balance of convenience. One significant factor is the strength of the applicant’s prima facie case. Another important factor is whether damages would be an adequate remedy. The applicant must demonstrate that the harm they would suffer without an interlocutory injunction is significant and cannot easily be quantified or remedied by monetary compensation. This harm may include, for example, loss of market share, reputational damage, or disclosure of confidential information.
Lessons learned in 2024
Lesson 1: Don’t delay!
Delay in bringing an interlocutory injunction application can severely undermine the prospects of the application being successful. It is therefore important to act promptly, particularly given that an applicant is expected to provide to the Court a full and frank account of the steps they have taken and when. For example:
- In Abbey Laboratories Pty Ltd v Virbac (Australia) Pty Ltd [2024] FCA 1488, Virbac sought an interlocutory injunction to restrain Abbey from launching its competing veterinary product. However, Virbac’s ‘very substantial delay’ in seeking relief contributed to the Court’s decision not to grant the injunction. Virbac had known about Abbey’s intention to launch but had not threatened or sought an interlocutory injunction for over 10 months. In those circumstances, the Court found that Abbey was fully justified in thinking Virbac would not apply for interlocutory relief.
- In Maxim Media Inc. v Nuclear Enterprises Pty Ltd [2024] FCA 1443 (Maxim), Maxim sought an interlocutory injunction to restrain Nuclear from using the word ‘MAXIM’ as a trade mark, including by publishing and distributing ‘Maxim’ magazines. The Court refused the application. One factor tipping the balance of convenience against Maxim was its 3-month delay after becoming aware of Nuclear’s competing trade mark registration.
However, the need to act promptly must be balanced against the need to obtain sufficient evidence to establish a prima facie case (see Lesson 2 below).
In some circumstances, the Court may be willing to accept some delay as necessary or justified but it must be explained.
For example, in Transportable Shade Sheds Australia Pty Ltd v Aussie Shade Sheds Pty Ltd [2024] FCA 584 (Transportable Shade Sheds), Transportable Shade Sheds made an urgent ex parte application to, amongst other things, restrain Aussie Shade Sheds from infringing its IP rights and using its confidential information. The Court granted the injunction despite delay in making the application. Although Transportable Shade Sheds had been aware of Aussie Shade Sheds’ conduct for several months, the Court noted that there is a heavy burden on the applicant for an ex parte order to disclose all relevant facts. On that basis, the Court accepted that the delay in this case did not weigh against Transportable Shade Sheds.
Lesson 2: Be prepared to establish your prima facie case
Applicants seeking an interlocutory injunction must be ready to persuade the Court that they have a prima facie case.
This requires sufficient evidence to support any infringement claim. However, it also requires sufficient evidence to make out a prima facie case in respect of any other relevant matters, such as subsistence of copyright, ownership of the asserted IP rights, and fending off any invalidity case or defences to infringement.
Failure to adduce evidence on these matters can be fatal to an interlocutory injunction application.
For example, in Hix Investment Pty Ltd v Wong [2024] FCA 1461, Hix Investment applied for an interlocutory injunction to restrain Mr Wong from using and operating platforms containing material which allegedly infringed Hix Investment’s copyright. The Court did not grant the relief as it was not satisfied there was a prima facie case. Among other things, Hix Investment failed to substantiate its claims as to ownership of, and subsistence of copyright in, the asserted copyright works.
Lesson 3: Interlocutory injunction or expedited hearing?
In some circumstances, an expedited final hearing may be a compelling alternative to an interlocutory injunction.
For example, in Maxim, the Court refused an interlocutory injunction. In doing so, Justice Rofe noted that given the number and complexity of issues raised (including claims based on breach of contract, trade mark infringement, trade mark cancellation, misleading or deceptive conduct, passing off and estoppel), the matter was more appropriate for an expedited hearing.
This follows the current trend observed in pharmaceutical patent cases, where there has been a shift away from interlocutory injunctions in favour of expedited hearings.
An expedited final hearing can bypass the need for an interlocutory injunction hearing, saving both time and cost (particularly if the alleged infringer intends to rely on an invalidity case). It also removes the need for IP enforcers to give ‘the usual undertaking as to damages’ — an undertaking to compensate parties harmed by the interlocutory injunction if the claim is ultimately unsuccessful — and avoids the complexity associated with the alleged infringer and any third parties claiming on that undertaking later on.[4] For a respondent seeking to resist an interlocutory injunction application, it may be an effective strategy to propose and submit to an expedited hearing as an alternative.
However, there are competing risks to be considered — including the risk of ‘slippage’ in the expedited timetable.
Lesson 4: Prohibitions with a touch of flexibility
The terms of an interlocutory injunction are at the Court’s discretion. Accordingly, there is scope for an interlocutory injunction to be framed in a manner that provides some flexibility and practicality.
For example, in Canview Pty Ltd v Gilmore [2024] FCA 551, the parties to the litigation had an ongoing commercial relationship, with Mr Gilmore’s company providing software services to Canview. The Court granted an interlocutory injunction restraining Mr Gilmore from accessing certain information, documents and data on Canview’s systems. However, the Court included in the orders a regime which permitted Mr Gilmore to request access when needed to provide his services and provided that Canview must not unreasonably withhold its consent to such requests.
This highlights the fact that interlocutory injunctions are not ‘one-size-fits-all’ — the Court will consider the need for flexibility and practicality, and the relevant orders can be tailored accordingly.
Lesson 5: Ex parte interlocutory injunctions are uncommon — but possible in the right circumstances
In urgent cases, it may be necessary for an interlocutory injunction application to be heard ex parte — that is, in the absence of the alleged infringer.
While these applications go against the general rule that no order should be made to the prejudice of a party unless that party has the opportunity to be heard in defence, they can be successful in the right circumstances.
For example, in Transportable Shade Sheds, Transportable Shade Sheds brought an ex parte application on the basis that it was concerned the prospective respondents would make secret copies of materials or destroy important evidence if they were notified of the application being made. The Court accepted this rationale and granted the injunction, restraining Aussie Shade Sheds from exploiting certain assets and from concealing or destroying relevant evidence.
What’s next?
It is important for IP owners to bear these lessons in mind and obtain prompt legal advice if they wish to seek an interlocutory injunction in Australia.
With the 2025 sitting year now underway, the Federal Court has already determined its first interlocutory injunction application for the year. Last week, the Court declined to grant an interlocutory injunction in Aristocrat Technologies Australia Pty Ltd v Light & Wonder, Inc. (No 2) [2025] FCA 64. Keep an eye out for our upcoming report on that decision.
[1] Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57, [19] (Gleeson CJ and Crennan J).
[2] Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199, [11] (Gleeson CJ and Crennan J); Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618.
[3] Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156, [66] (Dowsett, Foster and Yates JJ).
[4] A claim on the usual undertaking as to damages for $325 million recently took Sanofi and the Commonwealth of Australia all the way to the High Court: Commonwealth of Australia v Sanofi [2024] HCA 47.
