25 May 2023

Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd [2023] SGHC 138

In Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd, the Singapore High Court explained the factors in determining the suitability of the recently introduced “Simplified Process for Certain Intellectual Property Claims” (“Simplified Process”) to a claim, and ultimately dismissed the defendant’s application for an order that the Simplified Process did not apply. This is the first case in Singapore invoking the Simplified Process.

The Simplified Process was introduced in Singapore with effect from 1 April 2022. The Simplified Process is an optional “fast track” for intellectual property (“IP”) litigation to provide parties with a more affordable and expedited route to enforce their IP rights in Singapore. More information on the Simplified Process can be found in our article titled “New optional track for IP litigation from 1 April 2022, Supreme Court of Judicature (Intellectual Property) Rules 2022 gazetted”. 

Allen & Gledhill Partner Toh Jia Yi acted for the successful party in the case. 

Background

The claimant was the exclusive licensee of a top-grossing Chinese film. The claimant entered into negotiations with the defendant via text messages and email regarding a possible agreement for the defendant to distribute the film in Singapore.

Ultimately, the parties were unable to agree on key terms and did not execute any written distribution agreement. Despite this, the defendant proceeded to release the film for screening in Singapore on the basis that an alleged agreement had been reached through the parties’ text messages and emails.

The claimant then brought a claim against the defendant for copyright infringement of the film. The defendant denied liability and raised two counterclaims against the claimant, namely for: (a) alleged groundless threats of copyright infringement, and (b) alleged infringement of the defendant’s copyright in an entirely separate film.

The claimant elected for the Simplified Process to apply to the claim. The defendant, however, disagreed with the application of the Simplified Process, and made an application for an order that the Simplified Process did not apply.

Court’s decision

In its decision, the High Court noted that this was the first case in Singapore invoking the Simplified Process under Part 2 of the Supreme Court of Judicature (Intellectual Property) Rules 2022 (“IP Rules”). The court dismissed the defendant’s application and allowed the claimant’s claim to proceed under the Simplified Process.

How the Simplified Process is triggered

The court recounted that the Simplified Process may be triggered in two ways:

  • The claimant files and serves a form electing for the application of the Simplified Process and a form to abandon any claim for monetary relief in excess of S$500,000. Despite the election by the claimant for the Simplified Process to apply, the court may make an order otherwise, having regard to the factors listed in rule 4 of the IP Rules.
  • The court may, on its own motion or on the application of a party, order a case to be resolved pursuant to the Simplified Process. The court should only make such an order when the relevant conditions under rule 4(1) of the IP Rules are satisfied.

In the present case, the claimant triggered the Simplified Process by filing a form electing for the Simplified Process to apply, as well as the form to abandon any claim for monetary relief in excess of S$500,000.

Suitability of Simplified Process

A claim is suitable for the Simplified Process if it fulfils the three conditions in rule 4(1) the IP Rules. The court considered these three conditions in totality and found that the case was an appropriate one for the Simplified Process:

  • The dispute must involve an intellectual property right: The court found that this condition was satisfied as the claim was for copyright infringement.
  • The monetary relief claimed by each party (whether in relation to an intellectual property right or otherwise) does not or is not likely to exceed S$500,000 or all parties agree to the application of Part 2: The court found that this condition was satisfied as the claimant had served the requisite form to abandon any claim for monetary relief above S$500,000 and the defendant’s counterclaims were unlikely to exceed S$500,000. In particular, the court noted that the defendant failed to particularise its alleged losses and did not have standing to bring its counterclaim for alleged copyright infringement of the separate film.
  • Other factors at rule 4(1)(c) of the IP Rules: The court held that greater emphasis should be placed on the three factors listed in rules 4(1)(c)(i) to 4(1)(c)(iii) of the IP Rules, namely: (a) whether a party can only afford to bring or defend the claim under the Simplified Process, (b) the complexity of the issues, and (c) whether the estimated length of the trial is likely to exceed two days.
    • On the facts, the court found that the issues in the claim were neither legally nor factually complex as the claim turned on a single question - whether there was a legally binding agreement between the parties for the defendant to distribute the film in Singapore.
    • The estimated length of the trial was not expected to exceed two days. The cross-examination of the witnesses would unlikely be lengthy as nearly all communications between the parties took place over text messages and emails. The court also indicated that it was not inclined to allow the defendant to call its proposed expert witness on trade custom, as such testimony would not be helpful in resolving the central legal question in the case.
    • The quantum of the claimant’s claim rendered it suitable for the Simplified Process. The claimant’s legal fees and time expended would be disproportionate to the value of its claim if the dispute was not heard on the Simplified Process. The court held that in general, the lower the quantum of the claims involved, the more likely a case will be suitable for the Simplified Process.

Comment

The Simplified Process increases access to justice in IP litigation by ensuring that costs and time spent are kept proportionate to the complexity and value of a claim.

IP rights holders are strongly encouraged to consider how the Simplified Process can be utilised as a part of their IP enforcement strategy in Singapore and overseas. For example, in the case of multi-jurisdictional IP disputes, the Simplified Process can be invoked to obtain a favourable judgment in Singapore quickly and affordably, and such judgment can then be used as the basis for negotiation of a global settlement of the dispute.

Given the court’s greater control over the conduct of proceedings and restrictions on the relief and costs granted in cases subject to the Simplified Process, potential litigants should always seek legal advice before deciding whether to invoke the Simplified Process for their dispute.

Reference materials

The judgment is available on the Singapore Courts website www.judiciary.gov.sg.

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