19 January 2022
Intellectual property (“IP”) litigation frequently involves a cross-border element. It is not uncommon that witness evidence and documentary evidence would need to be sought from persons who are located outside the jurisdiction in which the litigation takes place. Problems may arise where a witness or a person in possession of relevant documentation is located outside jurisdiction and is not willing to produce the evidence voluntarily.
In the case of witnesses and documents located in Singapore, a foreign court can request for the assistance of the Singapore courts to obtain such evidence in support of the foreign IP litigation by issuing a “letter of request” (known as “letters rogatory” in some jurisdictions).
We recently assisted a litigant in US trade mark infringement proceedings to obtain documentary and witness evidence from a non-party located in Singapore using the letter of request mechanism. In this note, we explain the circumstances in which the Singapore courts will give effect to a letter of request and the type of evidence that can be obtained using this mechanism.
Requirements for taking of evidence in Singapore
The General Division of the High Court of Singapore (“High Court”) has the power to make orders for the taking of evidence in Singapore pursuant to such a letter of request, provided the requirements under Singapore’s Evidence (Civil Proceedings in Other Jurisdictions) Act 1979 (“Act”) are met. The Act was passed in order to give effect to (among other things) the principles of the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters of 1968 (“Hague Convention”).
Under the Act, the High Court is empowered to make orders for the taking of evidence in Singapore where (section 3 of the Act):
(a) There has been an application made to the High Court for an order for evidence to be obtained in Singapore;
(b) The application is made in pursuance of a letter of request issued by or on behalf of a foreign court or tribunal (referred to as a “foreign court”); and
(c) The evidence which the application relates to is obtained for the purposes of pending or contemplated civil proceedings before that foreign court.
Provided the above requirements are met, the High Court should ordinarily exercise its discretion to grant the application, unless doing so would be regarded as frivolous, vexatious, an abuse of the process of court or otherwise impermissible under Singapore law.
The High Court will generally endeavour to give effect to a letter of request as far as possible. For example, if certain requests are inappropriate / excessive, the High Court may delete such requests and give effect to the remainder of the letter of request. However, the High Court generally will not add to and / or modify the substance of a letter of request.
Types of evidence which may be taken in Singapore
The orders which the High Court can make for the taking of evidence in Singapore pursuant to a letter of request include (but are not limited to) orders for the (section 4(2) of the Act):
(a) Examination of witnesses, either orally or in writing;
(b) Production of documents;
(c) Inspection, photographing, preservation, custody or detention of any property;
(d) Taking of samples of any property and the carrying out of any experiments on or with any property;
(e) Medical examination of any person; and
(f) Taking and testing of samples of blood from any person.
Examination of witnesses
The High Court can make an order directing that a witness in Singapore attend for examination (including on oath) pursuant to a letter of request. The High Court can order that the examination be taken: (a) before any fit or proper person nominated by the applicant; (b) before the Registrar; or (c) before any other qualified person as to the High Court seems fit.
One possible and practical mode is for the applicant to nominate its solicitor as the examiner, such that the examination of the witness takes place in the style of a deposition.
Production of documents
The High Court can make an order requiring a person in Singapore to produce particular documents specified in a letter of request. There are a number of limitations on the order which can be made, including the following:
(a) The High Court’s order shall not require a person to state what documents relevant to the proceedings to which the application for the order relates are or have been in his possession, custody or power (section 4(4)(a) of the Act). In other words, the High Court cannot order a person to provide general discovery.
(b) The High Court’s order shall not require a person to produce any documents other than particular documents specified in the order as being documents appearing to the High Court to be, or to be likely to be, in his possession, custody or power (section 4(4)(b) of the Act). Crucially, the High Court is limited to ordering the production of “particular documents specified”, which means the documents requested must be described with sufficient specificity. Conjectural documents which may or may not exist are unlikely to satisfy this requirement.
(c) Singapore has also declared in its notification of its accession to the Hague Convention that it will not execute letters of requests issued for the purpose of obtaining pre-trial discovery of documents.
Procedure for making applications to take evidence in Singapore
The procedure for making an application to the High Court to make orders for the taking of evidence in Singapore pursuant to a letter of request is set out in Order 66 of the Singapore Rules of Court.
In brief, an application to the High Court is to be made ex parte by a person duly authorised to make the application on behalf of the foreign court. The application must be supported by an affidavit setting out the grounds for the application. In practice, it is advisable for the litigant to request that the relevant foreign court authorise a Singapore solicitor to make the Order 66 application on the foreign court’s behalf, thereby avoiding the need to go through any diplomatic channels.
Even if the High Court grants the application, it is still possible for interested persons, including the person(s) against whom the orders are sought and/or the opposing party(s) in the proceedings before the foreign court, to subsequently apply to the High Court to discharge the order (if there are grounds to do so).
Singapore has a well-established framework and procedure to facilitate the taking of evidence in Singapore pursuant to letters of request from foreign courts.
Litigants who wish to make use of the letter of request mechanism to obtain evidence in Singapore for foreign proceedings are advised to seek Singapore law advice from an early stage, even prior to applying for the letter of request from the relevant foreign court. This will help to ensure that the letter of request complies with the necessary formalities under Singapore law and the requests therein are appropriately scoped from a Singapore law perspective.
We have successfully assisted litigants in the taking of evidence in Singapore in support of foreign IP litigation, and will be happy to advise and represent you before the Singapore courts in such matters.