In more detail

Background

Tiger Pictures Entertainment Ltd ("Claimant") commenced action against Encore Films Pte Ltd ("Defendant") for infringing its copyright in the Chinese film "Moon Man". 

The Claimant invoked the Simplified Process by filing a form electing for Part 2 of the SCJ(IP)R to apply and abandoning any claim for monetary relief in excess of SGD 500,000. 

The Defendant applied for an order from the court asserting that the Simplified Process did not apply, contending that: (a) the matter involved factual issues that required a fact and context-sensitive inquiry; (b) two of the five witnesses would be testifying in Mandarin via video-link from China, which would require interpretation; and (c) the trial would take at least four days given the need for interpretations of witness statements and a context-specific inquiry.

The primary issue in the application before the court was whether the suit was a suitable case for determination under the Simplified Process. 

Relevant principles

For a case to be suitable for resolution under the Simplified Process, the high court held that the three cumulative conditions listed in rule 4(1) of the SCJ(IP)R must be fulfilled:

1. The dispute involves an IP right.
2. The monetary relief claimed by each party in the action does not or is not likely to exceed SGD 500,000 or all parties agree to the application of Part 2 of the SCJ(IP)R.
3. The case is suitable for the Simplified Process having regard to the following factors:
   1. Whether a party can only afford to bring or defend the claim under the Simplified Process.
   2. The complexity of the issues.
   3. Whether the estimated length of the trial is likely to exceed two days.
   4. Any other relevant matter.

The high court also shed light on relevant principles in assessing if the conditions above are fulfilled:

• The court will have to assess all factors in totality to determine if the third condition is fulfilled.
• If the complexity of the issues of the trial and the estimated length of the trial indicate that the trial is not suitable for the Simplified Process, this should be a strong indication that a case is unsuitable for the Simplified Process.
• While the fact that a party can afford to bring or defend a claim under the Simplified Process will weigh in favor of the Simplified Process, the mere fact that one or both parties can afford to litigate a claim through the normal route does not necessarily mean that the Simplified Process should not apply.
• The lower the quantum of a claim involved, the more likely it is that the case will be suitable for the Simplified Process.

Finding of suitability for simple resolution

The high court found that the dispute between the Claimant and Defendant was suitable to resolve under the Simplified Process as all three conditions listed in rule 4(1) of the SCJ(IP)R were fulfilled:

1. The dispute involved an IP right as it was a claim of copyright infringement brought by the Claimant against the Defendant.
2. The monetary relief claimed by each party in the action would not or was not likely to exceed SGD 500,000. The Claimant had filed and served the form to abandon any claim of monetary relief above SGD 500,000. Meanwhile, the Defendant had not particularized their purported losses and the Defendant did not have standing for its counterclaims.
3. The dispute was suitable for the Simplified Process considering all the factors in totality, for the following reasons:
   1. The issues in the dispute were not legally or factually complex.
   2. The estimated length of the trial would not exceed two days. The Defendant would not be permitted to call their expert witness. Even if the expert witness was called, he was to testify on a narrow point that was unlikely to take a substantial amount of time. A witness was also prepared to travel to Singapore to deliver his testimony, eliminating delays caused by giving evidence through video-link.
   3. The amount of legal fees and time the Claimant would spend on the dispute, if it was not heard under the Simplified Process, would be disproportionate to the value of the Claimant's claim.

Key takeaways

This case sheds light on the relevant principles in assessing whether the criteria laid down for the Simplified Process are fulfilled. In particular, the court will assess the totality of all factors to determine if this is the case, including the complexity of the issues before the court. 

Notably, the mere fact that one or both parties can afford to litigate a claim through the normal route does not necessarily mean that the Simplified Process should not apply. That said, the lower the quantum of a claim involved, the more likely it is that the case will be suitable for the Simplified Process. 

We expect to see more IP disputes through the Simplified Process as a result of parties seeking to minimize costs, time and resources involved in such disputes when compared to the normal route.

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For further information and to discuss what this development might mean for you, please get in touch with your usual Baker McKenzie contact.

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