Introduction

The Supreme Court of Judicature (Intellectual Property) Rules 2022 (“IP Rules”), which came into effect in Singapore on 1 April 2022, brought into operation a simplified, cost-limited pathway for suitable Intellectual Property (“IP”) related disputes in the Supreme Court of Singapore (“Supreme Court”). Termed the “Simplified Process for Certain Intellectual Property Claims” (“Simplified Process”), this article discusses when it may apply and how it differs from the normal process.

The Simplified Process

When it may apply

A claimant may elect for the Simplified Process by filing and serving the prescribed forms to: (a) elect for the Simplified Process, and (b) abandon any claim for monetary relief in excess of 500,000 Singapore dollars (“S$”). However, a defendant can contest this election by applying to the courts for an order for the Simplified Process not to apply, on the basis that the dispute is not a suitable one. Further, even if the defendant does not contest the election, the court can, on its own motion, order that the Simplified Process not apply, if the court considers that the dispute is not one that is suitable.

The Simplified Process may also apply upon an application to the courts by a party to the dispute. A party can only apply to the courts for such an order if: (a) he files and serves the prescribed form to abandon any claim for monetary relief in excess of S$500,000 or (b) all parties agree to the application of the Simplified Process. The court can then make the order for the Simplified Process to apply if the court considers that the dispute is one that is suitable.

Finally, the Simplified Process will apply if the court considers that the dispute is one that is suitable and, on its own motion, makes an order for it to apply.

Suitability of dispute

As for whether the dispute is one that is “suitable”, Rule 4(1) of the IP Rules provides that a dispute is suitable for the Simplified Process if:

“(a) the dispute involves an intellectual property right;

(b) one of the following conditions applies:

(i) the monetary relief claimed by each party … in the action does not or is not likely to exceed [S$]500,000;
(ii) all parties agree to the application of [the Simplified Process]; and

(c) the case is otherwise suitable for [the Simplified Process], having regard to the following matters:

(i) whether a party can only afford to bring or defend the claim under [the Simplified Process];
(ii) the complexity of the issues;
(iii) whether the estimated length of the trial is likely to exceed 2 days;
(iv) any other relevant matter.”

For (a), “intellectual property right” is defined by Rule 3 of the IP Rules to include:

“(a) a patent;
(b) a trade mark;
(c) a geographical indication;
(d) a registered design;
(e) a copyright;
(f) a right in a protected layout design of an integrated circuit;
(g) a grant of protection in respect of a plant variety;
(h) a right in confidential information, trade secret or know how; and
(i) a right to protect goodwill by way of passing off or similar action against unfair competition;”

Hence, whether a dispute is suitable for the Simplified Process is fact-dependant, taking into account the factors listed in Rule 4(1)(c) of the IP Rules.

Differences with the normal process

Should the Simplified Process apply to a given dispute, parties can expect a shortened process, and limits on costs.

Shortened process

The Simplified Process provides a shortened process by modifying the general procedural rules for civil disputes found in Order 9 of the Rules of Court 2021 (“ROC”). First, the court must, if practicable, give all directions in a single case conference. Further, directions must be given on all matters that are necessary for the case to proceed expeditiously and, if practicable, directions must also be given to ensure that the trial is completed within 2 days. To that end, the non-exhaustive list of matters the court may give directions on for the single application pending trial has been expanded. Finally, the Simplified Process does away with Order 9, Rule 9(5) of the ROC, which requires the court to give 21 days to both sides for the filing and service of certain documents for the application.

Limits on costs

The rules concerning costs under Order 21 of the ROC are also modified by the Simplified Process. First, the total costs the court may order against a party (inclusive of the Goods & Services Tax) generally cannot exceed: (a) S$50,000 in relation to the trial, and (b) S$25,000 in relation to any bifurcated assessment as to the amount of monetary relief. Additionally, all costs are to be fixed by the court, can generally only be ordered in respect of items specified in Table A to Rule 9 of the IP Rules, and generally cannot exceed the quantum specified in Table A.

Nevertheless, this is subject to some exceptions, such as where costs are ordered against a party that has behaved unreasonably, or where the court is exercising its powers to make adverse cost orders against a solicitor.

If an appeal is filed for a dispute subject to the Simplified Process, the appellate court is allowed to make an order to limit the costs recoverable on the appeal. The appellate court will have regard to all the relevant matters, including the means of the parties, whether the appeal raises a point of law or practice of public importance, and the need to facilitate access to justice.

Other notable changes

In addition to introducing the Simplified Process, other notable changes include bringing together the additional procedural rules applicable to IP disputes in the Supreme Court, introducing various duties that would keep the Registrars of the various IP regimes informed of proceedings in the Supreme Court, and providing, where possible, identical procedural rules across the various IP regimes.

Concluding thoughts

The Simplified Process offers potential litigants with an opportunity to resolve their disputes in a more simplified, and cost-limited manner. It is hoped that this will have the effect of promoting greater access to justice for IP related matters in Singapore, going forward.