Hung Ka Ho and Another v A-1 Office System Pte Ltd

• Jurisdiction: Singapore
• Judge: Kan Ting Chiu JC
• Judgment Date: 07 March 1992
• Neutral Citation: [1992] SGHC 55
• Docket Number: Suit No 110 of 1992
• Date: 07 March 1992
• Published date: 19 September 2003
• Year: 1992
• Plaintiff Counsel: Dedar Singh Gill (Drew & Napier)
• Citation: [1992] SGHC 55
• Defendant Counsel: Tan Tee Jim and Chew Kherk Ying (Allen & Gledhill)
• Court: High Court (Singapore)
• Subject Matter: Whether compliance with such order would infringe the defendants' privilege against self-incrimination,Application to discharge ex parte order,Anton Piller order including order compelling answers to interrogatories within 14 days,Anton piller orders,Privilege against self-incrimination,Infringement,Application to discharge ex parte Anton Piller order,Anton Piller order,Civil Procedure,O 38 r 2(2) Rules of the Supreme Court 1970,Copyright Act (Cap 63, 1988 Ed) s 136,Whether such order should have been made ex parte,Copyright,Claim for infringement of copyright and registered designs,Privileges

The plaintiffs` claim against the defendant company is for infringement of copyright, registered designs and passing-off in respect of some office panel systems and components and the trade literature relating to them. On 20 January 1992 they applied ex parte and obtained an Anton Piller order against the defendant company, including an order:

that the defendants do within 14 days from the service of this order upon them by a director duly authorized make and file an affidavit or affirmation setting forth so far as are known to the defendants the names and addresses of all persons, firms or companies:

(a) to whom the defendants have supplied;

(b) from whom the defendants have obtained supply of;

(c) to whom the defendants have placed orders for;

(d) from whom the defendants have received orders for;

the infringing material which the defendant company was alleged to be dealing with.

The defendant company did not supply the information. Instead, a summons-in-chambers was filed to discharge the order set out above. When the application came before me as an urgent application, I was informed that the defendant company was already technically in contempt for not furnishing the information.

When counsel for the defendant company said that the defendant company was invoking the privilege against self-incrimination, I expressed reservations about making any finding on this issue without any facts being placed before me, as no affidavit was filed in support of the application. Counsel, nevertheless, proceeded with the application, and he did so on two grounds: firstly, that the order should not have been made ex parte, and secondly, that the order infringed the defendant company`s privilege against self-incrimination.

On the first ground, he relied on Bridge LJ`s judgment in the Court of Appeal in Rank Film Distributors Ltd & Ors v Video Information Centre & Ors. [1982] AC 380 What the learned judge said about Anton Piller orders made ex parte compelling answers to interrogatories and the privilege against self-incrimination must be read in full. He said [at pp 415-416]:

What then is the effect, in relation to the practice of making Anton Piller orders in copyright cases, of the conclusion that a copyright pirate may be entitled to claim privilege from incriminating himself? Clearly it cannot be to inhibit the making of ex parte orders requiring defendants to permit the immediate search for and seizure of infringing copies. Section 18 of the Copyright Act 1956 gives to the copyright owner proprietary rights in such copies and owners seeking to enforce proprietary rights whether by final or interlocutory order to recover their own property cannot be defeated by any claim of privilege. But very different considerations apply to those parts of an Anton Piller order which require the person to whom the order is addressed to give forthwith to the person serving the order answers to specified questions and disclosure of relevant documents. It has long been the practice of judges hearing oral evidence to warn witnesses who are in apparent danger of incriminating themselves that they are entitled to claim privilege from self-incrimination. It would not be practicable in my judgment, to embody an effective warning of that kind in a typical peremptory Anton Piller order in such terms as to ensure that the recipient of the order fairly understood his position, what he was required to do and what were the options open to him. It must follow, I think, that the only satisfactory practice will be, when the court invited to make an Anton

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