Lorraine Anne Tay Dharma Sadasivan
Joint Managing Partner Associate
Bird & Bird ATMD, Singapore Bird & Bird ATMD, Singapore
Bird & Bird
A: Asia: Beijing, Hong Kong,
Shanghai, Singapore &
Sydney
W: twobirds.com
In January this year, Singapore established a new court - the Singapore International Commercial Court (SICC). The SICC’s international nature and its special procedural rules mean it has the potential to become an attractive forum for resolving brand licensing disputes in Asia.
The SICC offers a number of advantages for resolving disputes concerning brand licensing agreements in Asia:
• Singapore’s geographical location means that the SICC is conveniently placed to adjudicate disputes that relate to agreements covering Asia, especially for companies that centrally manage their brands in the region from Singapore.
• As the court can hear disputes concerning agreements governed by foreign law and allows parties to be represented by lawyers qualified in foreign law, parties maintain the freedom to choose the governing law of their agreements. This may be particularly beneficial where a single agreement is used to cover licensing in multiple countries or is between parties of different nationalities since a neutral law can be selected.
• The SICC is a division of the Singapore High Court with a panel of specialist commercial judges from Singapore and international judges from both civil and common law traditions, a number of whom have experience with IP disputes.
• The SICC rules seek to combine the best features of arbitration and litigation. For example, as with arbitration, proceedings may be kept confidential and parties may elect a governing law that differs from the seat of the dispute, while third parties can be joined to a case and orders for disclosure made, as provided by litigation.
Despite these advantages, before deciding on the SICC as the forum of choice, it is important to recognise that whether or not an SICC judgment can be enforced in another jurisdiction will depend on the private international law of the country in question. In general, because the SICC is constituted as a superior court, its judgments may be enforced through existing reciprocal enforcement provisions in other jurisdictions including New Zealand, Sri Lanka, Malaysia, Australia, Hong Kong, and most states in India, in addition to the usual common law action on judgment debts. It is less clear whether SICC judgments may be enforced in civil law countries with no reciprocal enforcement provisions.
Companies planning or managing multinational licensing strategies in Asia should consider whether or not the SICC is a useful forum for resolving regional brand licensing disputes. The creation of the SICC clearly contemplated that the resolution of IP disputes would fall within the scope of its jurisdiction, given that the SICC’s international panel of judges includes specialists in IP. This can only serve to strengthen the IP regime in Singapore and help companies protect their brands and other IP as they conduct business in the region.
