Riedel-de Haen Ag

- vs -

Liew

Judgment

SK Chan J

1. This is an application by the defendant to discharge an Anton Piller order obtained by the plaintiffs on 21 April 1988 on the ground that it infringes the privilege against self-incrimination. The said order was in these terms:

   4.

   The defendant does within seven days of the service of the interim injunction and order of court herein upon him make and file an affidavit and serve a copy on the plaintiffs’ solicitors, setting forth the names and addresses of all persons, firms, or companies: (a) from whom the defendant has obtained; (b) to whom the defendant has supplied; and (c) who have ordered from the defendant the aforesaid goods bearing the plaintiffs’ trade marks Riedel-de Haen which would offend the aforesaid injunction and the defendant to exhibit thereto to the affidavit all relevant invoices, orders, shipping documents and all relevant documents or copies thereof in the defendants’ possession, custody or control and confirm that the transactions appearing therein refer to the aforesaid goods which are not of the plaintiffs’ manufacture or merchandise.

2. Counsel for the defendant relies on the authority of the House of Lords decision in Rank Film Distributors Ltd v Video Information Centre [1981] 2 All ER 76 in support of his application. In that case, the appellants had issued a writ against the respondents restraining them from infringing the appellants’ copyright to certain films which the respondents were alleged to have pirated in the form of video cassettes. The appellants obtained Anton Piller orders which required the respondents:

   1. to supply information;

   2. to allow access to premises for the purpose of looking for illicit copy films and to allow their being removed to safe custody; and

   3. to disclose and produce documents.

3. It was contended by the respondents that orders (a) and (c), i.e. the provision of the information or production of the documents, might tend to incriminate them in respect of various offences, viz

   1. summary offences under s 21 of the Copyright Act 1956;

   2. conspiracy to commit a breach of s 21; and

   3. conspiracy to defraud (at common law).

4. The House of Lords upheld the claim of privilege of self-incrimination and discharged orders (a) and (c). Their Lordships also decided that there was no way in which the court could compel disclosure while at the same time protecting the respondents from the consequences of self-incrimination since an express restriction imposed by the court on the use of any information disclosed would be binding on the appellants and not on anyone else who brought a criminal prosecution and in any event would not bind a criminal court to exclude the information as inadmissible evidence.

5. Consequent upon this decision, legislation was enacted in England in the form of s 72 of the Supreme Court Act 1981 to withdraw this privilege in connection with the following civil proceedings in the High Court, namely:

   1. proceedings for infringement of rights pertaining to any intellectual property or for passing off;

   2. proceedings brought to obtain disclosure of information relating to any infringement of such rights or to any passing off; and 

   3. proceedings brought to prevent any apprehended infringement of such rights or any apprehended passing off.

   There is no corresponding legislation in Singapore.

6. Counsel for the defendant in the instant case has submitted that the privilege against self-incrimination survives as part of the law of Singapore and that if the defendant were compelled to answer para 4 of the court order, his answers would incriminate him in respect of offences under the Trade Marks Act (ss 70 and 74) and under the Consumer Protection (Trade Descriptions and Safety Requirements) Act (Cap 53) ss 4 and 14.

7. It is settled law that before the privilege can be claimed successfully by any person, it must be shown that there is a real risk that the incriminating answer or answers would expose him to arrest or prosecution for any criminal offence. In this respect, counsel has referred to the decision of the High Court of Hong Kong, viz Lincoln International Ltd v Eagleton Exports Ltd [1982] FSR 161 where the nature and extent of the liability was discussed. There, Jackson-Lipkin J said:

   .... both of them [counsel] tell me that I may take judicial knowledge of the fact, that in Hong Kong the Commercial Crimes Bureau and the Trade, Industry and Customs Department take passing off and infringement very much more seriously than the authorities take them in England. Indeed, there are special units in Hong Kong for seeking out infringers and passers off and for prosecuting them. I do take notice of it. It is well-known in the courts of this Colony that the Government takes a very serious view of such offences, and must do because the livelihood of the Colony depends upon our being able to shed the old image of ‘empire made’ and the old image of imitators. It follows, therefore, that there is a genuine risk in Hong Kong that people — and I say ‘people’ advisedly — will be prosecuted for infringing or passing off. Leonard J in Lee Shek-tang v R, an unreported judgment delivered on 12 June 1979, talked about ‘flagrant copying of a kind that must be stopped’. So it is quite clear that the courts of this Colony, in applying the Rank case, must approach the problem differently. They must approach it on the basis that, because of our Ordinance, as opposed to the Act — and in that respect I refer to pp 674, 676, 678, 680 and 681 of the Rank case — because of our Ordinance, and because of our peculiar circumstances, a real and appreciable risk does exist, and the offences can by no means be considered petty, beyond the purview of the authorities, or ones to which authorities are willing to turn a blind eye; and, until those in charge of Law Reform do as England has done, and legislate to overcome the difficulties, we must apply the Rank case in all its strictness.

8. Counsel for the defendant has contended that the authorities in Singapore are no less ardent than their Hong Kong counterparts in their efforts to eliminate or suppress the scourge of piracy of intellectual property and that accordingly there is a real and appreciable risk of the defendant being prosecuted for the offences he has identified if he were compelled to comply with the court order.

9. Counsel for the plaintiffs accepts the submission that there is a risk of the defendant being subject to prosecution, but he contends the privilege against self-incrimination is no longer available in Singapore as it has been withdrawn by s 134 of the Evidence Act. He relies on a decision of the Malaysian High Court, viz Television Broadcasts Ltd v Mandarin Video Holdings Sdn Bhd [1983] 2 MLJ 346 where Chan J so held in relation to the corresponding s 132 of the Evidence Act of Malaysia, in a case where an Anton Piller order was obtained against the defendant. His Lordship after analysing the English and Indian decisions came to the conclusion that the expression ‘witness’ in s 132 of the Evidence Act meant any person who could give or furnish evidence and not any person who testified in the witness box. Chan J said:

   In my judgment, a witness is a person who gives or ‘furnishes’ evidence. If a person gives or is compelled by a court order (as in this case) to give evidence then he is a witness. It does not matter if he is a party or any other person. In the Westinghouse Uranium Contract, the people and the companies concerned in the case were not parties to the litigation then pending in the United States. The court in the United States issued letters rogatory to the High Court in London requesting it to order two English companies to produce documents and certain named individuals to appear before a US Consular officer in London to give evidence as witnesses. The point which I wish to make is this — those named individuals and the two English companies were called ‘witnesses’ although at the time they were only under compulsion by court order to give evidence and to produce documents. They have not given evidence or produced documents yet. Roskill LJ described them as ‘potential witnesses’.... and throughout the judgments in the Court of Appeal and in the House of Lords they were referred to as ‘witnesses’. As things turned out, none of them ever became witnesses at all, that is, in the sense of ‘furnishing evidence’, because their claim to privilege against self-incrimination was upheld by the Court of Appeal and the House of Lords.

   Accordingly, his Lordship concluded (at p 356):

   The first limb of this subsection (i.e. s 132(1) takes away the risk of arrest and prosecution and therefore, the privilege goes .... It also at the same time (second limb) prevents the use in criminal proceedings of evidence or statements which otherwise would have been privileged. Apart from sub-s (2), sub-s (1) by itself is wide enough to withdraw or remove altogether the privilege against self-incrimination.

10. However, Chan J’s decision in Television Broadcasts was not followed in a subsequent case before another judge of the Malaysian High Court. In PMK Rajah v Worldwide Commodities Sdn Bhd [1985] 1 MLJ 86 Zakaria J, in discharging an Anton Piller order, held that the expression ‘witness’ in the context of s 132 was intended to refer to a person who testified on oath or affirmation in a court of law or in a judicial tribunal and who would be subject to examination in chief, cross-examination and re-examination.

11. Counsel in the instant case relies on Zakaria J’s decision. In view of these two conflicting decisions, neither of which is binding on me, it is necessary for me to consider the issue afresh from first principles. There is no doubt that the privilege against self-incrimination is one of the principles of English law which has been received in Singapore by virtue of the Charter of Justice 1826. What is in doubt is its status as a fundamental rule of natural justice in criminal proceedings in the context of the constitutional rights of an accused person: see Haw Tua Tau v PP [1981] 2 MLJ 49 (at p 53 per Lord Diplock). In civil proceedings, the privilege extends to discovery of documents which will tend to criminate or subject the defendant to a penalty or forfeiture: Re Westinghouse Uranium Contract [1978] AC 547.

12. The existence of this privilege is a boon to wrongdoers and a bane to owners of intellectual property rights. In this regard, Lord Reid in the Rank Film case said (at p 79):

    It may seem a strange paradox that the worse, i.e. the more criminal, their activities can be made to appear, the less effective is the civil remedy that can be granted, but that, prima facie, is what the privilege achieves.

13. However, the fact that the privilege may operate unfairly against owners of intellectual property rights and the fact that the Supreme Court Act 1981 was passed by the United Kingdom Parliament to remedy the paradoxical situation, no doubt for policy reasons, are not considerations which should influence a court in construing the proper scope of s 134 of the Evidence Act. It should be remembered that the Evidence Act is merely a re-enactment of the Indian Evidence Act which was first re-enacted in 1872 and s 134 itself was a verbatim reproduction of s 32 of Act 2 of 1832 (see Sarkar on Evidence (13th Ed) at p 132).

14. I now turn to s 134 of the Evidence Act which provides:

    (1)	A witness shall not be excused from answering any question as to any matter relevant to the matter in issue in any suit, or in any civil or criminal proceedings, upon the ground that the answer to such question will criminate, or may tend directly or indirectly to criminate, such witness, or that it will expose, or tend directly or indirectly to expose, such witness to a penalty or forfeiture of any kind, or that it will establish or tend to establish that he owes a debt or is otherwise subject to a civil suit at the instance of the government or of any other person.
    (2)	No answer which a witness shall be compelled by the court to give shall subject to any arrest or prosecution, or be proved against him in any criminal proceeding, except a prosecution for giving false evidence by such answer.
    (3)	Before compelling a witness to answer a question the answer to which will criminate or may tend directly or indirectly to criminate such witness, the court shall explain to the witness the purport of sub-s (2). ....

15. The issue whether s 134 of the Evidence Act has abrogated or merely qualified the privilege against self-incrimination turns on the meaning of the word ‘witness’ in sub-s (1) thereof. The word ‘witness’, like many words in the English language, is capable of a broad or a narrow meaning, depending on the context in which it is used. In a broad sense, it means a person who has seen a thing or an event and is able to testify to it when called upon to do so: he is a potential witness if that fact or thing is required to be proved. In a narrow and more technical sense, it may refer to a person who goes into a witness box to testify to a fact or thing, the existence of which may be in issue. He may be a voluntary witness, having agreed voluntarily to testify or an involuntary witness, having been subpoenaed to testify. A witness in this sense need not be a party to the proceedings, but a party who gives evidence in his own behalf is also a witness in this sense.

16. In the context of s 134, the meaning of ‘witness’ must be determined by the nature of the obligation that is imposed on him by that section. Subsection (1) refers to the obligation to answer any question as to any matter relevant to the matter in issue. It implies that a question or questions will be put to the witness: that can only be done at a trial by counsel examining or cross-examining him or by the court. That question must also be relevant to the matter in issue. Until the question is asked, no one can say whether it is relevant to the matter in issue. (Indeed, it is arguable that in a claim for damages for infringement of intellectual property, the sources of supply and the identities of the suppliers are not relevant to the issue of infringement.) Subsection (3) requires the court to explain to the witness the purport of sub-s (2) before compelling him to answer a question which will criminate or tend to criminate him. Again, this implies an oral explanation by the judge either directly if the witness speaks and understands English or indirectly through a court interpreter if the witness does not speak or understand English and that can only happen when the witness is giving evidence.

17. In Television Broadcasts, the learned judge sought (see p 358) to overcome the requirement of sub-s (3) by directing that there be included in the Anton Piller order a statement that the defendants must be informed that the answer given by them in response to the order would not subject them to the risk of arrest or prosecution etc. In my view, the inclusion of such a statement is not sufficient compliance with s 134(3) which says that the court shall explain to the witness. The Anton Piller order is only a court order. It is not the court. If the statement is read out by way of explanation to the defendant, it will presumably be done by the plaintiff or his solicitor. That is not an explanation by the court. That the decision in Television Broadcasts is wrong is, in my view, reinforced when applied to the circumstances of the case before me. Here, the defendant does not speak, write or read English. Assuming that the Anton Piller order in the present case did contain the form of the suggested statement (which it did not, which provides a specific ground for its invalidity in any event but which does not affect the reasoning here) and that the statement had been interpreted to the defendant, it would still not have amounted to an explanation by the court. The adoption of such a procedure is also undesirable. It is open to abuse and will lead to disputes as to whether explanations, much less accurate explanations, have been given, whether the interpreters are competent to explain and whether defendants have understood the explanations.

18. In Television Broadcasts [1983] 2 MLJ 346 the learned judge reasoned that ‘a witness’ is a person who gives or furnishes evidence and if a person gives or is compelled by a court order, i.e. the Anton Piller order, to give evidence, then he is a ‘witness’. In my view, this reasoning is flawed in two respects. 

    • First, in the context of s 134, the conclusion begs the question, the question being whether at that stage of the proceedings before the court, the defendant was a witness who was compellable to answer.

    • Secondly, in a more general context, where the Anton Piller order is directed against the defendant, it offends against the fundamental principle that in an adversarial system of justice, such as ours, the defendant has a right to remain silent and to refuse to defend himself. He can never be a witness unless he voluntarily agrees to testify. The corollary of this principle is that a trial judge has no power to dictate to a litigant what evidence he should tender: Tay Bok Choon v Tahansan Sdn Bhd [1987] 1 MLJ 433 at p 436.

19. For the above reasons, it is clear to me that the witness referred to in s 134 is the person who is testifying at a trial or other judicial proceedings where the Evidence Act is applicable. There is a final consideration which puts this interpretation beyond doubt. Section 2(1) of the Evidence Act provides as follows:

    Parts I, II and III shall apply to all judicial proceedings in or before any court but not to affidavits presented to any court or officer nor to proceedings before an arbitrator.

20. Section 134 appears in Part III of the Act (comprising ss 103 to 168) which deal with, inter alia, evidence and witnesses. As the definition of ‘evidence’ in the Act does not include affidavits, it must follow that Part III is concerned with oral evidence only.

21. I am therefore of the view that s 134 of the Evidence Act has merely qualified the privilege against self-incrimination to the extent the witness gives oral testimony in judicial proceedings to which the Evidence Act is applicable.

22. In so far as the instant case is concerned, and whatever may be the effect of s 134 of the Evidence Act, s 2(1) thereof has the effect of invalidating the Anton Piller order contained in para 4 of the court order of 21 April 1988. Accordingly, the order must be discharged with costs.

Cases

Haw Tua Tau v PP [1981] 2 MLJ 49; Lincoln International v Eagleton Exports [1982] FSR 161; PMK Rajah v Worldwide Commodities [1985] 1 MLJ 86; Rank Film Distributors v Video Information Centre [1981] 2 All ER 76; Tay Bok Choon v Tahansan [1987] 1 MLJ 433(PC); Television Broadcasts v Mandarin Video Holdings [1983] 2 MLJ 346; Westinghouse Uranium Contract, Re [1978] AC 547

Legislations

Charter of Justice 1826

Consumer Protection (Trade Description and Safety Requirements) Act (Cap 53): s.4, s.14

Evidence Act (Cap 97): s.2(1), s.134

Trademarks Act (Cap 332): s.70, s.74

Evidence Act (Act 2 of 1832) [India]: s.32

Copyright Act 1956 [UK]: s.21

Supreme Court Act 1981 [UK]: s.72

Authors and other references

Sarkar on Evidence (13th Ed) 

Representations

Lawrence Boo (Haridass Ho & Partners) for the plaintiffs.

TJ Tan (Allen & Gledhill) for the defendant.