Background
Runbuk Inc brought trademark-related proceedings against Ice Cap Adventures and David Kelly in the US District Court for the Southern District of Florida. The dispute concerned Ice Cap Adventures’ Great World Race, a seven-marathons-on-seven-continents event that Runbuk alleged used marks identical or similar to those associated with its World Marathon Challenge. Richard Donovan, who previously owned and organised the World Marathon Challenge before selling its intellectual property to Runbuk, was alleged to have assisted the defendants despite a non-compete agreement.
At the Florida court’s request, the Irish High Court made an ex parte order under the Foreign Tribunals Evidence Act 1856 permitting Mr Donovan to be examined under oath in Ireland and requiring him to produce relevant documents. Mr Donovan sought to set that order aside, arguing that Runbuk had failed to disclose his related California litigation against Runbuk and a stay imposed in the Florida proceedings shortly before the Irish application. He also contended that the request was oppressive, overly broad and, in substance, an attempt to obtain discovery rather than oral testimony.
The Court’s Holding
Mr Justice Barry O’Donnell refused Mr Donovan’s motion. The Court held that both the California proceedings and the Florida stay should have been disclosed during the ex parte application. The failure to disclose the stay was particularly serious, and the decision by Runbuk’s US lawyer to treat it as immaterial was a serious error of judgment. Nevertheless, the omissions did not justify setting aside the order: they were not motivated by bad faith, Mr Donovan had not yet been required to undergo examination, and he had received a full inter partes hearing. Runbuk had also offered to defer the examination, and the Florida court had since lifted the stay.
The Court rejected the contention that the request was merely one for discovery. Mr Donovan was a critical witness because of his history with the World Marathon Challenge, his declarations supporting the defendants and his voluntary acceptance of a subpoena from them. The requested documents were connected to legitimate lines of questioning, and oral testimony was a genuine and substantial purpose of the request.
The Court also found no oppression arising from the overlap with the California proceedings. Any fairness issues concerning the use of evidence across the two US cases could be addressed by the US courts, including through confidentiality protections. The letters rogatory would therefore remain effective, subject to rescheduling Mr Donovan’s examination and consideration of costs.
Key Takeaways
- A party seeking ex parte assistance under the Foreign Tribunals Evidence Act 1856 must disclose related litigation and procedural developments that may bear on whether the request is oppressive.
- Material non-disclosure does not automatically require discharge of an ex parte order; the Court considers the significance and culpability of the omission, any prejudice caused and the overall justice of the case.
- A request combining testimony with document production is not impermissible discovery where the witness has relevant evidence and the documents support legitimate lines of examination.
Why It Matters
The decision confirms the Irish courts’ strong, though discretionary, commitment to judicial comity when foreign courts request assistance in obtaining evidence. Refusal remains possible where a request is irrelevant, oppressive, inconsistent with privilege or effectively seeks document discovery without genuine testimony.
It also underscores that the duty of full and frank disclosure rests on the party seeking ex parte relief, not merely its Irish lawyers. Even where an omission does not ultimately defeat foreign-evidence assistance, the Court will scrutinise undisclosed stays and parallel litigation closely.