High Court considers scope of international judicial assistance in US trade mark dispute

Recently, the High Court had to consider the circumstances in which the Irish courts will give effect to letters of request for assistance from a foreign court.

In Runbuk Inc v Ice Cap Adventures & Anor [2026] IEHC 644, Mr Justice Barry O’Donnell reaffirmed the importance of international judicial comity, while also emphasising the obligation to make full and frank disclosure when seeking relief on an ex-parte basis.

Letters Rogatory

The proceedings arose from a request for international judicial assistance (or ‘Letters Rogatory’) from the United States District Court for the Southern District of Florida in connection with US proceedings alleging trade mark infringement and trade mark confusion. Letters Rogatory were issued for the purpose of obtaining testimony and documentation from a witness, Richard Donovan, who resided in County Galway. The order giving effect to the request would require Mr. Donovan to give sworn evidence and be questioned by US lawyers before an Irish examiner as well as produce documentation in the course of that examination.

Background

Runbuk operates the “World Marathon Challenge” (‘WMC’), an annual event involving seven marathons on seven continents over seven days. WMC had originally been organised by Mr Donovan who registered a number of trade marks associated with WMC before subsequently transferring ownership of the event and all intellectual property to Runbuk in December 2022. However, after this, significant differences arose between Mr Donovan and Runbuk which led to legal proceedings being issued in both California and Florida.

In 2023, the defendants began promoting a competing event entitled “The Great World Race”, which involved participants running a marathon on each of the seven continents over seven days. Runbuk alleged, among other matters, that the defendants used the same marks associated with the WMC and sought to attract, divert or confuse customers in what the Court described as a “narrow market”.

The Florida court issued Letters Rogatory requesting assistance from the Irish Courts. The High Court initially made an ex-parte order on 15 June 2026 providing for the questioning of Mr O’Donovan in Ireland and requiring the production of documentation. Subsequently, Mr Donovan issued a motion seeking to have the order set aside.

The challenge

Mr Donovan challenged the Order on two grounds.

Firstly, he argued there had been material non-disclosure when the ex-parte order was obtained. This was because the Court had not been informed that Mr Donovan was engaged in separate litigation against Runbuk in California or that, four days before the Irish application was heard, the Florida court had stayed the legal proceedings in Florida. All parties were in agreement, and the Court fully accepted, that Runbuk’s Irish legal team was not aware of the stay when the application was made.

Secondly, he argued that (i) the application in reality was one for discovery and (ii) the request was oppressive because of its overlap with and potential impact on the California proceedings.

The High Court’s approach

The Court reiterated the legal principle that, as a matter of international judicial comity, Irish courts will endeavour to give assistance to foreign courts and will be slow to refuse a request. However, that principle is not absolute. Before granting assistance, the Irish court must consider whether the proposed evidence is relevant to the foreign proceedings, whether the request is oppressive, whether it would override an established privilege or protection available to the prospective witness and whether the evidence taken is admissible under the law of the requesting state.

However, the court will not accede to a request for judicial assistance if no oral testimony is sought and the request can be more properly characterised as one seeking discovery.

Based on the current facts, the Court was satisfied that there was a legitimate reason for examining Mr Donovan. Given his previous involvement with the WMC and the evidence he had already provided in the Florida proceedings, the Court was of the view that he was a critical witness. Accordingly, the dominant purpose of the request could not, therefore, be characterised as merely obtaining documents.

The importance of full and frank disclosure

The Court stated that full and frank disclosure was a “non-negotiable requirement” in any ex-parte application. It stated that both the existence of the legal proceedings in California and the stay imposed in Florida should have been disclosed when the original application was made. Failure to disclose the stay was regarded as the more serious omission.

Importantly, the Court stated that this obligation rests on the party seeking the order. The fact that Runbuk’s Irish lawyers were unaware of the stay and were not themselves criticised by the Court, did not alter that obligation. Clients seeking ex-parte relief must ensure that their lawyers are provided with all material information.

However, in the particular circumstances of this case, the Court held that justice of the case did not warrant the refusal of the application.

Key takeaways

The Court rejected Mr Donovan’s application to set aside the order and held that the Florida court’s request should be acceded to.

The judgment provides a useful reminder for parties involved in cross-border litigation that the Irish courts will generally adopt a cooperative approach to properly constituted requests for international judicial assistance. However, that cooperation remains subject to safeguards designed to protect witnesses against oppressive requests, preserve applicable privileges and ensure that the procedure is not simply used to obtain discovery.

It is also a reminder of the stringent disclosure obligations attaching to ex-parte applications. Parties seeking international judicial assistance must ensure that the Irish court is provided with all material information that could have a bearing on the exercise of its discretion.

For further information and support, please contact Maureen Daly at mdaly@reddycharlton.ie, Peter Kearney at pkearney@reddycharlton.ie or your usual contact in Reddy Charlton LLP

Disclaimer: This article is for general information purposes only and does not constitute legal advice. Specific legal advice should be sought before taking or refraining from any action based on its contents.