Federal Court of Australia

Toyota Jidosha Kabushiki Kaisha v OZI4x4 Pty Ltd [2025] FCA 768

ORDERS

THE COURT ORDERS THAT:

1.    The Applicants’ request for leave to issue a subpoena dated 7 July 2025 and application for associated orders is dismissed.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

HILL J

Introduction

1    The Applicants seek leave to issue a subpoena to Shopify Commerce Singapore Pte Ltd, a company incorporated in Singapore, by way of substituted service. This application has been referred to me as general duty judge to deal with urgently, as the judge who will hear this proceeding (the trial judge) is unavailable this week.

2    The application is made ex parte, and is supported by an affidavit of Caitlin McCrum sworn on 7 July 2025 (the McCrum affidavit). There is no right for the other parties to be notified of an application for a subpoena, although the issuing party should consider notifying them: see Subpoenas and Notices to Produce Practice Note (GPN-SUBP) at [3.2]. As explained below, the need for the subpoena arises because the Applicants have been unable to obtain the information from the Respondents. In those circumstances, I was content to hear the application ex parte.

3    For the reasons that follow, I am not prepared to grant leave for a subpoena to be served on Shopify Singapore outside Australia (cf proposed order 2). Although it does not strictly arise, I also refuse the application for substituted service of that subpoena (cf proposed orders 3 to 5). The application should be dismissed.

Background

4    Applicants’ claims: This proceeding concerns allegations of trade mark infringement and misleading or deceptive conduct by reason of the conduct of each Respondent in advertising and selling motor vehicle parts and accessories for Toyota vehicles. The two central complaints made by the Applicants relate to:

(a)    certain “Counterfeit Products” (as defined in the Statement of Claim) being certain tail lights for Hilux vehicles and armrests for Land Cruiser vehicles;

(b)    certain “Impugned Aftermarket Products” (as defined in the Statement of Claim), being products displayed by the Respondents on their website and social media platforms.

5    The Applicants say that, while the Respondents have admitted to some sales of the Counterfeit Products, they have not admitted to all sales of the Counterfeit Products. Nor have the Respondents admitted that the Applicants have suffered loss and damage by reason of the Respondents’ conduct or that the Applicants are entitled to additional damages under s 126(2) of the Trade Marks Act 1995 (Cth).

6    Trial date: The trial judge made orders in May 2025 listing the proceeding for hearing beginning on 19 August 2025, on an estimate of three days.

7    Previous attempts to obtain sales records: As set out below, the subpoena seeks certain sales records from Shopify Singapore. The McCrum affidavit sets out the following background to the Applicants’ attempts to obtain this information from the Respondents.

8    Orders for discovery (Jun 2024): On 7 June 2024, the trial judge made orders that the Respondents give discovery of certain categories of documents, including:

(c)    all documents evidencing, recording or referring to the manufacture, importation, advertisement, supply or sale of Further Counterfeit Products (as defined in the Statement of Claim);

(d)    all records of communications, including text messages, emails and messages conducted over online platforms, with customers or potential customers in relation to Further Counterfeit Products[.]

9    List of Documents and Discovery PDF (Sep 2024): On 4 September 2024, the Respondents filed and served a List of Documents. There was discussion between the parties’ lawyers as to whether the Respondents had discovered all relevant documents. On 17 September 2024, the Respondents’ previous lawyers sent the Applicants’ lawyers an email with a link to an unredacted pdf version of the documents discovered by the Respondents (the Discovery PDF).

10    The McCrum affidavit states that pp 3352 to 3420 of the Discovery PDF comprises pdf screenshots that are described in the List of Documents as:

Copies of extracts from the First Respondent’s Shopify Store of all online and point of sale orders of the following products:

(a)    Side door armrest cup holder suitable for Toyota Land Cruiser 70 series between 5 November 2022 and 21 November 2022; and

(b)    OEM Tail Lights suitable for Toyota Hilux 2015-2022 between 2 March 2022 and 25 October 2022.

These are referred to as the “Shopify Records”.

11    The McCrum affidavit states that the Shopify Records, as contained in the Discovery PDF, consist of screenshots of searches made for the items mentioned above, and screenshots of each order made for those items. The Shopify records for each order include embedded files, including image and video files. Without access to the native file versions of those files, the Applicants are unable to open and view those videos and photographs in their original size.

12    Notice to Produce “native file versions” (May 2025): On 26 May 2025, the Applicants filed and served a Notice to Produce, seeking (relevantly) native versions of all images and video files embedded within the Shopify Records, including all files in JPEG, PNG and MOV format.

13    Further discovery ordered (Jun 2025): On 2 June 2025, the trial judge ordered that, by 3 June 2025, the Respondents make discovery of the documents specified in the Notice to Produce. The trial judge also ordered that, by 23 June 2025, the Respondents make further discovery of certain documents, including:

All documents evidencing or recording the ordering, importation, supply or sale of the following products in the period 1 October 2021 to 3 September 2024:

(a)    tail lights for HiLux vehicles; and

(b)    armrests for Land Cruiser vehicles.

14    Respondents’ response (Jun 2025): On 3 June 2025, the Respondents produced three documents in response to the Notice to Produce. One document was an email from Shopify, which the Respondents’ lawyer relied on to state that the Respondents’ Shopify plan had been cancelled, and they could not access their account any more. It was said that the Respondents could not produce the Shopify Records to the Applicants. The email from Shopify (which is in evidence) states that the Second Respondent’s store’s subscription plan “recently changed to dormant”, which was considered a “Bad Act” under the Shopify Capital Agreement. The email asks that the Second Respondent switch his store plan back on.

15    On 6 June 2025, the Applicants’ lawyers sent an email to the Respondents’ lawyer, stating that the Applicants required the Second Respondent (Mr Safi) to provide an affidavit within the next 7 days that explained:

    when the Respondents were last in possession of the documents sought in the Notice to Produce;

    why the Respondents are unable to now produce native copies of those documents; and

    why the Respondents cannot now regain access to their Shopify account and the records from their Shopify account.

16    The McCrum affidavit states that, at 7 July 2025, there had been no response from the Respondents to this email, and that no further documents were discovered on 23 June 2025.

17    Orders for an affidavit and discovery (Jul 2025): On 4 July 2025, a Registrar held a case management hearing, and made orders that:

(a)    by 9 July 2025, the Second Respondent file and serve an affidavit which identifies the native documents in the Notice to Produce which are no longer in the Respondents’ possession or control and, in relation to those documents, explains why those documents are no longer in the Respondents’ possession or control; and

(b)    the time for the Respondents to provide discovery as required by Order 3 of the 2 June 2025 orders be extended from 23 June 2025 until 9 July 2025.

18    At the time of the hearing on 10 July 2025, no affidavit had been filed, nor had any additional documents been discovered.

19    Respondents’ lawyer has ceased to act (Jul 2025): On 27 June 2025, the Respondents’ lawyer filed a notice of intention to cease to act. On 9 July 2025, the Respondents’ lawyer filed a notice of ceasing to act.

20    Application for First Respondent to be wound up (Jul 2025): I was informed at the hearing that there is an application for the First Respondent (a company) to be wound up. The winding up application is listed to be heard on 16 July 2025. The Applicants state that they still intend to continue against the Second Respondent.

21    Applicants’ proposed orders: Relevantly, the Applicants seek the following orders:

1.    By [insert time], the Applicants have leave to issue the subpoena to Shopify Commerce Singapore Pte Ltd (Shopify Singapore) provided to the Court on 7 July 2025 (Subpoena).

2.    Pursuant to r 10.44 of the Federal Court Rules 2011 (Cth) (Rules), the Applicants have leave to serve the Subpoena outside Australia.

3.    Personal service and service in accordance with the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters of the Subpoena be dispensed with.

4.    Pursuant to r 10.24, the Applicants have leave to effect service of the Subpoena on Shopify Singapore by:

(a)    creating a Shopify account online and completing all required fields, mandatory fields and declarations (including any mandatory signatures) described in paragraph [34] of the affidavit of Caitlin McCrum dated 7 July 2025 (McCrum Affidavit); and

(b)    after submitting a form with all the mandatory fields and declarations (including any mandatory signatures) and receiving an email from Singapore Shopify with the subject line “Shopify Legal Access Request: Attach supporting documentation”, replying to that email attaching a copy of the issued Subpoena.

5.    Pursuant to r 10.24, upon the Applicants satisfying the terms of order 4 above, the Subpoena is taken to have been personally served upon Shopify Singapore.

consideration

22    The application raises three issues: whether a subpoena should be issued to Shopify Singapore (see r 24.12 of the Federal Court Rules 2011 (Cth)); if so, whether leave should be given to serve that subpoena on Shopify Singapore in Singapore (see r 10.44); and, if so, whether an order should be made permitting substituted service of that subpoena (see r 10.24).

Whether subpoena should be issued (r 24.12; proposed order 1)

23    On the first issue, the information sought to be obtained by the draft subpoena is plainly relevant to the proceeding. Paragraph 1 of the subpoena sets out, in a self-contained manner, the information derived from the Respondents’ Shopify store accounts that the Applicants have sought by way of discovery and their notice to produce. The Applicants’ case is that para 2 of the draft subpoena sets out information relating to the Impugned Aftermarket Products, which is the subject of evidence in the proceeding.

    The Applicants say, among other things, that the documents sought are central to the causes of action pleaded by the Applicants (in particular trade mark infringement) as well as the relief (including damages and additional damages) sought against the Respondents. In relation to the documents sought in para 1 of the subpoena, it is relevant that the trial judge ordered that the Respondents make discovery of the documents listed in the Applicants’ Notice to Produce, as well as further material: see [13] above.

    The reason for now seeking the information in para 1 of the subpoena from Shopify Singapore directly is because of the difficulties that have arisen in obtaining that information from the Respondents: contrast the position in Bluetag Australia Pty Ltd v BCC Trade Credit Pty Ltd trading as Bond and Credit Co [2023] FCA 1459 at [14], [21] (Stewart J). In the case of all the information sought by the subpoena, it can be expected that information about those Shopify accounts will be in the possession of Shopify Singapore. Accordingly, the subpoena has a clear legitimate forensic purpose.

Leave to serve outside Australia (r 10.44; proposed order 2)

24    On the second issue (leave to serve outside Australia), r 10.44 of the Rules provides:

Any document other than an originating application may be served outside Australia with the leave of the Court, which may be given with any directions that the Court considers appropriate.

25    There is undoubted power to serve a subpoena on a person or entity outside Australia: Ceramic Fuel Cells Ltd (in liq) v McGraw-Hill Financial Inc [2016] FCA 401; (2016) 245 FCR 340 at [55] (Wigney J); Bluetag at [12]. However, the Court is required to exercise caution and restraint in cases involving the issue and service of a subpoena on a foreign addressee: Ceramic Fuel Cells at [59]. The relevant factors include: the nature of the subpoena; the nature of the particular proceedings and (in the case of a subpoena to produce documents) the importance of the documents to the issues in those proceedings; the attitude of the subpoenaed party (if known or ascertainable); the foreign country involved; and the law in, and attitude of, the foreign country regarding foreign subpoenas and whether they impinge upon the country’s sovereignty: Ceramic Fuel Cells at [59]; Bluetag at [12].

26    Another important consideration is that there is no ready means of enforcing a subpoena authorised to be issued and served on a foreign addressee where the cooperative machinery, whether executive or judicial, of the foreign country is not used for that purpose. In the absence of enforcement procedures, the order embodied by the subpoena is “a mere request couched in imperative terms”: Bluetag at [13], citing Stemcor (Australasia) Pty Ltd v Oceanwave Line SA [2004] FCA 391 at [12] (Allsop J). This factor is a discretionary reason not to issue a subpoena (rather than pointing to an absence of power), and is of less concern if the proposed recipient of the subpoena has indicated a willingness to provide the documents sought: Ceramic Fuel Cells at [61]; see University of New England v Boerner [2024] FCA 191 at [2], [4] (Wheelahan J).

27    Here, as explained below, the Shopify Singapore’s website sets out a procedure for responding to demands to provide documents. Further, the Singapore rules of court make express provision for the service of foreign legal process, on the following of certain procedures. I consider these matters in detail below, in considering the application for substituted service. I will therefore defer a conclusion on whether to permit a subpoena to be served outside Australia, and deal with it together with the conclusions on whether to make an order for substituted service.

Whether substituted service should be ordered (r 10.24; proposed orders 3-5)

28    The third issue is whether I should make an order under r 10.24 of the Rules permitting substituted service of the subpoena (cf proposed orders 3 to 5).

29    Rules r 10.24: Rule 10.24 of the Rules provides as follows for substituted service:

10.24 Substituted service

If it is not practicable to serve a document on a person in a way required by these Rules, a party may apply to the Court without notice for an order:

(a)     substituting another method of service; or

(b)     specifying that, instead of being served, certain steps be taken to bring the document to the attention of the person; or

(c)     specifying that the document is taken to have been served:

(i)     on the happening of a specified event; or

(ii)     at the end of a specified time.

Note:     Without notice is defined in the Dictionary.

30    Proposed order 5 would provide that, on the Applicants completing the steps in proposed order 4, the subpoena would be taken to have been served personally on Shopify Singapore (cf r 10.24(c)).

31    “Not practicable”: The precondition to engaging r 10.24 is that it is “not practicable” to serve a document on a person in the way required by the Rules. This requirement was explained by Wheelahan J in Boerner as follows:

    An applicant for orders for substituted service is required to demonstrate that it is not sensible or realistic to effect personal service, even though it may be possible or feasible to do so. It is not necessary to go so far as to demonstrate that there is an inability to effect personal service or that it would be extraordinarily difficult to do so. Further, there must be a proper evidential basis upon which to conclude that in all probability the mode of substituted service that is proposed will bring the relevant documents to the attention of the party to be served: Boerner at [7], quoting Commissioner of Taxation v Caratti (No 2) [2018] FCA 1500 at [10] (Colvin J). (I note it is not necessary to adduce evidence of a failed attempt to effect personal service, although it is relevant: see Taylor v Hatzipapas, in the matter of Hatzipapas [2023] FCA 153 at [13] (Goodman J).)

    The term “not practicable” is also to be interpreted and applied in a way that best promotes the overarching purpose, which is to facilitate the just resolution of disputes according to law, as quickly, inexpensively, and efficiently as possible: Boerner at [8], citing Federal Court of Australia Act 1976 (Cth) s 37M.

32    Rule 10.24 not excluded by r 10.49: I note that r 10.49 of the Rules makes specific provision for the Court to make an order for substituted service if “service on a person outside Australia, in accordance with … the Hague Convention [meaning the Convention on the Service Abroad of Judicial and Extra Judicial Documents in Civil or Commercial Matters [2010] ATS 23] or the law of a foreign country, was not successful”. This rule only operates once an attempt at service has been unsuccessful, and therefore could not be relied on in this case. However, this Court has held that r 10.49 does not prevent r 10.24 from being relied on to order substituted service outside Australia: The Noco Company v Hong Kong Haowei Technology Co Ltd [2023] FCA 533 at [17] (Moshinsky J); Boerner at [6]; Wu v WYQ Family Pty Ltd [2024] FCA 511 at [6]-[7] (Feutrill J); Kazar (liquidator) v Doshi, in the matter of PF1 Solutions Pty Ltd (in liq) [2024] FCA 577 at [8] (Goodman J); see also Australian Information Commissioner v Facebook Inc [2020] FCA 531 at [65]-[66] (Thawley J).

33    Usual method of service (Div 10.4 to 10.6): Divisions 10.4 to 10.6 of the Rules set out different methods for service of process outside Australia.

34    Div 10.6 (Hague Convention): Relevantly to this case, Div 10.6 of the Rules provides for service under the Hague Convention (in particular Art 5). Unless orders for substituted service are made, Div 10.6 applies to service of Australian civil judicial process in Singapore, because Singapore acceded to the Hague Convention, with effect from 1 December 2023 (and is thus a “Convention country”): see r 10.63(1), read with r 10.61.

35    The process for service under Div 10.6 is as follows.

    By r 10.64(1), a person may apply to a Registrar of this Court, in the Registrar’s capacity as a forwarding authority, for a request for service in a Convention country. That request must comply with the requirements of r 10.64(2) to (5), such as a draft request be in accordance with Form 25, and a summary of the document to be served be in accordance with Form 26.

    By r 10.65, if the Registrar is satisfied that the application and its accompanying documents comply with r 10.64, the Registrar must sign the request for service abroad, and forward two copies of the relevant documents to either the “nominated additional authority” for the Convention country (if the applicant so requests), or the “Central Authority” for the Convention country (in any other case).

    The Convention country then arranges for service of the document (discussed next). If the document is served in the Convention country, the Registrar receives a certificate of service. The original of the certificate is filed in the proceeding, and a copy is sent to the applicant’s lawyers (r 10.66).

36    Service requirements in Singapore under the Hague Convention: The McCrum affidavit sets out the following information about service requirements in Singapore, obtained from the official website for the Hague Conference on Private International Law:

(a)    Singapore requires any service request made under the Hague Convention to be sent to the Ministry of Law of Singapore, together with (a) the document to be served; (b) a summary of the document to be served, in accordance with Part 3 of the “Model Form” (set out in the Annex to the Convention); and (c) an English translation of the documents mentioned in (a) and (b), if they are not in English.

(b)    Singapore requires these documents to be sent to the Ministry of Law in one of the following ways:

•    Via e-mail to the Ministry of Law’s e-mail address, as long as one physical set of the request and documents referred to in (a), (b) and (c) above is also received by the Ministry of Law. Any request sent via e-mail will not be capable of execution unless one physical set of the documents is also received.

•    Via physical delivery to the Ministry of Law’s address. The requisite hard copy documents must be in duplicate.

(c)    Subject to any written law which provides for the manner in which documents may be served on a body corporate, service of the document will be effected by a process server: (i) by leaving the document, and a copy of the translation of the document, with the person to be served; (ii) by a method of service authorised by the Singapore Supreme Court rules for the service of analogous documents issued by the Court; or (iii) by a particular method requested by the applicant, unless the method is inconsistent with any law for the time being in force in Singapore.

37    The Hague Conference on Private International Law website does not contain any information on how long the procedures set out above for service of foreign legal process in Singapore are likely to take.

38    Singapore has declared that it is opposed to the direct service of judicial documents upon persons within its territory through foreign diplomatic or consular agents, unless the documents are to be served upon a national of the State from which the documents originate (cf Art 8 of the Hague Convention). In addition, Singapore has declared that it objects to the service of judicial and extrajudicial documents within its territory by the methods of transmission set out in Art 10 of the Hague Convention (sending documents directly by postal channels).

39    Singapore Supreme Court rules: It is also relevant to consider the provision made in the Rules of Court 2021 (Sing) for the service of foreign legal process, set out in Order 64 of those Rules:

(a)    Order 64 r 2 provides for service of foreign legal process pursuant to a letter of request from the foreign court or tribunal sent to the Singapore Minister, that is sent by the Minister to the Supreme Court with an intimation that it is desirable that effect should be given to the request.

(b)    Order 64 r 3 provides that any legal process in connection with civil proceedings pending in a court or tribunal of a foreign country “may be effected by a method of service authorised by these Rules for the service of analogous process issued by the Court” (O 64 r 3(1)-(2)). However, O 64 r 3 does not apply “where Rule 4A applies or is invoked” (O 64 r 3(4)).

(c)    Order 64 r 4 provides for service of foreign legal process under a Civil Procedure Convention (other than the Hague Convention).

(d)    Order 64 r 4A (added in December 2023) provides for service of foreign legal process in accordance with Art 5 of the Hague Convention.

•    Rule 4A applies in relation to the service under Art 5 of the Hague Convention of any process required in connection with civil proceedings in respect of a civil or commercial matter instituted in a court or Tribunal of a Contracting State, on a person in Singapore (O64 r 4A(1)). Rule 4A prevails over any other rule in O 64 to the extent of any inconsistency (O 64 r 4A(2)).

•    A request under r 4A is made to the Singapore Minister, and must be accompanied by the documents set out in O 64 r 4A(4). If the Minister is satisfied that the request complies with O 64 r (3) and (4), the Minister must forward the request to the Supreme Court with an intimation that it is desirable that effect be given to the request.

•    Service of the document is effected by a process server, using one of the methods described in sub-rule 4A(9) (such as leaving the document with the person to be served) (see O 64 r 4A(9)-(10)). After service has been effected, the Singapore Registrar gives the applicant (i.e. the overseas judicial authority) a sealed certificate of service (O 64 r 4A(11)(b) and (12)(a)).

40    Applicants’ proposal for substituted service: The Applicants propose that service on Shopify Singapore be effected by using a procedure mentioned on the Shopify website (the domain ). The Shopify procedures for responding to requests for access to documents is set out in the McCrum affidavit as follows.

41    Shopify Legal Requests Page: The Shopify website has a page titled “Guidelines for Legal Requests for Information” (Legal Requests Page), last updated 26 April 2024.

(a)    The Legal Requests Page sets out the following principles about how Shopify responds to legal requests for information held by Shopify:

*    When a third party requests identifiable non-public information (such as personal or financial information about a Merchant), we will only share this information in response to valid and enforceable legal process in accordance with the remainder of the provisions of this Whitepaper, and we will take appropriate steps to minimize the amount of information that we disclose to satisfy the request. We will generally refuse to disclose non-public information if the legal request or court order is addressed to the wrong Shopify entity or address, or is issued by an entity that lacks jurisdiction over the Shopify entity that has possession of the responsive information.

*    We will notify affected individuals and entities before we produce information about them unless we are legally prohibited from doing so.

*    When a third party requests information, we will only provide the specific information sought in the request. …

*    When a third party requests information about a Merchant’s Customers, we will first instruct the requestor to obtain that information directly from the Merchant, unless:

*    the requestor cannot obtain the data directly from the Merchant due to the Merchant being under a criminal investigation that would be jeopardized by the Merchant being made aware of the request; or

*    The Merchant has been terminated by Shopify for fraudulent activity or for otherwise violating our Terms of Service and no longer has access to their Shopify account. (emphasis added)

(b)    The Legal Requests Page states (under the heading “How to Submit a Legal Request”) that legal requests for information must be submitted online through the Legal Access Request Form. It sets out the following process for submitting a request:

1.    Create an account, or sign in if you already have one.

2.    Fill in the required fields [referring to the “Shopify Legal Requests for Information Whitepaper” for more details on the types of information held, and which Shopify entity controls that information]

3.    Complete the mandatory fields, declarations, and electronic signature.

4.    After submitting the form, you will receive an email with the subject line “Shopify Legal Access Request: Attach supporting documentation”. You must respond to this email with the supporting document(s) attached to complete your submission. Shopify will notify affected individuals and entities before we produce information about them unless you specify a statute, law, or regulation, or provide a court order that legally prohibits us from doing so.

(c)    The Legal Requests Page states that, after a request is submitted through the Legal Access Request form, “we will review the attached document to confirm that you have (1) sought information from the correct entity and address, (2) provided a subpoena, court order, or other document that legally requires us to respond (i.e., jurisdiction exists and you have the right to obtain the information under applicable law), and (3) identified a statute, law, or regulation or provided a court order that legally prohibits disclosure if you specified that your request should be kept secret”. (emphasis added)

42    Shopify Whitepaper: The “Shopify Legal Requests for Information Whitepaper” (last updated April 2024) sets out the following under the heading “What Types of Information Does Shopify Possess?”.

(a)    A person requesting information must specify one of Shopify’s corporate entities and the correct address for the relevant entity. The proper entity often depends on the location of the specific Merchant or Partner that is the subject of the request. The Whitepaper also states “[p]lease also ensure that the requesting entity has jurisdiction to compel the targeted Shopify entity to produce the information” (referring to what appears to be a separate webpage on “Jurisdiction”). (emphasis added)

(b)    Under the heading “Store Information”, the Whitepaper states the following information may be included:

Non-public information relating to a specific store, such as store revenues, countries into which a store has sold, invoices for Shopify services rendered, method of payment for Shopify services, connected bank account(s), product lists, store transactions (without Customer information), payout information (if using Shopify Payments), tax documents, contracts between the store and Shopify, and apps installed on a store.

The Whitepaper states that this information will be possessed by the Shopify entity that processes information in the Merchant’s location.

43    The Applicant’s draft subpoena would provide for the subpoena to be returnable on 23 July 2025, and to be served by no later than 16 July 2025 (see r 24.13(8) of the Rules, which sets out the ordinary rule that the last day for service of a subpoena is five days before the earliest day on which the addressee is required to comply with the subpoena).

44    Whether usual method of service is “not practicable”: In considering the application for substituted service under r 10.24, it is necessary to consider two issues separately: (1) whether it is “not practicable” to serve the subpoena on Shopify Singapore in the way required by the Rules; and, if so, (2) whether it is appropriate to make the particular order for substituted service sought by the Applicants. I will consider issue (1) next; however, a favourable finding on that issue does not necessarily mean that the orders should be made. I will then deal with issue (2), together with whether to grant leave to serve a subpoena outside Australia.

45    On issue (1), there are good arguments that the usual method of service under Div 10.6 of the Rules is not practicable, as that term is explained in Boerner. The hearing date of 19-21 August 2025 is imminent; a little over five weeks from today. The trial judge has ordered that a Court Book be prepared by 18 July 2025. On those orders, the Applicants’ written opening submissions are due to be filed on 25 July 2025.

46    There is no specific evidence before the Court on how long the process for service on a company in Singapore in accordance with the Hague Convention will take. However, it can be expected that this process would take some time. I am prepared to accept that, if the usual process for service is followed, it is very likely that the information sought by the Applicants (which they have been attempting to obtain from the Respondents since at least September 2024) will not be obtained from Shopify Singapore in time to be used for the trial. The meaning of “not practicable” is informed by the overarching purpose in s 37M of the Federal Court Act of facilitating the just resolution of disputes according to law, as quickly, inexpensively, and efficiently as possible: Boerner at [8]-[9].

47    I note that Shopify Singapore has stated that it will consult with its Merchants before releasing any information: see [41](a) above. That practical issue arises, however Shopify Singapore were served. I note further that the Respondents’ lawyer has recently ceased to act, and the Applicants have stated that the First Respondent is subject to a winding up application: see [19]-[20] above. The significance of these matters, if any, for the hearing of this proceeding will be determined by the trial judge.

48    In any event, even if it is “not practicable” to serve Shopify Singapore under the usual rules, there is still the question whether the particular form of order for substituted service sought is appropriate (issue (2) above). That issue is considered next.

Conclusions on service of subpoena outside Australia, substituted service

49    It is now possible to determine whether to grant leave to issuing a subpoena outside Australia, together with whether to make orders for that service to be by way of substituted service. The matters bearing on whether to make these two orders are essentially the same; namely, whether the order is likely to have any practical utility, and whether the order would be contrary to international judicial comity.

50    Would a subpoena be complied with? The first matter is whether I can be satisfied that serving a subpoena outside Australia (whether under the Hague Convention, or using the process on Shopify Singapore’s website) would achieve any useful result. It could not facilitate the just resolution of disputes to make an order that is likely to have no practical effect (cf Federal Court Act s 37M).

    The Legal Requests Page and the Shopify Whitepaper both state that Shopify will only respond to legal requests for information if the issuing body has jurisdiction to compel the production of information: see [41](a) and (c) and [42](a) above. As noted, an Australian court does not have jurisdiction to compel the production of documents from a foreign company, without the assistance of the cooperative machinery of the local government, whether executive or judicial: see [26] above.

    However, the Shopify Whitepaper states the following exception to its usual position that Shopify will only comply with legal process issued by a court of the country where the Shopify entity is located:

As an exception, we may also provide Merchant information in a Shopify entity’s possession if the requesting entity has jurisdiction over a Merchant, and the information would be producible directly by that third party. (emphasis in original)

I accept that the current situation (a subpoena to obtain information from Shopify Singapore about the accounts of Respondents who are subject to the jurisdiction of this Court) would seem to come within this stated exception.

51    Even so, some concerns remain. The Shopify Whitepaper does not state that Shopify “will” provide information in response to a subpoena issued by a court that has jurisdiction over a Merchant, but that it “may”. And at the level of practicalities, there is no evidence before the Court as to whether the website is monitored by Shopify Singapore, or as to how long it takes to deal with requests made using that process.

52    Breach of international judicial comity: The second relevant matter is that service of a subpoena issued by an Australian court on a Singapore company (under the Hague Convention and especially if using substituted service) would prima facie be contrary to international judicial comity.

53    Unenforceability of subpoena: As noted, this factor is a discretionary reason for not issuing a subpoena: see [26] above. The likely limited utility and unenforceability of subpoenas issued on a foreign company is a “weighty factor”: Kraft Foods Group Brands LLC v Bega Cheese Limited (No 4) [2018] FCA 1055 at [8] (O’Callaghan J), quoting Ceramic Fuel Cells (in liq) v McGraw-Hill Financial Inc (No 2) [2016] FCA 1059; (2016) 245 FCR 362 at [33] (Wigney J). That consideration is not limited to documents going to matters of government, or banking records.

54    Initially, I thought this concern would be allayed if the subpoena were served in accordance with the Hague Convention. But, on further reflection, the subpoenas in Ceramic Fuel Cells were served in accordance with that Convention (see Ceramic Fuel Cells at [101]), and yet Wigney J engaged in a detailed consideration of whether that course would be an unacceptable breach of international judicial comity. And the concerns raised in Kraft Foods (No 4) and Stemcor do not arise from the form of service, but the fact that a subpoena is a coercive order, and there are inherent difficulties with enforcing that type of order over a non-party body that has not submitted to the jurisdiction of the issuing Australian court: see Kraft Foods (No 4) at [9]; Stemcor at [12]. The inability to enforce a coercive order served outside Australia is the reason for the caution and restraint urged by Wigney J in Ceramic Fuel Cells at [55]. Different issues arise with serving originating process outside Australia: see, for example, Brighton Automotive Holdings Pty Ltd v Honda Australia Pty Ltd [2021] VSC 757; (2021) 65 VR 146 at [101]-[102] (Button J), and the cases cited.

55    The Applicants submit that it is sufficient that Shopify Singapore has expressed a general willingness through its website to produce information if asked (albeit not specifically about this case), and it is relevant that they have not expressed opposition. However, Wigney J held in Ceramic Fuel Cells at [61] that the problems of enforceability will not be determinative if the recipient “indicates a willingness to comply with the subpoena if issued and served” (emphasis added). At the very least, this case is different from other cases where the recipients had expressed a willingness to provide the particular information sought: see Boerner at [2]; Ceramic Fuel Cells at [86].

56    Applicants have not asked Shopify Singapore for the information: It also weighs against issuing a subpoena on a foreign company (however it is served) that the Applicants have not been in contact with Shopify Singapore to ascertain whether that company would be prepared to provide the documents sought: see Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 890 at [21]-[22] (Edelman J). It is true that Shopify’s Legal Requests Page does state that legal requests for information “must” be submitted online, but it is still incumbent on the Applicants to ask Shopify Singapore for the information before seeking to engage the coercive powers of this Court.

57    Conclusions on service outside Australia: The two factors set out above (the unenforceability of any subpoena, and the fact that the Applicants have not asked Shopify Singapore for the information) outweigh the factors relied on by the Applicants; principally, the non-contentious nature of the documents; the importance of those documents to the case; and the importance of keeping the current hearing date if possible. Ceramic Fuel Cells (as explained in Kraft Foods (No 4)) urges caution and restraint, and the inability to enforce any subpoena that is issued is a weighty consideration, unless the recipient has indicated a willingness to provide that information (and not just a general willingness to consider legal requests for information generally).

58    Conclusions on substituted service: The concerns about international judicial comity identified above would be even greater if the subpoena were to be served by way of substituted service.

    More generally, there is an applicable agreed regime for service outside the jurisdiction; namely the Hague Convention. That agreed regime is subverted where jurisdiction is exercised permitting a party to substitute an alternative form of service: Lin v Google LLC [2021] FCA 1113 at [38] (Wigney J); Yemini v Twitter International Co [2022] FCA 318 at [5] (Mortimer J).

    Here, the Singapore rules of court suggest a particular reluctance to permit service of foreign legal process in Singapore outside Art 5 of the Hague Convention, when that Convention applies. As noted, the more streamlined process contained in O 64 r 3 does not apply where r 4A applies or is invoked (O 64 r 3(4)). And O 64 r 4A applies to service of civil legal process issued by a court in a country that is party to the Hague Convention (O 64 r 4A(1)). (The reference in O 64 r 3(4) to O 64 r 4A being “invoked” appears to be a reference to the situation where a party has a choice to serve under the Hague Convention or another convention relating to service: see O 64 r 4.) As noted, Singapore does not permit service by post under Art 10 of the Hague Convention (see [38] above), which provides a further indication that the process in O 64 r 4A is meant to be the applicable process.

59    I note that McEvoy J held in Georges (Liquidator), in the Matter of SIRA Pty Ltd (In Liquidation) [2022] FCA 768 that international judicial comity did not prevent the service in Singapore of summons under the Corporations Act 2001 (Cth) requiring persons to attend compulsory examinations and produce documents. His Honour relied particularly on O 64 r 3 of the Singapore court rules in reaching that conclusion: Georges at [12]-[13]. It appears that his Honour’s attention was not drawn to O 64 r 4: Bluetag at [18]. The Singapore court rules have since been amended to make clear that O 64 r 3 does not apply to service of foreign legal process from a country that is party to the Hague Convention. And, as explained, cases such as Ceramic Fuel Cells and Kraft Foods (No 4) indicate that international judicial comity concerns arise with the service outside Australia of subpoenas, even when served in accordance with the Hague Convention.

60    Summary: For these reasons, I am not prepared to make orders for the subpoena to be served on Shopify Singapore, whether that subpoena is to be served according to the Hague Convention (proposed order 2) or by uploading this Court’s orders and other documents onto that company’s website (proposed orders 3-5).

    I accept that the Court has power to issue a subpoena to an entity outside Australia. However, it is not clear that Shopify Singapore would comply with a subpoena (as the website states only that Shopify “may” provide information if that information could have been sought directly from the merchant). Further, ordering service of a subpoena would be contrary to international judicial comity, as there would be no means of enforcing any subpoena that is issued. Further, the Applicants have not contacted Shopify Singapore to ask whether it would be prepared to produce the documents sought. These discretionary factors provide sufficient reason not to issue a subpoena at all, however it is to be served.

    The arguments against making an order for substituted service are even stronger. I accept that there is power to order substituted service of a subpoena to be served outside Australia. I also accept that to require the subpoena to be served under the usual rules in Div 10.6 of the Rules is likely to mean that the information sought will not be available in time for the scheduled hearing dates of 19-21 August 2025 (and so service in the usual way is “not practicable” within r 10.24 of the Rules). However, it would subvert the agreed process for service under the Hague Convention if there were to be an order for substituted service.

conclusion

61    For these reasons, I would not make any of orders 2 to 5 sought by the Applicants. As there is no point in making order 1 by itself, the application will be dismissed.

Associate:

Dated:    11 July 2025