Appraisal Property Management Sdn Bhd v Singham Sulaiman Sdn Bhd (W-02(IPCv)(W)-2580-12/2017)

1 IN THE COURT OF APPEAL AT PUTRAJAYA (APPELLATE JURISDICTION) CIVIL APPEAL NO. W-02(IPCv)(W)-2580-12/2017

1. BETWEEN APPRAISAL PROPERTY MANAGEMENT SDN BHD (Company No. 906133-M)

2. JLL PROPERTY SERVICES (MALAYSIA) SDN BHD (Company No. 640511-U)

3. JONES LANG WOOTTON LTD (Company No. UK 01081258) … APPELLANTS AND SINGHAM SULAIMAN SDN BHD (Company No. 78217-X) …RESPONDENT (In the matter of the High Court of Malaya at Kuala Lumpur (Commercial Division) Suit No.: WA-22IP-5-02/2016 Between Singham Sulaiman Sdn Bhd (Company No. 78217-X) …Plaintiff And

1. Appraisal Property Management Sdn Bhd (Company No. 906133-M)

2. JLL Property Services (Malaysia) Sdn Bhd (Company No. 640511-U) …Defendants) Consolidated by Order of the High Court dated 12-7-2016 with: - (In the matter of the High Court of Malaya at Kuala Lumpur 2 (Commercial Division) Suit No.: WA-22IP-31-06/2016) BETWEEN Jones Lang Wootton Ltd (Company No. Uk 01081258) … Plaintiff And Singham Sulaiman Sdn Bhd (Company No. 78217-X) …Defendant) CORAM: HAMID SULTAN BIN ABU BACKER, JCA YEOH WEE SIAM, JCA HANIPAH BINTI FARIKULLAH, JCA JUDGMENT Introduction 1. This judgment is delivered pursuant to section 42 of the Courts of Judicature Act 1964 (JCA) as our sister Yeoh Wee Siam has since retired. This is a unanimous decision by the remaining members of the panel who heard this appeal.

2. This is an appeal by the defendants from the judgment of the learned Judicial Commissioner (JC) on 7.3.2018 whereby he entered judgment against the defendants on the plaintiff’s claim for the tort of 3 passing off of their real estate services and dismissed the defendants’ counterclaim and expungement of the suit to remove Jones Lang Wootton Registered Trade Marks from the Register.

3. These appeals arise from two consolidated suits premised on the tort of passing off (and counter passing off) regarding real estate services and expungement suit to remove Jones Lang Wootton Registered Trade Marks from the Register.

4. In the first suit (Civil Suit No. WA-22IP-5-02/2016) (1st Suit), Singham Sulaiman Sdn Bhd (SSSB) claims that Appraisal Property Management Sdn. Bhd. (APM) and JLL Property Services (Malaysia) Sdn. Bhd (JLLP) have committed the tort of passing off their real estate services as those of SSSB under the names of “Jones Lang LaSalle” and/or “JLL” (SSSB’s Claim) while JLLP counterclaims against SSSB (JLLP’s Counterclaim) based on the tort of passing off, namely SSSB has passed off its real estate services as being associated with the services offered by Jones Lang LaSalle group of companies (JLL Group).

5. The evidence shows that SSSB uses the following trademarks (JLW Marks) in its real estate business-

1. “Jones Lang Wootton” name; 4

2. Jones Lang Wootton composite mark has been registered by SSSB in the Register of Trade Marks (Register) for services in Class 36 (Jones Lang Wootton Registered Trade Mark);

3. “Jones Lang” name; and

4. “JLW” mark.

6. In the second suit, (Civil Suit No. WA-22IP-31-06/2016) (2nd Suit), Jones Lang Wootton Ltd (JLWL) applies to court under section 45(1)(a) of the Trade Marks Act 1976 (TMA) to remove Jones Lang Wootton Registered Trade Marks from the Register (which is used and registered by SSSB for service in Class 36) as JLWL claimed that that was wrongfully registered by SSSB contrary to the terms of a Deed of Sub-Licence of Name dated 6.7.1993 (1993 Sub-Licence Agreement) and a Deed of Covenant dated 1.9.1982 (Deed of Covenant) signed by SSSB.

7. After a full trial, the learned JC allowed SSSB’s claim in part and dismissed JLLP’s counterclaim and the 2nd Suit. Aggrieved with the decision, the defendants now appeal against the High Court decision to the Court of Appeal. 5

8. For convenience, we will refer to the parties in this judgment as they were referred to in the High Court. The Background 9. With the introduction, we now turn to the facts of the instant case and how it was decided in the Court below as set out by the learned JC in great detail in his grounds of judgment.

10. Jones Lang Wootton started real estate business as a partnership in London in 1783 (London Firm). The London Firm expanded its real estate business worldwide, including Malaysia, by operating as partnerships within the countries in question.

11. “LaSalle Partners” originated in the United States of America (USA) in 1968.

12. Mr. William George Wicks (Mr. Wicks) carried on business as Chartered Surveyors, Valuers and Property Manager in Kuala Lumpur under the name and style “Wiks & Partners”. By way of a Sale and Purchase Agreement dated 8.10.1974 [SPA (1974)], Mr. Wicks sold his business, name and goodwill in Wicks & Partners to the then partners of “Jones, Lang, Wootton, St. Helier, Jersey, Channel Islands” (Jersey Partners); and “Jones, Lang, Wootton, Sydney, 6 Australia” (Australian Partners). Clause 5 of the SPA (1974) provided that the Jersey and Australian Partners would carry on real estate business under the name and style “Jones, Lang, Wootton incorporating Wicks & Partners” (Malaysian Firm).

13. A partnership agreement regarding the Malaysian Firm was entered into on 1.3.1977 [Partnership Agreement (1977)]. According to the Partnership Agreement (1977) –

(ii) clause 26 stated that the Malaysian Firm shall execute an irrevocable power of attorney (PA) in favour of the Australian partners to execute “as and when necessary” the relevant form for the change of the name of the Malaysia Firm. Such a PA had been granted by SP1 on 1.3.1977 [PA (1977)]. The second recital to the PA (1977) reiterated clause 25 of the Partnership Agreement (1977).

14. On 8.6.1979, the partners of the Malaysian Firm signed a partnership agreement with Encik Sulaiman bin Mustafa (Encik Sulaiman) to admit Encik Sulaiman as a new partner in the Malaysian Firm [Partnership Agreement (1979)]. Clauses 24 and 25 of the Partnership Agreement (1979) are similar to clauses 25 and 26 7 respectively of the Partnership Agreement (1977). Pursuant to clause 25 of the Partnership Agreement (1979), Encik Sulaiman granted an irrevocable PA on 15.8.1979 [PA (1979)]. The second recital to the PA (1979) repeated clause 24 of Partnership Agreement (1979).

15. Valuers and Appraisers Act 1981 (VAA) came into force on 6.2.1981. Initially, VAA only required the registration of valuers and appraisers by the Board of Valuers and Appraises (Board). At its inception, VAA did not require estate agents to be registered with the Board.

16. On 19.5.1982, a deed of license [License (1982)] was entered into by the then proprietary partners of the London Firm (London Proprietors) and Australian Partners whose names were listed in Part 2 of the First Schedule to the License (1982) (Pacific Proprietors). In clause 1 of the License (1982), the London Proprietors gave a licence to the Pacific Proprietors to licence and supervise on behalf of the London Proprietors, the use of the Jones Lang Wootton name and JLW mark in six countries (including Malaysia). 8

17. The following agreements, among others, were executed on 1.9.1982:

(1982) did not confer on SSSB any title, right or interest in Jones Lang Wootton name or JLW mark which shall remain the property of the London Proprietors;

(ii) a Sale and Purchase Agreement wherein SSSB purchased the interest of the Malaysian partners in the Malaysian Firm [2nd SPA (1982)]. Clause 9 of the 2nd SPA (1982) is similar to clause 9 of the 1st SPA (1982);

(iii) by a “Deed of Sub-Licence of Name” [Sub-Licence (1982)], the Pacific Proprietors granted an exclusive sub-licence to SSSB to use Jones Lang Wootton name and JLW mark for a term expiring on 1.12.1990 or “such later date as may be mutually agreed”. According to clause 3(a) of the Sub-Licence (1982), SSSB expressly acknowledged that the Jones Lang Wootton name and JLW mark were the property of the London Proprietors; and

(iv) a deed of covenant [Covenant (1982)] was entered into by-

18. With effect from 7.9.1984, the Valuers and Appraisers (Amendment) Act 1984 (Act A598) amended VAA. Act A598, among others, renamed VAA as Valuers, Appraisers and Estate Agents Act 1981 (VAEA) and required the registration of estate agents with the 10 Board. Act A598 also renamed the Board as the Board of Valuers, Appraisers and Estate Agents.

19. On 6.7.1993, a Deed of Sub-licence of Name [Sub-Licence

(1993)] has been agreed between JLW Pacific Ltd. (JLWP) and SSSB. Clause 6 of Sub-Licence (1993) has provided that, among others, if the licence between the London Proprietors and the Pacific Proprietors is terminated or is not renewed for any reason, JLWP and its “assigns or successors shall endeavor” to ensure that a new sub-licence is granted to enable SSSB to continue using Jones Lang Wootton name and JLW mark “on terms no less favourable” to SSSB [Clause 6 Sub-Licence (1993)].

20. In 1999, LaSalle Partners acquired Jones Lang Wootton partnerships (except in Malaysia). Thereafter the merged entity is known as Jones Lang LaSalle.

21. By a series of assignments dated 8.3.1999, the London Proprietors have assigned all Intellectual Property (IP) rights (including trademarks and goodwill) in, among others, Jones Lang Wootton name and JLW mark, to JLWL.

22. On 26.2.2002, SSSB entered into a “Global Operating Framework” (GOF) with JLLPC. On 24.8.2006, SSSB applied to 11 register Jones Lang Wootton Registered Trade Mark (SSSB’s Trade Mark Application) which was allowed by the Registrar.

23. The GOF was terminated by JLLPC by way of JLLPC’s letter dated 17.1.2012 to SSSB (JLLPC’s Termination Notice). JLLPC’s Termination Notice gave 12 months’ notice of the termination of GOF, and GOF was therefore was terminated with effect from 18.1.2014.

24. In 2014, JLL Group undertook a rebranding exercise and is now known only as JLL. JLL Group now uses a JLL composite mark. Decision Of The High Court In the Court below, and when the matter was first set for trial before the Court, the agreed issues for determination are as follows:

(1) Whether APM and JLLP committed the tort of passing off if they offered and provided real estate services in Malaysia under the name of “Jones Lang LaSalle” and/or “JLL”.

(2) Whether SSSB committed the tort of passing off by associating itself with Jones Lang LaSalle after the termination of the GOF.

(3) Whether the SSSB’s registered trade mark (Registration No.06015146) ought to be expunged pursuant to Section 45 and Section 37 of the Trade Marks Act 1976 (TMA). 12

(4) All matters collateral to the above issues.

25. As we have stated earlier, after a full trial, the High Court allowed the plaintiff’s claim in the first suit and dismissed the defendant’s counterclaim. The High Court also dismissed the defendant’s claim in the second suit to expunge the Jones Lang Wootton Registered Trade Marks by the plaintiff.

26. At this stage, we do no more than set out a summary of the decision of the High Court which is as follows: 1) SSSB’s claim should be allowed against APM due to APM’S failure to adduce evidence in the 1st Suit-

(1993); and

28. Following the oral hearing before us on 23 August 2018, this Court directed counsels for both parties to prepare further written submissions focussing more precisely on the question whether the trial was miscarried in the court below on account of whether undue focus was placed by the learned JC on the issue of alleged illegality and the collateral matters arising therefrom. 16

29. Learned counsel for the defendants argued that the learned JC has embarked on a lengthy side-inquiry into several collateral matters to determine the issue of illegality. This was regarding the examination of the prospects of lifting the corporate veil of the defendants and, whether for that purpose, he should invoke the special powers given to Judges at a trial under section 165 of the EA to compel the production of documents by a party.

30. In this connection, the learned counsel for the defendants argued that the learned JC ordered the production of a loan document involving JLLP and thereafter embarked on an examination of the document and the examination of a key witness for the defendants (SD4) on the purpose and effect of the loan transaction in which the defendants’ counsel stressed had no relevance to the trade mark dispute between the parties.

31. We have summarized the defendants’ complaint about the approach adopted by the learned JC. In contrast, learned counsel for the plaintiff developed his submissions on this issue in the following manner. He contended that the illegality point had no impact on the defence of APM and JLLP in the first suit. The only finding on illegality pointed out by the learned counsel for the plaintiff in his written 17 submission is at paragraph 104 of the learned JC’s grounds of judgment, where the learned JC said this: “In any event, even if JLLP’s Counterclaim has any basis, I accept Datuk Seri Gopal’s submission that due to public policy, the court will not come to the aid of JLLP in view of the illegality – please see the opinion of the Privy Council delivered by Lord Denning in Chettiar v Chettiar [1962] MLJ 143, an appeal from Malaysia.”

32. It was also submitted for the plaintiff that in a passing off case, the conduct of a litigant in relation to his opponent as to the way in which he came to conduct his business is a relevant consideration. A defendant who has no right to be carrying on business in this country may be regarded as having tainted hands. A defendant is not entitled to succeed upon a false case. In the present suit, the defendants (APM and JLLP) were putting a case on the basis that they were independent entities and therefore qualified persons. Further and more primarily, the defendants practise fraud upon a public authority to be present in this country.

33. In the words of learned counsel for the plaintiff, the defendants are no different from illegal immigrants. Learned counsel for the plaintiff, stressed to the court that as a matter of public policy, the learned judge was correct in refusing to permit the APM and JLLP to 18 succeed. Further, learned counsel for the plaintiff argued that this position was recognised by the Privy Council in Chettiar v Chettiar [1962] MLJ 143; and Suntoso Jacob v Kong Miao Ming [1984] 2 MLJ 95.

34. We have carefully read the judgment of the trial judge. We would say straightaway that we find that the learned JC had addressed his mind on many collateral issues, before he embarked on the merits of the case relating to passing-off; counter passing-off and the expungement suit. These issues, inter alia, are as follows:

(1) Application of Section 165 of the EA;

(2) Whether court should lift the corporate veil;

(3) Whether JLLP has breached or unlawfully circumvented section 23 of VAEA (“alleged illegality”). Application of Section 165 of the EA

35. We begin with the judgment on the application of section 165 of the EA by the learned JC. It is observed that during the defendants’ case, SD4, the defendants’ last witness, gave evidence, inter alia, that Sovereign Asia Properties Inc. (SAP), a Mauritius Company, has given an interest-free loan of RM1,269,900.00 to AHCM Holdings Sdn Bhd (AHCM) (SAP’s Loan). During cross-examination of SD4, learned 19 lead counsel for SSSB, applied for a court order under section 165 of the EA (Section 165 Application) for JLLP to produce all documents relating to SAP’s Loan (AHCM Documents). The Section 165 Application had been strongly opposed by the defendants based on the following grounds:

(1) AHCM Documents were not relevant to the 2 Cases. Accordingly, the Section 165 Application was a fishing expedition to bolster unlawfully SSSB’s Claim against JLLP. Learned counsel for the defendants further contended that the Section 165 Application was filed with a collateral purpose and constituted an abuse of court process;

(2) SSSB should have applied for discovery of the AHCM Documents before the commencement of the trial in the 2 Cases pursuant to O 24 rr 3 or 7 of the RC;

(3) SSSB had closed its case and should not be allowed to re-open it; and

(4) AHCM Documents are confidential and should not be disclosed to SSSB.

36. After hearing objections from learned counsel for the defendants, the learned JC had allowed the Section 165 Application (Production Order) for the following reasons:

(1) AHCM Documents are relevant to the 2 cases as follows: 20

(2) As AHCM Documents are relevant to the 2 case, the Section 165 application is not-

(3) there is no delay on SSSB’s part in making the Section 165 Application. This is because the defendants only adduced Bundle T (containing, among others, documents concerning JLLP) on 14.4.2017, after SSSB had closed its case on 8.3.2017. During cross-examination of SD4 on 18.4.2017 based on, among others, Bundle T, SSSB’s 21 learned counsel then became aware of the existence of AHCM Documents. Hence, the making of the Section 165 Application; and

(4) the fact that JLLP considered AHCM Documents to be confidential, does not bar the Section 165 Application. To avoid any prejudice to JLLP-

37.

Pursuant to the Production Order, SD4 produced the following AHCM Documents during the defendants’ case:

(ii) a PA executed by SD4 in favour of SAP (SD4’s PA);

(iii) a circular resolution of AHCM’s directors for the transfer of SD4’s shares in AHCM to a transferee (AHCM’s Resolution for Transfer of Shares);

(iv) 2 circular resolutions of AHCM’s directors to appoint directors in AHCM to a transferee (AHCM’s Resolution to Appoint Directors);

(vi) AHCM’s certificate of appointment of AHCM’s corporate representative to attend all JLLP’s general meetings of shareholders (AHCM’s Certificate of Appointment of Corporate Representative);

(vii) resignation letter of SD4 as AHCM’s director (SD4’s Resignation Letter);

(viii) “Form 32A”, transfer form of shares in JLLP by AHCM (AHCM’s Share Transfer Form);

(ix) Form 32A regarding transfer of shares in AHCM by SD4 (SD4’s Share Transfer Form); and 23

38. It can be seen that in exercising his discretion under section 165 of the EA, the learned JC ordered the production of the loan documents involving the 2nd defendant and thereafter embarked on an examination of the document and the examination of the key witness for the defendants (SD4) on the purpose and effects of the loan transaction.

39. It was submitted for the plaintiff that the learned Judge had rightly exercised his discretion under section 165 of the EA which does not warrant interference by this Court. Learned Counsel for the Plaintiff relied on the case of Jones V. National Board [1957] 2 All.E.R. where Lord Denning observed: “The Judge’s part in all this is to hearken to the evidence, only himself asking questions of witnesses when it is necessary to clear up any point that has been overlooked of left obscure; to see that the advocates behave themselves seemly and keep to the rules laid down by law; to exclude irrelevancies and discourage repetition; to make sure by wise intervention that he follows the point that the advocates are making and can assess their worth; and at the end to make up his mind where the truth lies. If he goes beyond this, he drops the mantle of the judge and assumes the role of an advocate; and the change does not become him well”. 24

40. Further, learned counsel for the plaintiff stressed that the judgment should be upheld on the ground of illegality on the part of APM and JLLP. Citing the case of Nasib Singh v Ramsay [1969] 1 MLJ 211, it was argued for the plaintiff that illegality need not be pleaded as it was brought to the notice of the court during trial.

41. It should be borne in mind that the gist of section 165 of the EA should be invoked only with the objective of discovering relevant facts or obtaining proper proof of such facts. That being so, it cannot be said that the provisions in the EA relating to relevancy can be disregarded [See: Sarkar’s Law of Evidence (Malaysia Edition, 2016 at pg. 3621)].

42. This is discernible from the wording of that section itself, which reads: - “The Judge may, in order to discover or to obtain proper proof of relevant facts, ask any question he pleases, in any form at any time, of any witness or of the parties, about any fact relevant or irrelevant; and may order the production of any document or thing; and neither the parties nor their agents shall be entitled to make any objection to any such question or order, nor, without the leave of the court, to cross-examine any witness upon any answer given in reply to any such question: 25 Provided that-

43. A further limitation of the Court’s power under section 165 of the EA will be found in the first proviso, which lays down that the judgment must be based on relevant facts which have been duly approved.

44. It is our considered view that the learned JC erred by ordering the production of the AHCM documents under section 165 of the EA for the purpose of alleged breach by the defendants of section 23 of the VAEA without having due regard to the fundamental question of relevance. In this context, owing to the lack of pleadings and of nexus between the illegality and the claim which we will discuss in greater detail below, section 165 of the EA ought not to have been invoked for this purpose. Lifting the corporate veil 45. It is important to highlight the context in which the plaintiff had pleaded the need to pierce the corporate veil of the defendants. The relevant pleading is in the Reply to Defence where the plaintiff averred that the corporate veil should be pierced in order to meet the defendants’ case that the JLW Marks are not distinctive of the plaintiff, 26 or that the plaintiff had otherwise implicitly recognized that the JLW Marks belong to the JLL Group, as it was from time to time known by its corporate legal name.

46. Thus, the plaintiff contended that another entity within the JLL Group, namely Jones Lang LaSalle Property Consultants Pte Ltd, had expressly consented to the plaintiff describing itself as being “in association with” Jones Lang LaSalle and/or JLL by a memorandum dated 9.6.1999. This was the principal ground pleaded by the plaintiff as to why the corporate veil ought to be pierced.

47. The learned JC in his grounds of judgment explained that his decision to lift the corporate veil of the defendants (2 cases) is based on the following evidence and reasons:

(1) the 1st Condition has been satisfied as the following special circumstances exist in the 2 Cases-

48. In his grounds of judgment, the learned JC lifted the corporate veil to justify inter alia the following findings: a) “acknowledgment of ownership of JLW Marks” by non-objection to the TM registration by JLL IP is a non-objection by JLWL; b) “acknowledgment of SSSB’s goodwill in JLW Marks” by JLL Singapore via the GOF is acknowledgment by JLLP and APM of the goodwill of SSSB for the purpose of SSSB’s Passing Off Action; c) to undertake an investigation whether the defendants were in breach of the then VAEA.

49. In Gurbachan Singh s/o Bagawan Singh & Ors v Vellasamy s/o Pennusammy & Ors and other appeals [2015] 1 MLJ 773, which was relied by the plaintiff to support its contention that the learned JC 28 has not erred in lifting the corporate veil, the Federal Court reiterated the principle that it is trite law that parties are bound by their pleadings and the trial of a suit must confine to the pleadings. The court is not entitled to decide on a matter that has not been pleaded. The Federal Court in that case went on to say: “However, in some instances, evidence adduced during the hearing can overcome the defects in pleadings as long as the other party is not taken by surprise. More so if ‘Such evidence when given without any objection by the opposing party will further have the effect of curing the absence of such plea in the relevant pleading, in other words, the effect of overcoming such defect in the pleading’.”

50. However, the facts in Gurbachan Singh (supra) can be distinguished from the facts of this instant case. In Gurbachan Singh case, the evidence relating to the issue is whether the third appellant and SPPKB were one and the same entity and whether the first appellant was the alter ego of the fourth appellant had been given without any objection from the appellants. However, in this instant case, as we have stated earlier, the defendants strongly objected to the piercing of the corporate veil.

51. It was rightly pointed out by learned counsel for the defendants that instead of adhering to the pleaded basis for the piercing of the 29 corporate veil, namely, to assert that the plaintiff has the right to describe itself as being “in association with” Jones Lang LaSalle and/or JLL, the learned JC pierced the corporate veil of the defendants, inter alia, so as to undertake an investigation whether the defendants were in breach of the then VAEA.

52. This can be clearly seen from paragraphs 59(1)(c) and (d) of the judgment, when the learned JC stated that the corporate veil was to be pierced inter alia for those unpleaded purposes, namely, to ascertain whether the first and second defendants have committed the alleged illegality and whether the third defendant has abused its corporate personality by filing the expungement suit. Consequently, the learned JC held that it was in the interest of justice to lift the corporate veil of the defendants.

53. Citing a number of authorities Chanel v Melwani2 International Sdn Bhd & Ors and other suits [2017] 10 MLJ 592; Solid Investment Ltd v Alcatel Lucent (M) Sdn Bhd [2014] 3 CLJ 71; Gurbachan Singh s/o Bagawan Singh & Ors v Vellasamy s/o Pennusamy & Ors [2015] 1 MLJ 773 and Giga Engineering & Construction Sdn Bhd v Yip Chee Seng & Sons Sdn Bhd & Anor [2015] 9 CLJ 537, the learned JC lifted the corporate veil of the defendants (2 Cases) to show that the alter ego is JLLPC. 30

54. On the basis of the authorities cited by the plaintiff, we are of the view that the learned JC has erred in law.

55. It is settled law that the pleadings on piercing the corporate veil must be precise, namely on the ground on which it is sought [See: Giga Engineering & Construction Sdn Bhd v Yip Chee Seng & Sons Sdn Bhd [2015] 9 CLJ 537].

56. In Giga Engineering (supra), the second respondent (‘the second defendant’) and one MMN Bina Sdn Bhd had teamed up to form a joint venture (‘the AAY-MMN-JV’) to tender for a project (‘the project’) and the JVA was successful in its bid. The plaintiff alleged that it was invited by the defendants to jointly participate with them in submitting a tender for the project. Under the joint venture, the plaintiff would be awarded the subcontract works in the project but the joint venture would be void if the first respondent (‘the first defendant’) failed to secure the main subcontract. The joint venture alluded by the plaintiff was not the same as the AAY-MMN-JV. The plaintiff claimed against the defendants at the High Court, contending that the defendants were in breach of the joint venture by failing and/or refusing to award the plaintiff’s portion. The first defendant argued that it was not awarded the main subcontract by the AAY-MNN-JV. Therefore, the plaintiff was not given the sub-contract works. The High Court 31 dismissed the plaintiff’s claim and the decision was affirmed by the Court of Appeal. Hence, the appeal. In urging the court to lift the veil of the incorporation of the defendants, the plaintiff submitted that while the first defendant was not awarded the main subcontract works, it had performed the work for the second defendant thus circumventing its contractual obligations to the plaintiff. According to the plaintiff, the Managing Director of the first defendant, Yip Kok Weng was appointed as the project manager while another Director, Yip Kok Wai was assigned as a full time site manager of the project. The contractual obligations were avoided by the first defendant due to the controlling position of the Yip brothers in the management of the defendants.

57. Delivering the decision of the Federal Court, Richard Malanjun CJ (Sabah& Sarawak) (as he then was): “ [34] While it was pleaded that the defendants were ‘part of a group of companies managed and/or controlled by the Yip family with common/connected officers and shareholders’, there is no further assertion or claim arising therefrom in the way as submitted before us by learned counsel for the plaintiff. […] [36] It is also not pleaded that in the scheme of things the defendants and the third defendant were under the dominant control of Yip Kok Weng. There was no allegation in the amended statement of claim of fraud or equitable fraud or misrepresentation practised by the defendants upon the 32 plaintiff during the discussion in the preparation of quotation or tender documents for the project. […] [39] With respect, we do not think the foregoing allegations as pleaded are sufficient as a plea for fraud or equitable fraud or to indicate special circumstances upon which on evidence adduced would justify the lifting of corporate veil of the defendants.

58. With regard to the principle of piercing the corporate veil on the ground that it is in the interest of the justice to do so, the Federal Court in Solid Investment Ltd v Alcatel Lucent (M) Sdn Bhd (supra) said: “In my judgment, in the light of the more recent authorities such as Adams v Cape Industries Plc [1990] Ch 433, it is not open to the courts to disregard the corporate veil purely on the grounds that it is in the interest of justice to do so. It is also my respectful view that the special circumstances to which Lord Keith referred include cases where there is either actual fraud at common law or some inequitable or unconscionable conduct amounting to fraud in equity. […]” “In the present appeal, it is not the plaintiff’s case that special circumstances exist here indicating that Boltex is a mere façade concealing the true facts. Nor was a case of actual or equitable fraud raised on the pleading. It is therefore of no avail to the plaintiffs to say without more that this is a case for piercing the corporate veil. They simply did not lay any evidential foundation to support that plea.” 33

59. In the present case, it is clear that the plaintiff has not pleaded illegality as a ground for the piercing of the corporate veil. Further, no case of actual or equitable fraud was raised on the pleadings. Therefore, we accept the defendants’ submission that it is not open to the plaintiff to say that this is a case for piercing the corporate veil. Whether the defendants have breached or unlawfully circumvented section 23 of the VAEA

60. It was the finding of the trial judge that APM and JLLP (the defendants) have breached section 23(1) and (2) of the VAEA. The provisions require the majority shareholding and operation of a company which offers services of a valuers, appraiser and estate agent to be owned and controlled by valuers, estate agents and property managers who have registered with the Board of Valuers, Appraisers, Estate Agents and Property Managers. The learned JC said there was clearly no such compliance in this present case.

61. In respect of a company carrying on real estate business, section 23(2) of the VAEA allowed equity holding by a combination of registered and non-registered persons, provided that the registered person holds the majority interest and voting rights. Section 23 of the VAEA provides: 34 “23(2). A partnership or body corporate practising valuation, appraisal or estate agency, as the case may be, shall not be registered by the Board unless-

(ii) in the case of an appraisal practice-solely registered appraisers; a combination of registered appraisals, registered valuers and registered estate agents; or a combination of registered appraisers and any other person or bodies corporate; and

(iii) in the case of an estate ageny practice-solely registered agents; a combination of registered estate agents, registered valuers and registered appraisals; or a combination of registered estate agents and any other persons or bodies corporate; and 35

(ii) in the case of an appraisal practice, solely by registered appraisers;

(iii) in the case of an estate agency practice, solely by registered estate agents; and

(iv) in the case of a partnership or body corporate where all partners of the partnership or all directors and shareholders of the body corporate are a combination of registered valuers, registered appraisers and registered estate agents and any other persons or bodies corporate-in the case of a valuation practice, by a majority of valuers who hold the majority interest and the voting rights; in the case of an appraisal practice, by a majority of appraisers who hold the majority interest and the voting rights; and in the case of estate agency practice, by a majority of estate agents who hold the majority interest and voting rights; and

62. The learned JC states that APM breached section 23 of the VAEA based on the following grounds:

68. According to APM’s records with Suruhanjaya Syarikat Malaysia, all the shares in APM are held by 2 individuals, 36 Mr. Tan and Mr. Jamie Tan Mun Onn (who are presumably Registered Persons). Despite such evidence, based on the interpretation of the then s 23 of the VAEA in the above

Part I(3), I am of the view that APM has breached or has unlawfully circumvented s 23 of the VAEA in the following manner:

63. Further, the learned JC found that JLLP has breached or unlawfully circumvented section 23 of the VAEA where he found as a fact that JLLP’s breach has been proven as follows:

(1) JLL Inc’s Filing with SEC stated that JLLP was a subsidiary of JLL Inc. Accordingly, JLL Inc. (Non-Registered Person) holds a majority of the shares in JLLP and controls the voting rights of JLLP’s shares; and

(2) one of the 3 Conditions regarding AHCM is not fulfilled – the management and operation of AHCM is controlled by SAP (Non-Registered Person) and not by Registered Persons. This is clear from the following evidence and reasons -

(ii) “approve the key corporate policy, management rules … and incentive plan” of AHCM and JLLP – clause 12.2.(b);

(iii) “change the shareholdings in or ownership or control (direct or indirect)” of AHCM and JLLP – clause 12.2.(e);

(iv) “approve or adopt the business plan, annual budgets” of AHCM and JLLP – clause 12.2.(f); 39

(vi) “open or close any bank accounts” of AHCM and JLLP – clause 12.2.(r);

71. I am of the view that AHCM Documents, especially SAP Loan Agreement, should have been disclosed to the D2 Board in JLLP’s Letter dated 18.2.2014 (signed by SD4 on JLLP’s behalf). JLLP and SD4 had therefore concealed AHCM Documents from the Board.

72. As SD4 had signed SAP Loan Agreement (as AHCM’s director) and JLLP’s Letter dated 18.2.2014 (on behalf of JLLP), I find as a fact that SD4 had committed or contributed to JLLP’s Breach within the meaning of s 23(4A)(d) of the then VAEA.

64. Authorities Relevant to Illegality The alleged illegality relates to what is said to be a breach of section 23 of the VAEA. However, the cause of action that is sought to be asserted by JLLP, in this case, is for passing-off on the part of 40 SSSB for holding itself out as being in association with Jones Lang LaSalle.

65. So we come to the crucial question, namely whether the so-called illegality issue in this instant case has any nexus with the intellectual property rights asserted by the parties over the said trademarks disputes.

66. The argument advanced by learned counsel for the defendants was that in this present case, the learned JC had been wrong in rejecting the defendants’ arguments on illegality. Learned counsel for the defendants in his submission, submitted that there is no nexus between the alleged illegality and the breach of section 23 of the VAEA and the cause of action relied upon by JLLP.

67. The learned JC cited a good deal of case law in the cause of his analysis. However, we believe the case of Asia Television Ltd & Anor v Viwa Video Sdn Bhd & Connected Cases [1984] 2 MLJ 304 which were referred by the defendants is sufficient to answer the question now before us. In this case, the plaintiffs claimed copyright in certain films and alleged that the defendants had infringed the same. Accordingly, the plaintiffs obtained ex parte Anton Piller orders from the High Court. The defendants applied to set aside the Anton Piller 41 orders and the learned judge agreed with the argument by the defendants that the publication of the films was illegal as no certificates of approval were obtained as required under the Films (Censorship) Act 2002.

68. The matter went on appeal to the Federal Court, where it held that before any question of illegality arose, there must be a nexus between the statutory requirement and the cause. The Federal Court held that non-compliance with the Films (Censorship) Act 2000 did not also result in defeating the plaintiff’s rights under the Copyright Act 1987 as there was no nexus between the two. Delivering the judgment of the Federal Court, Abdoolkader F.J. held: “The issue then is the effect of non-compliance with the provisions of the Films (Censorship) Act on the question of acquisition of copyright under the Copyright Act and whether this is accordingly precluded as a result. It would appear from the contention of the respondents and the judgment of the learned Judge who held that the publication by the appellants was unlawful that any such non-compliance inhibited the operation of section 6(1)(a) of the Copyright Act with the result that the appellants could not and did not acquire any copyright in the films in question. The correlation between the two legislative enactments must in our view depend on whether there is a nexus between them. Mr. Davidson agrees in answer to a question we put to him that such a nexus is a necessary prerequisite and that 42 the burden is on the respondents to establish this as between the two Acts. In Curragh Investments Ltd. v. Cook it was held that for a contract to be illegal as being made in contravention of some statutory provision there had to be a sufficient nexus between the statutory requirement and the contract, and that where statutory requirements were not linked sufficiently, or at all, to the contract no question of its illegality arose.”

69. The Court in England followed broadly the same approach in considering whether illegality has any nexus with intellectual property rights. In Imperial Chemical Industries v Berk Pharmaceuticals

(1981) FSR 1, the plaintiff had sued for passing-off that the defendant had imitated the get-up of one of its pharmaceutical tablets. Megarry VC ordered the striking out of the paragraph in the defendant’s affidavit that asserted that the plaintiff (ICI) was selling their products at excessive prices contrary to E.U. law and the passing-off of the plaintiff’s trademark. The learned Judge made the following observations in his judgment: “The central core of Mr. Gratwick’s argument, however, was the lack of any nexus between the alleged breach of Article 86 and the right claimed by the defendants to be free to imitate the plaintiffs’ carmine get-up and so deceive doctors, pharmacists and the public without the plaintiffs being able to intervene. … The result is that the plaintiffs are doing something that Article 86 prohibits, …. but it does not follow that this strikes from the 43 plaintiffs’ hands any power to prevent the defendants from passing off their tablets as being the plaintiffs’. …. …. I do not think that it could be said that a person in breach of some statutory or other prohibition thereupon becomes an outlaw, unable to enforce any of his rights against anyone. If the plaintiffs are imposing unfair selling prices in that they charge too much for their product, I cannot see why this breach of the prohibitions of Article 86 means that the defendants are thereby set free from any liability to the plaintiffs if they, the defendants, commit the tort of passing off (or, indeed, any other tort) against them.”

70. We have carefully perused the judgment and it is clear that the learned JC failed to address the nexus issue. Therefore, we are of the considered view that the learned JC misdirected himself in law in holding that the alleged illegality disqualified the defendants in asserting their rights over the JLW marks.

71. In our judgment, the learned JC proceeded on the wrong legal basis and erred in law because he has substantively taken into account the irrelevant consideration i.e. the illegality issue. Additional Penalty 72. It is important to note that the VAEA provides for its own penalties for any breach of its provisions including disciplinary action by way of cancellation of the registration of the firm if there was a 44 misrepresentation in obtaining its registration: see Part VII and Sections 24 et seq.

73. In Pearks, Gunton & Tee Ltd. v Thompson, Talmey & Co.

(1901) 18 RPC, which was referred by the defendants’ counsel, the trademark proprietor was in breach of a provision of the Companies Act that the name of the company under which he was trading be displayed at its trading place. The defendant contended that the contravention of the Companies Act precluded the plaintiff from suing for an injunction on the passing off. Farewell J. observed (at p.189): “The Act of Parliament has imposed a penalty, and I am asked to add an additional penalty which the statute does not impose, and say that it is competent to any dishonest person who chooses to steal the goodwill; and that the Company cannot come into this Court and get an injunction to restrain that theft because the Company has rendered itself liable to pecuniary penalties which will very probably after this be enforced against them.”

74. The principle was followed in H.E. Randall Ltd. V. The British & American Shoe Company (1902) 19 RPC 393, where the contention was the purchase of the business by the plaintiff was ‘unlawful’ and therefore no protection could be afforded to the 45 trademark used by the plaintiff in the business. In rejecting the contention, Swinfen Eady J. observed (at p. 402): “The Companies Act, 1862, sections 41 and 42, imposes certain penalties for non-compliance with its provisions; but the additional penalty of forfeiting its goodwill to any dishonest person who chooses to steal it is not imposed by the Statue. … … in this respect I follow the recent decision of Mr. Justice Farwell in Pearks, Gunston, and Tee, Ltd. v. Thompson, Talmey & Co. (18 R.P.C. 185). The injunction will be “to restrain the Defendants …”

75. In the light of the principles cited in the above authorities, it would be wrong for a court to impose ‘an additional penalty’ not stated in the statute by imposing a disqualification on an alleged defaulting company from defending its trademark rights. Usurping The Function Of The Board of Valuers 76. The next group of errors raised by the defendants concern the inconsistency of the learned JC in his approach on whether he should determine allegations of illegality himself or leave it to the Valuers’ Disciplinary Board. This can be seen in paragraph 31 of his judgment, where the learned JC ruled at the outset that he will not determine certain allegations of misconduct vis-à-vis the VAEA that were raised by the Respondent on the following grounds:

(1) … all the parties have agreed to the issues to be tried in the 2 cases (Agreed Issues). The Agreed Issues did not concern SSSB’s Allegations of Misconduct. Hence, this Court shall only decide on the Agreed Issues; and

(2) any allegation of misconduct against, among others, a “registered valuer”, “registered appraiser”, and “registered estate agent” … should only be investigated into and determined by the Board in accordance with the disciplinary procedure provided by rr 131 to 138 of the Valuers, Appraisers and Estate Agents Rules 1986 (VAEAR) read with section 24 of the present Valuers, Appraisers, Estate Agents and Property Managers Act 1981 (VAEAPM). There is also a right to appeal against any decision of the Board regarding a disciplinary matter to the Appeal Board as provided in ss 27(1)(c) and 29 VAEAPM. The statutory duties and functions of the Board and Appeal Board under VAEAPM and VAEAR regarding disciplinary matters, should not be arrogated.”

77. Accordingly, the learned JC proceeded to make a determination on the alleged illegality, which was not part of the Agreed Issues. In this regard, it can be seen that the learned JC had arrogated himself over the statutory duties and functions of the Board and Appeal Board under the VAEA regime. 47 Non-Agreed issues 78. It is not disputed between the parties that the issue of illegality was not part of the agreed issue. As we have stated earlier, the issue on illegality was raised by learned counsel for the plaintiff during cross-examination of the defendants’ last witness (SD4) and after the close of the plaintiff’s case. Exercising his discretion under section 165 of the EA, the trial judge allowed the plaintiff’s application for the production of the AHCM documents.

79. The key question that merits consideration under this issue is whether the learned Judge is correct in deciding on the non-agreed issue. In our view, the answer may be considered by an analytical approach to the pleadings. It is trite law that parties are bound by their own pleadings and that a party stands or falls by the four corners of his pleadings. (See: Janagi v. Ong Boon Kiat [1971] 2 MLJ 196; Yew Wan Leong v. Lai Kok Chye [1990] 2 MLJ 152; and Hashim bin Abu Hassan (suing as the legal parent and dependant of Zahari bin Hashim, deceased) & Ors v. Lee Cheng Chuan & Ors [2006] 1 MLJ 297). The Court shall only decide on issues which were pleaded and not otherwise. (See: Haji Mohamed Dom v. Sakiman [1956] MLJ 45 CA; Chartered Bank v. Yong Chan [1974] 1 MLJ 48 157; and Ria Enterprise & Ors v. MBF Finance Bhd [2001] 1 CLJ 687).

80. In the instant appeal, the decision of the High Court relating to illegality is not within the pleadings. We, therefore, hold that there is a manifest error by the learned Judge on this issue. Other Collateral Issues 81. We agreed with the defendants’ submission that the learned Judge had applied his finding on the alleged illegality towards various aspects of the case, to the detriment of the defendants. The instances are as follows: a) The learned judge had relied on the alleged illegality to support the drawing of an adverse inference against the APM under s. 114(g) of the EA. at para. 34(2)(d) of his judgment the learned JC said: “(2) an adverse inference under s. 114(g) EA is drawn against APM’s breach of s. 23 of the then VAEA (APM’s Breach) – please see Part J(1) below. APM’s refusal to adduce any evidence to rebut SSSB’s evidence regarding APM’s Breach, amounts to a suppression of material evidence regarding APM’s Breach and this in turn attracts an adverse inference against APM.” 49 b) Further, the learned JC at para 104 of his judgment held that JLLP was precluded from seeking the aid of Court on account of the alleged illegality: “In any event, even if JLLP’s Counterclaim has any basis, I accept Datuk Seri Gopal’s submission that due to public policy, the court will not come to the aid of JLLP in view of the illegality […]” c) The learned JC held that one of the defendants’ witnesses, namely SD4, was lacking in credibility and was not a witness of truth (see para 53 of the judgment). The said finding was predicated on the alleged illegality amongst other things and this can be seen at para 52 (3) of the judgment: - “52. It is this court’s finding of fact that SD4 lacks credibility. This decision is premised on the following evidence and reasons:

(1) SD4 had a motive within the meaning of s. 8(1) EA to conceal JLPP’s breach of s. 23 VAEA from this court (JLLP’s Breach). This is because if JLLP’s Breach is revealed in the 2 Cases, the Board may subsequently exercise its discretion to, amongst others, cancel JLLP’s registration with the Board. Hence, SD4 gave untrue and self-serving evidence in the 2 Cases so as to conceal JLLP’s Breach;” 50 Consequence Of The Errors Of The Court 82. Learned counsel for the defendants pointed to the court that only 22 pages of the 107-page judgment relate to the central issues in the case. In particular, about 50 pages are devoted to the collateral issues relating to the so-called illegality, namely on lifting the corporate veil, and on section 165 of the EA, and the loan document, and the like.

83. Thus, learned counsel for the defendants argued that these findings have resulted in the High Court losing focus on the relevant issues arising under the two suits namely, on passing-off and counter-passing-off and the expungement of the plaintiff’s unilateral registration of the JLW Marks in its own name. Relying on the case of Bakopoulos v General Motors Holder Ltd. (1972) VR at 733, it was submitted that ‘a trial must be focused upon material issues and must not be permitted to follow collateral issues arising from the evidence’.

84. On the contrary, learned counsel for the plaintiff submitted that this is not a case in which a retrial is warranted as there is no question of a mistrial because the integrity of the trial was not compromised for the reasons submitted by the plaintiff. It was also contended that the learned JC did not permit the illegality in question to bar the defence and he paid no attention to the issue of misconduct. 51

85. In assessing these rival issues, we accept that appellate courts should not interfere with the finding of facts made by the trial judges unless compelled to do so. This is a matter which we have well in mind throughout the hearing of this appeal. We acknowledge the guidance by the Federal Court in its decision in Dr. Hari Krishnan & Anor v. Megat Noor Ishak Megat Ibrahim & Anor and Another Appeal [2018] 3 CLJ 427.

86. Section 71(2) of the Courts of Judicature Act 1964 (CJA) sets out the limited grounds on which a new trial may be granted. In Dr. Hari Krishnan (Supra), after citing section 100 and 101 of the CJA which are ipsisima verba section 71 and 72, the Court held as follows: “[15] The combined effect of both sections is to place the burden on the party seeking retrial to satisfy the court that there was some substantial wrong or miscarriage of justice occasioned by the trial court, which has affected the merits or the jurisdiction of the court. For instance, in Udham Singh v Indra Kaur [1971] 2 MLJ 263, this court ordered a new trial on the basis of a misdirection by the trial judge. The trial judge had wrongly placed the burden of proving testamentary incapacity, and it was held that the misdirection had occasioned a substantial wrong. ... … Where a judge does not state his reasons for arriving at his decision, the decision is not necessarily unsafe. He may have 52 properly considered and weighed the evidence and may have arrived at the right conclusions. The decision is only unsafe in the sense that the appellate court is unable to determine, from an assessment of the judge’s mental processes, that the decision is correct. But it does not follow that the course open to the appellate court to decide the appeal while doing justice is to order a new trial. It is still open to the appellate court to assess the evidence and come to a finding whether or not the evidence vindicates the decision of the trial judge. Where, in an appeal in a civil matter, as in this appeal, reasons for the decision appealed against are not available, and not obtainable, the appeal, onerous though this may be, should proceed on an examination and assessment of the evidence to enable the appellate court to decide whether the evidence justifies the decision or otherwise. It will be as if the appellate court is sitting at first instance, except that the evidence is already before it. For reasons that are obvious or can easily be imagined, a new trial is undesirable and ought not to be ordered unless there is something crucial to a just decision in the case that can be established in the new trial but cannot be established on an assessment of the evidence. The evidence being all there already, such a thing must be very rare indeed. (Emphasis added.) [53] On this point, we find the lucid remarks of Abdul Aziz Mohamed JCA (as he then was) illuminating and we endorse the passages quoted above. [54] In the instant case, the statutory requirements for a retrial have not been established by Dr. Hari and Dr. Namazie. We do 53 not consider that the non-speaking judgment of the High Court, or the retirement of two panel judges at the time the Court of Appeal issued their written grounds of judgment, constitutes a substantial wrong or a miscarriage of justice that affected the merits or jurisdiction of the High Court. Further, we note that the Court of Appeal was able to, and had in fact, proceeded with the appeal and made a determination by considering all the evidence in the records of appeal available to them. There was sufficient material for the Court of Appeal to make the relevant findings and reach a decision as if it was sitting in the first instance. For these reasons, a retrial or a rehearing is not warranted. [55] We would like to add that a retrial or a rehearing should not be easily ordered. Appellate courts are advised to avoid ordering a retrial, merely on account of a non-speaking judgment by the trial judge or the absence of any finding of fact on a particular issue. In such a situation, it is the duty of the appellate court to endeavor to make its own finding of fact, based on the evidence available in the record of appeal. [56] A retrial may be unduly prejudicial to the parties and an unnecessary inconvenience to the witnesses. This is especially so in this case, where the alleged negligence occurred in September 1999, more than 17 years ago. The trial commenced in year 2007 and only concluded in year 2010, after a protracted trial spanning 23 days and involving ten witnesses, including seven medical professionals. A retrial would be contrary to the best interests of justice, and is in any event unwarranted in the circumstances of this case.” 54

87. A new trial is warranted where “a substantial wrong” has occurred at the trial as envisaged by s. 71 of the CJA and the appeal court is unable to determine for itself what conclusion would have been arrived at if the trial court had not been misled by the wrong inquiry it made. We are of the opinion that the wrong inquiry in the present case is the illegality inquiry that the learned JC had embarked on at considerable length of time and effort. We would note that the finding of the learned JC had a pervasive prejudicial effect on the defendants’ case as it affected both defendants in the case they had put forward in defence and further in respect of JLLP as a counter-claimant. In our view, it also prejudiced the trial judge in his assessment of the defendants’ witnesses, as we have explained earlier.

88. The negative impact of the illegality issue as a collateral issue is compounded by the inconsistency shown in the reasoning by the learned JC, namely, on the one hand in holding that the presence of the so-called illegality did not preclude JLLP from defending the passing-off claim against it, but on the other hand in holding that it precluded JLLP from pursuing its counter-claim in passing-off against the Plaintiff.

89. A further inconsistency in the reasoning by the learned JC can be seen in paragraph 31 of his judgment, where the learned JC ruled 55 at the outset that he will not determine certain allegations of misconduct vis-à-vis the VAEA that was raised by the plaintiff because; - “(1) … all the parties have agreed to the issues to be tried in the 2 cases (Agreed Issues). The Agreed Issues did not concern SSSB’s Allegations of Misconduct. Hence, this court shall only decide on the Agreed Issues; and

(2) any allegation of misconduct against, among others, a “registered valuer”, “registered appraiser” and “registered estate agent” … should only be investigated into and determined by the Board in accordance with the disciplinary procedure provided by rr 131 to 138 of the Valuers, Appraisers and Estate Agents Rules 1986 (VAEAR) read with s 24 of the present VAEAPM. There is also a right to appeal against any decision of the Board regarding a disciplinary matter to the Appeal Board as provided in ss 27(1)(c) and 29 VAEAPM. The statutory duties and functions of the Board and Appeal Board under VAEAPM and VAEAR regarding disciplinary matters, should not be arrogated.”

90. Nevertheless, the learned JC proceeded to make a determination on the alleged illegality, which was not part of the Agreed Issues.

91. Further, the learned judge proceeded to investigate and determine that the defendants and SD4 had breached the VAEA, thereby as we have said earlier arrogating to himself the statutory 56 duties and functions of the Board and Appeal Board under the VAEA regime.

92. The test applied by this Court in Tong Kam Yew v PP [2013] 4 CLJ 470 is whether ‘the judgment showed that the integrity of the decision-making process had been compromised’. We agreed with the defendants that in the present case, the integrity of the decision-making process was compromised by the extensive illegality inquiry which was irrelevant to the case.

93. Unless this Court is satisfied that by removing the illegality issue from the trial court’s judgment it would be able to make a determination itself based on the agreed issues, agreed facts and the documents tendered, an order for a retrial would be an option. (State Tailor Sdn. Bhd. v Nallapan [2005] 2 MLJ 589; Foong v. Assunta Hospital [2006] 5 MLJ 94; Soonly Metal Works v. NCN Marketing Sdn. Bhd. [2018] 10 CLJ 73; Persida Paros (M) Sdn. Bhd. V. Janagi Sinnasamy [2015] 1 LNS 777; and Zaina Salleh Abdul Rahman v. The New Straits Times (M’sia) Bhd [2015] 1 LNS 834).

94. We have given anxious consideration to the possibility of simply determining the issue infringement by ourselves, a course which would have obvious benefits in terms of time and cost. It is with regret that 57 we have decided that that is not something we can do. This is a case of considerable importance to the parties and it is one which they have invested substantial time and resources. We therefore conclude that we have no alternative but allow the appeal and remit the case for retrial.

95. This Court has a discretion whether to exercise its powers of re-hearing under s. 69(1) of the CJA and review the facts, evidence, and law as an appellate court and arrive at its own conclusion or direct a new trial under s. 71 of the CJA.

96. In the circumstances, we do not find it necessary to consider the issues relating to trademark. In our view, the learned JC had allowed the trial to miscarry by an undue focus on collateral issues which prejudiced a fair and proper consideration of the principal issues in the case. Conclusion 97. In our judgment, the material question in this instant case is whether the so-called illegality issue has any relevance to the present case. Learned counsel for the defendants successfully argued that it has none because of the absence of a nexus between the complaint and the trademark issues in the case. We are of the view that the 58 learned JC had placed particular reliance on the issue of illegality. It is obvious that the learned JC failed to address the nexus issue, and therefore, had misdirected himself in law in holding that the alleged illegality disqualified the defendants in asserting their rights over the JLW Marks. We find that the learned JC was wrong in law and in his reasoning on the illegality issues and its applicability to the trademark rights, and had also adopted an inconsistent approach.

98. In our view, the errors made by the learned JC are rather serious, not minor, and which have materially affected the integrity of the trial and the decision arrived at.

99. In the circumstances, it is no longer necessary for us to decide on the other issues on appeal. We are of the opinion that the proper order to be made is to order for a retrial.

100. We are therefore of the unanimous decision that the appeal must be allowed with costs and the High Court’s decision be set aside. We further order that the two cases be remitted to the High Court for retrial before another judge on the claims for trademark infringements and expungement of the plaintiff trademark under the Registration. 59

101. Parties are to submit on the issue of costs. Dated 8 Mac 2019 signed HANIPAH BINTI FARIKULLAH Judge Court of Appeal Malaysia PUTRAJAYA Solicitors for the Appellant : Messrs Wong & Partners Level 21, The Garden South Tower, Mid Valley City, Lingkaran Syed Putra, 59200 Kuala Lumpur Solicitors for the Respondent : Messrs Soo Thien Ming & Nashrah Level 8, Menara Bangkok Bank, Berjaya Central Park, 105 Jalan Ampang, 50450 Kuala Lumpur

(1) JLL Inc’s documents filed with SEC in 2014 to 2016 (JLL Inc’s Filing with SEC) stated that APM was a subsidiary of JLL Inc. Accordingly, JLL Inc. (Non-Registered Person) holds a majority of the shares in APM and controls the voting rights of APM’s shares;

(2) Registered Persons do not have control of the management and operation of APM. This is clear from APM’s own documentary evidence as follows –

(ii) Mr. Peter Hilderson is in “Energy, Engineering & Operation”;

(iii) Mr. Cameron Scott is the Chief Operating Officer;

(iv) Mr. Chris Hunt is “Australasia Hub Lead”;

(vi) Mr. Ian Bottrell is “North Asia Hub Lead”;

(vii) Ms. Marina is “South Asia Hub Lead and Head of Regional Accounts”; and

(viii) Mr. Susheel Koul is “Asia Pacific Solutions Development Lead”. SD3 confirmed during cross-examination that all the above persons were employed by JLLPC or a company in the JLL Group at the material time; and

(3) APM did not correct or retract the above publications. Nor did APM’s MD, director, employee or agent give any evidence to rebut or explain the above publications by APM. 38