Dart Industries Inc v Cmn International Sdn Bhd (No. Syarikat: 1181309-W) (W-02(IPCV)(W)-1810-09/2018)

15

… PERAYU-PERAYU

… RESPONDEN (Dalam Perkara Mengenai Guaman No. WA-22IP-16-04/2017 Dalam Mahkamah Tinggi Di Kuala Lumpur 25 Antara

Dart Industries Inc.

Tupperware Brands Malaysia Sdn Bhd 30 (No. Syarikat: 287324-M) … Plaintif-Plaintif Dan

CMN International Sdn Bhd 35 (No. Syarikat: 1181309-W)

Ng Yang Swan 40 3. Nurraidah Binti Razali … Defendan-Defendan) 45 2 5 RAYUAN SIVIL NO.: W-02(IPCV)(W)-1809-09/2018 10

(No. Syarikat: 1181309-W) 15 2.

… PERAYU-PERAYU 20

… RESPONDEN 25 (Dalam Perkara Mengenai Guaman No. WA-22IP-17-04/2017 Dalam Mahkamah Tinggi Di Kuala Lumpur Antara 1. Dart Industries Inc. 30

Tupperware Brands Malaysia Sdn Bhd (No. Syarikat: 287324-M) … Plaintif-Plaintif Dan 35

CMN International Sdn Bhd (No. Syarikat: 1181309-W)

Azrul Bin Samat 40

Tai Yang Thing … Defendan-Defendan) 3 5 RAYUAN SIVIL NO.: W-02(IPCV)-1865-09/2018 10

…

(No. Syarikat: 1181309-W)

20

… 25 (Dalam Perkara Mengenai Guaman No. WA-22IP-16-04/2017 Dalam Mahkamah Tinggi Di Kuala Lumpur Antara 1. Dart Industries Inc. 30

Tupperware Brands Malaysia Sdn Bhd (No. Syarikat: 287324-M) … Plaintif-Plaintif Dan 35

CMN International Sdn Bhd (No. Syarikat: 1181309-W)

Ng Yang Swan 40

Nurraidah Binti Razali … Defendan-Defendan) 4 5 RAYUAN SIVIL NO.: W-02(IPCV)-1868-09/2018 10

…

(No. Syarikat: 1181309-W)

20

… 25 (Dalam Perkara Mengenai Guaman No. WA-22IP-17-04/2017 Dalam Mahkamah Tinggi Di Kuala Lumpur Antara 1. Dart Industries Inc. 30

Tupperware Brands Malaysia Sdn Bhd (No. Syarikat: 287324-M) … Plaintif-Plaintif Dan 35

CMN International Sdn Bhd (No. Syarikat: 1181309-W)

Azrul Bin Samat 40

Tai Yang Thing … Defendan-Defendan) 5 5

TUPPERWARE BRANDS MALAYSIA SDN BHD (No. Syarikat: 287324-M) … 15

(No. Syarikat: 1181309-W)

2.

25 … (Dalam Perkara Mengenai Guaman No. WA-22IP-16-04/2017 Dalam Mahkamah Tinggi Di Kuala Lumpur 30 Antara 1. Dart Industries Inc.

Tupperware Brands Malaysia Sdn Bhd (No. Syarikat: 287324-M) … Plaintif-Plaintif 35 Dan

CMN International Sdn Bhd (No. Syarikat: 1181309-W)

Ng Yang Swan 6

Nurraidah Binti Razali 5 … Defendan-Defendan) 10 RAYUAN SIVIL NO.: W-02(IPCV)-1862-09/2018

TUPPERWARE BRANDS MALAYSIA SDN BHD (No. Syarikat: 287324-M) …

(No. Syarikat: 1181309-W)

25

… 30 (Dalam Perkara Mengenai Guaman No. WA-22IP-17-04/2017 Dalam Mahkamah Tinggi Di Kuala Lumpur Antara 1. Dart Industries Inc. 35

Tupperware Brands Malaysia Sdn Bhd (No. Syarikat: 287324-M) … Plaintif-Plaintif Dan 40

CMN International Sdn Bhd (No. Syarikat: 1181309-W) 7 5 2. Azrul Bin Samat

Tai Yang Thing … Defendan-Defendan) 10 CORAM HAMID SULTAN ABU BACKER, JCA HANIPAH FARIKULLAH, JCA 15 KAMALUDIN MD SAID, JCA GROUNDS OF JUDGMENT Introduction 20 [1] There are six Appeals arise from the Judgment of the Kuala Lumpur High Court Judge [“the learned judge”] delivered on 10.8.2018 in respect of Civil Suits No:WA-22IP-16-04/2017 [Suit 16] and No: WA-22IP-17-04/2017 [Suit 17] which were heard 25 together. [2] The six Appeals are as follows:

2.1 Civil Appeal No W-02-(IPCv)(W)-1810-09/2018 [“Appeal 30 1810”];

2.2 Civil Appeal No W-02-(IPCv)(W)-1809-09/2018 [“Appeal 1809”]; 35 8

2.3 Civil Appeal No W-02-(IPCv)(W)-1865-09/2018 [“Appeal 5 1865”];

2.4 Civil Appeal No W-02-(IPCv)(W)-1868-09/2018 [“Appeal 1868”]; 10 2.5 Civil Appeal No W-02-(IPCv)(W)-1866-09/2018 [“Appeal 1866”] and

2.6 Civil Appeal No W-02-(IPCv)(W)-1862-09/2018 [“Appeal 1862”]; 15 [3] Parties in the respective appeals are as follows - i. the Appellants in Appeal 1810 and Respondents in Appeal 1865 and Appeal 1866 are the Defendants in Suit 16 whilst 20 the Appellants in Appeal 1809 and Respondents in Appeal 1868 and Appeal 1862 are the Defendants in Suit 17. The Appellants in these appeals are collectively referred to as the Defendants; 25 ii. the Appellant in Appeal 1865 and Appeal 1868 and Respondents in Appeal 1810 and Appeal 1809 is the 1st Plaintiff (hereinafter shall be referred to as the 1st Plaintiff); and 30 iii. the Appellant in Appeal 1866 and Appeal 1862 is the 2nd Plaintiff (hereinafter shall be referred to as the 2nd Plaintiff). 9 [The 1st Plaintiff and the 2nd Plaintiff shall be referred to 5 collectively as the Plaintiffs]. [4] At the High Court, the learned judge allowed the 1st Plaintiff’s claims in Suit 16 and Suit 17 for infringement of Registered Design No: MY-09-00167-0101 [“RID 167”] and No: MY-13- 10 01172-0404 [“RID 1172”] respectively (limited to a finding of obvious imitation only) with costs of RM 365,471.60. [5] In arriving at the said decision, the learned judge essentially held that the Defendants in Suit 16 and Suit 17 had infringed the 1st 15 Plaintiff’s RID 167 and RID 1172 as the Biolife Borneo Bottle and Spuntino and Ciotolla covers [part of the Moorlife range] were obvious imitation but not fraudulent imitation of the registered industrial design. It was also held that the 2nd Plaintiff in both Suit 16 and Suit 17 had no locus to file either of the said actions. 20 [6] The Defendants in Suit 16 and Suit 17 filed an appeal against the finding of obvious imitation vide Appeal 1810 and Appeal 1809. The Defendants’ case is that the learned judge’s finding should be in favor of dismissing the 1st Plaintiff’s claim on ground that there 25 is no infringement caused by the Defendants against the Plaintiffs’ RID 167 and RID 1172. [7] The 1st Plaintiff in Suit 16 and in Suit 17 filed appeals against the finding of non-fraudulent imitation vide Appeal 1865 and Appeal 30 1868 respectively. The 1st Plaintiff’s case is that the learned judge 10 should have held that the infringement against the Plaintiffs’ RID 5 167 and RID 1172 is fraudulent imitation. [8] The 2nd Plaintiff in Suit 16 and in Suit 17 filed Appeal 1866 and Appeal 1862 against the finding of the learned judge that they had no locus to file the said actions in Suit 16 and Suit 17 respectively. 10 [9] As previously ordered by this Court, all the six appeals are to be heard together using one Record of Appeal and separate Supplementary Records of Appeal for each Appeal (each Supplementary Record of Appeal for each Appeal contains the 15 Memorandum of Appeal for the said Appeal). Further, the written submissions is filed in respect of the 6 Appeals. PRELIMINARIES 20 [10] By consent of parties in the appeals, the appeals were confined to the finding of the learned judge on obvious imitation of the 1st Plaintiff’s RID 167 (Suit 16) only. At the end of parties’ submissions this Court would make its finding and deliver its decision related to RID 167 only. The appeal against the finding of 25 obvious imitation of the 1st Plaintiff’s RID 1172 (Spuntino and Ciotolla covers) (Suit 17) would be considered later based on the outcome of appeals against the finding of the learned judge in Suit 16. 30 11 [11] This Court will hear appeal on Suit 16 only and determine the 5 appeal whether the finding of the learned judge of infringement on obvious imitation of the 1st Plaintiff’s RID 167 is correct or the finding of infringement is fraudulent imitation or the claim on infringement of the 1st Plaintiff’s RID 167 has no basis. This Court will also hear the 2nd Plaintiff’s appeal to determine whether the 10 2nd Plaintiff in both Suit 16 and Suit 17 had locus to file either of the said actions. [12] In such case, there will be one decision delivered in respect of the said appeal against the finding of the learned judge on 15 infringement against the 1st Plaintiff’s RID 167 and the issue of 2nd Plaintiff’s locus. [13] Parties submitted their oral submissions and also relied on their written submission. After completion of the Plaintiffs’ submission, 20 the Defendants’ submission and the Plaintiffs’ reply, we adjourned the appeals for our decision to a date to be fixed. [14] Later, having perused the records of appeals and considered the Plaintiffs’ and the Defendants’ submissions and the authorities 25 supporting each parties grounds of appeals carefully, we found that there is no appealable error that merit intervention from this Court. The learned judge had arrived into a correct decision that the Defendants in Suit 16 had infringed the 1st Plaintiff’s RID 167 as the Biolife Borneo Bottle was an obvious imitation of the 30 12 registered industrial design. In other words, we affirmed the 5 decision of the High Court. [15] However, we found that the learned judge’s finding that 2nd Plaintiff in both Suit 16 and Suit 17 had no locus to file either of the said actions is erroneous. In other words, we set aside the 10 decision of the High Court in this aspect. [16] It is our unanimous decision that the 1st Plaintiff’s (Appeal No. 1865 and Appeal No. 1868) and the Defendants’ appeal (Appeal No. 1810) is dismissed with no order as to Costs and the 2nd 15 Plaintiff’s appeal is allowed with Costs of RM70,000.00 here and below subject to allocator. We gave our reasons in the following paragraphs in the manner that Part 1 is the reasons for allowing the 2nd Plaintiff’s appeal and Part 2 is the reasons for dismissing 1st Plaintiff’s and Defendants’ appeal. 20 BRIEF FACTS 1st Plaintiff [17] The 1st Plaintiff is a private company incorporated in Delaware 25 under the laws of the United States of America and is the registered proprietor of Registered Design No MY-09-00167-0101 [RID 167] (the subject matter of Suit 16) in Malaysia. RID 167 is in respect of a ‘bottle’ and was registered on 5.9.2008 with a priority date of 5.9.3008. RID 167 claims novelty in respect of the ‘shape 30 and configuration of the article’ as shown below - 13 5 No. Malaysian Industrial Design Registration No. Details Perspective View

MY09-00167- 0101 (the 00167 Design) Priority date :

05.09.2008 Registration date :

05.09.2008 Title : Bottle [18] Below is 1st Plaintiff’s RID 167 sample ‘bottle’ as we had seen it. 10 [19] It is the 1st Plaintiff’s allegation that the 1st Plaintiff’s Eco Bottle is an embodiment of RID 167. The Plaintiffs claim for infringement of RID 167 on the basis that the Biolife Borneo Bottle applied or is an obvious or fraudulent imitation of the design which is the subject of RID 167. 15 14 5 2nd Plaintiff [20] The 2nd Plaintiff is a private limited company incorporated under the laws of Malaysia and is a sub-licensee of the 1st Plaintiff with exclusive rights relating to the RID 167. 10 Defendants [21] The 1st Defendant is a private limited company incorporated under the laws of Malaysia and is a direct selling company licensed by 15 the Ministry of Domestic Trade, Co-operatives and Consumer. [22] The product alleged to be infringing RID 167 is the Biolife Borneo Bottle [Biolife Borneo Bottle] under the Biolife Series. The 1st Defendant is entitled in law to import, distribute, sell and offer for 20 sale the Biolife Borneo Bottle and to lawfully compete with the Plaintiffs in Malaysia. The said products are imported by the 1st Defendant from PT Mitramulia Makmur and sold through retail and direct sales in Malaysia. 25 [23] Below is the 1st Defendant’s sample Biolife Borneo Bottle as we had seen it. 15 5 [24] The 2nd and 3rd Defendants in both Suit 16 and Suit 17 are individual customers registered with the 1st Defendant under the 1st Defendant’s Entrepreneur Program System. 10 [25] The 1st Defendant disputed Plaintiffs’ claim and contended that the Eco Bottle is not an embodiment of RID 167. It does not apply and is not an obvious or fraudulent imitation of the design which is the subject of RID 167, not identical, does not resemble, and/or is not similar in shape, configuration, pattern or ornament to the 15 design which is the subject of RID 167 or for that matter the Eco Bottle and was an independently conceptualized, created and designed by employees of PT CMN International Indonesia and independently manufactured in Indonesia by PT Mitramulia [26] In their Counterclaim and by reason of the aforesaid the Defendants sought declarations of non-infringement. 25 16

(a) Applies the industrial design or any fraudulent or obvious 5 imitation of it to any article in respect of which the industrial design is registered;

(b) Imports into Malaysia for sale, or for use for the purposes of any trade or business, any article to which the industrial design or 10 any fraudulent or obvious imitation of it has been applied outside Malaysia without the licence or consent of the owner; or

(c) Sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any of the articles described in paragraph (a) and (b).” 15 33(1) The owner of a registered industrial design shall have the right to institute legal proceedings against any person who has infringed or is infringing any of the rights conferred by the registration of the industrial design.” 20 33(4) For the purposes of this section, “owner of a registered industrial design” means the registered owner and includes an assignee, a licensee or the beneficiary of a compulsory licence granted under section 27; but if any proceedings are instituted by a person other than the 25 registered owner, it must be proved that that person had made a prior request to the registered owner to institute proceedings for the infringement complained of by him and that the registered owner had refused or failed to institute the proceedings within three months from the receipt of the request, without prejudice however to the registered 30 owner’s right to join in such proceedings.” [38] Then, comes the question whether a sub-licensee is a licensee? In order to understand the nature of the ‘exclusive right’ contemplated under Section 32(1) of the IDA, regard may 35 26 be had to the words of Lord Herschell LC in Steers v Rogers 5 [1893] AC 232 where at page 235 (although the case is involving patent rather than a registered design) described it as follows: “The truth is that letters patent do not give the patentee any right to use the invention – they do not confer upon him a right to manufacture 10 according to his invention. That is a right which he would equally have effectually if there were no letters patent at all; only in that case all the world would equally have the right. What the letters patent confer is the right to exclude others from manufacturing in a particular way, and using a particular invention.” 15 [39] What is the nature of the exclusive rights conferred by intellectual property? Laddie J in Inter Lotto (UK) Ltd v Camelot Group Plc [2004] RPC 8, Vol. 2, pgs. 496-511], quoted with approval a passage from Cornish on Intellectual Property which begins: ‘One 20 characteristic shared by all types of intellectual property to date is that the rights granted are essentially negative: they are rights to stop others doing certain things – rights in other words to stop pirates, counterfeiters, imitators and even in some cases third parties who have independently reached the same ideas, from 25 exploiting them without the licence of the right-owner…’. He then went on at [39] to state that ‘This is true across the whole field of intellectual property.’ [40] IDA contemplates the exclusive right which it confers to be 30 capable of being licensed, as expressly provided for under Section 29(6) of the IDA. The IDA also expressly allows a party 27 other than the owner, i.e. a licensee (or a beneficiary of a 5 compulsory licence) to commence legal proceedings against any person who has infringed or is infringing any of the rights conferred by the registration of the industrial design. [41] In this regard, we agreed that IDA makes no distinction between 10 an exclusive licensee or a non-exclusive licensee, and places no limitations on the definition of a licensee. Then in order to understand the effect of a licence, regard may be had to the principle set out by Lord Diplock in Allen & Hanburys Ltd v Generics UK Ltd [1986] 1 WLR 51, Vol. 2, pgs. 512-568 where 15 although His Lordship was in that case faced with a registered patent had the following to say: ‘A licence passes no proprietary interest in anything, it only makes an action lawful that would otherwise have been unlawful. In the context of 20 the Royal Grant of Patents for Inventions it was a consent given by the proprietor of the patent to another person, the licensee, to do something that the patent entitled the proprietor of it to prevent anyone from doing except with his consent. This is the meaning which licence has borne throughout the UK patent legislation up to and including the Act of 1977. 25 Apart from certain statutory prohibitions… such a licence, at any rate where it is granted by the proprietor of his own free will, may be subject to whatever limitation or conditions the proprietor thinks fit to impose.’ [42] In the present case, it was held that 2nd Plaintiff lacks standing to 30 sue in these proceedings on the basis that 2nd Plaintiff is a sub-licensee of Tupperware Products Inc. (TPI) the licensee of 1st 28 Plaintiff who are the registered proprietors of the 167 and 1172 5 Designs. In our view it is justified to assume that a sub-licensee is a licensee of the ultimate licensor, the industrial design owner. This is on the basis that from the wordings of the third Recital to the Sub-License Agreement dated 1.1.2008 between TPI and 2nd Plaintiff that the latter obtained an exclusive licence from the 10 former to inter alia distribute and sell in Malaysia products that include housewares products. In this respect, 2nd Plaintiff is exclusively licensed to use the design registrations owned by 1st Plaintiff [see Clause 2.1 of 1.1.2008 Agreement (see: page 2858 CCB, Jilid 9] 15 [43] TPI is a licensee of the 1st Plaintiff by virtue of a Licence Agreement dated 1.1.1999. The licence here is not termed as an exclusive licence and it is to manufacture and sell the products [see Recital 2 of 1.1.2008 Agreement [see: page 2857 CCB Jilid 20 9] defined under the Agreement. From the definitions portion of the Agreement it appears that the list of design registrations are assigned from time to time and this therefore envisages not only existing registered industrial designs but also future registered industrial designs and those that may be acquired by the 1st 25 Plaintiff prospectively are added on to this agreement. It was confirmed by Mr Taylor James Ross, SP5, a Vice President of both the 1st Plaintiff and TPI that the 1.1.2008 Agreement covered both the 167 and 1172 Designs [see Q & A No.7 WSSP5, Pages 2109 CCB – Jilid 7]. 30 29 [44] In Dendron GmbH & Ors v Regents of the University of 5 California [2004] EWHC 1163 (Ch), an argument that the fact that a party was a sub-licensee rather than a direct licensee from the patent owner would prevent that party from having a standing to sue for infringement under section 67 of the United Kingdom Patents Act 1977 (‘UKPA’), which confers a right to sue on an 10 exclusive licensee of a patent was rejected. [45] Section 130(1) UKPA defines an exclusive licence as being: ‘a licence from the proprietor of or applicant for a patent conferring on the 15 licensee or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and ‘exclusive license’ and ‘non-exclusive licence’ shall be construed accordingly’. 20 [46] As submitted, the provisions now in the UKPA of 1977 were originally introduced in the Patents Act 1949 (UK) upon the recommendation of a report on the Patents and Designs Act by a Departmental Committee (Cmd.7206), known as the ‘Swan Report’ after its chairman. The Committee’s reasons are at 25 paragraphs 129-134 on pages 29-30 of the Report. Paragraph 129 explains:- ‘When a patentee grants an exclusive license, it is usual to include in the agreement granting the licence a clause permitting the licensee to 30 use the name of the patentee in any proceedings that may have to be taken in the case of infringement of the patent, on the licensee 30 undertaking to indemnify the patentee against the costs of such 5 action. From the point of view of the exclusive licensee this is not an altogether satisfactory expedient, for though the action, being brought in the name of the patentee, is properly constituted in law, the redress obtained may be quite inadequate. A successful plaintiff is entitled to an injunction and to an enquiry as to the damage he has suffered and 10 to payment of the sum found to be due on such enquiry. But in the case assumed, where the invention is being exclusively worked by the licensee, his trade may have suffered serious loss; whereas the patentee, who is the nominal plaintiff in the action, may have suffered little or no damage. In such circumstances, the exclusive licensee, as 15 the law stands at present, has no means of recovering compensation for any loss he may have suffered in consequence of the infringement.’ [47] In the Dendron case, the defendant, The Regents of the 20 University of California (‘UC’) had conferred upon one Target Therapeutics, Inc. (‘Target’) a licence under UC’s patent right to make, have made, use and sell the licensed product and to practise the licensed method. Target then subsequently entered into a further agreement in relation to UC’s patent and granted 25 (with the agreement and consent of UC) further rights and the appointment of one Boston Scientific Ltd (‘Boston’) as having the exclusive right in the United Kingdom to make, offer to dispose of, use or import, or keep whether for disposal or otherwise processes and products made in accordance with UC’s patent 30 including the right to join with UC to bring proceedings in respect of any infringement of the patent after the date of the license. 31 [48] Pumfrey J held at [21] that the words ‘from the proprietor or of the 5 applicant for the patent’ under Section 130(1) of the UKPA could not have been intended to exclude the possibility that the licence might be granted by an agent of the patentee duly authorised for the purpose or of the patentee’s attorney and that in the case of a non-exclusive licence it was his judgment plain that a power to 10 grant sub-licences is correctly to be viewed as a power to grant consents binding upon the patentee: in other words, a licensee with power to grant sub-licences has the power to consent on behalf of the patentee. Unless the consent is given on behalf of the patentee, the sub-licensee would have no defence to an 15 allegation of infringement made by the patentee, since his actions would be without the consent of the proprietor of the patent. [49] At [22], Pumfrey J pointed out that this analysis was consistent with the dictum of Lord Diplock in Allen & Hanburys Ltd. 20 Therefore, the correct analysis of a licence from the owner of a right which contains a power to grant consents to the sub-licensees as agent for and on behalf of the owner. The sub-licensees are therefore licensed by the owner, via the agency of the head licensor. Nonetheless they are licensees of the owner 25 and (in the words of UKPA s.130 (1)) has licenses ‘from the proprietor’. [50] His Lordship then in explaining the nature of the transaction between UC, Target and Boston and attaching little significance to 30 the fact that ‘the grant of the licence is by Target, who had the 32 power to grant sub-licences’ (which were the wordings set out in 5 the sub-licence agreement) found on the basis of Boston enjoying rights as an exclusive licensee under the UC patent to the exclusion of UC had a standing to sue in respect of infringement proceedings. In this respect, he said: 10 ‘I do not accept that to characterise the licence enjoyed by Boston as “an exclusive sub-licence” helps the analysis. It assumes, silently, that there is between the patentee and the so-called exclusive sub-licensee a licensee under the same patent who has implicitly some right in respect of the patent. If the effect of the transaction is to 15 deprive “the licensee” of any rights in respect of the patent, then, to that extent, he is no longer a licensee under the patent. In other words, it tends to assume that which is sought to be proved. Thus, I attach no significance to the fact that the grant of the licence is by Target, who had the power to grant sub-licences. It is not clear to me, 20 indeed, that this transaction is necessarily an execution of that power at all. In any event, it seems to me that the argument attaches too much significance to the precise manner in which the transaction is affected. Thus, for example, had Target released all its rights in respect of the patent in suit to UC, and, in the same transaction, UC 25 had then granted an exclusive licence to Boston, there could not, I think be any objection. This consideration is further reinforced if one considers that separate exclusive licences can, to all appearances, be granted to manufacture and to import a patented product. It would be odd indeed if those two exclusive licences granted separately by the 30 patentee were good, but a single exclusive licensee in respect of all acts with a power to grant further licenses could not, by granting a licence exclusive both of him and the patentee to a third party bring about exactly the same state of affairs.’ 33 5 [51] The above-quoted part of the judgment arose from the specific provisions of Section 130(1) of the UKPA under which, in order to be an exclusive licensee and entitled to sue, Boston needed to demonstrate that its licence conferred on it a right under the patent “to the exclusion of all other persons (including the 10 proprietor or applicant)”. Since both the proprietor (UC) and the head licensee (Target) were excluded from the field of activity sub-licensed to Boston, His Lordship held that it made no difference that the exclusion was effected by the licence and sub-licence transactions as opposed to a direct transaction between 15 UK and Boston. [52] In IDA context, in our view, there is no corresponding requirement under the IDA that a licensee must be exclusive (i.e. be entitled to exclude the proprietor from his licensed field of activity). IDA 20 carries wider principle that the end result of the transactions is that 2nd Plaintiff is licensed under the registered designs and it does not matter that this result was reached by two transactions, a licence followed by a sub-licence. In other words, the IDA simply by using the word “licensee” could not have been intended 25 to exclude the possibility that the licence might be granted by an agent of the owner duly authorised for the purpose or by the owner’s attorney. [53] Based on the above reasons, the provisions of the IDA are in fact 30 much broader in conferring a right to sue than the UKPA, since 34 Section 33(4) of the IDA confers rights to sue on all licensees 5 whether exclusive or non-exclusive, unlike Section 67 of the UKPA which only confers such rights on exclusive licensees. Thus, the principle in above authorities is that firstly a licence passes no proprietary interest in anything, it only makes an action lawful that would otherwise have been unlawful. Secondly, a 10 licence from the proprietor of a patent or a registered design does not exclude the possibility that a licence might be granted by an agent of the patentee duly authorised for the purpose. A head licensee is therefore acting as an agent of the proprietor when he sub-licenses the right under the patent or registered design to a 15 sub-licensee. The licensee by himself has no right to the patent or registered design, and can only be conferring a consent as agent of the proprietor. We agreed with 2nd Plaintiff that this is a correct proposition of the law. 20 [54] Another observation is that although, the provisions of the UKPA are not in pari materia with the IDA, the principles regarding the treatment of sub-licensees is the same and applying the above to the present case. What is pertinent here is 2nd Plaintiff’s standing in the eyes of 1st Plaintiff which is the registered proprietor of the 25 167 and 1172 Designs. An examination of the third Recital of the 1.1.2008 Agreement between TPI and 2nd Plaintiff shows that the latter obtained an exclusive licence from the former to inter alia distribute and sell in Malaysia products that include housewares products and that by virtue of Clause 2.1 of the same, 2nd Plaintiff 30 is exclusively licensed to use the design registrations owned by 35 the 1st Plaintiff in Malaysia. It cannot be denied that firstly TPI is 5 the agent of 1st Plaintiff and that 2nd Plaintiff is licensed to use the design registrations in Malaysia to the exclusion of TPI and even the 1st Plaintiff, the owner of the registered designs. In short, 2nd Plaintiff was for all intents and purposes an exclusive licensee in terms of usage of the design registrations in Malaysia. 10 [55] Unlike Section 67 UKPA which specifically only allows an exclusive licensee to initiate infringement proceedings, section 33(4) of the IDA makes no distinction between an exclusive licensee and a non-exclusive licensee and this therefore implies 15 that both an exclusive licensee and a non-exclusive licensee should be construed as having a standing to sue for an industrial design infringement action. [56] Based on the explanation and in light of 2nd Plaintiff being an 20 exclusive licensee of 1st Plaintiff, it is our considered view that 2nd Plaintiff has satisfied all the requirements set out under section 33(4) of the IDA and it does have the required locus standi to sue the Defendants for infringement in both Suits 16 and 17. 25 [57] This is further fortified by the Certificate of Appointment dated 15.01.2018 (“Certificate of Appointment”) [page 2950 CCB – Jilid 10] where 1st Plaintiff has, for the avoidance of doubt, provided a confirmatory document confirming that 2nd Plaintiff at all material times had the required consent or authority to commence any 30 proceedings concerning any infringement of intellectual property 36 belonging to 1st Plaintiff. This consent is only provided by 1st 5 Plaintiff in their capacity as the registered owner of the 167 and 1172 Designs. The Fourth paragraph of the Certificate says as follows - “Tupperware Brands Malaysia Sdn Bhd has all material time authority 10 to commence any proceedings concerning any infringement of intellectual property belonging to DART INDUSTRIES INC. in Malaysia including for the avoidance of doubt the above suit”. [The above suits referred to include suits 16, 17, 18 and 19] 15 [58] We are fully satisfied that the learned judge failed to consider the judgment in Dendron case at all and made an erroneous distinction between a sub-licensee and a licensee contemplated under Section 33(1) of the IDA. The learned judge fell into error in 20 his decision. [59] Based on our above finding, 2nd Plaintiff does not require consent to commence any proceedings concerning any infringement of intellectual property belonging to 1st Plaintiff under Section 33(4) 25 of the IDA. [60] Further in the judgment, the learned judge constructed section 33(4) IDA by distinguishing the 1st limb and 2nd limb and held that the 1st limb is subject to the 2nd limb. He said this is clear from the 30 use of the word "but" in the 2nd limb. Accordingly, a licensee can only file a RID infringement suit if the 2nd limb is satisfied. A 37 contrary interpretation will render redundant the 2nd limb. We did 5 not agree. It is clear that section 33(4) IDA has two limbs which are separated by semi-colon. In our view, the 1st limb expands the definition of ‘owner’ for the purposes of conferring a right to bring an action under the section to include, in addition to the registered owner, an assignee, a licensee or beneficiary of a compulsory 10 licence. [61] As we had determined earlier, 2nd Plaintiff is a licensee and therefore obtains a right to sue under the 1st limb. The 2nd limb (after the semi-colon) is only procedural, and applies to situations 15 where an action is commenced by a person other than the registered owner and without the presence of the registered owner. This present action however was commenced by the registered owner, the 1st Plaintiff and therefore falls outside the scope of the 2nd limb. 20 [62] It is also our view the fact that 2nd Plaintiff is also a party to the action as 1st Plaintiff’s co-Plaintiff does not alter this conclusion, nor is there any warrant for notionally dividing a single action brought by two Plaintiffs and treating it as if there had been two 25 separate actions brought separately by each Plaintiff. Such approach is not supported by the wording of the 2nd limb and furthermore would produce nonsensical results. [63] This construction is fortified by the last few words of the said limb 30 which states that it is without prejudice however to the registered 38 owner’s right to join in such proceedings. This implies that the 5 proceedings which are instituted by a person other than the registered owner must be proceedings to which the registered owner is not already a party. This would apply where a licensee, etc. who is a person other than the registered owner who, having made a prior request to the registered owner to commence an 10 action and that registered owner having either refused or failed to commence such proceedings then after three (3) months of the request having been made, that person goes ahead and commences an action without the registered owner. Should the registered owner wish to be included in the action after it has 15 been commenced by the said person, the registered owner is not later prejudiced to join in the proceedings. [64] In the present case, it is the registered proprietors of both the 167 and 1172 Designs who commenced the proceedings. This is 20 neither a case where the infringements were brought to the attention of the registered proprietors and they decided not to take any action nor is it a situation where the registered proprietors decided to join in the action at some later stage. Therefore, in our view 2nd limb of section 33(4) IDA has no application to 2nd 25 Plaintiff. [65] It can be seen that a contrary construction would produce nonsensical results. We agreed with 2nd Plaintiff and in fact from the Swan Report quoted above, it will often be the case that a 30 licensee will suffer very substantial damage (for example, through 39 loss of sales caused by competition from the infringing articles on 5 the market) while the right owner may suffer little direct damage. It would be absurd if a licensee who brings an action on his own after the owner fails to launch proceedings is entitled to recover for such damage, but a licensee who cooperates with the owner and becomes co-plaintiff were prevented from recovering for such 10 damage. [66] The 2nd Plaintiff further submitted that if the learned judge’s interpretation were indeed the correct construction of the subsection, then a licensee could artificially preserve its right to 15 take action by giving a formal notice to the owner requesting the owner to take action. The owner, instead of taking action, would then do nothing for three (3) months. The licensee would then commence an action as sole plaintiff; and the owner could then be joined a co-plaintiff under the concluding words of the 2nd limb 20 the very next day. A construction of the sub-section which requires such a rigmarole to claim for the damage it has suffered should be avoided. In our considered view, section 33 (4) of IDA must be given a construction that would promote the underlying purpose of that section (s. 17A of the Interpretation 1967 [Act 25 388]). [67] We considered the submission and based on the reasons given, we agreed that 2nd Plaintiff’s standing to sue is derived from the wordings of Section 33(1) IDA read together with the 1st limb of 30 Section 33(4) IDA which states quite clearly that for the purposes 40 of this section, “owner of a registered industrial design” means the 5 registered owner and includes an assignee, a licensee or the beneficiary of a compulsory licence granted under section 27 IDA. [68] It is also our considered view that to suggest that 2nd Plaintiff should still be required to prove consent from 1st Plaintiff in a case 10 where 1st Plaintiff has commenced an action together with 2nd Plaintiff is an absurd proposition for the reasons explained and would be contradictory to the intention contemplated for those wordings in the IDA. It makes sense that as the exclusive licensee of 1st Plaintiff, sale of articles applying the 167 and 1172 Designs 15 in Malaysia was performed entirely by 2nd Plaintiff, any damages therefore that ensues from the sale of the infringing articles could therefore only be realistically felt immediately by 2nd Plaintiff and proven by them as well. It therefore comes as no surprise that 2nd Plaintiff became a party to the proceedings as otherwise the 20 Plaintiffs would unnecessarily have forfeited their right to damages which is a remedy categorically provided under the IDA. [69] Further support that the 2nd limb of the IDA applies to the commencement of an action only where no registered proprietor 25 is involved may be found in comparable provisions around the world. We referred to the Case C-419/15 Thomas Philipps GmbH & Co. KG v. Grüne Welle Vertriebs GmbH (22 June 2016) where the European Court of Justice ruled that a licensee under a registered design can claim damages for its own losses 30 41 under Article 32(3) and (4) of Regulation No 6/2002. Its key 5 reasoning was as follows:- “31. Furthermore, the possibility for the licensee to seek, in the proceedings laid down in Article 32(3) of Regulation No 6/2002, compensation for damage suffered by it is consistent with the objective 10 set out in recital 29 of that regulation, consisting of ensuring that the rights conferred by a Community design can be enforced in an efficient manner throughout the territory of the European Union and also with the purpose of that provision and of Article 32(4) of that regulation, which is to give to the licensee the procedural means to bring proceedings in 15 respect of the infringement and thus to defend those rights which have been conferred on it. To prohibit it from acting for that purpose in those proceedings would make it totally dependent, including in the case of an exclusive licence, on the right holder of the design to obtain compensation for damage suffered by it and, should that right holder not 20 bring proceedings, would, therefore, be detrimental to the exercise of those rights. Therefore, such a prohibition is contrary both to the objective of Regulation No 6/2006 and to the purpose of Article 32(3) and 25 [70] Further, whilst the above reasoning obviously relates to the specific provisions of the EU Regulation, the broader point that has to be borne in mind is that the 2nd limb of Section 33(4) IDA (bearing in mind that Section 33(4) IDA is comparable to Article 32(3) and (4) of Regulation No 6/2002) was obviously intended by 30 the Malaysian Parliament as a procedural safeguard and in conferring the rights of action on licensees (amongst others) under the said provision presumably intended licensees to have a 42 separate right who might otherwise suffer loss without legal 5 recovery. [71] Based on the reasons given above, we found the learned judge’s reliance on his own judgment in Kingtime International Ltd & Anor v Petrofac E & C Sdn Bhd [2018] MLJU 1840 which in 10 turn is based on Premier Products Co. Ltd v Zamrud Fibre Industries (M) Sdn Bhd & Anor [1994] 4 CLJ 1043, Fukuyama Automation Sdn Bhd v Xin Xin Engineering Sdn Bhd & Ors [2015] 9 MLJ 823 is also misplaced as these cases turned on the wordings of Section 61 of the Patents Act 1983 (‘PA’) which is a 15 specific provision provided for patent infringement proceedings by a licensee and beneficiaries of a compulsory licence. [72] We also observed that the learned judge also relied on section 61 learned judge’s reliance of section 61 PA in this case is misplaced or erroneous. We read the construction of section 61 PA and it explains as follows-i. Section 61(1) PA begins with the definition of a beneficiary 25 as meaning (i) any licensee unless the licence contract provides that the provisions of this subsection do not apply or provides different provisions, and (ii) the beneficiary of a compulsory licence granted under section 51. 30 43 ii. Section 61(2) PA then specifically provides that ‘Any 5 beneficiary may request the owner of the patent to institute Court proceedings for any infringement indicated by the beneficiary, who shall specify the relied desired’. iii. Section 61(3) PA provides that ‘The beneficiary may, if he 10 proves that the owner of the patent received the request but refuses or fails to institute the proceedings within three months from the receipt of the request, institute the proceedings in this own name, after notifying the owner of the patent of his intention but the owner shall have the right 15 to join in the proceedings.’ [73] It is indisputable that the wordings of sections 61(1), 61(2) and 61(3) of the PA differ significantly from section 33(4) of the IDA. The structure and relationship of the provisions is completely 20 different from Section 33(4) IDA. Whereas (as discussed above), Section 33(4) IDA’s first limb confers a right of action on licensees and other beneficiaries before the 2nd limb introduces a procedural limitation, there is no similar provision in section 61 of the PA. Instead, the right of a beneficiary to take action is reached 25 only via the gateways of subsections 61(2) and 61(3) PA successively. The wording found in section 61(2) of the PA is altogether omitted from the IDA, which is a later Act. [74] The 2nd limb of Section 33(4) of the IDA by comparison is 30 expressed so as to place a procedural restriction which cuts down 44 the prima facie right of all beneficiaries to sue which is conferred 5 by the 1st limb. It appears therefore that instead of giving meaning to the clear wordings of Section 33(4) of the IDA the learned judge had imported into it a meaning that was derived from Section 61(1) of the PA, despite the obvious differences in structure and wording between the two provisions. 10 [75] The law is trite that if the meaning of a statute is not plain, it is permissible in certain cases to have recourse to a construction by implication and to draw inferences or supply obvious omissions. But the general rule is not to import into statutes words which are 15 not to be found there [per Patteson J in King v Burrell (1840) 12 Ad 8 El. 460, 468] and there are particular purposes for which express language is absolutely indispensable. Words plainly should not be added by implication into the language of a statute unless it is necessary to do so to give the paragraph sense and 20 meaning in its context.’ [See: Craies on Statute Law (1971) (7th Ed.) p 109. [76] In our view, the wordings of Section 33(4) of the IDA were perfectly clear and unambiguous and it should not be 25 misinterpreted or assigned with another meaning. This has been decided by Federal Court in Positive Vision Labuan Limited v Ketua Pengarah Hasil Dalam Negeri and other appeals (2017) 2 MLJ 421; 30 45 “The wordings of section 3B of the ITA and sections 3A and 2(3) of 5 LABATA as well as the Exemption Order are clear and unambiguous. It is trite that when the provisions of law are clear and does not admit of any ambiguity, then the provisions must be strictly interpreted. This court in the case of Krishnadas Achutam Nair & Ors v Maniyam Samykano (1997)1MLJ94 had held: 10 “the function of a Court when construing an Act of Parliament is to interpret he statute in order to ascertain legislative intent primarily by reference to the words appearing in the particular enactment. Prima facie, every word appearing in an Act must bear some meaning. 15 For Parliament does not legislate in vain by the use of meaningless words and phrases. A judicial interpreter is therefore not entitled to disregard words used in a stature or subsidiary legislation or to treat them as superfluous or insignificant. It must be borne in mind that: 20 “As a general rule a Court will adopt that construction of a statute which will give some effect to all of the words which it contains Per Gibbs J in Beckwith v. R. (1976)12ALR333, at p.337.” 25 [77] In Westminister Bank Ltd v Zang [1966] AC 182 at p 222, Lord Reid said: “But no principle of interpretation of Statutes is more firmly settled than the rules that the Court must deduce the intention of Parliament from the 30 words used in the Act. If these words are in any way ambiguous – if they are reasonably capable of more than one meaning – or if the provision in question is contradicted by or is incompatible with any other provision in 46 the Act, then the Court may depart from the natural meaning of the 5 words in question but beyond that we cannot go.” [78] In the case of Marimuthu a/l Velappan v Abdullah bin Ismail [2007] 2 MLJ 23, the Court in relying on the decision of Subramanya Sastry v Sheikh Ghannu AIR 1935 Mad 928 held 10 that it was a cardinal principle of the interpretation of statutes that the court should look first to the words of the statute itself and if these words are plain, it is not permissible to consider what the intention of the statute was or the previous history of the law. [See also Cheng Bee Teik & Ors v Peter Selvaraj & Anor 15 [2005] 4 MLJ 301, Manokaram a/l Subramaniam v Ranjid Kaur a/p Nata Singh [2009] 1 MLJ 21. [79] Notwithstanding the above and the clear wordings of section 33(4) IDA the learned judge had taken it upon himself to conclude 20 that it was necessary to rely on provisions from other statutes and particularly in this instance sections 61(1), 61(2) and 61(3) of the PA to determine what was the ambit of section 33(4) IDA. We did not have the benefit of appreciating the reason or justification from the learned judge why recourse need to be taken in looking 25 at the provisions of Section 61(1) of the PA. The learned judge did not give his reasons in the grounds of judgment. [80] In our view, the learned judge had clearly disregarded the fact that even if he wished to rely on the construction given to section 30 61(1) of the PA to determine section 33(4) of the IDA that the 47 latter was a later Act that had deliberately omitted the clear 5 wordings of section 61(1) of the PA and this must mean that Parliament had its reasons to do so; expressio unius est exclusio alterius. We agreed with 2nd Plaintiff’s view that if Parliament had intended to reproduce the effect of section 61(1) of the PA in the field of industrial designs, nothing would have been simpler than 10 to reproduce its wording in the IDA. It is also necessary to note that the IDA was enacted after the case of Premier Products (supra) was decided. [81] In relying on sections 61(1), 61(2) and 61(3) of the PA, we found 15 the learned judge failed to undertake an examination between these provisions and that of section 33(4) of the IDA and determine whether there were any differences and if there were any why that might have been the case? It was impressed upon us that the learned judge also failed to consider that perhaps 20 Parliament’s act of drafting section 33(4) IDA differently from the PA was to avoid the absurdity that has resulted in the case of Premier Products case as a result of the construction that was given to section 61 PA in that case; quod vanum et inutile est, lex non requirit (the law does not call for what is vain and useless). 25 [82] The 2nd Plaintiff submitted that in Premier Products case (although in that case, the trial Judge was not convinced that the registered owner of the patent there was the rightful owner,) it was found that notwithstanding the presence of the registered 30 owner in the proceedings, the licensee still had to show, because 48 of the wordings of section 61(1) PA that they had made a written 5 request to the registered owner to be included in the proceedings and that the latter had allowed them to be so included. The trial Judge gave no reasons why in spite of section 61(1) PA being worded in a permissive manner, it had to be construed mandatorily and that notwithstanding that it was implicit in the 10 registered owner’s presence together with the licensee that the former must have consented to the licensee’s presence in the proceedings that proof of consent had to still be adduced in Court. It went further by saying that the learned judge in that case also did not construe the wordings of section 61(1) of the PA 15 purposively in the circumstances that it must have been intended to be met in a case only where the registered proprietor was not part of the proceedings and or that he had refused or failed to commence proceedings. This absurd outcome has evidently been remedied by Parliament in the IDA and to now 20 reintroduce the flaws in the PA is simply unjustifiable and contrary to what has been cured by Parliament. [83] We had construed the wordings of section 33(4) of the IDA purposively and give it its plain meaning unlike the interpretation 25 that was given by the learned judge. We reiterate our stand that the 2nd limb of Section 33(4) of the IDA plainly read, shows that it only applies to proceedings commenced by a person other than the registered proprietor. It is a procedural safeguard apparently intended to prevent an alleged infringer being subjected to two or 30 more separate actions by an owner and by a licensee for the 49 same acts of alleged infringement, which would be possible if the 5 2nd limb does not exist and licensees could commence actions independently of the registered owner. Therefore, the second limb of section 33(4) of the IDA has no application in the circumstances and there is no need for proof of a request followed by a refusal or failure to sue by the owner. The owner’s 10 consent to 2nd Plaintiff joining in the action is demonstrated by 2nd Plaintiff’s co-joinder as co-Plaintiff. [84] Based on the above reason, it follows that an exclusive sub-licensee is not estopped from filing a design infringement action 15 by virtue of an agreement between it and the sub-licensor under the IDA. The learned judge made a conclusion that even if it is assumed that 2nd Plaintiff was not barred by section 33(4) IDA from filing Suits 16 and 17, they certainly would be estopped by Clauses 3.3 and 6.4 of the 1.1.2008 Agreement from doing so. 20 We accepted the view that this reasoning is evidently flawed for a number of reasons. [85] The most fundamental of those reasons is that even if it is assumed that 2nd Plaintiff’s joinder in the claim would be a breach 25 of a contractual obligation owed to TPI, the fact that a claim is brought in breach of a contractual obligation owed to a non-party provides no ground of defence to a defendant who is a stranger to the contract. The Defendants to these suits have no legal, equitable or other right to require that contractual provisions 30 between two strangers should be enforced so as to benefit them. 50 The person entitled to the benefit of the contract (in this case, 5 allegedly TPI) may choose to enforce it or not according to its own commercial interests. [86] Further, it was suggested that the learned judge may have thought that the IDA contains a provision similar to that in Section 10 61(1) (a) of the PA. We thought that it is quite possible because the statutory right of a licensee to sue under Section 33(4) IDA arises irrespective of whether there is anything in the licence contract which would purport to restrict such a right of action. But even if there were some legal basis for applying in favour of the 15 Defendants contractual restrictions in the 1.1.2008 Agreement, no such restrictions exist when the Agreement is properly analysed. Firstly Clause 3.3 of the Agreement is completely irrelevant for the purposes of construing 2nd Plaintiff’s standing to sue in the present proceedings as it merely provides: 20 ‘… except as may be necessary for the purpose of among others, carrying out TBM’s obligations under the Sub-License, TBM agrees that it will not represent in any manner whatsoever’ that it has ‘any license, rights, title or interest’ in any of the designs, and TBM acknowledges that 25 it neither has nor shall secure under this Agreement any license, rights, title or interest in any of the… designs whether registered or unregistered…’ [87] The 2nd Plaintiff submitted that it is difficult to understand how 30 Clause 3.3 of the 1.1.2008 Agreement may be construed as forming an estoppel barring 2nd Plaintiff from filing an infringement 51 suit if at all since it merely supplements Clause 2.1 which sets out 5 quite clearly, and which the learned judge accepted, that 2nd Plaintiff had the exclusive license to use amongst others the registered designs for the purposes of sale and distribution of products in Malaysia. By virtue of Clause 3.3 of the 1.1.2008 Agreement, 2nd Plaintiff agrees that save as to representing itself 10 as the exclusive licensee authorised to use 1st Plaintiff’s registered designs for the purposes of sale and distribution of the products in Malaysia it will not represent itself otherwise. In other words, it will not represent in any manner whatsoever that it has, for example, a license to manufacture or package or any other act 15 (other than selling and distributing) imaginable as being licensed or that it has a license in any territory other than in Malaysia. The same construction should apply to the remaining words of Clause 3.3 of the 1.1.2008 Agreement. No question of estoppel arises from this. 20 [88] Clause 6.4 of the Sublicense Agreement provides that: “6.4 TPI shall have the sole responsibility and discretion in taking any action or actions as may be necessary or desirable to preserve and 25 protect the validity and goodwill pertaining to the Intellectual and Industrial Property Rights which are the subject of this SUBLICENSEE Agreement. The SUBLICENSEE agree to cooperate fully with TPI in the protection of the Intellectual and Industrial Property by promptly informing TPI of any infringements or misuse of such properties which 30 come to the SUBLICENSEE’s attention. Any litigation or other actions 52 involving these properties shall be at the expense of and under complete 5 control of TPI.” [89] Perusal of Clause 6.4 of the Agreement, this is a contractual term agreed between 2nd Plaintiff and TPI, which sets out whose responsibility and discretion it is to preserve and protect the 10 validity of and goodwill pertaining to the intellectual and industrial property rights under the 1.1.2008 Agreement between these two parties. 2nd Plaintiff submitted that it is absurd to suggest that this clause which is only enforceable between these two parties could in any way be enforceable against third parties or could amount to 15 an estoppel barring 2nd Plaintiff from filing Suits 16 and 17. In Dunlop Pneumatic Tyre Co., Ltd v Selfridge & Co., Ltd [1915] AC 847 the rule that no one except a party to a contract could enforce it was affirmed by the House of Lords: 20 ‘My Lords, in the law of England certain principles are fundamental. One is that only a person who is a party to a contract can sue on it. Our law knows nothing of a jus quaesitum tertio arising by way of contract.’ [See also Macon Works & Trading Sdn Bhd v Phang Hong 25 Chin & Anor [1976] 2 MLJ 177] [90] In our view, Clause 6.4 above cannot be construed as operating as a waiver (if at all) against any party other than TPI and at best a breach of it could only attract an action by TPI against 2nd 30 Plaintiff. We agreed that there is nothing unusual that by Clause 6.4, it sets out the responsibility and discretion in taking the 53 required action in the event of infringement, is by TPI, an agent of 5 1st Plaintiff and proprietor of the registered designs. It is purely administrative in nature. However Clause 6.4 cannot be interpreted so broadly as to mean that it is only TPI that has the required standing to file any infringement action. Such an interpretation is not sensible as not only will it exclude 2nd Plaintiff 10 but also 1st Plaintiff, the owners of the 167 and 1172 Designs from filing an infringement action. [91] Based on the above reasoning, it is our considered view that the learned judge clearly misdirected himself not only on the law but 15 also on the facts when he dealt with the issue of 2nd Plaintiff’s standing to sue. The learned judge was misled by his own decision in Kingtime International Ltd case and failed to construe section 33(4) of the IDA plainly on its own wording. The findings of the learned judge being so fundamentally flawed on 20 the law, must be reversed. [92] The appellate court can interfere with the findings of a trial Judge in instances including those where the trial judge would have misapprehended and applied the principles of law wrongly to a 25 given case. [See: Yoong Sze Fatt v Pengkalen Securities Sdn Bhd [2011] 4 MLJ 805: Lee Ing Chin @ Lee Tech Seng & Ors v Gan Yook Chin & Anor [2003] 2 MLJ 97]. 30 54

[94] We heard parties’ submissions both oral and written. Their 15 submissions can be summarized in the following manner. [95] The 1st Plaintiff submitted that the learned judge erred when found that 1st Plaintiff failed to discharge the legal and evidential burden required for a finding of fraudulent imitation when they in 20 fact had, guided by the decision in Polyaire Pty Ltd v K-Aire Pty Ltd & Ors [2005] HCA 32. By that reason the learned judge erred when failed to find that the burden had shifted to the Defendants to rebut the presumption of copying that arises from the similarity between the Infringing Articles and the 167 25 Designs. [96] Having referred to Polyaire case, which was also applied by the learned judge in his grounds of judgment, 1st Plaintiff contended that the learned judge failed to appreciate the law in the said case 30 based on the evidence before him. Had the learned judge 55 appreciate the evidence, he would find the imitation is fraudulent 5 imitation because the features of shape and configuration of the Biolife Borneo bottle constituted a fraudulent imitation of the RID capturing the 167 Design is not necessary to be proved for a finding of fraudulent imitation and had therefore applied a wrong standard on the evidential burden required to be met by 1st Plaintiff. 15 [97] The 1st Plaintiff submitted that the learned judge finding was based solely on the evidence of one Indra Mahaputra Pattiwael, SD4. The learned judge’s evaluation of the evidence in light of the law as set out in Polyaire case is misconceived and in any event, in failing to consider any other evidence, he manifestly 20 misdirected himself on this issue. Had the learned judge analyzed all the evidence together with the principles set out in Polyaire case critically he would have come to the conclusion that not only had 1st Plaintiff on its part offered enough evidence to raise a presumption that the Defendants were aware of the 167 Designs 25 but that the burden had shifted to the Defendants to rebut a presumption of copying as set out in the case of Grafton v Watson (1884) 51 LT (NS) 141. [98] It was submitted that for the purposes of determining whether or 30 not an alleged infringing article was an imitation it is not 56 necessary to enquire as to whether the author of the alleged 5 infringing design made use of the registered design. A finding of imitation may be made even where the author of it never knew of the registered design at all. We followed the argument and in other words knowledge is not the relevant criteria. 10 [99] An obvious imitation is one where there is a resemblance to the original design being immediately apparent to the eye. A visual comparison between the registered design and the alleged infringing article decides an obvious imitation. A fraudulent imitation on the other hand is one where the differences are both 15 apparent and not so slight as to be insubstantial but which, for example, have been made merely to disguise the copying. Fraudulent imitation must require something more than is required for obvious imitation since visual comparison is not of itself sufficient to establish it. 20 [100] It was submitted that is not necessary for the claimant to prove that the author of the alleged infringing article had ‘actual knowledge’ of the registered design. It is enough for the claimant to show by a permissible inference of knowledge, belief or intent 25 that could render conduct that is fraudulent. Further, unimportant differences which are sufficient to prevent the imitation from being obvious, is not a fact of which the imitator can avail itself for fraudulent imitation and an intention to deliberately copy may be inferred from extrinsic evidence. Once the claimant 30 establishes this, the burden shifts to the Defendants to rebut the 57 presumption of copying that is established on inference of the 5 above. [101] It was further submitted that what amounts to a fraudulent imitation is not to be defined restrictively and each case should be decided on its own individual set of facts. It was contended 10 that the Courts have therefore in cases concerning a claim of fraudulent imitation critically analyzed: i. the history and background of the parties relative to the registered design and the infringing articles including 15 whether they were in the same business and for how long; ii. the position of the defendant i.e. whether it is a manufacturer, distributor or seller; 20 iii. how long articles embodying the registered design have been in the market or the registered design has subsisted; iv. the relationship between the parties relative to the registered design and the infringing articles – whether they 25 were competitors, whether the defendant company was made up of ex-employees of the claimant, etc.; v. would it be reasonable to expect in the position of the defendant to have known the registered design; 30 58 vi. how the author of the infringing article came up with the 5 design relative to his background and experience; vii. whether any party may have put the author into possession of the registered design and come up with a design so close as to resemble the registered design so that it evokes the 10 registered design but with differences introduced to deliberately evade infringement and see whether it may be inferable from the above that there has been an infringement. 15 [102] Therefore, the kind of fraud contemplated here, does not require that an actual intention to cheat must always be proved; proof of misconception of the extent of a person’s obligation, to act or to refrain from acting in a particular way, may suffice. And whether this has occurred has to be determined based on the facts of 20 each case. [103] On facts, it was submitted that the Defendants evidence that the Biolife Borneo bottle was created independently by SD4 cannot be true. This is because, apart from his oral evidence, hand 25 drawn sketches provided in the form of Exhibits D70A, B and C in respect of the Biolife Borneo bottle were adduced in Court for the first time only during the course of trial and that they were un-dated, un-named and un-corroborated by any other documentary evidence. No other technical, engineering, Auto- 30 Cad or manufacturing drawings were produced in Court. 1st 59 Plaintiff also commented SD’s evidence who said that products 5 bearing the Tupperware brand had been available in Indonesia for over twenty (20) years and that articles embodying the 167 Designs i.e. the Tupperware Eco Bottle had been available for at least five (5) years in Indonesia. Notwithstanding this, SD4 took the position that prior to the actions being commenced against 10 the 1st Defendant he had not heard of the Tupperware line of products or the Tupperware Eco Bottle. [104] It is against this backdrop and other evidence that 1st Plaintiff submitted the learned judge had misdirected himself on the law 15 and the evidence thereby requiring interference in the form of not only a fresh appraisal of the evidence that had been adduced in Court but also a reversal of the High Court’s finding in this matter. 20 [105] This is in further supported, and particularly in the case of the Tupperware Eco Bottle in Suit 16, where two judgments which were obtained by 1st Plaintiff in the Courts of Semarang [Putusan Mahkamah Agung Republik Indonesia Nomor 594 K/Pdt.Sus-HKI/2017 Semarang - Pages 2951–3134 CCB – Jilid 10] and 25 Surabaya [Putusan Mahkamah Agung Republik Indonesia Nomor 874 K/Pdt.Sus-HKI/2017 - Surabaya Pg 3135–3319 CCB–Jil 10-11] and which were against Indonesian consultants selling Moorlife products and in particular another bottle known as the Biolife Bottle Exhibit P60 for having infringed 30 Indonesian Design Registration No. id 0024 152-d which has 60 been applied to the Tupperware Eco bottle in Indonesia. It is 5 evident from the grounds of judgment there that the Tupperware Eco Bottle has been on sale in Indonesia since at least 2011. [106] Given the concession made by the Defendants themselves that the Tupperware Eco Bottle had been available in the Indonesian 10 market for at least five (5) years and the aforementioned Surabaya and Semarang judgments corroborating this, 1st Plaintiff submitted that it would have been incumbent upon the learned judge to have first concluded that the design of Tupperware Eco Bottle was known in Indonesia long before the 15 Biolife Borneo bottle was designed and manufactured. [107] Additionally at trial, 1st Plaintiff also argued that evidence of another bottle i.e. the Biolife bottle Exhibit P60 manufactured also by MMM and that virtually had all the features of shape and 20 configuration of the Tupperware Eco Bottle including the four spoon like depressions and overall curvature as illustrated below showed that the Biolife Borneo bottle was a design around of the Biolife bottle and therefore changes introduced to the Biolife Borneo bottle including the reduction in the number of 25 depressions and the introduction of a motif on the depression was made intentionally to disguise copying of the 167 Design. [108] On the contrary, the Defendants submitted that the learned judge failed to find that the features of shape and configuration 30 61 of the Biolife Borneo bottle was not an obvious imitation of the 5 167 Designs. Further, when considering the question of infringement, it is the registered design as shown in the representations of the RID which must be compared. An actual manufactured article embodying the design may be looked at to assist but care must be taken not to introduce features not in the 10 registered design which the learned judge failed to do. [109] The Defendants submitted that it is clear from the proposition in law that the manufactured article must be an embodiment although if there are additional features to the embodiment they 15 must be disregarded. It must follow that if the manufactured article comprises different features it is not an embodiment and must not be considered when making a comparison. Only the design as registered must be looked at. The comparison between the registered design and the alleged infringing article 20 to ascertain if the same is an imitation must be a visual comparison. The registered design and alleged infringing articles are placed side by side and compared as a whole as a matter of the impression on the eye. 25 [110] The Defendants called SD1, who had 28 years of experience in industrial designs and who holds the degree of Bachelor of Design (Industrial). SD1 conducted a comparison of RID 167 and the Biolife Borneo Bottle and in his Report exhibited to his Affidavit dated 20.10.2017 set out the detailed differences 30 between the same. SD1 concluded that the designs are different 62 from the aspects of shape, configuration and aesthetics. SD1 5 maintained his opinion under cross-examination. [111] By reason thereof, it was submitted that the learned judge ought to have taken the same into consideration to at least guide him on the differences in the designs in order that when he assesses 10 the designs, he does so with a mind properly instructed. [112] Additionally, the Plaintiffs’ ‘expert’, SP6, withdrew her Report on this issue. The only ‘guide’ or ‘assistance’ before the learned judge is the evidence of SD1 which ought not to have been 15 wholly rejected. OUR DECISION [113] At the High Court, the case went for full trial. At its conclusion, 20 having assessed the evidence of witnesses and documents tendered in Court, the learned judge made his finding of fact that the Defendant’s Biolife Borneo Bottle had infringed the 1st Plaintiff RID 167 on an obvious imitation. The learned judge allowed the 1st Plaintiff’s claim and dismissed the counterclaim 25 with costs. The Grounds of Judgment of the learned judge is at pages 11 to 76 of the Common Core Bundle of Document (CCB) Jilid 1. [114] The learned judge did not decide that the Defendants’ Biolife 30 Borneo Bottle was fraudulent imitation of the registered industrial 63 design as expected by 1st Plaintiff. It was also not in favor of 5 dismissing 1st Plaintiff’s claim for infringement as expected by the Defendants. By that decision, whether the learned judge had committed an error in his finding of fact and law. [115] We had considered the submissions. It was common arguments 10 referring to some authorities which the learned judge had referred to and applied in his judgment. Be that as it may, in support of their respective appeals, they came to the conclusion that the witnesses’ evidence had not been properly analysed by the learned judge which had made his finding of facts as wrong 15 and erroneous. In other words, the Plaintiffs and the Defendants are challenging the finding of facts of the learned judge to say that the learned judge’s decision was plainly wrong. [116] At this juncture, the law clearly states that it is incumbent upon 20 the Plaintiffs and the Defendants to demonstrate that the High Court was 'plainly wrong'. In another situation it was held that the court should only upset a decision of the High Court where there is a clear error leading to a perverse finding or resulting in miscarriage of justice. The requirement for the trial judge to have 25 made a decision which was ‘plainly wrong’ before an appellate court may intervene is well settled in our appellate jurisprudence and practice. This strict requirement underscores the rationale that the appellate court should not reverse or disturb the trial judge’s finding even if the appellate court is of the view that it 30 would not have arrived at the same conclusion as the trial judge 64 did on the evidence on the record before it (Tan Chin Hock & 5 Ors v Metro Laksana Properties Sdn Bhd and another appeal [2019] MLJU 221 COA). [117] In the present case the Plaintiffs challenged SD4’s evidence as being not supported by evidence which the learned relied in 10 finding of non-fraudulent imitation but only an obvious imitation.

(a) "features of shape or configuration of an article which are dictated solely by the function which the article has to perform " - please see sub-paragraph (b)(i) of the definition of an "industrial design " in s. 3(1) 25 IDA and So Yin Yit & Anor v. Choong Hon Ken & Anor [2018] 1 LNS 1382; [2018] AMEJ 1139, at paragraph 37;

(b) "features of shape or configuration of an article which are dependent upon the appearance of another article of which the article 30 is intended by the author of the design to form an integral part " - please refer to sub-paragraph (b)(ii) of the definition of an "industrial design " in s. 3(1) IDA and So Yin Yit, at paragraphs 39 and 40; 66

(c) features of the plaintiff's "unfinished " article - the definition of an 5 "industrial design " in s. 3(1) IDA has expressly referred to the features of the plaintiff's "finished " article; and

(d) features of the plaintiff's "finished " article which have not been registered in the Register.

(a) the RID to the defendant's article; 35 67

(b) a Fraudulent Imitation; or 5

(c) an Obvious Imitation the Court shall undertake a visual comparison between the Registered Eye Appeal Features and the features of shape, configuration, pattern 10 or ornament of the defendant's article (Comparison ) - please see Suriyadi Halim Omar J's (as he then was) judgment in the High Court case of Honda Giken Kogyo Kabushiki Kaisha v. Allied Pacific Motor

(M) Sdn Bhd & Anor [2005] 6 CLJ 174; [2005] 3 MLJ 30, at paragraph 19. 15 The Comparison should be conducted as follows –

(i) the Comparison is done from the viewpoint of the Relevant Customer;

(v) the test is "whether treated as wholes, there is a sufficient 15 resemblance " between the Registered Eye Appeal Features and the defendant's article "to enable the Court to conclude that there is a substantial identity between them " - Lusty & Sons, at p. 180;

(a) the Court should first determine whether the defendant's article is an imitation of the RID - please see Farwell J's judgment in the UK High Court case of Dunlop Rubber Co Ltd v. Golf Ball 25 Development Ltd [1931] 48 RPC 268, at 279-280. Such a determination is done by way of the Comparison;

(b) according to Dunlop Rubber Co, if the defendant's article is an imitation of the plaintiff's RID – 30

(i) there is a Fraudulent Imitation if the defendant knows about the RID and has used the plaintiff's RID in respect of the defendant's article; 35 69

(c) the judgment of a five-member coram of the High Court of Australia (its apex Court) in Polyaire Pty Ltd v. K-Aire Pty Ltd & Ors [2005] HCA 32 concerns s. 30(1)(a) to (c) of the then 20 applicable Designs Act 1906 [DA (Australia) ]. Section 30(1)(a) to

(c) DA (Australia) is similar to our s. 32(2)(a) to (c) IDA. Hence, Polyaire may be referred to in the construction of s. 32(2)(a) to (c) IDA. According to Polyaire – 25

(i) a Fraudulent Imitation may take place even though there is no dishonest concealment or disguise of the defendant's copying of the RID; and

(d) based on the Federal Court's judgment delivered by Richard 10 Malanjum CJ (Sabah & Sarawak) (as he then was) in Sinnaiyah & Sons Sdn Bhd v. Damai Setia Sdn Bhd [2015] 7 CLJ 584, at paragraphs 48-52, the plaintiff is only required to prove a Fraudulent Imitation on a balance of probabilities and not beyond all reasonable doubt; and 15

(a) the defendant's article is an imitation of the plaintiff's RID - 20 Dunlop Rubber Co;

(b) based on Dunlop Rubber Co –

(i) a defendant has committed an Obvious Imitation if the 25 defendant's article is "something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two "; and

(a) that, at the time of the infringement, he was not aware that the industrial design was registered; and 15

(b) that he had, prior to that time, taken all reasonable steps to ascertain whether the industrial design had been registered.” (emphasis added). 20 If a defendant can discharge the onus to prove the two cumulative conditions in s. 35(3)(a) and (b) IDA regarding an Obvious Imitation, the Court has a discretion to refuse to order damages or an account of profits in favour of the plaintiff in an innocent RID infringement case. This discretionary power is clear 25 from the use of the word "may" in s. 35(3) IDA. In an innocent RID infringement case under s. 35(3) IDA, the Court still has a discretion to grant injunctive relief (mandatory and prohibitory) to the plaintiff - please see s. 35(1) and (2) IDA”. 30 [120] As we had alluded to earlier, there is no dispute on the line of cases applied by the learned judge in his judgment above. In our view, the reasons stated and the proper test applied in deciding infringement cases are those found in the provisions of 72 IDA and the authorities cited therein which we approved as the 5 correct approach or test which the learned judge had followed. Polyaire case concerns section 30(1) (a) to (c) of the then applicable Designs Act 1906 [DA (Australia). Section 30(1) (a) to (c) DA (Australia) is similar to our section 32(2) (a) to (c) IDA. Hence, Polyaire case may be referred to in the construction of 10 section 32(2)(a) to (c) IDA and also the case of Dunlop Rubber case which determination is done by way of the Comparison if the Defendant's article is an imitation of the Plaintiff's RID. It was also held that a Defendant has committed an Obvious Imitation if the Defendant's article is "something which is very close to the 15 original design, the resemblance to the original design being immediately apparent to the eye looking at the two. [121] In Dunlop Rubber case, Farewell J held as follows: 20 “Design means only the feature of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical, or chemical, separate or combined which in the finished article appeal to and are judged solely by the eye. I need not read the rest of the definition. There are two things to be noticed 25 about it: in the first place that it is the finished article which is the thing to be looked at in order to see how the design appeals. One has to see the finished article if possible to see in what way the design does appeal to the eye. The second thing is that the test of a design is the eye alone. Now there is I think no possible doubt that ‘the yet’ in that section means 30 the eye of the Court, because the Court has ultimately to determine these questions and it is the eye of the Court and the eye of the Court alone which has to be judge of the design in question.” 73 5 [122] The 1st Plaintiff agreed with Polyaire case however, relied on the line of judgment which says “that the kind of fraud contemplated here, does not require that an actual intention to cheat must always be proved; proof of misconception of the extent of a person’s obligation, to act or to refrain from acting in a particular 10 way, may suffice” as their basis to contend that from the evidence adduced, the learned judge should have found that infringement is fraudulent imitation and not an obvious imitation. A finding of imitation may be made even where the author of it never knew of the registered design at all. In other words 15 knowledge is not really an issue. [123] In our view, 1st Plaintiff contention is correct if the facts of the case falls into that categories. In other words, decision of the court must be based on evidence presented and admitted by the 20 learned judge who heard the case. Put it simply, each case must be decided by its own peculiar facts. Hence, whether what was alleged to be the case of fraudulent imitation has occurred has to be determined based on the facts of this case and subject to prove by 1st Plaintiff in the first place. Definitely it cannot be by 25 way of assumption, gesture and conjecture. The 1st Plaintiff is also correct to say that once the claimant establishes this, the burden shifts to the Defendants to rebut the presumption of copying that is established on inference of the above. 30 74 [124] Having said that the issue is whether 1st Plaintiff has proven its 5 case of infringement on fraudulent imitation. In the present case, 1st Plaintiff is challenging the evidence of SD4 which according to them contemplates a fraudulent imitation rather than an obvious imitation. We perused the judgment and found that the learned judge in effect had dealt with SD4’s evidence and it is 10 his finding that there is no evidence to prove that SD4 has actual knowledge of the 2 RID's and has applied fraudulent imitations of the 2 RID's to the 1st Defendant's Products. [125] This Court must accept that the learned judge is the judge who 15 heard the testimonies of witnesses and access the demeanor of the witnesses. Before him, SD4 has given detailed evidence on how he has designed the 1st Defendant's Products. SD4's testimony is supported by his own contemporaneous hand drawn drawings in the exhibits tendered regarding Biolife Borneo 20 bottles. SD4’s evidence was subjected to vigorous cross-examination of by Ms. Hemalatha but has not revealed any reason to doubt SD4's veracity. [126] Based on the evidence, applying the decision in Polyaire case, 25 the learned judge found that there is no evidence of "misconception of the extent of [SD4's] obligation, to act or to refrain from acting in a particular way" which supports a finding of fraudulent imitations of the 2 RID's to the 1st Defendant's Products. Based on his analysis of the evidence, he found as a 30 fact that the 1st Plaintiff has failed to discharge the legal and 75 evidential burden under ss. 101(1), (2) and 102 EA to prove that 5 fraudulent imitations of the 2 RID's have been applied to the 1st Defendant's Products (see paragraph 50 -51 of the grounds of judgment). [127] In our view, this is the finding by the learned judge based on the 10 facts before him. As the 1st Plaintiff was found to have failed to establish its claim for fraudulent imitation, the burden does not shifts to the Defendants. Based on the finding of fact with the reason stated by the learned judge, we could not see how it can be said that the learned judge had failed to properly appreciated 15 SD4’s evidence. The learned judge having had the benefit of listening and seeing SD4 at trial he had properly analysed the entirety of the evidence. The learned judge had appreciated the factual evidence that was presented to him. In the circumstance, 1st Plaintiff failed to show that the learned judge’s decision have 20 gone plainly wrong. [128] The 1st Plaintiff also relying on two judgments which were obtained by 1st Plaintiff in the Courts of Semarang and Surabaya and which were against Indonesian consultants selling Moorlife 25 products and in particular another bottle known as the Biolife bottle Exhibit P60 for having infringed Indonesian Design Registration No. id 0024 152-d which has been applied to the Tupperware Eco bottle in Indonesia. 30 76 [129] We agreed with the learned judge’s opinion that Malaysian Court 5 is not bound by Indonesian Courts' Judgments. We reproduced the learned judge judgment regarding this as follows – “(13). What is effect of Indonesian Courts' Judgments? 10 [57] A Malaysian Court may take cognizance of a decision of a foreign court but is not bound by it. As such, this Court is not bound by Indonesian Courts' Judgments. It is decided in GS Yuasa Corp v. GBI Marketing Malaysia Sdn Bhd [2016] 1 LNS 978; [2017] 8 MLJ 166, at paragraphs 40 and 41, as follows: 15 "40. It is undeniable that Intellectual Property rights (IP Rights) in respect of a particular product may be protected and enforced in many jurisdictions. The Court should not take a blinkered view regarding the protection and enforcement of IP Rights. If a foreign court, especially 20 its apex court, has decided on an issue regarding IP Rights of a particular product and an identical or similar issue also arises regarding the same product in a Malaysian case, the Malaysian Court should consider the foreign judgment in deciding that issue. Needless to say, Malaysian Courts are not bound in any manner by any decision 25 from a different jurisdiction. If a Malaysian Court however reaches a decision which is identical or similar to that decided by a foreign court regarding IP Rights of the same product, this will ensure consistency and predictability in the protection and enforcement of IP Rights of that product in different jurisdictions.

(c) a defendant may have committed an "innocent " infringement in 5 respect of an Obvious Imitation. Section 35(3) IDA provides as follows – "35(3) The Court may refuse to award damages, or to make an order for an account of profits, in respect of an 10 infringement, if the defendant satisfies the Court –

This Court has considered the Indonesian Supreme Court's Decision and is comforted to know that the decision in the above Part J (the use of the Defendant's Registered Trade Mark on the 77 Defendant's goods is likely to deceive and/or confuse the public under 5 s. 14(1)(a) read with s. 37(b) TMA), is consistent with the Indonesian Supreme Court's Decision." (emphasis added). 10 The appeal to the Court of Appeal against the above judgment has been dismissed. [58] There is another reason why the Defendants cannot rely on Indonesian Courts' Judgments. According to SP5, there are conflicting 15 Indonesian Courts' Judgments. [59] Last but not least, I cannot apply Indonesia Courts' Judgments because I am duty bound to give effect to the 2 RID's based on our IDA”. 20 [130] We could not find any error in the decision of the learned judge. There is no merit in the appeal. [131] Be that as it may, since the Defendants had submitted that there 25 is no infringement at all against the 1st Plaintiff RID 167, we also gave our view on the grounds raised by them. [132] The Defendants contended that when considering the question of infringement, it is the registered design as shown in the 30 representations of the RID which must be compared. An actual manufactured article embodying the design may be looked at to 78 assist but care must be taken not to introduce features not in the 5 registered design. [133] The manufactured article must be an embodiment of RID 167 although if there are additional features to the embodiment they must be disregarded SD1 conducted a comparison of RID 167 10 and the Biolife Borneo Bottle and in his Report exhibited to his Affidavit dated 20.10.2017 set out the detailed differences between the same. By reason thereof, it was submitted that the learned judge ought to have taken the same into consideration to at least guide him on the differences in the designs in order that 15 when he assessed the designs, he does so with a mind properly instructed. Additionally, the Plaintiffs’ ‘expert’, SP6, withdrew her Report on this issue. The only ‘guide’ or ‘assistance’ before the learned judge is the evidence of SD1 which ought not to have been wholly rejected 20 [134] We agreed with the law as correctly stated by the Defendants i.e. the manufactured article must always be an embodiment of RID 167 although if there are additional features to the embodiment they must be disregarded when making a 25 comparison. Has the learned judge decision has gone plainly wrong? We found the Defendants’ contention is without merit. At paragraph 41 of the judgment, the learned judge made a finding of fact that SD1 has undertaken a minute comparison between the 2 RID's (as registered in the Register) and the 1st 30 Defendant's Products (Detailed Comparison). Based on the 79 Detailed Comparison, SD1 gave his expert opinion regarding the 5 differences between the 2 RID's and the 1st Defendant's Products. He was constrained to reject SD1's expert testimony because SD1 did not identify the Registered Eye Appeal Features for the 2 RID's. SD1 should only have compared the Registered Eye Appeal Features for the 2 RID's with the 1st 10 Defendant's. However, in the 2 Cases, SD1 had compared all the features of the 2 RID's with the 1st Defendant's Products. The learned judge was of the opinion that the Comparison should be conducted from the viewpoint of the Relevant Customer of the Plaintiffs' Products which embody the 2 RID's. The learned 15 judge’s opinion was supported with law in F & N Dairies and the Detailed Comparison should not have been conducted by SD1 because it is only a matter of general impression by relying on the case of Lusty & Sons and Charles Henry Nevill. Therefore, it cannot be said that the learned judge erred in fact 20 and law. [135] In F&N Dairies (Malaysia) Sdn. Bhd v Tropicana Products Inc & Other Appeals [2003] MLJU 1591, the Court of Appeal held as follows: 25 “[26]…industrial design refers to ‘features which in the finished article appeal to and are judged by the eye… … 30 It was held in that case (Interlego AG) that: 80 [30] A shape could be registered as a design if it had eye appeal. The 5 eye was that of the prospective customer and the appeal was that created by a distinctiveness of the shape, pattern or ornamentation calculated to influence the customer’s choice …The question was whether the features of the shape or configuration, taken as a whole and in combination, appealed to the eye. 10 … [34] Lord Reid in Amp Incorporated (supra) when considering ‘eye appeal’ has this to say: “Then there come the words ‘being features which in the finished article 15 appeal to and are judged solely by the eye.’ This must be intended to be a limitation of the foregoing generality. The eye must be the eye of the customer if I am right in holding that the policy of the Act was to preserve to the owner of the design the commercial value resulting from customers preferring the appearance of articles which have the design to 20 that of those which do not have it. So the design must be one which appeals to the eye of some customers. And the words ‘judged solely by the eye’ must be intended to exclude cases where a customer might choose an article of that shape not because of its appearance but because he thought that the shape made it more useful to him.’ 25 … [41] The Learned Judicial Commissioner had cited the ruling in Valeo Vision Societe Anonyme & Anor v Flexible Lamps (1995) RPC 205 where it was held: 30 “It is established law that …the court must adopt the mantle of purchaser of the relevant article…”” 81 [136] In So Yin Yit & Anor v Choong Hon Ken & Anor [2018] MLJU 5 2092 the High Court held as follows in determining the eye appeal features: “[31] In deciding whether the Features of RID 1455 have fulfilled the Eye Appeal Requirement, I adopt the following approach based on cases 10 decided in Malaysia and UK: “(1) the court has to identify the “finished article” [in the definition of “industrial design” in s. 3(1) IDA] which embodies the RID in question (Finished Article) – please see Farwell J’s judgment in the English High 15 Court case of Dunlop Rubber Co Ltd v. Golf Ball Development Ltd [1931] 48 RPC 268, at 277;

(a) features of shape and configuration of an overall curved shape that -

(i) extends from the neck of the article outwardly to form a bulge at the 25 shoulder of the article;

(b) features of shape and configuration in the form of four depressions 5 in the shape of a spoon that extend vertically from the top to the bottom (Depressions ); and

(c) features of shape and configuration in the form of four protruding shapes (Protruding Shapes ) which correspond with the Depressions; 10 and

We found the learned judge’s finding that 2nd Plaintiff in both Suit 16 and Suit 17 had no locus to file either of the said 30 actions is erroneous. The 2nd Plaintiff has the locus to 86 commence actions against the Defendants. The High Court 5 decision which found 2nd Plaintiff had no locus is set aside. [143] In the result the 1st Plaintiff and the Defendants’ appeals are dismissed with no order as to cost and the 2nd Plaintiff’s appeal is allowed with Costs of RM70,000.00 here and below subject to 10 allocator. Dated this 3 July, 2020 15 Sgd KAMALUDIN MD. SAID JUDGE 20 COURT OF APPEAL MALAYSIA PUTRAJAYA Parties 25 1. Dato’ Ambiga Sreenevasan, Janini Rajeswaran, Mahendra Balakrishnan, Mark Ho Hing Kheong, Quah Su Yee and Ooi Xin Yin for the Appellants (Messrs Bustaman) 30 2. Hemalatha Parasa Ramulu, Alyshea Low Khye Lyn and Lam Rui Rong for the Respondent (Messrs Skrine)