Intermet Holdings Sdn Bhd v Delaware Capital Formation, Inc. (WA-24IP-12-06/2024)

INTERMET HOLDINGS SDN BHD [Company No.: 199401001711(287389-X)] 2! !

DOVER ELEVATORS (MALAYSIA) SDN BHD [Company No.: 199401004012(289691-T)] ...PLAINTIFFS DELAWARE CAPITAL FORMATION, INC. [United States of America Company No.: 2065376] …DEFENDANT

This Originating Summons concerns an application by Intermet Holdings Sdn Bhd (1st Plaintiff) and Dover Elevators (Malaysia) Sdn Bhd (2nd Plaintiff) to revoke the trademark "DOVER" in Classes 7 and 9, registered to Delaware Capital Formation, Inc. (hereinafter, "the Defendant"). The Plaintiffs seek orders to remove and/or expunge these registrations based on the ground of non-use, pursuant to section 46(1)(a) and (b) of the Trademarks Act 2019 ("TMA 2019").

Having considered the affidavits, the parties’ written submissions, their reply and additional submissions, and the oral arguments presented, I have concluded that the Plaintiffs' application ought to be allowed.

What follows are my reasons. 3! !

The First Plaintiff, Intermet Holdings Sdn Bhd ("IHSB"), is a company incorporated under the laws of Malaysia with its registered office at Lot 3, Jalan 8/23A, Taman Bukit Permai, Off Jalan Kepong, 52100 Kuala Lumpur.

IHSB is the holding company of the Second Plaintiff and is actively involved in the business of elevators, escalators, and related machinery through its subsidiary companies.

IHSB claims proprietary rights and legitimate interests in the use of the "DOVER" mark in Malaysia for elevators, escalators, and related products and services in Classes 7 and 9. The Second Plaintiff: Dover Elevators (Malaysia) Sdn Bhd ("DEMSB")

The Second Plaintiff, Dover Elevators (Malaysia) Sdn Bhd ("DEMSB"), is a company incorporated under the laws of Malaysia with its registered office at the same address as IHSB.

DEMSB is a wholly-owned subsidiary of IHSB and is the operational entity that directly carries on the business of manufacturing, installing, maintaining, and servicing elevators, escalators, and related equipment under the "DOVER" brand in Malaysia. 4! !

It is the Plaintiffs’ case that DEMSB has been using the "DOVER" mark continuously in Malaysia since at least 1994 in connection with elevators and escalators. The Defendant: Delaware Capital Formation, Inc. ("DCF")

The Defendant, Delaware Capital Formation, Inc. (DCF), is a corporation incorporated under the laws of the State of Delaware, United States of America, with its registered address at Suite 5, 501 Silverside Road, Wilmington, Delaware 19809, USA.

The Defendant is the registered proprietor of the following marks in Classes 7 and 9 of the International Classification of Goods and Services in Malaysia: - Mark Trademark Registration no. Date of Registration Class & Specification 02009623 Date of Registration: 9 August 2002 Date Registration Certificate Issued: 11 May 2007 See below: Class 7 Air, gas and vapor compressors; lifting, elevating, lowering, positioning and leveling apparatus and power equipment and parts/accessories thereof; machines for automatically placing and/or connecting semiconductor devices; hydraulic trash can dumpers; food and beverage can manufacturing equipment; cable assemblies, positioning booms, water cooler circulators, cable splicers, equipment carts; pumps; fluid motors; gear reducers; bypass valves; valves; piston rings, seals and seal 5! ! assemblies; remote control manipulators; automotive repair machines, namely, body, frame and wheel aligners; mechanical measuring devices for identifying and analyzing structural damage to vehicles; generators and gears to be used in industries including air conditioning, refrigeration, gas pipeline, oil refining, power generation; fuel injection valves; machines for applying solder and related electronic materials in connection with production of printed circuit boards and other electronic substrates, namely stencil printers and screen printers, machines for use in production of electronic thick film hybrid circuits and solar cells; stands and supports for use with printed circuit boards, printing machines; power tools; robotic drills, clamps, coolant safety monitor system for use with welding machines; robot-controlled gripping devices; refrigeration compressor valves; cylinders; manual, pneumatic, hydraulic and electronic tensioning devices and gripping tools; airline oiler lubricant for pneumatic tools; machine housings; toggle clamps; cutlery and machining and tools; welding machines; electric food blenders for commercial use; tanks for processing food service, industrial and chemical materials; mixing kettles; fluid filters for food service materials; refuse compacting and crushing machines and handling apparatus; hydraulic pump units; mechanically-operated beverage bottle washers and pasteurizers; water pumps; refuse handling equipment; chemical handling equipment and cleaning systems; high pressure fluid spraying and cleaning machines; fluid handling equipment; printing presses; ink jet printers; conveyors for moving articles past an inkjet; internal combustion engine parts; pistons; machine tools; water transfer stations; well pumping equipment; battery-powered wire wrapping tools and parts; underground secondary containment systems; valves and fluid fueling components; loading arms; fuel pump and metering apparatus; computer controller; fuel dispensing pumps; vehicle washing, waxing and drying and polishing machines; machine couple and transmission components; apparatus for lighting, heating, steam generators, cooling, refrigeration, drying, ventilating, water supply, and sanitary purposes; electric motors; gears; machine parts used in industrial robots; machinery for processing industrial fluid streams and industrial products equipment and media for liquid/solid separation; electric oil power pack for use in operation of automotive lifts; ball bearings and journal bearings; concrete finishing machines; concrete mixers and spreaders; concrete pumps; power tools and machines for leveling concrete automatic condensation valves; equipment for use in manufacture of corrugated goods and packaging materials; machines for making signs; ultrasonic degreasing and cleaning machines; plastic polishing and refurbishing machines; automotive parts, namely, piston kits, connecting rod kits, bearings, engine valves; gasket sets; packaging machines; machines for applying closure fasteners for 6! ! meat and other products containing enclosures; radiators for motors and engines; winches; gear systems and parts thereof; machines for automated printing on and handling of containers; soldering machines for use in the manufacture of printed circuits, machines for solvent cleaning of printed circuit boards; air filters; mufflers; air control valves; drain pump adaptors, air distribution system for diaphragm pumps; fluid film bearings; pneumatic and electric motor driven torque tools; all included in class 7. 02009624 Date of Registration: 9 August 2002 Date Registration Certificate Issued: 26 April 2010 See below: Class 9 Vapor recovery monitoring system; control instruments and apparatus for pumps and fluid motors; liquid proportioning and metering instruments and apparatus; electronic apparatus for monitoring, sensing and measuring liquid levels; liquid handling equipment; vapor recovery equipment; automatic valves; magnetic interferometers for testing the integrity of elongate metal objects; high frequency electronic circuit boards and microwave integrated circuits for use in microwave frequency applications; modular enclosures for electronic equipment; stenciling ultra violet lamps for the production of photostencils; capacitors for microwave equipment; ceramic packaging for integrated circuits and electronic devices; measuring instruments; flow meters; pressure gauges; probes for measuring fluid flow; valves; vacuum gauges; gas analyzers; welding electrodes; laser printers; laser scanners for industrial inspection; lasers for non-medical use; power supplies for lasers; laser-powered measuring instruments; laser markers; electrostatic discharge devices that ground people and computer workstations to reduce or eliminate static electricity; electromechanical switches; electrical transformers; inductors; parking meters; deposit boxes for overtime parking; metal spring probes used to test the conductivity of printed circuit boards and other electrical components; apparatus and instruments for testing and monitoring electric and electronic components, namely, printed circuit board testers, in-circuit testers, semiconductor testers; electronic controllers for controlling productivity of oil and gas well installations; modular computer network systems; electrical, electronic and radio-controlled switches for crane systems; electrical, electronic and radio-controlled switches for signaling, monitoring and metering for crane systems, namely, load cells, angle indicators, angle 7! ! transmitters, load indicators, display panels; liquid crystal displays; tension meters; rotation indicators; computerized in control apparatus for printing presses; x-y scanning densitomers; computer hardware and software for monitoring, reporting and analyzing pressroom operations; temperature responsive control devices for controlling the defrosting of refrigerated equipment; computer printers, electrical controls for ink jet printers; radio frequency and microwave filters; coaxial switches; electronic circuit components and electromagnetic structures for selective frequency control within the electromagnetic spectrum; electronic microwave transmission and receiving equipment; solenoids and overmolded coils; liquid level gauges; liquid level controls and alarms for tanks, cars, trucks, barges and stationary and intermodal tanks; electrical circuit continuity tester for checking tank barge overfill in manure and transportation industries; capacitors; electronic component assembly production lines and computer software; illumination equipment, namely, machine vision illumination devices for use on automated electronic assembly equipment; electronic controllers controlling production of oil and gas well installations; automatic control valves and liquid level controllers; automatic industrial check valves; apparatus and instruments for designing, manufacturing and testing electronic components; semiconductor manufacturing equipment; soldering irons; heating tweezers; electrostatic discharge devices; electronic power supplies; glass flow gauges or indicators; leak detectors for responding to changes in the pressure of fluid to intake leaks in expansion joints; electronic scanner for use with magnetic activation device to activate a gasoline pump to dispense gasoline and diesel fuel; computer software modules for use with pc platforms at petroleum fueling sites for controlling electronic devices, namely, dispensers, island card readers, cash registers, tank monitors, and for performing business administration functions, namely, transaction data management, credit/debit transfer and processing, fleet and retail card transactions; microprocessor system diagnostic equipment; electronic products using microprocessors; industrial lasers for cutting or welding; magnetic interferometers; electronic measuring, reference and calibration apparatus and instruments for use in sensing and measuring density, flow, pressure force, torque, weight, temperature and inertial parameters; pressure sensing apparatus for use in liquid flow lines; ultrasonic degreasing and cleaning machines, plastic polishing and refurbishing machines; electric circuit board assembly equipment; electric motors; computer software; handheld computer programming units; circuit breakers; crystal oscillators; data recovery software; electronic equipment for inspection of circuit boards; electrically controlled apparatus for thermal processing; air distribution systems for diaphragm pumps; all included in class 9. 8! ! C. Background Facts

The "DOVER" mark has a long and storied history in connection with elevators and escalators. The evidence before this Court establishes the following chronology:

Dover Elevator International (DEI) functioned as the elevator manufacturing and services division within Dover Corporation (DC), a diversified American industrial conglomerate.

DEI, under the ownership of DC, used the "DOVER" mark extensively throughout the world, including in Malaysia, for elevators, escalators, and related equipment and services.

The DOVER brand became well-known and established a significant reputation in the elevator industry globally, including in the Southeast Asian region.

It is the Plaintiffs’ case that in 1998, a critical corporate transaction occurred that fundamentally altered the ownership and control of the DOVER elevator business worldwide.

DC sold DEI to Thyssen A.G. (later ThyssenKrupp AG), a major German industrial conglomerate.

As part of this sale transaction: a) ThyssenKrupp acquired the elevator manufacturing and services business operated by DEI; 9! ! b) ThyssenKrupp acquired the rights to use the "DOVER" mark in connection with elevators, escalators, and related goods and services; c) ThyssenKrupp assumed control of DEI's operations, customer relationships, and market presence in the elevator sector;

It is the Plaintiffs’ case that the 1998 transaction is of fundamental importance to the present case. From 1998 onwards: a) Neither Dover Corporation nor any of its subsidiaries have manufactured, sold, installed, maintained, or serviced elevators or escalators anywhere in the world; b) The legitimate commercial use of the "DOVER" mark for elevators and escalators passed to ThyssenKrupp and its related entities; c) Dover Corporation retained the "DOVER" mark for use in connection with its other industrial businesses (pumps, compressors, industrial equipment, etc.) but not for elevators and escalators.

The Plaintiffs' case is that they are the successors-in-interest to the legitimate DOVER elevator business in Malaysia.

Intermet Engineering Sdn Bhd ("IESB"), a Malaysian company, entered into licensing and business arrangements with DEI (under 10! ! Dover Corporation) prior to 1998, pursuant to which it was authorised to use the DOVER mark in Malaysia in relation to elevators and escalators. Following the 1998 sale of DEI to ThyssenKrupp, that relationship—and the attendant authorisation—continued, first through IESB and thereafter through the Plaintiffs.

The Plaintiffs contended that they have made substantial investments in building and developing the DOVER brand in Malaysia. This is evidenced by an extensive portfolio of projects, installations, and maintenance contracts nationwide, as well as the engagement of a significant number of skilled personnel in the elevator business. Consequently, the Plaintiffs maintain that they have established a strong reputation and accrued substantial goodwill in Malaysia associated with the DOVER mark. D. Parties Submissions

Learned counsel for the Plaintiffs submitted the following in support of the Plaintiffs’ application: a) The Plaintiffs are the genuine commercial users of the DOVER mark for elevators and escalators in Malaysia; b) The Defendant has not used and cannot use the DOVER mark for elevators and escalators because Dover Corporation sold that business in 1998; c) The Defendant's registrations constitute "deadwood" on the Register that serve no legitimate commercial purpose; 11! ! d) The maintenance of the Defendant's registrations creates uncertainty and potential obstacles to the Plaintiffs' legitimate business operations; e) The Defendant has failed to demonstrate any genuine use of the marks; f) There are no proper reasons for the Defendant's non-use; g) The Defendant's registrations should be expunged to allow honest traders (such as the Plaintiffs) to operate without the encumbrance of unused registered rights.

Learned counsel for the Defendant advanced the following submissions in opposing the Plaintiffs’ application: a) The Defendant has used the DOVER marks in Malaysia through various third-party entities within the Dover Corporation group; b) Such use by related entities should be attributed to the Defendant as the registered proprietor; c) Evidence of use has been provided in the form of invoices showing sales of DOVER-branded products in Malaysia; d) The Plaintiffs lack standing as "aggrieved persons" because they have no proprietary right to the DOVER mark and their use is unauthorised. 12! !

It is common ground that the application before me is brought on two alternative non-use grounds: i. first, that there was no use in good faith within three years following the issuance of the notification of registration (s 46(1)(a)); and ii. second, that use has been suspended for an uninterrupted period of three years immediately preceding the three months before the filing of the Originating Summons (s 46(1)(b)).

The parties’ submissions have raised three principal issues: I. Are the Plaintiffs “aggrieved persons” within the meaning of s 46(1) TMA 2019? II. Whether the Plaintiffs have discharged the threshold burden of establishing a prima facie case of non-use? III. Whether the Defendant has demonstrated good faith use of the "DOVER" marks in Malaysia, with respect to the registered goods, throughout the relevant period (2 May 2021 to 1 May 2024)

I will address these issues in turn, after addressing the preliminary issues raised in the present application. 13! ! Preliminary Issues i.

Learned counsel for the Defendant contended that the Plaintiffs’ Supplementary Affidavit departs from, and in two aspects contravenes, specific directions of this Court. The first is said to be the introduction of unauthorised averments beyond the permissible scope of inspection-based observations.

By way of context, the Originating Summons was filed on 12 June

The supporting affidavits set out the Plaintiffs’ trading history under the “DOVER” name, together with the difficulties they say they have faced in registering and enforcing their marks in light of Delaware’s prior registrations.

Delaware’s principal evidential answer is contained in the affidavits of Ms Amy Ward. Those affidavits annex a substantial body of documents said to evidence use (or controlled licensing) of the DOVER brand in Malaysia, including assignments, group IP licence agreements, purchase orders, invoices and shipping records. A material portion of that documentary record was initially heavily redacted.

Pursuant to a Consent Order dated 15 May 2025, the Plaintiffs’ authorised representative was permitted to inspect the Defendant’s unredacted documents (the “Protected Documents”). The Plaintiffs then filed a Supplementary Affidavit affirmed by Mr Poh Seng Wei Edwin (“Poh SA”), recording his observations from that inspection 14! ! (the “Permissible Averments Relating to Inspection of Protected Documents”).

Against this backdrop, the Defendant objected to Poh SA’s observations on the footing that the Plaintiffs have breached the Court’s prohibitive directions by making disclosures they were not permitted to make, and by advancing allegations outside the Permissible Averments—most notably at paragraphs 24, 25 and 26, under the heading “Bad Faith–Oppressive Nature of the Defendant’s Offending DOVER Marks”.

The Defendant maintains that these allegations are groundless and exceed the permissible scope, as the Plaintiffs have improperly challenged the scope of registration of the DOVER marks and impugned the Defendant's intent. The Defendant characterises this conduct as an abuse of the inspection process and a disregard of the Court's directives. Accordingly, the Defendant urges that paragraphs 24, 25, and 26 be expunged or, in the alternative, that they be given no weight.

The Defendant’s second objection concerns an alleged breach relating to Companies Commission of Malaysia (“CCM”) search reports. The Defendant relies on the prohibitive direction recorded at case management on 15 May 2025: CCM searches conducted by the Plaintiffs’ solicitors could be discussed with the Plaintiffs’ representative, but the CCM reports themselves were not to be shown to him, nor exhibited in evidence. The Defendant contended that the Plaintiffs breached this in two ways: first, by showing the CCM reports to Mr Poh; and second, by exhibiting those reports as Exhibit 15! ! EP-5, even if within a protected bundle. It is the Defendant’s stance that no leave of Court was sought, and no consent was obtained. Learned counsel for the Defendant contended that this has materially prejudiced its confidentiality interests, particularly in respect of customer identities contained in the Protected Documents.

I have considered both points raised by the Defendant. In my view, it is neither necessary nor desirable to rule seriatim on every complaint Delaware makes about Poh SA. The proper focus must remain on the substance of the non-use challenge. In any event, even if the impugned passages of Poh SA were disregarded entirely, the outcome would not change. The Plaintiffs’ case on non-use stands or falls on the objective documentary record and the applicable statutory framework. I therefore proceed on the basis that I place little or no weight on the challenged characterisations of “oppression” in Poh SA affidavit, while having regard to the factual observations made from the inspection of the Protected Documents insofar as they are relevant and not seriously disputed as to accuracy. ii. The identity of the deponent

I now address the next preliminary issue: the objection taken by learned counsel for the Plaintiff to the identity of the deponent who swore the affidavit on behalf of the Defendant.

The Plaintiffs have alleged the Defendant’s Affidavit in Reply in Encl. 15 was affirmed by the trademark agent of the Defendant and not a representative of the Defendant with personal knowledge. The Defendant averred that there was a letter of authorisation granting the 16! ! said trademark agent sufficient rights to affirm Encl. 15. Learned counsel for the Plaintiff refuted the argument by submitting that such a letter of authorisation cannot be considered by this Honourable Court as it would be contrary to the principle of law in the case of Al Baik Fast Food Distribution Co SAE v. El Baik Food System Co SA and another appeal [2016] 5 MLJ 768 (Al Baik Fast Food) where the Court of Appeal observed, in the context of a different statutory scheme, that an application which the statute requires to be brought by an “aggrieved person” must ordinarily be filed by that person rather than a trade mark agent.

Foremost, I do not regard Al Baik Fast Food as authority for the broad proposition advanced by the Plaintiffs. That case dealt with who may institute proceedings in the High Court. It does not stand for the proposition that an affidavit in such proceedings may never be affirmed by a trade mark agent or other representative. The rules of court require that an affidavit must be by a person with personal knowledge of the facts, or who is otherwise duly authorised and can speak to the records of the party concerned.

In this case, the Defendant has produced a letter of authorisation to affirm affidavits on its behalf, and the deponent’s affidavit sets out in considerable detail the corporate structure of the Dover group, the identity of the group companies and related entities whose conduct is relied upon, and the nature of the exhibits annexed.

The Plaintiffs argued that because he is not an employee, he can have no personal knowledge of the documents exhibited. I find this argument misconceived. The salient point is whether the deponent is able to explain the documents credibly and articulate the basis on 17! ! which they are exhibited. In trademark cases, it is not uncommon for group IP managers or external agents, who possess oversight of portfolio management and access to records, to affirm such affidavits. The question is, ultimately, one of weight.

In this present case, I find the deponent clearly has personal knowledge of the matters deposed in the Defendant’s Reply Affidavit as he had affirmed under oath that he was given access to all documents and correspondence which are relevant to the subject matter of the present action by the Defendant through its solicitors. In other words, assertions made by the deponent are based on documentary evidence.

What personal knowledge entails as envisaged by Order 41 rule 5(1) of the ROC 2012 is reproduced below:- “Contents of affidavit (O. 41, r. 5)

(1) Subject to Order 14, rules 2(2) and 4(2), to paragraph

of this rule and to any order made under Order 38, rule 3, an affidavit may contain only such facts as the deponent is able of his own knowledge to prove.”

Personal knowledge does not necessarily require the deponent to be personally involved in the dispute between the Plaintiffs and the Defendant or privy to the transaction between them. It can instead be derived from records or documents made available to the deponent. It suffices if the deponent can, based on their own knowledge, prove the averments made in their affidavit using that source of information. Such personal knowledge may be derived from records or documents 18! ! seen or perused through, by the deponent. The same has been accepted as a norm and established by the Malaysian Courts on many occasions.

In the case of United Malayan Banking Corp v Yap Peng Wai @ Yap Peng Hooi [1998] 5 MLJ 511, the High Court was of the view that Order 41 rule 5(1) cannot be given a narrow interpretation and that the deponents had satisfied the requirements of the said provision as the facts stated in their respective affidavits were based on their personal knowledge as well as on records and documents stored in the branch office to which they have access to as the managers of the plaintiff.

On a similar note, the High Court in Abd Hamid Bin Jaafar (Trading As Sole Proprietor As Bintang Enterprise) v Shamsiah Dan Keluarga Sdn Bhd [2004] 5 MLJ 349 admitted the affidavit of the deponent as he had averred that he had access to the respondent’s documents as its managing director, hence everything stated therein was true from his own knowledge. It was therefore held to have complied with Order 41 rule 5(1).

In Ringgit Exoticka Sdn Bhd v Pengarah Tanah & Galian Selangor & Ors [2014] 8 MLJ 111, Vernon Ong J (as he was then) held that:- “[28] As a general rule, hearsay evidence is inadmissible and the court will not admit any hearsay evidence or give it any weight. In the same vein, an affidavit relied upon as evidence in support of an application should only contain facts which are within the personal knowledge of the deponent. Personal knowledge may be derived from records or documents seen by the deponent (United Malayan 19! ! Banking Corp v Yap Peng Wai @ Yap Peng Hooi [1998] 5 MLJ 511; Abd Hamid bin Jaafar (trading as sole proprietor as Bintang Enterprise) v Shamsiah dan Keluarga Sdn Bhd [2004] 5 MLJ 349; [2004] 5 CLJ 381).”

Similarly, the High Court in Koperasi Permodalan Felda Malaysia Bhd v Alrawda Investment For Real Estate Development & Projects Management Co Ltd & Anor [2021] 7 MLJ 647 was of the view that since the averments made by the deponent in his affidavit relate to matters which were available to him from the cause papers filed in the instant action, there was no issue that such matters deposed to not being within his personal knowledge.

The above points should put to rest the alleged lack of knowledge on the part of the deponent of the Defendant’s Reply Affidavit. The Plaintiffs have failed to identify any specific instance of misdescription or misrepresentation of a document by the deponent, nor have they demonstrated any serious question as to a document's provenance. They were afforded the opportunity to inspect the subsequently produced, unredacted documents and to respond with supplementary affidavits and submissions. Consequently, I find no principled justification to strike out Enclosure 15 in its entirety. The authority of Datuk Bandar Kuala Lumpur v Zain Azahari [1997] 2 MLJ 17, upon which the Plaintiffs rely, is distinguishable, arising as it did from a fundamentally different context (judicial review of administrative decisions) and turning on the absence of any adequate rebuttal from the actual decision-maker. 20! !

I therefore reject the Plaintiffs’ objection and hold that Enclosure 15 is admissible. The weight to be accorded to its contents is a separate, evaluative question which I consider in my analysis below. iii. Redacted invoices and confidentiality

The Plaintiffs also contested the initial redaction of customer identities, prices, and certain product particulars on invoices exhibited as "IAJ-4" and "IAJ-5." Learned counsel for the Plaintiffs submitted that the Defendant had "unilaterally" redacted those documents without leave of court. In support of this argument, learned counsel relied on Tokai Corporation v DKSH Malaysia Sdn Bhd [2016] 1 LNS 1092 and other authorities, contending that such exhibits should be disregarded or afforded little weight.

In the case of Tokai Corporation v DKSH Malaysia Sdn Bhd [2016] 1 LNS 1092 (HC), Wong Kian Kheong JC (as His Lordship then was) held as follows regarding the unilateral redacting of documents: “[26] I am of the following view regarding redaction of documents exhibited in affidavits in an OS:

a party should not have unilaterally redacted a document exhibited in an affidavit without leave of the Court under Order 38 rule 2(2) RC. The phase “unless…the Court otherwise directs” in Order 38 rule 2(2) RC empowers the Court to allow a party to apply for leave of the Court to redact an exhibit in an affidavit (Redaction Application);

in a Redaction Application, the Court has the power to inspect the unredacted document 21! ! to ensure that the Redaction Application is made in good faith and for a valid reason, for example, to ensure confidentiality of a party’s information or to avoid publication of offensive, indecent or scandalous material. The party opposing the Redaction Application is not entitled to inspect the unredacted document, unless permitted by the applicant in the Redaction Application; and

if a party has unilaterally redacted a document exhibited in an affidavit without leave of the Court –

the Court is in the dark as to what are the contents of the redaction and is therefore not in a position to decide on the redacted exhibit; and

the opposing party is not in a position to answer regarding the redacted document. Accordingly no adverse inference can be made against the opposing party for his or her failure to reply to a redacted exhibit in an affidavit.”

The principles in Tokai Corporation (supra) was affirmed by this Honourable Court in the case of Pos Logistics Bhd. V. Kumpulan Perubatan Smarthealth Sdn Bhd [2019] MLJU 981 wherein this Honourable Court held as follows: “[14] Tokai Corporation concerns an originating summons but I am of the view that Tokai Corporation should also apply to documents adduced at trials. If a party (X) wishes to redact a document to be tendered as evidence at a trial due to, for example, the fact that the document 22! ! contains information which X considers confidential (Confidential Information) -

X should not have unilaterally redacted the document without leave of the trial court;

X should apply to the trial court under O 92 r 4 of the Rules of Court 2012 (RC), the court’s inherent jurisdiction or power to redact the document (Redaction Application);

In a Redaction Application –

the trial court can inspect the unredacted document to ensure that the Redaction Application is made in good faith by X and for a valid reason, for example, to ensure that Confidential Information is not disclosed to the detriment of X;

the opposing party in the trial in question

(Y) is not entitled to inspect the unredacted document, unless permitted by X;

X is only required to serve on Y the Redaction Application and the supporting affidavit in so far as there is no disclosure of Confidential Information; and

Y is entitled to -

attend the hearing of the Redaction

(ii) hear X’s submission in support of the Redaction Application (subject to the court’s power to exclude disclosure of Confidential Information); and

(iii) reply to X’s submission and oppose the Redaction Application; 23! !

the court has a discretionary power to grant the Redaction Application in the interest of justice (Redaction Order); and

if X adduces as evidence in a trial a document which has been unilaterally redacted by X (without a Redaction Order), Y may invite the court to draw an adverse inference against X under s 114(g) EA in respect of the redacted material. Section 114(g) EA provides as follows – “Court may presume existence of certain fact 114 The court may presume the existence of any fact which it thinks likely to have happened, regard being had to the common course of natural events, human conduct, and public and private business, in their relation to the facts of the particular case. ILLUSTRATIONS The court may presume - …

that evidence which could be and is not produced would if produced be unfavourable to the person who withholds it;” (emphasis added).”

I have reviewed the invoices at Exhibits "IAJ-4" and "IAJ-5" and find that they are invoices issued to customers of suppliers related to and/or associated with the Defendant. In this regard, I concur with the submissions advanced by learned counsel for the Defendant that these invoices constitute trade secrets, as they contain confidential 24! ! information such as prices of goods and customer details, including names and addresses. The details of its customers and the cost of goods supplied are confidential in nature, a protection afforded by law. The confidentiality of such information is well-recognised by the Malaysian courts.

In the High Court case of Schmidt Scientific Sdn Bhd v Ong Han Suan, Kamalanathan Ratnam JC (as he was then), stated that:- “…There was information relating to cost prices, quoted prices, specific needs and requirements of the customers and suppliers, status of all on-going negotiations with the customers, and price list. This information is highly confidential in nature, and not generally known in the market. The disclosure of this information to my mind, would no doubt cause detriment to the plaintiff in terms of business and reputation. The competitor may under cut the plaintiff in terms of prices, and interfere with the ongoing contracts… …It is my judgment that trade secrets are not limited to manufacturing processes or secret formulae but extend to information relating to the list of names and addresses of the customers and suppliers, specific questions sent to the customers, costs prices, specific needs and requirements of the customers and status of the ongoing negotiation with the customers. Therefore, it is my finding that in the light of the particular trade setting of the plaintiff’s business, the above mentioned information had the necessary quality of confidentiality…” 25! !

Furthermore, in Svenson Hair Center Sdn Bhd v Irene Chin Zee Ling, the High Court held that:- “…[10] In my judgment, the confidentiality of the said confidential information (which includes customer lists and details) could not be seriously disputed as this has been expressly mentioned in cl 7.01(ii) of the employment agreement. And, it must be recognised that particulars such as customer’s names, lists and details have also been judicially recognised as being confidential in nature, and wrongful utilisation of such particulars warrants injunctive protection. Some cases on point are Faccenda Chicken Ltd v Fowler [1986] 1 All ER 617 (CA) (‘Faccenda Chicken’); Thomas Marshall (Exports) Ltd v Guinle [1978] 3 All ER 193. In Schmidt Scientific Sdn Bhd v Ong Han Suan [1997] 5 MLJ 632 even the ‘list of names and address of customers and suppliers’ were classified as trade secrets…” [Emphasis added]

Ultimately, the question is: where does the prejudice lie? The redaction of documents does not automatically bar parties or the Court from relying on them, as there was a legal basis to carry out the redaction. The Court retains the discretion to admit those documents in appropriate cases where no prejudice appears to have been done to any party in the proceeding. Critically, the material information relevant to proving the use of Delaware's DOVER Mark remains intact.

The Plaintiffs cannot deny that the invoices introduced by the Defendant irrefutably demonstrate the dates of issuance and partial addresses, which relate to Malaysia during the relevant period. The 26! ! Defendant relies on these invoices to prove use of the Delaware DOVER Marks in Malaysia between 2 May 2021 to 1 May 2024.

Further the case of Tokai relied by the Plaintiff stands for the proposition that a party should not, without the court’s sanction, redact documents in such a way that neither the court nor the opposing party can meaningfully assess their contents. There, the court had no visibility of the redacted material.

The present case has moved beyond that posture. Following case management, a confidentiality regime was agreed upon, and unredacted versions of the invoices and other documents were made available for inspection by the Plaintiffs' solicitors under appropriate safeguards. The court, too, had the benefit of the unredacted documents, which were relied upon in the defendant's supplementary submissions and were the subject of direct engagement by the Plaintiffs in their additional submissions.

In the present circumstances, the vice identified in Tokai is no longer operative. The court is not without knowledge of the content of the redactions, nor are the Plaintiffs impeded in formulating a response. The question, therefore, is one of evidentiary weight and reliability, rather than wholesale admissibility.

I therefore decline the Plaintiffs’ invitation to disregard “IAJ-4” and “IAJ-5” in limine. I will instead consider whether those documents demonstrate use of the impugned marks in the sense demanded by section 46. 27! !

Having analysed the preliminary issues, I now move to consider the issues at hand. I. Whether the Plaintiffs Are “Aggrieved Person”

As a matter of law, the Plaintiffs must convince this Honourable Court that they are an "aggrieved person" as contemplated by the TMA

The relevant provision is reproduced below:

(1) The registration of a trademark may be revoked by the Court on an application by an aggrieved person on any of the grounds as follows:

where within a period of three years following the date of issuance of the notification of registration, the trademark has not been put to use in good faith in Malaysia, by the registered proprietor or with his consent, in relation to the goods or services for which the trademark is registered, and there are no proper reasons for non-use; b)where the use of the goods or services under paragraph

has been suspended for an uninterrupted period of three years, and there are no proper reasons for non-use;

The Federal Court in Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia (Pendaftar Cap Dagangan Malaysia, interested party) [2015] 6 MLJ 465 held at [28] that an “aggrieved person” is: 28! ! “A person who has used his mark as a trademark or who has a genuine and present intention to use his mark as a trademark in the course of a trade which is the same as or similar to the registered trademark that the person wants to be removed from the register. The person must be someone who has some element of legal interest, right or legitimate expectation in its own mark which is being substantially affected by the presence of the registered mark. The interest or right must be legal or lawful.”

In McLaren International Ltd v Lim Yat Meen [2009] 4 CLJ 749, the Federal Court explained that a person aggrieved is one who has used the mark as a trade mark, or has a genuine and present intention to do so, in the course of a trade that is the same as or similar to that of the proprietor of the registered mark sought to be removed. The Federal Court in McLaren International Ltd v. Lim Yat Meen held as follows: “[22] We understand that passage as laying down the principle that a person aggrieved is a person who has used his mark as a trade mark – or who has a genuine and present intention to use his mark as a trade mark – in the course of a trade which is the same as or similar to the trade of the owner of the registered trade mark that the person wants to have removed from the register.”

This position has also been applied by this Court in Commercial Marketers and Distributors Sdn Bhd v Karelia Tobacco 29! ! Company, Inc [2023] 1 LNS 1530, where it was reiterated in substance that standing is made out where the applicant has used the mark, or has a genuine and present intention to use it, in a trade that is the same as or similar to that of the respondent: “[21] In short, the applicant has used his trade mark or who has a genuine and present intention to use his mark as a trademark in the course of a trade which is the same as or similar to that of the respondents.”

On the evidence before me, I find that the Plaintiffs have reinforced their standing as an aggrieved person for the following reasons: a) The Plaintiffs have used the Plaintiffs’ DOVER mark and have a genuine legal and equitable interest to use, deal with, and commercialise the DOVER mark for the Plaintiffs’ products in Malaysia. b) Any company intending to sell elevators and/or parts thereof, or to maintain elevators in Malaysia, must be registered as a Competent Firm with the Department of Occupational Safety and Health (“DOSH”). The 2nd Plaintiff has, throughout, maintained registration as a Competent Firm in Malaysia. c) In addition, a company intending to install elevators and/or parts thereof, or to maintain elevators in Malaysia, must be registered as a contractor with the Construction Industry Development 30! ! Board (“CIDB”) before undertaking such works. The 2nd Plaintiff has been registered with CIDB since 1999. d) Since 2002, the Plaintiffs have distributed, marketed, supplied and sold the Plaintiffs’ products bearing the 1st Plaintiff’s DOVER mark in Malaysia, and they continue to do so to date. Notable projects include the installation and maintenance of elevators for, amongst others: (a) Bangsar Village Shopping Mall; (b) IKEA Cheras; (c) Genting World; (d) KPJ Kajang; (e) Shah Alam Court Complex; and (f) Bukit Jalil Sports Complex.

On this issue, I take note of the Defendant’s contention that the Plaintiffs are not an “aggrieved person”. Learned counsel for the Defendant submitted that the Plaintiffs have not adduced any supporting evidence establishing any right to use and/or register the “DOVER” mark in any class in Malaysia. On that basis, learned counsel for the Defendant argued that the Plaintiffs have failed to satisfy the requirement of an “aggrieved person” under section 46(1) of the TMA 2019, and accordingly lack locus standi to maintain this revocation action. Learned counsel for the Defendant further relied on the Defendant’s notices of objection against the 1st Plaintiff’s following applications: No. Application registration no. Trademark Class Application Date 1. TM2022006000 7 9 March 2022

TM2022006001 9 9 March 2022

TM2022006002 37 9 March 2022 31! !

In my considered view, the mere fact of a notice of objection does not, without more, establish that the Plaintiffs are not aggrieved persons. If anything, it tends to underscore that the Plaintiffs are aggrieved by the Defendant's "DOVER" marks. Should the Defendant's offending DOVER marks remain on the register, the Plaintiffs face the very real and practical risk that their continued use of their own marks may be characterised as infringing conduct. That is precisely the kind of legal and commercial impediment contemplated by s.46(1), and it suffices to establish the Plaintiffs as aggrieved persons.

It therefore follows that the Plaintiffs have satisfied the test for an aggrieved person set out in McLaren International (supra) and Mesuma Sports (supra) and are qualified to file this Originating Summons pursuant to Section 46 (1)(a) and (b) of the TMA for the following reasons: a. Use and/or genuine intention to use. The Plaintiffs (in particular, the 2nd Plaintiff as the operating entity) have for years conducted business in Malaysia in relation to elevators, escalators and associated services, and have used “DOVER” as a badge of origin in the course of that trade. At the very least, the evidence demonstrates a genuine and present intention to continue such use in Malaysia. b. Same or similar trade. The Plaintiffs’ activities—supply, installation, maintenance and related services in the vertical transportation sector—are plainly in the same field (or at minimum, closely similar) to the subject matter in respect of which 32! ! a “DOVER” mark would be commercially deployed. This satisfies the “same or similar trade” limb articulated by the Federal Court. c. Legal interest substantially affected. The Plaintiffs possess a legitimate commercial interest in utilizing and developing the "DOVER" mark within Malaysia, substantiated by existing business activities and the necessary regulatory registrations. The Defendant's continued "DOVER" registrations on the Register constitute a tangible legal and commercial impediment, exposing the Plaintiffs to potential infringement claims or other enforcement actions, and inhibiting lawful expansion, including efforts to obtain trademark protection. II. The Burden of Proof and the Plaintiff’s Prima Facie Case of Non-Use

Under s.46(1)(a) and (b) of the TMA 2019, an aggrieved person may apply for the revocation (and consequential removal from the Register) of a registered trademark where the mark has not been used in good faith in Malaysia for the prescribed period—either because it was never put to use within three years of registration, or because use has been suspended for an uninterrupted period of three years.

For ease of reference, s.46(1)(a) and (b) of the TMA 2019 provides: “(1) The registration of a trademark may be revoked by the Court on an application by an aggrieved person on any of the grounds as follows: 33! !

where within a period of three years following the date of issuance of the notification of registration, the trademark has not been put to use in good faith in Malaysia, by the registered proprietor or with his consent, in relation to the goods or services for which the trademark is registered, and there are no proper reasons for non-use;

where the use of the goods or services under paragraph (a) has been suspended for an uninterrupted period of three years, and there are no proper reasons for non-use;…”

Section 46(3) further qualifies what may be counted as “use” for these purposes:

Any such use referred to in paragraph (1)(a) or (b) that has begun or resumed after the expiry of the three year period but within the period of three months before the making of the application for revocation shall be disregarded unless preparations of such use began before the proprietor became aware that the application for revocation might be made.

In practical terms, the inquiry focuses on a continuous period of three years of non-use, assessed up to shortly before the revocation application is filed.

In an application grounded on non-use under the TMA, it is sufficient for the applicant to establish a prima facie case of non-use. Once that threshold is met, the evidential burden shifts to the registered proprietor to adduce credible evidence of genuine use of the mark during the material period. ! 34! !

In my judgment, a prima facie case of non-use may be established where the applicant puts forward: i. a coherent basis for why one would expect to see use if it existed; ii. objective indicia pointing to the absence of such use (for example, the absence of the proprietor from relevant regulatory registers in a heavily regulated industry); and iii. the absence of any cogent contrary material, such that the proprietor is put to its election to adduce evidence in rebuttal.

In this regard, based on the above facts, the Plaintiffs contended that the Defendant is not, in fact, in the business of escalators and elevators and, further, that the Defendant’s parent company, DC, ceased to be in that business after the sale of DEI in 1998. The Plaintiffs also pointed out to the regulatory indicia. The 2nd Plaintiff is registered with the DOSH as a Competent Firm, as required under the applicable regulatory framework. The Defendant, however, is not listed as a Competent Firm with DOSH.

Having considered the evidence as a whole, I am satisfied that the Plaintiffs have established a prima facie case of non-use of the Defendant’s Offending DOVER Mark. In these circumstances, I am satisfied that the Plaintiffs have discharged their initial burden of establishing a prima facie case of non-use within the meaning of s 46(1)(b). The evidential burden accordingly shifts to the Defendant to demonstrate that the “DOVER” mark has been used in good faith in 35! ! Malaysia in relation to the registered goods during the Relevant Period, or that there are proper reasons for non-use. III. The Defendant’s Evidence of Use and Good Faith

The Defendant asserted that the evidence before the Court clearly establishes genuine, good faith use of Delaware’s DOVER Marks. In this regard, learned counsel for the Defendant submitted that the Defendant has successfully rebutted the allegation of non-use by presenting credible and substantiated proof of use in Classes 7 and 9 between 2 May 2021 and 1 May 2024. Learned counsel, in his submissions, underscored the interconnected network of entities related to or associated with the Defendant and the Dover Group of Companies during this period. The following table according to the Defendant illustrates the list of these associated entities, reinforcing the Defendant’s assertion of continuous and legitimate commercial activity. NO NAME OF DOVER GROUP and/or ASSOCIATED COMPANIES WHICH SUPPLIED “DOVER” GOODS TO MALAYSIAN CUSTOMERS IN THE

1.

Belvac Production Machinery, Inc

Chief Automotive Technologies of Vehicle Service Group, LLC

Rotary Lift of Vehicle of Service Group, LLC

Hydro Systems Company Dover Southeast Asia (Thailand) Ltd.

Liquip International Pty Ltd

OK International, Inc.

Dover Pumps & Process Solution Segments, Inc. dba Blackmer

PSG Germany GmBH 36! !

The Defendants have also exhibited invoices evidencing the use of Delaware’s DOVER Mark in class 7 and Class 9 during the relevant period. Class 7 NAME OF DOVER GROUP SUPPLIER DESCRIPTION OF PRODUCTS DATE OF INVOICE Between 2 May 2021 to 2 May 2022 Chief Automotive Technologies of Vehicle Service 10 May 2021 Belvac Production Machinery, Inc 13 May 2021 Rotary Lift of Vehicle of Service Group, LLC 12 June 2021 Liquip International Pty Ltd 28 May 2021 Belvac Production Machinery, Inc 30 June 2021 Between 3 May 2022 to 2 May 2023 Chief Automotive Technologies of Vehicle Service MECHANICAL DEVICES FOR IDENTIFYING ANALYZING STRUCTURAL DAMAGE TO VEHICLES; 14 June 2022 37! ! Rotary Lift of Vehicle of Service Group, LLC 22 July 2022 22 November 2022 Dover Pumps & Process Solution Segments, Inc. dba Blackmer 16 March 2023 Dover Pumps & Process Solution Segments, Inc. dba Blackmer PUMPS; 26 April 2023 Liquip International Pty Ltd 28 April 2023 Between 3 May 2023 to 1 May 2024 Dover Pumps & Process Solution Segments, Inc. dba Blackmer 16 May 2023 Dover Pumps & Process Solution Segments, Inc. dba Blackmer GEARS; 24 May 2023 Belvac Production Machinery, Inc 11 July 2023 28 September 2023 Hydro Systems Company VALVES; CHEMICAL HANDLING EQUIPMENT AND CLEANING SYSTEMS; FLUID HANDLING EQUIPMENT; 20 December 2023 Dover Southeast Asia (Thailand) Ltd. VALVES; CHEMICAL HANDLING EQUIPMENT AND 20 December 2023 38! ! CLEANING SYSTEMS; FLUID HANDLING EQUIPMENT; Dover Pumps & Process Solution Segments, Inc. dba Blackmer 26 January 2024 Liquip International Pty Ltd 6 February 2024 Class 9 NAME OF DOVER GROUP SUPPLIER DESCRIPTION OF PRODUCTS DATE OF INVOICE Between 2 May 2021 to 2 May 2022 Liquip International Pty Ltd 28 June 2021 OK International, Inc. SOLDERING IRONS; HEATING TWEEZERS; 30 September 2021 Liquip International Pty Ltd LIQUID LEVEL GAUGES; 16 December 2021 Between 3 May 2022 to 2 May 2023 Chief Automotive Technologies of Vehicle Service PRESSURE GAUGES; 14 June 2022 22 November 2022 Chief Automotive Technologies of Vehicle Service LASER SCANNERS FOR INDUSTRIAL INSPECTION; LASERS FOR NON-MEDICAL USE; LASER-POWERED MEASURING INSTRUMENTS; 21 December 2022 OK International, Inc. SOLDERING IRONS; HEATING TWEEZERS; 6 March 2023 PSG Germany GmBH FLOW METERS; 27 April 2023 39! ! Liquip International Pty Ltd LIQUID LEVEL GAUGES; 28 April 2023 Between 3 May 2023 to 1 May 2024 28 September 2023 Hydro Systems Company ELECTRONIC APPARATUS FOR MONITORING, SENSING LEVELS; PROPORTIONING METERING INSTRUMENTS APPARATUS; 20 December 2023 Dover Southeast Asia (Thailand) Ltd. ELECTRONIC APPARATUS FOR MONITORING, SENSING LEVELS; PROPORTIONING METERING INSTRUMENTS APPARATUS; 20 December 2023 Liquip International Pty Ltd 6 February 2024 Vehicle Service LASER SCANNERS FOR INDUSTRIAL INSPECTION; 16 February 2024

It is the Defendant’s case that the use of Delaware’s DOVER Marks, as demonstrated through invoice imprints in connection with the goods, constitutes clear and sufficient evidence of trademark utilization. Learned counsel for the Defendant submitted that such evidence, as presented, squarely meets the statutory requirements under Section 46(1) of the TMA 2019. 40! !

In essence, the Defendant took the position that: i. goods originating from the Dover group were sold to various third-party suppliers overseas; ii. these suppliers, in turn, sold certain DOVER-branded goods into Malaysia during the Relevant Period; iii. the invoices and shipping documents, which refer to “DOVER”, evidence such use of the mark in relation to the goods; and iv. use by such third parties should be treated as use “with the consent” of the proprietor, within the meaning of s 46(1)(a), even if the precise contractual link is not documented in these proceedings.

The Defendant further contended that the Plaintiffs' emphasis on elevators and escalators presented an unduly narrow interpretation of the Class 7 and 9 registrations. Specifically, the Defendant argued that the specifications of these registrations encompass a broad spectrum of industrial machinery and electronic equipment, and consequently, use in connection with any of these goods would suffice to maintain the validity of the registrations in their entirety.

The starting point of my discuss will pivot on those references to use of a trademark as outlined under Section 7 of the TMA 2019 as follows: 41! ! “(1) References to the use of a trademark shall be construed as references to the use of a printed or other visual or non-visual representation of the trademark.

References to the use of the trademark in relation to goods shall be construed as reference to the use of the trademark upon, or in physical or other relation to, the goods.

References to the use of a trademark in relation to services shall be construed as references to the use of the trademark as a statement or as part of a statement about the services.” [ Underlined Emphasis Mine]

The “use” in s 7 must be understood as trademark use—that is, use of the sign as a badge of origin, in a manner that is visible or otherwise meaningful to the relevant public. Mere internal documentation, or incidental references to a sign on invoices, without more, does not necessarily amount to trademark use in the requisite sense. (refer USA PRO IP Ltd v Montfort Services Sdn Bhd [2016] 9 MLJ 258)

In the case of Al Baik Fast Food Distribution the Court of Appeal, in referring to the book of ‘Trade Marks and Passing Off’ (6th Ed) held as follows: “A trademark has no meaning unless it is used in relation to some goods. Broadly speaking, the life of a trademark depends on its use; and continued non-use may lead to its eventual death. There is, therefore, no equitable or logical basis for the continuance of the protection afforded by 42! ! registration where the mark is no longer in use for sufficiently long period. This principle is recognised in the Act by providing for the removal of a mark from the register on the ground of non-use.” [Underlined Emphasis Mine]

In the case of Godrej Sara Lee Ltd v. Siah Teong Teck & Anor (Part 2) [2008] 7 CLJ 24, Ramly Ali J (as His Lordship then was) held the following in relation to “use” of a trademark: “[22] The question to be answered is whether the first respondent has shown use of the mark in the course of trade in relation to the goods covered by the registration during the relevant period of time under s 46 of the Trade Marks Act 1976. If the affidavits of the first respondent are to be examined, there is no such evidence… [25] Firstly, if the provisions of s 46 are to be considered, for use to be constituted and taken into account, the use must be in relation to the goods claimed in the registration. Merely seeking approval and obtaining it does not translate to actual use of the mark in the course of trade. A party may or may not follow up with use of the mark after approval has been secured. For actual use to arise, there must be use of the mark on or in relation to goods. This would include affixing the mark to the goods or in an advertisement, circular or a catalogue… [26] Secondly, even if the application for registration with the Pesticides Board was followed by use (which is denied and clearly not shown), this would 43! ! be use by Sri Dapat Sdn Bhd and not the first respondent. If s 46 is examined, the use during the material period has to be by the registered proprietor (being the first respondent) or a registered user.” [Underlined Emphasis Added]

I have considered the evidence adduced by the Defendant to support the use of the DOVER mark in the Relevant Period. With respect I find that such “use” would not fall within the definition of “use in good faith” as prescribed in Section 46 of the TMA 2019.

In this regard I find that the Defendant has not produced any photographs, packaging, catalogues, marketing materials, user manuals or product labels showing the “DOVER” mark affixed to goods actually available in the Malaysian market during the Relevant Period. In a case involving complex industrial machinery, some flexibility is warranted; but the total absence of any external-facing material is striking, especially for a proprietor who claims extensive international operations.

Further, I find that the volume and pattern of the invoiced transactions are modest and sporadic. The scale and frequency of the alleged sales fall well short of “genuine use”, and appear instead to be what the authorities have described as token or colourable use undertaken primarily to preserve a registration, rather than to serve a real commercial function. They draw analogies with Godrej Sara Lee Ltd v Siah Teong Teck and LB (Lian Bee) Confectionery Sdn Bhd v QAF Ltd, in which token use was held insufficient to defeat non-use challenges. 44! !

Finally, I find that the Defendant has failed to demonstrate that the alleged “DOVER” goods in the invoices correspond in any concrete way to the broad range of goods listed in the Class 7 and 9 specifications. In many instances, the goods descriptions are generic, and there is no evidence that the mark functions as a trademark on those goods in the Malaysian market.

At the outset, the Defendant failed to show that the goods that were purportedly being sold in Malaysia contained the Defendant’s Offending DOVER Marks. This in itself is insufficient to meet the criteria of “use” as stated in the abovementioned authorities.

Azizah Nawawi J (as Her Ladyship then was) held the following in the case of Oishi Group Public Co Ltd v Liwayway Marketing Corp [2015] 9 MLJ 538: “Therefore from s 3(2) read with s 46(1)(b), the reference to use must be physical use of the mark on or in relation to the goods by the registered proprietor or registered user. By simply showing the mark noted on cash invoices of a third party, and not the registered proprietor or registered user is not ‘use’ of the registered mark within the meaning of s 46(1)(b) read with s3.”

The “use” in the present proceedings should be looked in the context of actual or genuine use as opposed to token use, which is the use solely for the purposes of preserving the rights conferred by registration. In Jost Cranes GmbH & Co KG v Jost Cranes Sdn Bhd [2010] 4 MLJ 191, Azahar Mohamed J (as His Lordship then was) held the following to define the meaning of genuine use: 45! ! “(a) Genuine use is a qualitative and not a quantitative criterion.

(b)the use has to be consistent with the essential function of the trademark, which is to guarantee the identity of the origin of the goods or services to the customer or end users.

(c)the use has to be on the market by the proprietor or an authorised third party and not just internal use by the undertaking concerned.

(d)the use has to be to maintain or create a share in the market for the goods or services protected by the mark.

(e)the court has to take into consideration all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark has been real, and in particular, whether such use would be viewed as warranted in the trade sector concerned to maintain or create a share in the market for the relevant goods or services protected by the mark. And finally,

(f)the nature of the goods in issue such as the characteristics of the market concerned the scale and frequency of the use of the mark have to be taken into account.”

As such, I find the Defendant's assertion that the suppliers listed in Encl. 15 constitute use of the Defendant's Offending DOVER Marks by virtue of the fact that the "DOVER mark appears on all the invoices" to be without merit, and such use ought not to be construed as genuine or actual use. 46! !

The Defendant's infringing DOVER Marks must be used on the goods purportedly supplied by the relevant suppliers. It would be highly unorthodox for de minimis use of the Defendant's infringing DOVER Marks on an invoice to constitute genuine or actual use. Furthermore, such token use would effectively allow the Defendant to maintain constructive possession of the Defendant's infringing DOVER Marks without actually using them.

In this regard I find that such use was by third parties and not the Defendant themselves, as the registered proprietor, of the Defendant’s Offending DOVER Marks.!

Section 46(1)(a) of the TMA 2019 specifically states that the use must be by a registered proprietor or with his consent. The purported use in the present proceedings is not by the Defendant, as the registered proprietor, but by third party suppliers purportedly affiliated with the Defendant’s parent company, DC.

I find that he allegations made by the Defendant are merely bare assertions without the support of any cogent evidence. The Defendant failed to substantiate and/or provide any evidence to show that the said third party suppliers are indeed subsidiaries of

The Defendant failed to produce any evidence whatsoever to show that the third-party suppliers are connected in any way, shape or form, to DC. Furthermore, the Defendant further failed to show that the Defendant themselves consented to the use of the Defendant’s Offending DOVER Marks by any of the third-party suppliers. 47! !

As such, any purported use by the third-party suppliers does not ipso facto mean that it is use attributable to the Defendant.

I accept that invoices can, in an appropriate case, constitute evidence of trade mark use “in relation to goods”, particularly where the goods are industrial and are ordered, supplied and tracked primarily by reference to documentation. But the question remains whether the use evidenced is genuine, commercial and in good faith, and whether it is sufficiently linked to the registered specification.

On the totality of the materials placed before me, I am not persuaded that the Defendant's invoices establish genuine trademark use in Malaysia during the Relevant Period in relation to the goods for which the “DOVER” marks are registered.

Section 46(1)(a) expressly allows use "by the registered proprietor or with his consent." It is therefore permissible for a proprietor to rely on use by distributors, group companies, or licensees. However, "consent" is not a term of art devoid of content. It contemplates at least some evidence of authorisation or acquiescence by the proprietor in relation to the specific use relied upon.

Here, the Defendant relies on the fact that certain third-party suppliers and Malaysian customers dealt in DOVER-branded goods allegedly originating from the wider Dover group. But it has not adduced any licence agreements, distributorship contracts, correspondence, or even corporate structure charts showing how these entities are related to the Defendant or to its parent. 48! !

The Plaintiffs, for their part, have undertaken searches at the Companies Commission of Malaysia (“CCM”) and have exhibited the CCM reports (subject to the confidentiality regime) to show that these customers and suppliers are independent Malaysian entities not shown to be part of the Dover group.

Learned counsel for the Defendant argued that it is "normal" for a supply chain to involve multiple independent parties and that the benefit of any use of the "DOVER" mark by those parties should inure to the registered proprietor. This may be true where there is evidence linking the use to the proprietor's authorisation, for example, through contracts or catalogue references showing that the goods originate from the proprietor and are marketed under its mark.

However, in the present case, a significant evidential gap exists. Direct evidence is lacking to demonstrate that the Defendant consented to the third parties' use of "DOVER" as a trademark in Malaysia, nor is there evidence that it exercised quality control or oversight typical of a licensor or brand owner. The mere fact that the goods originated within the broader Dover corporate structure does not, without additional evidence, establish that their appearance in Malaysian invoices constitutes "use with the consent" of the registered proprietor.

I therefore find that the Defendant has not shown that any alleged use by third parties in Malaysia during the Relevant Period is use with its consent within the meaning of s 46(1)(a). 49! !

The Plaintiffs advance a further argument: that any alleged use of the “DOVER” mark in relation to elevator and escalator machinery in Malaysia is unlawful under the FMA 1967, because neither the Defendant, the identified suppliers, nor the Purported Malaysian Customers are registered as Competent Firms with DOSH.

Learned counsel argued that no person may lawfully manufacture, install, maintain or repair machinery falling within the FMA's scope without the requisite certificates, and that any trade in such goods by non-registered entities is therefore illegal. On that footing, any such use cannot amount to “use in good faith” under s 46(1)(a) and

(b).

The Defendant refuted this argument, asserting that the FMA has no relevance to the trademark inquiry and that it is not engaged in regulated activities in Malaysia.

I would be slow to hold that any regulatory non-compliance in trade in goods bearing a mark automatically disqualifies such use from being counted under s 46. Trademark law and regulatory law serve distinct public interests and should not be conflated without clear legislative direction.

However, the concept of "use in good faith" is not entirely divorced from the legality of the underlying conduct. When the only instances of alleged use consist of marginal and unexplained transactions by entities who, based on the Plaintiffs' unchallenged evidence, lack the requisite regulatory capacity to engage in transactions involving the class of machinery for which the mark is registered, it is difficult 50! ! to characterise such use as "good faith" use within the scope of protection intended by non-use regimes.

In the present case, I do not rest my decision on illegality alone. Even assuming, without deciding, that some or all of the goods in issue fall outside the FMA's scope, the more fundamental difficulty for the Defendant lies in the fact that the evidence of use is thin, sporadic, and unsupported by any coherent narrative of genuine commercial exploitation of the "DOVER" mark in Malaysia during the Relevant Period.

On a holistic view, I find that the Defendant has not established genuine and good-faith use of the “DOVER” mark in Malaysia in relation to the goods for which it is registered in Classes 7 and 9 during the Relevant Period.

To reiterate my findings aforesaid, under section 46(1)(a) of the TMA 2019, the use relied upon must be “use in good faith”. In E-Toyo Global Stationery Sdn Bhd v Toyo Ink Sdn Bhd & Anor [2004] 7 CLJ 367, Ramly Ali J construed “good faith” in this context to mean genuine use, as opposed to merely honest use. His Lordship referred to The Law of Intellectual Property by Staniforth Ricketson, observing that “good faith” use is not colourable—for example, where a mark is used in advertising without the relevant goods or services actually being made available: “In both paras (a) and (b) of s. 46(1), the words “good faith” play a role. In this context, the Law of Intellectual Property by Staniforth Ricketson at para 37.13 at p 727 states as follows: 51! ! In this context “good faith” means “genuine”, rather than “honest” or “without deceit or intention to defraud”. Thus, the intended or actual use must not be colourable, as would be the case where the mark is used in advertisements without the goods or services in respect of which it is used being made available.”

The same principle is reflected in Imperial Group Ltd v Phillip Morris & Co Ltd [1982] FSR 72, where the court held that bona fide use must be ordinary and genuine, substantial, and constitute a real commercial use on a substantial scale—not a fictitious or colourable use deployed as a stratagem to secure or maintain statutory protection. In Imperial Group Ltd v Phillip Morris & Co Ltd [1982] FSR 72, it was held that: “…According to the judgments given in this court in that a case a bona fide use should be “ordinary and genuine” (per Lord Evershed M.R. at p. 36), “perfectly genuine” “substantial in amount” “a real commercial use on a substantial scale” (per Jenkins L.J. at p. 41) and not “some fictitious or colourable use but a real or genuine use” (per Morris L.J. at p. 42). The plaintiffs never intended to use the mark “Nerit” in the ordinary course of their business; their use of it was not substantial; it was not a real use in any commercial sense; it was a colourable stratagem for making their trade rivals think that they were using the mark “Nerit” in a way which gave it the protection of the Act. If the Electrolux case is an authority which binds this court – and seemingly it does – and I have applied it correctly to the evidence, then the defendants succeed on their section 26(1) claim.” 52! !

Similarly, in Laboratoire De La Mer Trade Marks [2002] FSR 51, it was held that the smaller the alleged use, the more closely it must be scrutinised and proved. In particular, the trade mark owner must demonstrate that the use was not merely colourable or token, undertaken with the ulterior purpose of validating the registration. Where use is relied upon through advertising rather than application on goods or packaging, the inquiry also extends to whether the advertising was truly directed at customers in the relevant jurisdiction.

In the present case, the Plaintiffs submit that the invoices adduced by the Defendant are insufficient to constitute use within the meaning of the TMA. I find considerable force in the Plaintiffs' stance. In reliance on Imperial Group Ltd (supra)and Laboratoire De La Mer Trade Marks (supra), I find that even if the invoices are accepted, such evidence is insubstantial and does not support any "real use in any commercial sense." At best, it constitutes a colourable stratagem or a token use undertaken with the ulterior motive of validating the registration. As such, such use does not constitute "use in good faith."

In their Additional Written Submissions, the Plaintiffs invite the Court to consider an alternative route to revocation under s 43(5) TMA 2019, by reference to the UK Supreme Court's decision in SkyKick UK Ltd v Sky Ltd and the General Court's decision in Supermac's v EUIPO - McDonald's (BIG MAC).

Learned counsel for the Plaintiffs submitted that the Defendant's registrations: 53! ! i. cover extremely broad and general specifications of goods in Classes 7 and 9, including segments in which the Defendant has no genuine commercial interest or intention to use the mark; ii. operate as a form of trademark squatting, preventing other traders— including the Plaintiffs—from making bona fide use of “DOVER" in their own legitimate spheres; and iii. should therefore be regarded, at least in part, as registrations made in bad faith, warranting revocation under s 43(5).

The concern that overly broad specifications, disseminated without any realistic intention of utilization, may distort the registration system is a compelling one. However, the issue of bad faith is a grave matter that necessitates rigorous substantiation through cogent evidence of the proprietor's state of mind at the time of application. Based on the available materials, I do not deem it necessary, nor would it be appropriate, to reach a definitive conclusion regarding bad faith.

Drawing the threads together, my conclusions are as follows:

The Plaintiffs have demonstrated that they are “aggrieved persons” for the purposes of s 46(1) TMA 2019. They have a 54! ! genuine and present commercial interest in using “DOVER” in relation to elevators and escalators in Malaysia, and their ability to do so is reasonably affected by the continued presence of the Defendant's registrations in Classes 7 and 9.

The Plaintiffs have discharged their initial burden of establishing a prima facie case of non-use of the “DOVER” marks in Malaysia in relation to the registered goods during the Relevant Period.

The Defendant has failed to show that the “DOVER” marks have been used in good faith in Malaysia in relation to the goods for which they are registered in Classes 7 and 9 during the Relevant Period, whether by itself or with its consent. The limited invoice evidence does not suffice to establish genuine, commercial trade mark use; nor does it establish that any use by third parties was with the Defendant's consent.

There are no proper reasons for such non-use;

It follows that the Plaintiffs are entitled to revocation of the Defendant's “DOVER” registrations.

Accordingly, I order as follows: i. The Defendant failed to use the “DOVER” marks in Class 7 (Trademark No: 02009623) and in Class 9 (Trademark No.: 02009624) (“Defendant’s Offending DOVER Marks”) for a continuous period of three (3) years (“3 Year Non-Use”); 55! ! ii. During the 3 Year Non-Use period, there was no use in good faith of the Defendant’s Offending DOVER Marks by the Defendant in relation to the goods for which they were registered – namely:

For the Defendant’s Offending DOVER Marks in Class 7 (Trademark No: 02009623): air, gas and vapor compressors; lifting, elevating, lowering, positioning and leveling apparatus and power equipment and parts/accessories thereof; machines for automatically placing and/ or connecting semiconductor devices; hydraulic trash can dumpers; food and beverage can manufacturing equipment; cable assemblies, positioning booms, water cooler circulators, cable splicers, equipment carts; pumps; fluid motors; gear reducers; bypass valves; valves; piston rings, seals and seal assemblies; remote control manipulators; automotive repair machines, namely, body, frame and wheel aligners; mechanical measuring devices for identifying and analyzing structural damage to vehicles; generators and gears to be used in industries including air conditioning, refrigeration, gas pipeline, oil refining, power generation; fuel injection valves; machines for applying solder and related electronic materials in connection with production of printed circuit boards and other electronic substrates, namely stencil 56! ! printers and screen printers, machines for use in production of electronic thick film hybrid circuits and solar cells; stands and supports for use with printed circuit boards, printing machines; power tools; robotic drills, clamps, coolant safety monitor system for use with welding machines; robot-controlled gripping devices; refrigeration compressor valves; cylinders; manual, pneumatic, hydraulic and electronic tensioning devices and gripping tools; airline oiler lubricant for pneumatic tools; machine housings; toggle clamps; cutlery and machining and tools; welding machines; electric food blenders for commercial use; tanks for processing food service, industrial and chemical materials; mixing kettles; fluid filters for food service materials; refuse compacting and crushing machines and handling apparatus; hydraulic pump units; mechanically-operated beverage bottle washers and pasteurizers; water pumps; refuse handling equipment; chemical handling equipment and cleaning systems; high pressure fluid spraying and cleaning machines; fluid handling equipment; printing presses; ink jet printers; conveyors for moving articles past an inkjet; internal combustion engine parts; pistons; machine tools; water transfer stations; well pumping equipment; battery-powered wire wrapping tools and parts; underground secondary containment systems; valves and fluid fueling components; loading arms; fuel pump and metering apparatus; computer 57! ! controller; fuel dispensing pumps; vehicle washing, waxing and drying and polishing machines; machine couple and transmission components; apparatus for lighting, heating, steam generators, cooling, refrigeration, drying, ventilating, water supply, and sanitary purposes; pumps; electric motors; gears; machine parts used in industrial robots; machinery for processing industrial fluid streams and industrial products equipment and media for liquid/solid separation; electric oil power pack for use in operation of automotive lifts; ball bearings and journal bearings; concrete finishing machines; concrete mixers and spreaders; concrete pumps; power tools and machines for leveling concrete automatic condensation valves; equipment for use in manufacture of corrugated goods and packaging materials; machines for making signs; ultrasonic degreasing and cleaning machines; plastic polishing and refurbishing machines; automotive parts, namely, piston kits, connecting rod kits, bearings, engine valves; gasket sets; packaging machines; machines for applying closure fasteners for meat and other products containing enclosures; radiators for motors and engines; winches; gear systems and parts thereof; machines for automated printing on and handling of containers; soldering machines for use in the manufacture of printed circuits, machines for solvent cleaning of printed circuit boards; air filters; mufflers; air control valves; drain pump 58! ! adaptors, air distribution system for diaphragm pumps; fluid film bearings; pneumatic and electric motor driven torque tools; all included in class 7; and

For the Defendant’s Offending DOVER Marks in Class 9 (Trademark No: 02009624): vapor recovery monitoring systems; control instruments and apparatus for pumps and fluid motors; liquid proportioning and metering instruments and apparatus; electronic apparatus for monitoring, sensing and measuring liquid levels; liquid handling equipment; vapor recovery equipment; automatic valves; magnetic interferometers for testing the integrity of elongate metal objects; high frequency electronic circuit boards and microwave integrated circuits for use in microwave frequency applications; modular enclosures for electronic equipment; stenciling ultra violet lamps for the production of photostencils; capacitors for microwave equipment; ceramic packaging for integrated circuits and electronic devices; measuring instruments; flow meters; pressure gauges; probes for measuring fluid flow; valves; vacuum gauges; gas analyzers; welding electrodes; laser printers; laser scanners for industrial inspection; lasers for non-medical use; power supplies for lasers; laser-powered measuring instruments; laser markers; electrostatic discharge devices that ground people and computer 59! ! workstations to reduce or eliminate static electricity; electromechanical switches; electrical transformers; inductors; parking meters; deposit boxes for overtime parking; metal spring probes used to test the conductivity of printed circuit boards and other electrical components; apparatus and instruments for testing and monitoring electric and electronic components, namely, printed circuit board testers, in-circuit testers, semiconductor testers; electronic controllers for controlling productivity of oil and gas well installations; modular computer network systems; electrical, electronic and radio-controlled switches for crane systems; electrical, electronic and radio-controlled switches for signaling, monitoring and metering for crane systems, namely,load cells, angle indicators, angle transmitters, load indicators, display panels; liquid crystal displays; tension meters; rotation indicators; computerized in control apparatus for printing presses; x-y scanning densitomers; computer hardware and software for monitoring, reporting and analyzing pressroom operations; temperature responsive control devices for controlling the defrosting of refrigerated equipment; computer printers, electrical controls for ink jet printers; radio frequency and microwave filters; coaxial switches; electronic circuit components and electromagnetic structures for selective frequency control within the electromagnetic spectrum; electronic microwave transmission and receiving 60! ! equipment; solenoids and overmolded coils; liquid level gauges; liquid level controls and alarms for tanks, cars, trucks, barges and stationary and intermodal tanks; electrical circuit continuity tester for checking tank barge overfill in manure and transportation industries; capacitors; electronic component assembly production lines and computer software; illumination equipment, namely, machine vision illumination devices for use on automated electronic assembly equipment; electronic controllers controlling production of oil and gas well installations; automatic control valves and liquid level controllers; automatic industrial check valves; apparatus and instruments for designing, manufacturing and testing electronic components; semiconductor manufacturing equipment; soldering irons; heating tweezers; electrostatic discharge devices; electronic power supplies; glass flow gauges or indicators; leak detectors for responding to changes in the pressure of fluid to intake leaks in expansion joints; electronic scanner for use with magnetic activation device to activate a gasoline pump to dispense gasoline and diesel fuel; computer software modules for use with pc platforms at petroleum fueling sites for controlling electronic devices, namely, dispensers, island card readers, cash registers, tank monitors, and for performing business administration functions, namely, transaction data management, credit/debit transfer and processing, fleet and retail card 61! ! transactions; microprocessor system diagnostic equipment; electronic products using microprocessors; industrial lasers for cutting or welding; high frequency electronic circuit boards and microwave integrated circuits for use in microwave frequency applications; magnetic interferometers; electronic measuring, reference and calibration apparatus and instruments for use in sensing and measuring density, flow, pressure force, torque, weight, temperature and inertial parameters; pressure sensing apparatus for use in liquid flow lines; ultrasonic degreasing and cleaning machines, plastic polishing and refurbishing machines; electrical transformers; electric circuit board assembly equipment; electric motors; computer software; handheld computer programming units; circuit breakers; crystal oscillators; data recovery software; electronic equipment for inspection of circuit boards; electrically controlled apparatus for thermal processing; air distribution systems for diaphragm pumps; all included in class 9.; iii. Both of the Defendant’s Offending DOVER Marks are wrongfully remaining on the Malaysian Trademark Register by virtue of the Trademarks Act 2019; iv. The Defendant’s Offending DOVER Marks (Trademark Registration No. 02009623 in Class 7 and Trademark 62! ! Registration No. 02009624 in Class 9) be removed and/or expunged from the Register of Trademarks Malaysia; v. A sealed copy of this Order be served on the Registrar of Trademarks in accordance with Section 140(3) of the Trademarks Act 2019 and Regulation 52 of the Trademarks Regulations 2019 and that the Registrar of Trademarks shall upon the receipt of the Order, remove and/or expunge the said Malaysian Trademark Registration No. 02009623 and Malaysian Trademark Registration No. 02009624 from the Register of Trademarks and thereafter cause such fact to be published in the Journal; vi. Costs of RM30,000.00 to be paid forthwith by the Defendant to the Plaintiffs, subject to allocatur fee. Dated this day of 4th February 2026. -sgd-EDWIN PARAMJOTHY MICHAEL MUNIANDY JUDICIAL COMMISSIONER COMMERCIAL DIVISION (NCC 7) HIGH COURT OF MALAYA KUALA LUMPUR 63! ! Counsel: For the Plaintiff : Mr. Suaran Singh together with Mr. Ashwinathan Selvanathan and Ms. Angela Leong Mun Yi (Messrs. Law Partnership) For the Defendant : Mr. Sukumar Karuppiah together with Ms. Sarita Menon and Mr. George Mark (Messrs. Sukumar Karuppiah & Co.)