Lim Wei Ying v TE Electrical Sdn Bhd (JA-22IP-4-07/2024)

LIM WEI YING [NRIC No. : 940705-07-5468] …1ST PLAINTIF

CARAMAY MALAYSIAN SDN BHD [Company No. : 1365587-V] …2ND PLAINTIFF AND T.E. ELECTRIC SDN BHD [Company No. : 198463-A] …DEFENDANT

This is Plaintiffs’ application for summary judgment against the Defendant. The Plaintiffs’ cause of action against the Defendant is founded on the infringement of the trademark CARAMAY, used in respect of electrical products. In opposing this application, the Defendant contends that there are triable issues which warrant a full trial, and therefore summary judgment ought not to be granted.

Parties have filed written submissions and authorities and orally submitted at the hearing on 25 August 2025 and decision was adjourned to 30 September 2025. This is the Court's decision and its grounds.

The 1st Plaintiff is a registered proprietor of the trademark known as “CARAMAY”, registered as TM2019037096 in Class 9, classified under the electrical product category, in particular for electric cable and cabling. The specification for the trademark is as follows – “Electric cable installation; electric cables; electrical cabling; sheaths for electric cables, cables, electric; conductors’ cable, conduit for electric cables; electrical cables for lighting installations, insulated cable for electrical installations; electric cables; insulated electrical cables; joint boxes for housing cables”.

The production of electrical and cabling products under the CARAMAY trademark is carried out by the 2nd Plaintiff, which is owned by the 1st Plaintiff.

In July 2023, Plaintiffs discovered that the Defendant had supplied a product bearing the CARAMAY trademark via the e-Commerce platform Shoppee.com. The Plaintiffs purchased a sample of the product and upon inspection of packaging, colour, label, SIRIM Number, date coding and label and marking on the wire, found it to be a counterfeit product using the CARAMAY trademark.

The 2nd Plaintiff lodged a report to the Ministry of Domestic Trade and Cost of Living against the Defendant on the retailing of the counterfeit product and later against Awpha Marketing as the alleged supplier of the counterfeit product to the Defendant.

The Plaintiffs proceeded with this suit and the summary judgment against the Defendant for –

an injunction against the Defendant from infringement of the CARAMAY trademark;

the Defendant to surrender to the Plaintiffs all products that infringe the CARAMAY trademark;

the Defendant to disclose and provide details of the supplier of the counterfeit product of the CARAMAY trademark; and

an enquiry on damages.

The Defendant contended that they are a bona fide retailer of the CARAMAY trademark product supplied by Awpha Marketing, which Defendant contends had produced and distributed the product under Caramay Enterprise Sdn Bhd.

The statutory provision for summary judgment is provided under Order 14 Rules of Court 2012 (“ROC 2012”) as follows – “Application by Plaintiffs for summary judgment (O. 14, r. 1)

1.

Where in an action to which this rule applies a statement of claim has been served on a defendant and that defendant has entered an appearance in the action, the plaintiff may, on the ground that the defendant has no defence to a claim included in the writ, or to a particular part of such a claim, or has no defence to such a claim or part thereof except as to the amount of any damages claimed, apply to the Court for judgment against that defendant.

Subject to paragraph (3), this rule applies to every action begun by writ other than –

a claim by the plaintiff for libel, slander, malicious prosecution, false imprisonment, seduction or breach of promise of marriage; or

a claim by the plaintiff based on an allegation of fraud.

This Order does not apply to an action to which Order 81 applies”.

The Federal Court sets the test for Order 14 in Cempaka Finance Bhd v. Ho Lai Ying & Anor [2006] 3 CLJ 544; [2006] 2 MLJ 685, as below – “Quite clearly, the Court of Appeal has put the burden on the plaintiff to prove his case in an O.14 application. With respect, that cannot be the correct proposition of law. In an application under O.14, the burden is on the plaintiff to establish the following conditions: that the defendant must have entered appearance; that the statement of claim must have been served on the defendant; that the affidavit in support must comply with r. 2 of O. 14 in that it must verify the facts on which the claim is based and must state the deponent's belief that there is no defence to the claim (See Supreme Leasing Sdn Bhd v. Dior Enterprises & Ors [1989] CLJU 144; [1989] 1 LNS 144; [1990] 2 MLJ 36.). Once those conditions are fulfilled, the burden then shifts to the defendant to raise triable issues. The law on this is trite. In National Company for Foreign Trade v. Kayu Raya Sdn Bhd [1984] 2 CLJ 220; [1984] 1 CLJ (Rep) 283, the Federal Court has stated thus – We think it appropriate to remind ourselves once again that in every application under Order 14, the first considerations are –

whether the case comes within the Order and

whether the plaintiff has satisfied the preliminary requirements for proceeding under Order 14. For the purposes of an application under Order 14, the preliminary requirements are – i. the defendant must have entered an appearance; ii. the statement of claim must have been served on the defendant; and iii. the affidavit in support of the application must comply with the requirements of Rule 2 of the Order 14. ...If the plaintiff fails to satisfy either of these considerations, the summons may be dismissed. If however, these considerations are satisfied, the plaintiff will have established a prima facie case and he becomes entitled to judgment. This burden then shifts to the defendant to satisfy the Court why judgment should not be given against him”. (see also : Siemens Industry Software Inc v. KB Engineering Coatings Sdn Bhd [2025] 5 CLJ 853 COA)

In summary, Cempaka Finance Bhd establishes that Plaintiffs must satisfy three prerequisites before an application for summary judgment can succeed –

the Defendant has entered an appearance;

the statement of claim has been served on the defendant; and

the Plaintiffs’ supporting affidavit complies with Order 14 Rule 2 of the ROC 2012, where the deponent states his belief that the defendant has no defence to the claim.

Once these are established, the burden shifts to the Defendant to raise triable issues. The Supreme Court in Bank Negara Malaysia v. Mohd Ismail Ali Johor & Ors [1992] 1 CLJ Rep 14; [1992] 1 MLJ 400, clarifies that under an Order 14 application, the Court must assess whether the issues raised are truly triable, rather than accepting bare assertions.

Further, for infringement of trademark, the Court of Appeal in Siemens Industry Software Inc v. KB Engineering Coatings Sdn Bhd [2025] 5 CLJ 853 explained that summary judgment could also be entered in cases involving intellectual property rights. On this principle, the Court of Appeal relied on Acushnet Company v. Metro Golf Manufacturing Sdn Bhd [2006] 7 CLJ 557, which referred to the Court’s decision in Fabrique Ebel Societe Anonyne v. Syarikat Perniagaan Tukang Jam City Port & Ors [1989] 1 CLJ 919; [1989] 1 CLJ (Rep) 537, and held that – [29] The granting of such remedies is no exception by the Malaysia Courts. In this regard, the court relies on the case of Fabrique Ebel Societe Anonyne v. Syarikat Perniagaan Tukang Jam City Port & Ors [1989] 1 CLJ 919; [1989] 1 CLJ (Rep) 537, where Justice Zakaria Yatim granted similar remedies. Justice Zakaria Yatim ordered: In the circumstances, I allow the Plaintiff's application for final judgment under Order 14. for–

an injunction to restrain the Defendants... from infringing the Plaintiff's registered trade mark...;

for delivery up or destruction upon oath of all goods... offend against the foregoing injunction;

enquiry be made as to what damages... sustained by the Plaintiff; and (4) the Defendants will pay the Plaintiff's costs...” [30] The above authorities clearly show that in cases involving trade mark infringement, the court has jurisdiction to enter summary judgment, provided all the necessary ingredients required under O. 14 RHC 1980 are fulfilled, (see also: Rock Records (M) Sdn. Bhd. v. Audio One Entertainment Sdn Bhd [2005] 1 CLJ 200)”.

The Court in Fabrique Ebel Societe Anonyne also sets a test for Order 14 in infringement of trade mark as follows – “(3) In order to establish infringement of the trade mark, the plaintiff has to satisfy the following five requirements –

the defendants used the mark identical with the plaintiff's mark;

the offending mark was used by persons who have not been authorised or licensed by the plaintiff;

the defendants were using the offending mark in the course of trade;

the defendants used the offending mark in relation to goods in respect of which the trade mark is registered; and

the defendants used the offending mark in such a manner as to render the use of the mark likely to be taken as being used as a trade mark. In this case, the plaintiff has satisfied all the five requirements.

Since the plaintiff is applying for summary judgment against the defendants on an action for infringement comparison must be made between the plaintiff's registered mark and the mark used by the defendants”.

Hence, apart from the three conditions laid down in Cempaka Finance Bhd., the Plaintiffs, based to Siemens Industry Softway Inc, have a responsibility to prove the following –

the defendants used the mark identical with the Plaintiffs' mark;

the offending mark was used by persons who have not been authorised or licensed by the Plaintiffs.

the defendants were using the offending mark in the course of trade;

the defendants used the offending mark in relation to goods in respect of which the trade mark is registered; and

the defendants used the offending mark in such a manner as to render the use of the mark likely to be taken as being used as a trade mark.

In addition to that, the Plaintiffs must also prove that the Defendants have not raised any defence to the Plaintiffs’ claim or any triable issue. This principle was explained in Abercrombie & Fitch Co & Anor v. Fashion Factory Outlet KL Sdn Bhd & Ors [2008] 7 CLJ 413 as follows – "[42] In order to succeed in their application under O. 14 RHC 1980, the plaintiffs in the present case must on merit establish their cause of action against the defendants for trade mark infringement and that the defendants have not raised any defence to the plaintiffs' claim or any triable issue for that matter. Once the plaintiffs succeed in making out a prima facie case against the defendants, the onus then shifts to the defendants to show to this court as to why summary judgment should not be entered against them. What constitute a triable issue in an application for summary judgment? Triable issue means issue raised by the defendants which is fit to be tried. The defendants must provide answers on oath which constitute evidence that they have defence which is fit to be tried. Denial in a defence does not constitute evidence. A mere bare assertion by the defendants would not be sufficient."

Relying on the course papers filed for this proceeding, this Court is satisfied that as to the Cempaka Finance Bhd test –

Defendant had filed a Memorandum of Appearance on 9 October 2024 (Enclosure 4);

the writ of summons and Statement of Claim were sent to the Defendant via AR Registered post on 24 September 2024 (Afidavit of Service in Enclosure 5 and 6); and

The Plaintiff’s supporting affidavit for this application states that the defendant has no defence to the claim. As such, it complies with Order 14 Rule 2 of the ROC 2012.

As to the test sets in Fabrique Ebel Societe Anonyme, this Court finds that the Trademarks Registration Certificate produced in Plaintiff’s affidavit in Support (Enclosure 14) has, prima facie, proved that Plaintiff is the registered proprietor of the CARAMAY trademark. Hence, Plaintiffs have an exclusive right as conferred by subsection 48(1) and (2) of the Trademarks Act 2019 [Act 815] as follows – “Rights conferred by registered trademark

(1) The registered proprietor of trademark has the exclusive rights –

to use the trademark; and

to authorize other persons to use the trademark, in relation to the goods or services for which the trademark is registered.

The registered proprietor has the right to obtain relief for infringement of his trademark”.

Now, the burden has shifted to the Defendant to raise a triable issue. Based on the Defendant’s Defence, Affidavit and Submission, the Defendant’s averment was that it did not know of the infringement of the trademark, disputing the existence, validity, registrability and right of the CARAMAY trademark, and is a bona fide supplier, purchased from Awpha Marketing, which distributed the product by Caramay Enterprise Sdn Bhd. Therefore, based on Enclosure 13, Defendant listed out at least four triable issues for trial, namely –

whether the product complaints were counterfeit and infringed the CARAMAY trademark;

whether the Defendant, as a bona fide retailer, can be made liable for trademark infringement;

whether Awpha Marketing and/or Caramay Enterprise Sdn Bhd is a manufacturer, supplier, licensee and/or agent to supply and sell CARAMAY branded electrical cables under the trademark to the Defendant; and

whether Plaintiff have expressly and/or implicitly authorised the use of the trademark on the alleged counterfeit product.

As to the first issue, whether the products complained of were counterfeit and infringed the CARAMAY trademark, the Plaintiffs have exhibited in Enclosure 14 the photographs and schedule of comparison. The Defendant has not adduced any evidence to contradict the pictures and schedule in Enclosure 14, nor to suggest that the goods originated from the Plaintiffs. Therefore, Defendant’s mere denial does not constitute a triable issue.

On the second issue, the Defendant’s assertion that it is a bona fide retailer cannot, in law, absolve it from liability. Section 54 of Act 815 imposes liability on any person who uses a sign identical with the registered trademark in the course of trade without the consent of the proprietor. The Act does not recognise a good-faith purchase from a third party as a defence. Unless there is proof of a licence or authorisation from the proprietor, which is absent here, the plea of bona fide retailer is not a triable issue. Even if the Defendant were truly an innocent retailer, section 54 of Act 815 imposes strict liability for use in the course of trade. A good-faith purchase from a third party does not absolve the seller of liability for infringement.

As to the allegations concerning Awpha Marketing and/or Caramay Enterprise Sdn Bhd as suppliers and any purported authorization, the Defendant adduces no documentary or independent evidence. Liability under section 54 of Act 815 attaches to the Defendant’s act of offering/putting goods on the market. These bare assertions do not raise a triable issue.

In the circumstances, and having considered each of the issues raised by the Defendant, this Court is guided by the provisions of the Act 815 and the authorities. Subsection 48(3) of Act 815 provides that the acts amounting to infringement are set out in section 54 of Act 815 and the evidence before this Court falls squarely within those provisions.

For ease of reference, subsection 48(3) and 54 of the Act 815 reads as follows –

subsection 48(3) of the Act 815 “(3) The acts amounting to infringement of a trademark are set out in section 54 and references to the infringement of a registered trademark shall be construed accordingly”.

section 54 of the Act 815 Acts amounting to infringement of a registered trademark

(1) A person infringes a registered trademark if he uses a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor.

A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign –

that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or

that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public.

For the purposes of this section, a person uses a sign if he –

applies it to goods or their packaging;

offers or exposes goods for sale under the sign;

puts goods on the market under the sign; and

stocks goods under the sign for the purpose of offering or exposing them for sale or of putting them on the market.

Based on the affidavit, including the schedule in paragraph 15 and the photographs in paragraph 16 of the Plaintiff’s Affidavit in Support of this Application (Enclosure 14), this Court is satisfied that the Plaintiffs have adduced prima facie proof of infringement under section 54 of the Act 815. This Court finds that the purported triable issues raised by the Defendant amount to mere denials without substantiating evidence.

As a retailer, Defendant owed a duty to ensure the genuineness of the product supplied. Even if the Defendant were genuinely unaware of the counterfeit nature of the goods, that contention would, at most, be relevant to remedies at the inquiry stage; it does not displace infringement under section 54 Act 815. In any event, the Defendant has produced no evidence of verification steps or authorization”.

And there is nothing in the Defence nor the Affidavit in reply that shows that the Defendant is taking an action against Awpha Marketing for misrepresentation on the CARAMAY trademark product. Hence, this Court finds that its contention is a bare assertion that does not amount to a triable issue, as explained in Abercrombie & Fitch Co & Anor.

The Plaintiffs have satisfied the prerequisites under Order 14 ROC 2012 and established a prima facie case of infringement. The Defendant has failed to raise any genuine triable issue. Enclosure 12 is therefore allowed. It is ordered that –

a final injunction restrains the Defendant, whether by itself or its agents, from infringing the Plaintiffs’ CARAMAY trademark;

the Defendant shall deliver up to the Plaintiffs (or destroy upon oath) all infringing goods, packaging, labels and materials bearing the CARAMAY sign in its possession, custody or control;

the Defendant shall, within 14 days, disclose on affidavit the full particulars of its suppliers and the chain of supply for the infringing goods (including invoices, purchase orders and delivery notes), with liberty to the Plaintiffs to apply for directions as to confidentiality;

there be an inquiry as to damages (or, at the Plaintiffs’ election, an account of profits); and

costs fixed at RM7,000.00 to the Plaintiffs, subject to allocator.” Dated : 30 September 2025 Dr Noradura binti Hamzah Judicial Commissioner High Court Civil 2 Johor Bahru Plaintiff’s Solicitor : Messrs YT SIA Chambers Defendant’s Solicitor : Messrs K S Pang & Co.