1. ) Nano G Central Sdn Bhd v 1. ) Eva Energy Sdn Bhd (WA-22IP-44-08/2020)

NANO G SENTRAL SDN BHD (Syarikat No.: 20141003990 (1080064-V)

NANO G PLT (LLP No: LLP0001321-LGN) …PLAINTIF-PLAINTIF DAN 1. EVA ENERGY SDN BHD (Syarikat No.: 201601023472 (1194411-P)

IRISPRO INYERNATIONAL SDN BHD (Syarikat No.: 201601018740 (1189676-P)

CHEW LEA YONG (Kad Pengenalan No.: 730315-08-5550) …DEFENDAN-DEFENDAN (Melalui tindakan asal) EVA ENERGY SDN BHD (Syarikat No.: 201601023472 (1194411-P) …PLAINTIF DAN 2 1. NANO G SENTRAL SDN BHD (Syarikat No.: 20141003990 (1080064-V)

NANO G PLT (LLP No: LLP0001321-LGN) …DEFENDAN-DEFENDAN (Melalui tuntutan balas) GROUNDS OF JUDGMENT (Enclosure 154)

The defendants herein have appealed against the decision of this Court given on 2.9.2022 with regards the Notice of Application filed by the Plaintiffs under enclosure 154 (Enclosure 154) granting inter alia a protective order safeguarding the Plaintiff’s commercially sensitive information including but not limited to the Plaintiff’s research and development, purchase orders, revenue, costs and such other related information (Protective Order).

The Protective Order also included the following as prayed for in Enclosure 154:- i) That the Confidential Information be produced for the sole purpose of trial in this action (“the trial proceedings”). ii) That the Confidential Information is prevented, prohibited and/or forbidden from being disclosed, formulated, explained, characterized or communicated directly or indirectly to any persons and/or organization, except for the following recipients of the Confidential Information (“the Recipients”):-

(a)The Honourable Judge of the High Court and/or Deputy Registrar handling the proceedings of this matter;

(b)Officers of the High Court assisting directly in the Trial proceedings;

(c)Counsel, solicitors and clerical staff of the Defendants who take part directly in the trial proceedings and to whom the disclosure of the Confidential Information is necessary;

(d)Any other person including the representatives and witnesses who are named and agreed in writing by the

(e)Any other persons permitted by the High Court; and

The person who prepares the notes of proceedings for the trial proceedings. iii) The Recipients stated in paragraph iii, save for (a) and (b) above, shall before shown or given any disclosure or access to the Confidential Information, sign and execute and Undertaking Letter which shall be provided to the Plaintiffs solicitors and the High Court where the Recipients shall undertake to, amongst others:-

(a)Not in any manner discuss, disclose, convey and/or inform regarding the Confidential Information or any part thereof to any person, other than the solicitors and/or witnesses, from the time of obtaining the Confidential Information unit the disposal of he trial proceedings and any subsequent appeal arising thereof so long as the Confidential Information remains confidential and not disclosed in the public domain by the Plaintiffs themselves.

(b)Not to apply the content of the Confidential Information in any manner;

(c)To maintain a safekeeping of all the copies, notes of any transcriptions made, if any, therefrom in any manner with respect to and from the Confidential Information in a confidential manner so as to prevent any unauthorized access to, use or disclosure of the Confidential Information; and

(d)To restrict access, usage or disclosure of the Confidential Information to any persons not listed as the Recipient of the Confidential Information in this Order. iv) The Recipients are prevented, prohibited and/or forbidden from discussing, disclosing and/or informing and/or applying the Confidential Information or any part thereof to any persons who is not entitled and/or authorized to receive the Confidential Information under the terms of this Order. v) That the Recipient shall at all times, take all reasonable efforts and implement reasonable measure to prevent any unauthorized or inadvertent disclosure and exposure of the Confidential Information or any part thereof. vi) Where any filing or any document containing the Confidential Information or any part thereof shall be filed in Court, this Honourable Court shall, in accordance with Order 63A rule 7(4) of the Rules of Court 2012 direct the learned Registrar to allow the filing of a document or any class of documents by way of physical delivery of the same to the chambers of the learned Judge. For avoidance of doubt, the redacted version of the Confidential Information shall be electronically filed and a copy of the unredacted version to be given to the Court for its safekeeping in a safe. vii) That the Confidential Information be filed or forwarded to the High Court only if needed and in the event that the Confidential Information is filed or forwarded, the Confidential Information shall:-

(a)Be segregated from other information and documents that had bee filed or forwarded to Court;

(b)The Confidential Information shall be sealed with the following note (“the Note”) which shall be clearly visible:- “CONFIDENTIAL AND PROTECTED INFORMATION

(c)Not to be discoed, be accessible to or made available for public inspection by any person. viii) Regarding the trial proceedings which relates to Confidential Information only:-

(a)The trial proceedings shall be heard in a closed manner as provided in Section 15(1) Courts of Judicature Act 1964 (“the closed proceedings”);

(b)Any person who is not the Recipients shall not be allowed to attend the closed proceedings;

(c)The recordings and the court recording transcription shall be deleted after produced for the purpose of preparing the notes of proceedings;

(d)The confidential recordings and transcription shall:-

Be sealed with the Note which shall be clearly visible;

(ii) Be treated as Confidential Information which is subject to this Order; and

(iii) Only be given to the respective solicitors for the purpose of forwarding the same to a party preparing the notes of proceedings. ix) Within thirty (30) days from the date of the conclusion of the trial proceedings and any subsequent disposal of any appeals(s):-

(a)All the Confidential retained by the Defendants’ counsel, solicitors and their clerical staff assisting in the trial proceedings (as contained in any storage device or store in printed, recorded, digital, temporary or permanent for or in any form). The appointed transcription provider shall be completely and permanently deleted and eliminated.

(b)No Confidential Information or any part thereof shall be retained or be in the possession or custody or the Defendants; counsel, solicitors and their clerical staff assisting in this action and the appointed transcription provider.

(c)All terms and conditions of this Order made for the purpose of preserving and protecting the secrecy of the Confidential Information shall continue to e in force and binding even after the disposal of the trial proceedings so long as the Confidential Information remains to be confidential and secret. x) Form 83 of the Rules of Court 2012 be enclosed on the Protective Order. xi) That the cost be in the cause.

For the record, the First and Third Defendants Notice of Appeal was only filed on 2.3.2023 while the 2nd Defendants Notice of Appeal was only filed on 3.3.2023. As such the said Notices of Appeals filed by the Defendants are pursuant to Rule 12 of the Court of Appeal Rules 1994, filed out of time and as at the date of my written grounds herein, none of the Appellants/ Defendants have yet to obtain leave from the Court of Appeal to file its respective Notices of Appeal out of time.

Be that as it may, to err on the side of caution, I have prepared my Written Grounds herein. Brief Facts 5. The Plaintiffs have allegedly collaborated to trade since 2014, where they have used the trade name/mark “nono-g” which the same was registered by the 2nd Plaintiff as the proprietor of the trademark “nano-g” on 16.04.2014. It was also agreed that the 1st Plaintiff shall have the exclusive right to use the trademark of “nano-g” as a licensee duly authorized by the 2nd Plaintiff.

Throughout the Plaintiffs’ years of business of providing waterproofing services and/or products relating to waterproofing chemicals and/or materials by the brand “nano’g”, the Plaintiffs allege that they have acquired considerable goodwill in the waterproofing industry.

It is also alleged that a substantial amount of marketing and/or advertising under the trade/name/mark “nano’g” through different platforms have been expended by the Plaintiffs, where in the said trade name/mark has also been used in different ranges of goods marketed by the Plaintiffs to the public.

On or about early 2020, it came to the attention of the Plaintiffs that certain products and/or services have been promoted, advertised, sold and/or offered to be sold to the public with the same name/mark “nano g” used and/or adopted by the Defendants.

The use of the name/mark “nano g” by the Defendants is alleged to pose as a confusion to the public that denoted the services and/or products bearing such name/mark being associated with the Plaintiffs.

In the circumstances, the Plaintiffs instituted the instant claim against the Defendants for their alleged infringement of the plaintiffs’ registered trademark, wherein it is further alleged that the Defendants have also conspired to injure the Plaintiffs by passing off the Plaintiffs’ products in riding on the goodwill of the Plaintiffs that damages the goodwill and reputation of the Plaintiffs with the intention to unlawfully interfere with the Plaintiffs trade in order to derive unfair commercial advantage from the Plaintiffs/ goodwill and reputation.

Findings I had in coming to my decision on Enclosure 154 considered the grounds mentioned therein as well as the respective Affidavits filed by the respective parties and their Written Submissions thereto in toto and duly balanced the outcome of granting the said order as opposed to not granting the order.

After due consideration of the above and perusing the said documents mentioned in Enclosure 154, I had found that the documents or part of the documents in Exhibit A of Enclosure 154 such as Packing List, Invoices, Quotations , Activity Reports, Purchase Orders, Technical Data Sheets, Test Reports including Certificates of Analysis amongst others were confidential and commercially sensitive by nature as they related to not only the 1st Plaintiff’s rights to use the trade mark ‘Nano G’ and its products to which the 2nd Plaintiff is the alleged proprietor, but also to the commercially sensitive information of the Trade Mark and the product itself in the sanitization industry which consist of details and information related to the said products and/or services in question. These have to be protected and kept confidential so as to prevent the risk of their trade secrets being leaked to its competitors and not allow the Plaintiff’s competitors from being one up as against the Plaintiff by having an advantage over the Plaintiff due to the disclosure of these sensitive information and/or details.

I have considered the Defendants submissions that inter alia the Plaintiff’s claim is confined to the infringement of trade mark and that the Plaintiff had yet to venture into the sanitization industry or that that documents sought to be protected are in relation to Nano Edge Sdn Bhd who is not a party to the proceedings and find that they are misconceived for the reasons I have alluded to in my written grounds herein.

This Court had also found that those documents or part of the documents referred to in Exhibit A of Enclosure 154 were indeed necessary for the Plaintiff to prove its case at trial based on the Plaintiff’s pleaded case on the use of the trade name/mark by the Plaintiffs, its chronology of events leading thereto, as well as the alleged infringement, passing off and unlawful interference of the mark by the Defendants amongst others and for the Court to decide the case at hand, more so to establish the Plaintiff’s relationship, planning and business between themselves and the pleaded case as well as the Plaintiff’s causes of action against the Defendant.

It is also quite clear from the pleadings that the parties are competitors or would be competitors in the sanitization industry and the Order is necessary to prevent the Plaintiff’s competitors from having access to the same. In this respect I quote OAG Engineering sdn Bhd v Ng Hoe Keong & ors [2021] MLJU 158 where it was stated: “[34] This Court rejects the Defendants’ contention that the Protective Order cannot be sustained as it is inconsistent with O. 18 r. 1 and O. 32 r. 13(1)(a) of the Rules. The Defendants failed to understand that the Protective Order is merely meant to protect the trade secrets and confidential information from being freely available to all and sundry, for the reasons intimated by the

Plaintiffs in their application.” In coming to my decision, I had relied on Kingtime International Limited & Anor v Petrofac E&C Sdn Bhd [2020] 11 MLJ 141 where the Court held: “(5) in deciding to grant a protective order or otherwise:

(a)the court should balance the following competing considerations:

(i)public interest requires all relevant evidence to be disclosed to the court so as to enable the court to decide justly the case at hand;

(ii)the plaintiff’s right to apply for discovery of all relevant documents in support of the plaintiff’s claim; and

(iii)the need to protect the defendant’s proprietary interest in the confidential information in question;

(b)there is no universal or general formula to be followed — please see the judgment of Russell LJ (as he then was) in Warner-Lambert Coat p 362; and

(c)the learned judge should inspect the documents himself or herself to decide whether a protective order should be granted or not — please see Mobil Oil Australia at p 40. If parts of the confidential information are not relevant to the case in question, the court may redact those parts. Such a redacting power is clear from the following cases:

(i)please see the judgment of Lord Wilberforce in the House of Lords in Science Research Council v Nasse; BL Cars Ltd (formerly Leyland Cars) v Vyas [2020] 11 MLJ 141 at 158[1979] 3 All ER 673 at p 680; and

(ii)Tokai Corporation v DKSH Malaysia Sdn Bhd [2016] MLJU 621 at para [26](1) and (2).”

In the circumstances, I do hold that the disclosure of the said documents or part of the documents in Exhibit A of Enclosure 154 would be prejudicial to the Plaintiffs and thus it was just and appropriate to make the Protective Order as such. On the other hand there appears to be no prejudice to the Defendants should the Protective Order be granted.

Accordingly, I had granted Order in Terms as per the Protective Order pursuant to Rule 94 of the Rules of Court 2012. Dated: 2nd day of September 2022 sgd. NADZARIN WOK NORDIN HIGH COURT JUDGE KUALA LUMPUR HIGH COURT Parties: Joel Kon Tai Hoong, Margaret Tan Hui Ling and Nik Aimi Nabilah for the Plaintiff [Messrs Joel & Co.] Lim Meng Guan and Roderick Gan Hao Jie for the 1st Defendant & 3rd Defendant [Messrs Zi & Associates] Kim Kok Thai for the 2nd Defendant [Messrs Kim Law Chambers]