Teck Huat (K.L) Company Sdn Bhd v Obh Trading Sdn. Bhd. (WA-22IP-39-07/2023)

OBH TRADING SDN BHD (Company No.: 200401025172 [663679-M])

OOI BENG HUAT FOOD INDUSTRIES SDN. BHD. (Company No.: 198301016495 [111904-D]) … DEFENDANTS GROUNDS OF JUDGMENT A. Introduction [1] The plaintiff filed an application to add Sun Foods Industrial Company Limited (“Sun Foods”) as a co-plaintiff in this action (“Joinder Application”). [2] The court allowed the Joinder Application, for the reasons explained below. B. Background Facts [3] The plaintiff is the main and/or sole distributor in Malaysia of salted cured prunes (“Products”). The Products are manufactured by Sun Foods, a company incorporated in Taiwan. [4] A mark depicted as “ ” was registered by the plaintiff in respect of the Products in class 29, pursuant to a certificate of registration of trademark no. 2013014894 (“Mark”). [5] The plaintiff claimed the defendants have been distributing, selling and/or offering to sell to the public counterfeit Products which bear the Mark. The plaintiff therefore commenced an action against the defendants for trademark infringement, passing off and unlawful interference with the plaintiff’s trade. [6] The plaintiff initially obtained summary judgment against the defendants, in respect of this action. However, the Court of Appeal allowed the defendants’ appeal, and set aside the judgment. [7] This case was then remitted to this court. The Joinder Application was filed soon thereafter. C. Considerations and Findings [8] The Joinder Application is filed under order 15 rule 6 of the Rules of Court 2012 (“ROC 2012”), which provides as follows: “(2) Subject to this rule, at any stage of the proceedings in any cause or matter, the Court may on such terms as it thinks just and either of its own motion or on application – …

order any of the following persons to be added as a party, namely –

any person who ought to have been joined as a party or whose presence before the Court is necessary to ensure that all matters in dispute in the cause or matter may be effectually and completely determined and adjudicated upon; or

(ii) any person between whom and any party to the cause or matter there may exist a question or issue arising out of or relating to or connected with any relief or remedy claimed in the cause or matter which, in the opinion of the Court, would be just and convenient to determine as between him and that party as well as between the parties to the cause or matter.” (emphasis added) [9] From the provisions of order 15 rule 6(2)(b) of the ROC 2012, the court may add Sun Foods as a party in these proceedings if: a. Sun Foods ought to be joined as a party or its presence is necessary, to ensure that all matters in dispute in this action are effectually and completely determined; or b. There exists a question or issue arising out of or relating to or connected with any relief or remedy claimed in this action, between Sun Foods and the defendants, which would be just to be determined as between them. [10] It is not in dispute that Sun Foods is the manufacturer of the Products, which use the Mark. In this regard, it is in evidence that: a. Sun Foods had initially registered the Mark in Malaysia. The registration expired on 23 November 2008; b. The plaintiff then registered the Mark, and has been the registered proprietor of the Mark since 28 October 2013; c. Sun Foods has also been advertising and selling the Products bearing the Mark on their official website at https://sunfoodsprune.com/en. [11] I have also taken note that the defendants have accepted that Sun Foods is the author and owner of the Mark. In denying the plaintiff’s right over the Mark, the defendants stated in paragraph 22 of their defence and counterclaim that: “22. Hak hak berhubung dengan Cap Dagangan Plaintif adalah dicabar dan/atau dipertikaikan oleh Defendan-defendan atas alasan-alasan dan pengetahuan penuh bahawa pengeluar/pengilang Sun Foods adalah pemilik yang sah dan pemilik bona fide dan pencipta cap dagangan bagi asam boi masin dan Plaintif hanya merupakan pengedar dan pengimpot barangan yang mempunyai Cap Dagangan Sun Foods …” (emphasis added) [12] I also observed that the issues raised by the defendants in arguing that summary judgment should not be entered against them centre on whether the Mark is valid, whether the registration of the Mark was obtained by fraud, and whether consent was validly obtained from Sun Foods on the registration of the Mark. These are issues that inevitably involve Sun Foods, particularly in light of the defendants’ own assertion that Sun Foods is the bona fide creator and owner of the Mark. [13] In these circumstances, the presence of Sun Foods is not merely desirable, but is necessary to ensure that all matters in dispute – including issues on the validity of the registration of the Mark and the ownership over the Mark – may be effectually and completely determined. [14] Also of importance is the fact that the plaintiff’s cause of action against the defendants includes passing off and unlawful interference with trade. Since the defendants have contended that Sun Foods is the author and owner of the Mark, it would follow that Sun Foods would have a direct and substantial interest in the reliefs claimed. Thus, it is just and convenient that issues related to the reliefs claimed are determined in these proceedings. [15] In Tajul Ariffin bin Mustafa v Heng Cheng Hong [1993] 2 MLJ 143, the Supreme Court held at page 153 that the objects of order 8 rule 6(2)(b) of the Subordinate Courts Rules 1980 (which contains similar provisions as order 15 rule 6(2)(b)(i) of the ROC 2012) are: “… generally speaking the same as the objects of the rules governing third party proceedings, that is to say: (1) to prevent multiplicity of proceedings and to enable the court to determine disputes between all parties to them in one action; and (2) to prevent the same or substantially the same questions or issues being tried all over again with possibly different results.” (emphasis added) [16] In the present case, in view of Sun Foods’ authorship and ownership of the Mark, as accepted by the defendants, Sun Foods has the right to file a claim in respect of the alleged infringements by the defendants. Thus, if Sun Foods is not added as a co-plaintiff in this action, there is a real and immediate risk of multiplicity of proceedings, which would result in a duplication of evidence and the possibility of inconsistent findings. [17] I am of the further view that the defendants have not demonstrated how the joinder of Sun Foods in these proceedings would cause prejudice to the defendants in a manner that cannot be compensated by costs. [18] The defendants claimed they would be prejudiced, as the plaintiff’s position is different from the initial claim, making it harder for the defendants to defend themselves against the new claim. This is further supported by the defendants’ contention that the amendments in the proposed statement of claim with Sun Foods added as a co-plaintiff would have the effect of changing this suit into a suit of another character. [19] I am of the view that this contention is misconceived. The joinder of Sun Foods as a co-plaintiff in this action and the consequential amendments made to the statement of claim arise from the same factual matrix, and do not change the nature of this action. The causes of action of trademark infringement, passing off and unlawful interference with trade will remain, with possibly an additional action for copyright infringement. [20] I also considered the defendants’ argument that there has been an inordinate delay in the filing of the Joinder Application. However, I am unable to accept the argument. At the point when the plaintiff informed the court that it intended to add Sun Foods as a co-plaintiff, this matter had just been remitted to this court, and trial dates had yet to be fixed. No directions had been given in respect of trial. Thus, I find that there was no inordinate delay in the filing of the Joinder Application. Further and in any event, a joinder application may be made at any stage before a final order is made (see Sistem Penyuraian Trafik KL Barat Sdn Bhd v Kenny Heights Development Sdn Bhd & Anor [2009] 3 MLJ 809, at page [46]). [21] From the findings above, I am satisfied that the requirements under order 15 rule 6(2)(b) of the ROC 2012 have been met, to justify Sun Foods being added as a co-plaintiff in these proceedings. D. Decision [22] The court finds that: a. Sun Foods is a necessary and proper party to be added in this action, for the effective and complete determination of the issues in this action; b. Sun Foods has a direct and substantial interest in the reliefs claimed in this action; and c. The defendants have not demonstrated any prejudice that may be occasioned to them, by the joinder of Sun Foods as a co-plaintiff in this action, such that cannot be compensated by costs. [23] With the above findings, the court allowed the Joinder Application, with costs in the cause. Dated 27 February 2026 ADLIN ABDUL MAJID Judge High Court of Malaya Kuala Lumpur Counsel: Plaintiff : Koay Chun Hian of Messrs. Lim, Chun & Partners Defendants : Helen Huang (together with Isaac Stephen Huang) of Messrs. Peter Huang & Richard