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

TECK HUAT (K.L) COMPANY SDN BHD (Company No.: 196101000031 [4086-K])

SUN FOODS INDUSTRIAL COMPANY LIMITED ...PLAINTIFFS

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

This judgment concerns the Plaintiffs' application, via Enclosure 104, for leave to re-amend the Amended Writ of Summons and Amended Statement of Claim dated 20 June 2025, pursuant to Order 20 Rule 5(1) and Order 20 Rule 8(1) of the Rules of Court 2012 ("ROC 2012").

After careful consideration of the written submissions filed by both parties, the oral submissions presented before this Court, the affidavit evidence, and the applicable legal principles, I am satisfied that the Plaintiffs' application should be allowed. My reasons are as follows.

The 1st Plaintiff, Teck Huat (K.L) Company Sdn Bhd, is a Malaysian company that has been selling and distributing Salted Cured Prune products (locally known as asam boi masin) bearing the mark solely and exclusively in Malaysia for over 30 years. The 1st Plaintiff is also the registered proprietor of Trademark Registration No. 2013014894 (the "said Registered Trademark"), registered on 28 October 2013 for goods in Class 29.

The 2nd Plaintiff, Sun Foods Industrial Company Limited, is a Taiwanese company globally known for manufacturing high-quality Salted Cured Prune products. The 2nd Plaintiff is the copyright owner of the literary and artistic works featured on the packaging of the products depicted as follows: .

It is the Plaintiff’s case that the Defendants have sold counterfeit Salted Cured Prune products bearing the said Registered Trademark in packaging identical or substantially similar to the 2nd Plaintiff’s packaging. It is also the Plaintiffs’ case that the infringing packaging fraudulently named the 2nd Plaintiff as the manufacturer of these counterfeit products, which are allegedly of inferior quality and sold at lower prices compared to the Plaintiffs' genuine products.

The procedural history of this matter is significant. The 1st Plaintiff initiated this action against the Defendants for trademark infringement, passing off, and unlawful interference with trade, predicated on the 1st Plaintiff’s registered proprietorship of the Registered Trademark and the associated goodwill and reputation. The Defendants subsequently filed their Defence and Counterclaim on 15 September 2023, challenging the validity of the Registered Trademark and contending that the 1st Plaintiff was not a bona fide proprietor, while counterclaiming for its invalidation and cancellation. The 1st Plaintiff initially obtained summary judgment against the Defendants and succeeded in striking out the counterclaim on 6 December 2023; however, this was overturned on 7 October 2024, when the Court of Appealed allowed the Defendant’s appeal.

Flowing from the decision of the Court of Appeal, 1st Plaintiff filed an application in Encl. 71 on 7 November 2024 for the joinder of the 2nd Plaintiff and also for amendments to the original Writ and Statement of Claim in consequence to the joinder. The joinder and amendment application was allowed on 17th June 2025. Pursuant to the amendment order, the Defendants have filed their Amended Defence and Amended Counterclaim. Concurrently, the Defendants have filed an appeal to the Court of Appeal against the decision of the High Court in Encl. 71. The Defendants’ appeal is pending before the Court of Appeal.

Separately, on 7 July 2025, the 1st and the 2nd Plaintiff executed an Assignment Agreement (the "Assignment Agreement”) whereby the 1st Plaintiff absolutely assigned to the 2nd Plaintiff all property, rights, title, and interest in and to the Registered Trademark, together with the goodwill attached thereto, with retrospective effect from 28 October 2013 (the filing date of the Registered Trademark).

The Plaintiffs now seek leave, by way of the present application (Enclosure 104), to re-amend the Amended Writ and Amended Statement of Claim to incorporate reference to the Assignment Agreement.

In seeking to re-amend the Amended Statement of Claim, learned counsel for the Plaintiffs argued, in essence, that no material change had occurred. Learned counsel maintained that the 1st Plaintiff remains the registered owner until the assignment is duly recorded in the register. The fundamental causes of action—trademark infringement, passing off, unlawful interference with trade, and copyright infringement—remain unchanged. Learned counsel drove home the point that the alleged wrongful acts attributed to the Defendants remain consistent, the factual matrix is unaltered, and the relief sought remains the same.

The power to allow amendments to pleadings is provided under Order 20 Rule 5(1) and Order 20 Rule 8(1) of the ROC 2012 which stipulate the following: Order 20 Rule 5(1) ROC 2012 "Subject to Order 15, rules 6, 6A, 7 and 8 and this rule, the Court may at any stage of the proceedings allow the plaintiff to amend his writ, or any party to amend his pleading, on such terms as to costs or otherwise as may be just and in such manner (if any) as it may direct." Order 20 Rule 8(1) ROC 2012 "For the purpose of determining the real question in controversy between the parties to any proceedings, or of correcting any defect or error in any proceedings, the Court may at any stage of the proceedings and either of its own motion or on the application of any party to the proceedings order any document in the proceedings to be amended on such terms as to costs or otherwise as may be just and in such manner, if any, as it may direct."

These provisions confer a broad discretion upon the Court to allow amendments at any stage of proceedings, subject to considerations of justice and fairness.

The rationale for amendments to pleadings can be discerned from the Court of Appeal case of SuhaiIi bin Ismail v Syarikat Sribima Sdn Bhd [2015] 6 MLJ 556 which held that amendments ought to be made for the “purpose of determining the real controversy between the parties to any proceedings or of correcting any defect or error in any proceedings” consistent with Order 20 rule 8(1) of the ROC 2012.

This principle was first articulated by the Supreme Court in Hock Hua Bank Bhd v Leong Yew Chin [1987] 1 MLJ 230 at page 232: “As for the general principles for the granting of leave to amend: It is a guiding principle of cardinal importance on the question of amendment that, generally speaking, all such amendments ought to be made ‘for the purpose of determining the real controversy between the parties to any proceedings or of correcting any defect or error in any proceedings’ (see per Jenkins LJ in GL Bakar Ltd v Medway Building & Supplies Ltd [1958] 1 WLR 1216 at p 1231; [1958] 3 All ER 540 at p 546) ‘It is a well established principle that the object of the Court is to decide the rights of the parties, and not to punish them for mistakes they make in the conduct of their cases by deciding otherwise than in accordance with their rights… I know of no kind of error or mistake which, if not fraudulent or intended to overreach, the court ought not to correct, if it can be done without injustice to the other party. Courts do not exist for the sake of discipline, but for the sake of deciding matters in controversy, and I do not regard such amendment as a matter of favour or grace... It seems to me that as soon as it appears that the way in which a party has framed his case will not lead to a decision of the real matter in controversy, it is as much a matter of right on his part to have it corrected if it can be done without injustice, as anything else in the case is a matter of right’ (per Bowen L.J. in Cropper v Smith (1883) 26 ChD 700 pp 710-722, with which observations A.L. Smith L.J. expressed ‘emphatic agreement’ in Shoe Machinery Co v Cultam [1896] 1 Ch 108 p 112). In Tildesley v Harper (1876) 10 Ch D 393, pp 396, 397 Bramwell LJ said: ‘My practice has always been to give leave to amend unless I have been satisfied that the party applying was acting mala fide, or that, by his blunder, he had done some injury to his opponent which could not be compensated for by costs or otherwise. (The Supreme Court Practice 1985 para 20/5-8/6 p 340)’.” [ Underlined Emphasis Mine]

The leading authority on the governing principles with respect to amendments to pleadings is the Federal Court decision in Yamaha Motor Co Ltd v Yamaha Malaysia Sdn Bhd & Ors [1983] CLJ (Rep) 428 (Yamaha Motors). The Court established a three-limbed test that must be satisfied before leave to amend will be granted: i. Whether the application is made bona fide – that is, in good faith and not for some ulterior or improper purpose. ii. Whether any prejudice caused to the other side can be compensated by an award of costs. iii. Whether the amendments would not in effect turn the suit from one character into a suit of another and inconsistent character.

The later decision of the Federal Court in Hong Leong Finance Bhd v Low Thiam Hoe and Another Appeal [2016] 1 MLJ 301 (Hong Leong Finance) propounded several key principles regarding applications to amend pleadings: a) Where there is a delay in bringing an amendment application, the onus rests on the applicant to furnish a compelling and reasonable explanation for the delay. A bare assertion or a belated realisation of the need to amend will not suffice. The applicant must provide substantive and cogent reasons justifying the belated nature of the amendment application. b) The court will scrutinize whether the application to amend constitutes a tactical manoeuvre intended to delay proceedings or secure an unfair advantage. If the amendment is sought for such purposes, it will likely be denied. c) The proposed amendment must be clear, detailed, and sufficiently particularised to enable the court to ascertain whether there exists a real prospect of success in proving the new case or defense. Vague or general amendments are disfavoured, especially when presented at a late stage. d) The court acknowledges that the payment of costs may not adequately compensate the opposing party for the disruption and prejudice caused by a late amendment, particularly when it results in adjournment or the loss of a trial date. The interests of other litigants and the efficient administration of justice are also pertinent considerations. e) The decision to allow an amendment lies within the discretion of the trial judge, who must assess where justice lies, taking into account the burden on litigants, the expectations of finality, and the efficient utilization of court resources. The court must carefully balance the interests of the applicant, the opposing party, and other court users.

In light of the foregoing principles governing amendments to pleadings discussed above, I will now consider the matter at hand, addressing each of the three limbs articulated in Yamaha Motors. MY FINDINGS FIRST LIMB – BONA FIDES

In addressing the first limb, regard must be had to the reasons advanced by the Plaintiffs in support of the proposed re-amendment to the Amended Statement of Claim. The Plaintiffs’ reasons for seeking the re-amendment may be summarised as follows: a) The re-amendments seek to provide clarity and coherence to the Plaintiffs’ pleaded case by elaborating on the consent granted by the 2nd Plaintiff to the 1st Plaintiff in respect of the registration of the trademark in Malaysia, thereby reinforcing the legitimacy of the registration. b) The re-amendments formally introduce the Assignment Agreement dated 7 July 2025 and the attendant steps taken to record the assignment, thereby regularising the Plaintiffs’ pleaded proprietary rights. c) The re-amendments further clarify the 2nd Plaintiff’s copyright ownership in the packaging, which is central to the copyright infringement claim. d) The re-amendments reflect the completion of the formalities relating to the assignment of the trademark and expand upon the element of confusion caused by the Defendants’ acts — a key component of both trademark infringement and passing off. e) The re-amendments additionally particularise the alleged irreparable damage suffered by the Plaintiffs, and set out with greater specificity the acts constituting copyright infringement and unlawful interference with trade.

Learned counsel for the Plaintiffs has, in support of the application, submitted a detailed matrix identifying each proposed re-amendment and its corresponding justification. The matrix, as reproduced in the Plaintiffs’ submissions, is summarised below: Proposed amendments in the Re – amended Statement of Claim Exhibit “YKT-1”, Encl. 105 (page number) Reason for amendment Paragraph 5C 27- 28 Further particulars given in respect of paragraphs 5A and 5B of the Amended Statement of Claim on consent given by the 2nd Plaintiff to the 1st Plaintiff to register the said Registered Trademark in Malaysia. Paragraphs 9A and 9B 29 To plead the Assignment Agreement dated 7.7.2025 entered into between the 1st and 2nd Plaintiffs, and the application to record the assignment filed at the Registry of Trademarks. Paragraph 13B 31 Further particulars on the copyright subsistence and ownership in respect of the packaging of the 2nd Plaintiff. Paragraph 17 34 Amendments are in relation to the Assignment Agreement and recordal of the assignment of the said Registered Trademark at the Registry of Trademarks. Paragraph 17A 35 Further particulars / pleadings on confusion in respect of the claim for trademark infringement and passing off. Paragraph 19A 35 Pleadings on irreparable damage suffered by the Plaintiffs arising from the Defendants’ infringing acts which had already been pleaded in the Amended Statement of Claim. Paragraph 19B 36 Particulars of copyright infringement Paragraph 26 37 Particulars of unlawful interference with the Plaintiffs’ trade and damage suffered by the Plaintiffs as a result thereof Paragraph 30 40 - 46 Amendments to the reliefs claimed including declaratory orders on the validity of the Assignment Agreement and that the 2nd Plaintiff is the copyright owner, amendments to make the reliefs more specific, and statutory damages that the 2nd Plaintiff is entitled to under the Copyright Act 1987.

In objecting to the proposed re-amendments to the amended Statement of Claim, learned counsel for the Defendants submitted the following: a) The re-amendments would result in a change in the nature and character of the suit and/or a suit of an inconsistent character. b) The application for re-amendment is an attempt to substitute the rights of the 1st Plaintiff with the 2nd Plaintiff so as to circumvent and defeat the defence and counterclaim filed by the Defendants regarding the validity of the registered trademark owned by the 1st Plaintiff by the assignment of the registered trademark from the 1st Plaintiff to the 2nd Plaintiff. c) The re-amendment would give the opportunity for the Plaintiffs to raise another fresh cause of action for the Plaintiffs on the conspiracy to injure and to establish the 2nd Plaintiff’s right for trademark infringement so as to seek relief for a declaration that the 2nd Plaintiff is the registered proprietor of the registered trademark No. 2013014894. d) There is an inordinate delay on the Plaintiffs in filing for this application for re-amendment. e) The application for re-amendment is an afterthought, not bona fide, a sham and dubious attempt to mislead the Court which would cause prejudice to the Defendants that cannot be compensated by costs.

I have considered the Plaintiffs’ proposed re-amendments to the amended Statement of Claim and find that the application is made in good faith. The re-amendment seeks to accurately reflect the current legal position regarding ownership of the trademark, which is relevant and necessary for determining the real controversy between the parties.

The assignment's post-commencement occurrence does not, in itself, render the application mala fide. Parties retain the right to assign rights even after litigation begins, provided the assignment is genuine and not a sham.

The Plaintiffs have disclosed the Assignment Agreement, executed on 7 July 2025, and exhibited it within their affidavit. This demonstrates full transparency regarding the assignment's nature and timing. There is no evidence to suggest fraud or any attempt to mislead the Court.

The Plaintiffs have, from the very inception of this proceeding, consistently pleaded that: i. The 1st Plaintiff is the distributor of products manufactured by the 2nd Plaintiff; ii. The 1st Plaintiff registered the trademark with the consent of the 2nd Plaintiff; iii. Both Plaintiffs have rights and interests in the trademark and associated goodwill.

The proposed re-amendments serve merely to clarify and formalise the long-standing commercial and legal relationship between the 1st and the 2nd Plaintiff. They introduce no new factual narrative, nor do they alter the fundamental character of the Plaintiffs’ case as previously pleaded. Rather, the re-amendments properly articulate the legal consequences flowing from facts that have always constituted an integral part of the Plaintiffs’ case.

It is the Defendants’ case that the Plaintiffs’ application for re-amendment is an afterthought and an attempt to substitute the rights of the 1st Plaintiff for the 2nd Plaintiff. Learned counsel for the Defendants’ contended that the Plaintiffs are improperly building their case incrementally through successive amendment applications.

In considering this point, I am of the considered view that, at the stage of considering an application to amend pleadings, this Honourable Court should not be concerned with the merits of the Plaintiffs’ case. In this regard, I refer to the case of Yamaha Motor, where the Federal Court stated the following: - “… At this stage of the proceedings the Court is not concerned with the merit of appellants’ case. Even after amendment, the respondents have the right to take necessary steps to strike out the whole claim if the statement of claim, as amended, does not disclose any cause of action or is found to be frivolous and vexatious and an abuse of process of the Court [Underlined Emphasis Added]

The effect of the Assignment Agreement is a matter to be determined at trial. What is important is that the Plaintiffs be afforded an opportunity to fully ventilate this issue at trial through viva voce evidence, and that the Defendants have the opportunity to challenge the Assignment Agreement through cross-examination of the Plaintiffs’ witnesses. Properly viewed, and for the reasons alluded to earlier, the re-amendments neither displace the 1st Plaintiff’s position nor introduce a new cause of action; they merely regularise and particularise the legal footing upon which the Plaintiffs have, from the outset, anchored their claims.

Thus, in considering the first limb of the Yamaha Motor test, what matters most is whether the said application was brought promptly by the Plaintiffs and in a manner consistent with the primary objective of ensuring the fair and just disposal of proceedings. The said Application must be consistent with the underlying principle in Order 20 rule 8(1) ROC (supra) where “all such amendments ought to be made ‘for the purpose of determining the real controversy between the parties to any proceedings or of correcting any defect or error in any proceedings” (see: SuhaiIi bin Ismail (supra)).

In this regard, I agree with the submissions advanced by learned counsel for the Plaintiffs in that the Assignment Agreement must be properly pleaded, so that the Court adjudicates the dispute on the true and complete footing of the parties’ rights. I am persuaded by the authorities cited by learned counsel for the Plaintiffs. In Hendry v Chartsearch Ltd [1998] CLC 1382, the plaintiff sought leave to re-amend the statement of claim to plead an assignment entered into after the date of the writ. On appeal, the English Court of Appeal allowed the re-amendment and held, inter alia, as follows: “(6) The judge should have given leave to rely on the assignment of the other agreement even after the issue of the writ. Order 18, r. 9 and O. 20, r. 5 conferred a discretion in the most general terms. The purpose of the amendment was to specify why the plaintiff was entitled to bring a claim on a contract made in the name of Interface. The cause of action remained the same and there was no contractual basis for objecting to the amendment. There was no ground for refusing leave and to that extent the appeal was allowed. (Vax Appliances Ltd v Hoover plc [1990] RPC 656 approved; Eshelby v Federated European Bank [1932] 1 KB 254)” (Underline added) The Court of Appeal said as follows at paragraphs 21 to 23 of the said Judgment: - “(B) Re-amendment: assignment after the date of the writ …

In my judgment, the judge was wrong not to adopt the approach spelled out in Vax Appliances Ltd. There, Mummery J considered the earlier judgments both in Eshelby and in Roban Jig and Tool Co Ltd and he took account also of the provisions of RSC, O. 18, r. 9: ‘Subject to [certain rules which are not material for present purposes] a party may in any pleading plead any matter which has arisen at any time, whether before or since the issue of the writ.’ This rule, which was introduced post-Eshelby in 1962, is in the most general terms, as is the court's general power to grant leave to amend a pleading under O. 20, r. 5(1). Mummery J so observed (p. 661). He effectively distinguished Roban Jig and Tool Co, where leave to amend was refused, because ‘the plaintiff had no cause of action at all at the date of the writ’ and ‘there was no cause of action to add to or be the subject of substitution’. In Vax Appliances, on the other hand, the defendant (seeking leave to amend the counterclaim) did have a cause of action at the date of the service of the counterclaim (p. 661).

Mr Freedman submits in effect that it follows from this passage and from the judgments in Roban Jig and Tool Co that leave to amend cannot or should not be given unless the party seeking leave to add a fresh cause of action had some cause of action at the date of the writ (or counterclaim). This would amount to a significant restriction on the apparently general discretion given by O. 20, r.5(1) and O. 18, r. 9.

I would reject this submission. The scope of the RSC has been extended since the days when Eshelby was decided in 1932. In accordance with modern practice generally, the court has a general discretion which should not be restricted by hard and-fast rules of practice, if not of law, such as that which is suggested here. The judge therefore was wrong to consider that the court had no power to give leave to make the re-amendment. In my view, he was wrong also to consider that the discretion was somehow restricted by what he called ‘the principle set out in Eshelby and in Roban’. It is a general power which in modern parlance has to be exercised in accordance with the justice of the case.” [Underlined Emphasis Mine]

In AWC Berhad (Formerly known as AWC Facility Solutions Berhad) v Point-Euro Malaysia Sdn Bhd & Ors [2012] MLJU 474, the High Court held that, as a general principle, parties may agree that their agreement take effect from a date earlier than the agreement's date, provided that no third parties or authorities are defrauded. The High Court held as follows: “[53] There was yet another point raised by the learned counsel for D5. It was that the Agreement was wrongly dated and that that is an exception to section 92 of the Evidence Act 1950.I must state at the outset that again this point was not pleaded. It is true that the Agreement was dated 20 May 2008 and indeed there was a letter dated 2 June 2001 from Messrs Murad Yee Partnership to Messrs Hakem Arabi & Associates (Exhibit P 19) "enclosing four copies of the Shares Sale Agreement duly executed by our client and dated 20 May 2008. Please ensure that your client's client and the Guarantors execution are duly witnessed." It is true that all the signatories did not sign on the same date. However, that does not mean that the Agreement is therefore wrongly dated. If Messrs Hakem Arabi & Associates had wanted to, they could have objected to the Agreement being dated 20 May 2008. If a date is put into an Agreement which for all intents and purposes has been agreed by all parties, then that date though earlier than the date when the last person had signed the Agreement, is still a valid date as the date merely serves to memorialise the agreement of the parties already achieved by that date. As the four copies of the Shares Sale Agreement are fair copies ready for execution there was nothing wrong to date it the date the Vendor had signed as it only served to memorialise what the Purchaser and the Guarantors had agreed and there was no evidence to suggest otherwise. By the same token parties can make an agreement take effect from an earlier date or a later date than the date of the agreement so long as no third parties or the authorities are being defrauded. [54] In the Singapore Court of Appeal case of American Home Assurance Co v Hong Lam Marine Pte Ltd [1993] 3 SLR 682, the Court of Appeal speaking through their then Chief Justice Yong Pung How CJ said at paragraph 67 as follows: “....In the present case, however, the purpose of the shipbuilding agreement was not to deceive the Registrar. In fact, the purpose of the agreement was perfectly legitimate and proper. The building of the vessel involved no illegality; in other words, the backdating only became illegal when it was used for an illegal purpose - to obtain registration of the vessel in Singapore, which it was not entitled to. In the present case, in contrast, the respondents did not need to rely on the backdating in order to succeed in their counterclaim against the shipyard. It was not necessary for them to found their claim against the shipyard as the owners of a Singapore-registered ship, as their cause of action was based on the delay in the delivery of the vessel in breach of a specific term of the shipbuilding agreement. If they had to go behind the backdating to prove the actual date of the shipbuilding agreement in order to succeed in their claim, or if their claim was dependent on the status of the vessel as a Singapore-registered ship, the cases cited by the shipyard (viz Suntoso Jacob, Alexander v Rayson and Palaniappa Chettiar) might be relevant and applicable since the respondents would be basing their claim on a state of affairs which was obtained through a deception on the registrar…” [Underlined Emphasis Added]

The aforementioned authorities lend credence to the proposition that the Court’s discretion to permit amendments should not be constrained by rigid, technical rules. It is pertinent to note that post-writ assignments—when pleaded to clarify standing or entitlement—may be properly introduced where justice so requires.

For the foregoing reasons, I find that the Assignment Agreement between the 1st Plaintiff and the 2nd Plaintiff did not fabricate any event to defraud third parties. The Plaintiffs have pleaded that the 2nd Plaintiff is the manufacturer of the Salted Cured Prune products and that the Registered Trademark was registered with its consent. Further, the Plaintiffs have also pleaded that the 1st Plaintiff is the exclusive authorised distributor. These facts and relationships are not unknown to the Defendants. The Plaintiffs have not concealed the commercial arrangement between the 1st and 2nd Plaintiffs. The fact that the parties have stipulated an effective date aligned to the application date of the Registered Trademark does not, without more, indicate any fraud upon third parties.

It is therefore relevant and necessary for the Assignment Agreement to be pleaded, so that the Court is apprised of the ownership structure in relation to the Registered Trademark, including the continued position of the 1st Plaintiff (whether as registered proprietor on record and/or as exclusive licensee) and the 2nd Plaintiff’s proprietary entitlement following the Assignment Agreement. The amendment serves, in that sense, to place the real controversy before the Court and to enable the dispute to be resolved on its true merits. SECOND LIMB – PREJUDICE AND COSTS

Under this limb, the Court must assess whether any prejudice to the Defendants can be sufficiently remedied by an award of costs. Learned counsel for the Defendants contended that the change in ownership pre-empts their defences and counterclaim, as their positions were previously disclosed during summary judgment proceedings. According to learned counsel, this necessitates a re-evaluation of the Defendants’ case. It is the Defendants’ stance that the backdated assignment introduces additional factual complexities that further compound the alleged prejudice.

In considering this point, I find that any prejudice to the Defendants can be adequately compensated by costs. As I have found earlier, the core allegations against the Defendants remain unchanged. The Defendants are still alleged to have sold counterfeit products bearing the trademark, engaged in passing off, and unlawfully interfered with trade. It is undisputed that the Defendants have, at all material times, been fully aware of the commercial relationship between the Plaintiffs. This has also been specifically pleaded in the original and Amended Statement of Claim. As such, the Defendants could not have been taken by surprise or prejudiced by the proposed re-amendments relating to the Assignment Agreement. Likewise, the Defendants would also not be taken by surprise by the other proposed re-amendments, as they relate to causes of action which had already been pleaded.

The Defendants' defences to these allegations do not fundamentally change based on whether the trademark is owned by the 1st Plaintiff or the 2nd Plaintiff. The Defendants' counterclaim for invalidation of the trademark can be maintained. Whether the challenge is directed at the 1st Plaintiff as registered proprietor or the 2nd Plaintiff as beneficial owner/assignee does not alter the substantive grounds for invalidation that the Defendants rely upon.

For the reasons aforesaid, I find that the Defendants have not demonstrated any prejudice that cannot be remedied. As held in Suhaili bin Ismail (supra), amendments should be allowed to determine "the real controversy between the parties." On that score, any perceived prejudice to the Defendants is outweighed by the need to ensure that the proceedings accurately reflect the current legal position regarding trademark ownership. In any event, the Defendants remain at liberty to respond to the re-amendment in their pleadings.

In Vincent Tang Fook Lam v Sok Chun Tang (P) [2004] 2 MLJ 145, the Court of Appeal allowed a re-amendment application of the Amended Statement of Claim at the close of the defendant’s case, a stage far more advanced than this present Application. The Court, applying the Yamaha Motor principles, held that: “(3)…It is trite that amendments can be made at any stage of the proceedings including at the trial. The general principle is that the court will allow such amendments as will cause no injustice to the other parties. It is equally trite that if the application is allowed, the opposite party will normally be compensated by way of costs…”

In considering whether any injustice would be caused, I agree with the submissions of learned counsel for the Plaintiffs that this Honourable Court should balance the position of the Plaintiffs against the interests of the Defendants. To this end, the Court of Appeal’s decision in Dato’ Tan Heng Chew v Tan Kim Hor and another appeal [2009] 5 MLJ 790 is instructive. The Court of Appeal held that the prejudice to a plaintiff being shut out of his claim would outweigh any prejudice a defendant may suffer where such prejudice can be compensated in costs, especially where the trial has not yet begun and the defendant can still have his day in court. The Court of Appeal in Dato Tan Heng Chew held as follows: “[46] We are of the view that in considering whether any injustice would be caused, the position of the plaintiff must be balanced with the interest of the defendant. Injustice caused would be far greater if the plaintiff's case is to be limited prematurely. He would be shut out from his claim of true innuendo based on the further plea of extrinsic facts. On the other hand, the defendants would still have their day in court if the proposed amendments are allowed. The trial proper has not begun. The defendants would still be able to apply to have the preliminary points of law determined by the court since the proposed amendments are based on the same facts. We had no doubt that the plaintiff's application was bona fide. As such, whatever prejudice suffered by the defendants, under the circumstances, could be compensated with costs.” [Underlined Emphasis Added]

It is clear from the authorities cited above that unless the Defendants can demonstrate that they will suffer prejudice that goes beyond costs, the said Application should be allowed. Mere procedural inconvenience or that the proposed re-amendments would make difficult their Defence and Counterclaim, as alleged by the Defendants, are insufficient to warrant the refusal of leave.

In the circumstances, I find that the Defendants have not shown that they would suffer any irreparable prejudice. On the other hand, refusing the said Application would unjustly deprive the Plaintiffs of the opportunity to ventilate the issue of ownership of the said Registered Trademark and /or place the full facts and issues before this Honourable Court, thereby hindering this Honourable Court’s ability to determine the real questions in dispute and to dispose of this matter fairly. Accordingly, the Plaintiffs have satisfied the second limb of the Yamaha Motor test. THIRD LIMB – CHANGE OF CHARACTER

The Defendants contended that the amendments alter the character of the suit, shifting its foundation from the 1st Plaintiff’s rights to those of the 2nd Plaintiff. With respect, this submission is misconceived. The cause of action remains unaltered. In this regard, it is material to consider the meaning of “cause of action.” In Government of Malaysia v Lim Kit Siang & Anor [1988] 1 CLJ (Rep) 63, Salleh Abas LP defined the “cause of action” in the following manner: “What then is the meaning of “a cause of action”? “A cause of action” is a statement of facts alleging that a plaintiff’s right, either at law or by statute, has, in some way or another, been adversely affected or prejudiced by the act of a defendant in an action. Lord Diplock in Letang v. Cooper [1965] 1 QB 232 at 242 defined “a cause of action” to mean “a factual situation, the existence of which entitles one person to obtain from the Court a remedy against another person”. In my view the factual situation spoken of by Lord Diplock must consist of a statement alleging that first the respondent /plaintiff has a right either at law or by statute and that secondly such right has been affected or prejudicated by the appellant/defendant’s act.”

Applying the judicial definition above for “cause of action”, I find that there is no new cause of action arising from the proposed re-amendments for the following reasons: -

The 1st Plaintiff is currently the registered proprietor on record; and

There are no changes to the acts of the Defendants giving rise to the causes of action mentioned above.

To reiterate my views stated earlier, the causes of action herein are trademark infringement, passing off, and unlawful interference with trade. The later joinder of the 2nd Plaintiff introduced an additional claim for copyright infringement. The factual substratum of these claims remains unchanged by the proposed re-amendments, as does the nature of the reliefs sought. The assignment of trademark rights between Plaintiffs does not create a new cause of action—it merely reflects a change in the party entitled to enforce existing rights.

As to the Defendants’ arguments that the 2nd Plaintiff’s cause of action for trademark infringement does not accrue at the time of filing of the original Writ, I find this argument is misconceived. The causes of action for trademark infringement, passing off and unlawful interference with trade against the Defendants has already accrued at time of filing of the Writ.

It is trite that a right of action, once accrued, is capable of assignment. The mere fact that a registered trademark is assigned after the commencement of proceedings does not render the existing cause of action void or defective. Nor does it deprive the assignee of standing to continue the proceedings where the assignment is properly pleaded. In other words, the assignment of rights post-commencement does not retrospectively undo the legal consequences of earlier infringing acts.

In SuhaiIi bin Ismail (supra), the Court of Appeal found that there was no prejudice caused by the amendment application where the application was filed just after close of pleadings where no trial dates have been fixed yet, and the amendments arose from the same facts or substantially the same facts. The Court of Appeal in Suhaili Bin Ismail held as follows. “[4] Amendments to pleadings may be sought and granted at any stage of the proceedings: see Bumiputra-Commerce Bank Bhd & Ors v Bumi Warna Indah Sdn Bhd [2004] MLJU 529; [2004] 4 CLJ 825 where Abdul Malik Ishak J (as he then was) said: Indeed reported authorities are abound in the law journals which categorically show that amendments to pleadings are allowed before trial, during trial, before judgment, after judgment and even when there is a pending appeal against a judgment in a situation where the said judgment has been granted premised on the original un-amended pleadings. [5] In the case before us, it is undisputed that at the time the application for amendments was made by the respondent, the pleadings had only recently closed and no trial date had been fixed by the court. The appellant in opposing the application contended that the proposed amendments would cause injustice and prejudice to him as the allegations in the proposed amendments related to matters that happened 6-8 years preceding the application for amendment. It was further argued that there was a delay on the part of the respondent in alleging the new tort of conspiracy or acting in concert and was therefore an afterthought. [6] From the grounds of judgment, it is clear that the learned judge accepted the respondent’s explanation that the allegation of conspiracy arose from the same facts or were substantially the same as those already pleaded by them and that the proposed amendments were necessary to be placed before the court so that all questions in controversy can be finally determined by the court. We have no reason to disagree with the learned judge. [7] The learned judge cited the decision of the Court of Appeal in YB Datuk Dr Soon Choon Teck v YB Datuk Robert Lau Hoi Chew & Ors [2009] 3 MLJ 785 where the court made the following observations: Even if the proposed amendment gives rise to a new cause of action, but it does not turn the suit from one character into another. It is to be observed that the proposed amendment is inserted in relation to the publication referred to in paras 7 and 8 of the statement of claim. Upon close perusal of the said paragraphs, it is clear to us that the appellant had in fact pleaded therein that the impugned statements or words were understood to infer and refer to him. In our view, even though the proposed amendment appears to be massive but in reality it merely seeks to supplement what has been earlier pleaded in the said paragraphs to show that the words complained of referred to the appellant.” [Underlined Emphasis Added]

In Orion Tower Sdn Bhd v Shanghai City Sdn Bhd [2022] MLJU 2413, the High Court held that as long as the proposed amendments are within the boundaries of the core dispute, amendments would be allowed even if the effect of the amendment would be to add or substitute a new cause of action, provided the new cause of action arises out of the same facts or substantially the same facts as a cause of action in respect of which relief has already been claimed in the original statement of claim. The relevant passage of the judgment is reproduced below: “[53] Based on Chin Kong Kwong Construction Sdn Bhd above, the Defendant submitted that even if the proposed amendment gave rise to a new cause of action, it is permissible as it derived from the same set of facts and it does not turn the suit from one character into another. [54] In our present case, the alleged dispute between the Plaintiff and the Defendant arose from the sale and purchase agreement and also the joint venture agreement that was entered into by them. The Plaintiff argued that, amongst others, the Proposed Amendment contains allegations of deception, fraud and dishonesty which were not pleaded in the original amended defence and original counterclaim. With due respect, I disagree. [55] It is my view that the Proposed Amendment is still within the boundaries of the core dispute between the parties. In respect of the alleged attempt to lift the veil of incorporation, I am of the opinion that the nature and the position of Welton Builder as one of the wholly owned subsidiaries of Welton Property Sdn Bhd had already been pleaded in the original amended defence and amended counterclaim. [56] Furthermore, as discussed previously, this Application was made at the early stage of the proceedings and all of the documents needed for trial have not yet been filled in. Thus, the Plaintiff has ample time to refute any allegation raised by the Defendant in the Proposed Amendment. As highlighted in Yamaha Motor (supra) application for amendment may be allowed ‘even if the effect of the amendment would be to add or substitute a new cause of action, provided the new cause of action arises out of the same facts or substantially the same facts as a cause of action in respect of which relief has already been claimed in the original statement of claim.”

Applying these principles to the present case, I am satisfied that the proposed amendment does not alter the fundamental character of the action. The only substantive addition is a declaration that the Assignment Agreement is valid and that the 2nd Plaintiff is entitled to be recorded as proprietor of the Registered Trademark. That relief is purely consequential to the assignment and does not introduce a new or inconsistent cause of action. The substratum of the dispute— namely, the alleged infringement, passing off, and unlawful interference—remains unchanged. The amendment merely ensures that the pleadings accurately reflect the current legal position and enable the real issues between the parties to be adjudicated upon fully and finally. ISSUE: Whether there is delay in the filing of the application for the amendment

For completeness I will also address the final point on delay. Learned counsel for the Defendants contended that there has been inordinate delay on the part of the Plaintiffs in bringing the present application. Learned counsel argued that if the existence of the Assignment was already known prior to its execution on 7 July 2025, or alternatively if consent to registration had already been given as far back as 28 October 2013, the Plaintiffs ought to have applied to amend their pleadings earlier, rather than only doing so after receipt of the Assignment document on 17 July 2025.

Learned counsel for the Defendants went on to argue that the Assignment should have been executed much earlier — either by 31 October 2023 or, at the latest, by 20 February 2025. The Plaintiffs, it was said, had failed to provide any credible explanation for only formalising the Assignment on 7 July 2025. Further, it was contended that the Plaintiffs had failed to inform this Court of the intended Assignment when the earlier amendment application was made or when the appeal was heard before the Court of Appeal.

With respect, I am unable to accept the submissions advanced by learned counsel. The factual matrix, which is not in dispute, is that the Assignment Agreement did not exist until 7 July 2025, and the present application was filed on 31 July 2025. The Assignment was therefore a supervening event. Once it came into existence, the Plaintiffs acted promptly in seeking leave to amend. There is no evidence of tactical manoeuvring or deliberate withholding of information. More importantly, the Defendants are not in any way prejudiced in the conduct of their defence or counterclaim by reason of the timing of the application.

In these circumstances, I find that the Defendants’ allegations of delay are unfounded.

It also bears emphasis that this application was brought at an early stage of the proceedings and well before trial. It is therefore not a case where the court is asked to countenance a late-stage amendment after evidence has been adduced or after trial has commenced. The more stringent considerations which are applicable to late amendments simply do not arise.

In any event, as held in HSBC Bank Malaysia Bhd v Macquarie Technologies (M) Sdn Bhd [2004] 4 MLJ 398, while the timing of an amendment is a relevant consideration, it is not necessarily decisive; delay, per se, does not equate to prejudice or injustice.

Applying these principles to the present case, I am satisfied that there has been no culpable delay. The factual narrative demonstrates that the Plaintiffs acted promptly upon the execution of the Assignment Agreement. The present application was filed timeously, in good faith, and for the proper purpose of placing before the Court material facts necessary for the just determination of the dispute.

Accordingly, the Plaintiffs' application in Enclosure 104 is allowed. Costs of this application shall be costs in the cause. Dated this 31st day of December 2025. tt EDWIN PARAMJOTHY MICHAEL MUNIANDY JUDICIAL COMMISSIONER COMMERCIAL DIVISION (NCC 7) HIGH COURT OF MALAYA KUALA LUMPUR Counsel: For the Plaintiff : Mr. Ong Boo Seng and Mr. Kh’ng Hui Hong (Messrs Linda Wang Su & Boo) For the Defendant : Mr. Isaac Huang (Messrs Peter Huang & Richard)