Crystal Triumph Sdn Bhd (WA-24IP-27-11/2018)

This is an ex-parte application for declarations pursuant to the Trade Description Act 2011.

The Applicant is private limited company involved in the business of hardware merchants. 2

The Applicant is the registered owner of the registered word mark “Eloy” (Trade mark no. 09020762) made under the Trade Marks Act 1976 for a period of 10 years from 24 November 2009 to 24 November 2019 in Class 6 in respect of door locks (non-electric) of metal, bolts (lock), cylinder locks of metal, lock parts of metal and metal locks (non-electric). In addition, the Applicant is also the registered owner of the registered word mark “Vago” (Trade mark no. 2010021603) made under the Trade Marks Act 1976 for a period of 10 years from 11 November 2010 to 11 November 2020 in Class 11 in respect of sanitary installations, sanitary units, sanitary ware, bathroom furniture (sanitary ware), fittings for sanitary purposes, taps for sanitary installations and faucets.

The Applicant carried out business as hardware merchants since 2008 and obtained the registration of the Eloy and Vago trade marks on 7 June 2011 and 16 January 2012 respectively from MyIPO. 3

In the course of the Applicants trade as merchant of hardware products, the “Eloy” trade mark was extensively used and marketed for the Applicant’s door locks and bolts in Malaysia and the “Vago” trade mark was likewise also extensively used and marketed for the Applicant’s garden fittings in Malaysia. The aforesaid Applicant’s products and packaging with the “Eloy” and “Vago” trade marks are pictorially depicted as follows: 4 5

The Applicant had however ceased production of its door locks and bolts bearing the “Eloy” trade mark in 2015.

That notwithstanding, the Applicant has recently in 2018 discovered that there are the following counterfeit products with packaging bearing the “Eloy” mark sold in Malaysia: 6 7 8 9

The Applicant is still producing the following faucets and fittings bearing the “Vago” trade mark. Nonetheless, the Applicant has also in 2018 discovered that there is the counterfeit fitting with packaging bearing the “Vago” mark sold in Malaysia: 10

As the result, the Applicant on 19 November 2018 filed this ex-parte application (“Application”) with a certificate of urgency. The reliefs sought in the Application are as follows: “(a) Suatu perisytiharan bahawa pengunaan Cap dan/atau dan/atau berkenaan dengan perbuatan mengilang, mengedar, menjual atau menawarkan untuk jualan oleh mana-mana orang atau syarikat akan aksesori pintu logam, terutamanya penutup pintu (door closer) dan selak pintu (door bolt) (gambar-gambar barangan pelanngaran penutup pintu dan selak pintu yang dilampirkan sebagai Lamprian A) yang tidak dikilangkan, diedarkan, dijual atau dibekalkan oleh Pemohan atau pengilang , pengedar atau peniaga yang telah diberi kuasa atau duberu lessen oleh Pemohon, akan disifatkan sebagai penggunaan perihal dagangan palsu di bawah makna Akta Perihal Dagangan 2011.

Suatu perisythharan bahawa pengunaan Cap berkenaan dengan perbuatan mengilang, mengedar, menjual atau menawarkan untuk jualan oleh mana-mana orang atau syarikat akan peralatan pemasangan dan kelengkapan permbersihan 11 terutamanya pemasangan taman (garden fitting) (gambar-gambar barangan pelanggaran taman yang dilampirkan sebagai Lamprian B) yang tidak dikilangkan, diedarkan, dijual atau dibekalkan oleh Pemohan atau pengilang , pengedar atau peniaga yang telah diberi kuasa atau duberu lessen oleh Pemohon, akan disifatkan sebagai penggunaan perihal dagangan palsu di bawah makna

The Application which is supported by the affidavit of Ng Chee Hoe affirmed on 19 November 2018 came before me on 21 November 2018.

After hearing counsel, I gave an order in terms of the Application but with no order as to costs.

I now provide below the grounds of my decision. 12

This Application is premised on ss. 8 and 9 of the Trade Description Act 2011 (“TDA”) that read as follows: “8. Prohibition of false trade description in relation to trademark

Notwithstanding sections 5 and 6, a trade description shall include an indication, whether direct or indirect, and by any means given, in respect of any goods or parts of goods relating to any rights in respect of trade mark registered under the Trade Marks Act 1976.

Any person who-

applies a false trade description to any goods as if the goods were subject to any rights relating to registered trade mark;

supplies or offers to supply any goods to which a false trade description is applied as if the goods were subject to any rights relating to registered trade mark; or 13

exposes for supply or has in his possession, custody or control for supply any goods to which a false trade description is applied, commits an offence and shall, on conviction, be liable-

(A) if that person is a body corporate, to a fine not exceeding fifteen thousand ringgit for each goods bearing the false trade description, and for a second or subsequent offence, to a fine not exceeding thirty thousand ringgit for each goods bearing the false trade description; or

(B) if that person is not a body corporate, to a fine not exceeding ten thousand ringgit for each goods bearing the false trade description or to imprisonment for a term not exceeding three years or to both, and for a second or subsequent offence, to a fine not exceeding twenty thousand ringgit for each goods bearing the false trade description, or to imprisonment for a term not exceeding five years or to both.

Any person who applies, supplies or offers to supply, exposes for supply or has in his possession, custody or control for supply any goods bearing an identical mark with the registered trade mark without the consent of the registered owner of the trade 14 mark is deemed to apply, supply or offer to supply goods bearing false trade description unless the contrary is proved.

Trade description order

Where any person being a registered owner of a registered trade mark under the Trade Marks Act 1976 claim that his rights in respect of such trade mark are being infringed in the course of trade, by any other mark or get-up used by any other person, which is not identical with his registered trade mark but can be passed off as his registered trade mark, he may apply to the High court to declare that the infringing mark is a false trade description for the purpose of section 8.

For the purpose of subsection (1), the person referred to in subsection (1) in making the application shall identify specifically the infringing trade or other mark or get-up and the High Court may, on the application of such person, make an order declaring that the infringing trade or other mark or get-up is for the purposes of this Act, a false trade description in its application to such goods as may be specified in the order. 15

An order of the High Court made under this section may be referred to as a trade description order.

A subsisting trade description order made by any High Court in Malaysia shall be admissible in evidence in any proceedings under section 8 in which it is relevant as conclusive proof of a false trade description.

A trade description order shall expire at the end of one year from the date on which it is made unless it is renewed by the High Court upon such terms and for such further period as the High Court may decide on the application of the person referred to in subsection (1) or his successor-in-title.

Any person who obtains a trade description order under this section shall register the trade description order with the Registrar.”

According to the Applicant, the “Eloy” and “Vago” registered trade marks belong to the Applicant and the Applicant has through time acquired a good name and reputation selling and marketing the Applicant’s products bearing the aforesaid trade marks in Malaysia. 16

The Applicant has recently discovered counterfeit products bearing identical or confusingly similar infringing trade marks sold and marketed in Malaysia in business competition with Applicant. These infringing trade marks were neither those belonging to the Applicant nor used with the Applicant’s consent or approval.

In consequence, the Applicant contended that it is entitled to seek protection under the TDA for false description of products which resembled that of the Applicant.

The Applicant initiated this Application ex-parte. In NV Sumatra Tobacco Trading Co v PT Sampoerna JL Sdn Bhd [1997] 3 CLJ 946, Haidar Mohd Noor J (later CJ (Malaya)) held as follows: “Therefore, with respect, I do not agree that, as a matter of law, the application should be made inter partes. In any event TDA does not prescribe that an application under s. 16 should be inter partes. As I said earlier it is entirely up to the party to proceed either under the TDA or TMA as the case may be, and my observation from the line of reported cases, in an application under TDA, it is 17 proceeded ex parte whereas if it is an action under TMA, it is proceeded inter partes. In the circumstances to say that the ex parte order is bad in law as it should be obtained inter partes and should be set aside cannot, with respect, be sustained. The rights of the affected party are preserved in that it can apply to set aside the ex parte order and prays for consequential orders.” Recently in the Federal Court case of Tan Kim Hock Product Centre Sdn Bhd v Tan Kim Hock Tong Seng Food Industry Sdn Bhd [2018] 2 MLJ 1, Balia Yusof FCJ held as follows: “[57] As submitted by learned counsel for the appellants, the practice that has developed among practitioners in an application for a TDO under s 9 of Act 730 has been by way of an ex parte application (see: In-Comix Food Industries Sdn Bhd v A Clouet & Co (KL) Sdn Bhd, NV Sumatra Tobacco Trading Co v PT Sampoerna JL Sdn Bhd [1997] 3 CLJ 946, Hu Kim Ai (trading as Geneve Timepiece) & Anor v Liew Yew Thoong (trading as Crystal 18 Hour) [2004] 7 MLJ 590 and Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1989] 2 MLJ 298). [58] We do not see anything wrong or illegal in such practice. It is permissible in law.”

Thus and after having examined the Application and it supporting affidavit in particular, I am satisfied that the Applicant has established that it is the registered owner of the “Eloy” and “Vago” trade marks and these aforesaid trade marks have been and/or are being infringed in the course of trade by other identical or confusingly similar marks which passed off as the Applicant’s registered trade marks as specifically identified by the Applicant.

In the premises, the Applicant has met the prerequisites laid down in s. 9 of the TDA. I am also mindful that it reasonable and necessary in the circumstances here to swiftly grant the declarations sought by the Applicant to enable the relevant enforcement agency under the Ministry of Domestic Trade and Consumer Affairs to take action including to seize and preserve the infringing or passed off products as evidence for 19 criminal prosecution and possibly also civil intellectual property litigation. Otherwise, there is always the real risk of these infringing or passed off products removed or destroyed because producers or proprietors of counterfeit products with false trade description operate covertly in circumvention of the law.

It is for the foregoing reasons that I allowed the Application as so ordered. Dated this 26 November 2018 t.t LIM CHONG FONG JUDGE HIGH COURT KUALA LUMPUR COUNSEL FOR THE APPLICANT: SRI RICHGOPINATH (NUR MUHAIMIN BINTI MOHD HUSAIMI WITH HIM)