JA-22IP-1-082020

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OO TIM WEE ...PLAINTIF-PLAINTIF

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TAN KIM PENG (P) ...DEFENDAN-DEFENDAN GROUNDS OF JUDGMENT [Enclosure 141] Background [1] This is the Plaintiffs’ application in Enclosure 141 pursuant to O. 24. rr. 3, 12 and 16 of the Rules of Court 2012 (“ROC”) for an order of discovery against the Defendants for the documents listed in the application. 2 [2] As a background of facts, on 19.2.1998 a company known as Dr. Who Waterworks Pte. Ltd (“Waterworks”) was incorporated in Singapore. [3] In or about November 2002, the 2nd Plaintiff became the substantial shareholder and director of the Waterworks whereas the 8th Defendant subsequently became one of the shareholders and directors of the Waterworks since 2004. [3] As to expand the company’s businesses, the 8th Defendant and the 2nd Plaintiff had further incorporated the following companies (“Dr. Who

the New Global Watertech Pte. Ltd;

the Dr. Who Laboratories (S) Pte. Ltd;

the D’ Choice Pte. Ltd; and

the 1st Defendant. [4] The 2nd Plaintiff also incorporated the 1st Plaintiff in Malaysia as a company producing bottled drinking and gallon water. The 1st Plaintiff, thereafter supplied bottled drinking and gallon water to support the business of the Dr. Who Group of Companies using the brand name of “DR. WHO”. [5] In view of the differences arose, a deed of settlement (“Deed”) dated 13.2.2017 was executed by the following parties as a full and final 3 settlement to dispose of all claims, disputes and differences between the parties prior to the date of the Deed:

the 2nd Plaintiff;

Low Siew Eng (the 2nd Plaintiff’s wife);

the 1st Plaintiff;

the 8th Defendant;

the 9th Defendant;

the Waterworks;

the New Global Watertech Pte. Ltd;

the Dr. Who Laboratories (S) Pte. Ltd;

the D’ Choice Pte. Ltd; and

the 1st Defendant. [6] Due to the mutual co-existence rights agreed in the Deed, the 1st Plaintiff, Low Siew Eng and the 2nd Plaintiff are entitled to own and use the “DR. WHO” marks in Malaysia at the sole discretion of the 2nd Plaintiff. [7] The 2nd Plaintiff is the registered owner for trademarks of “DR. WHO” registered in Malaysia and has granted the 1st Plaintiff a non-exclusive license to carry on its business with the “DR. WHO” trademark in Malaysia. [8] Sometime in August 2019, the 2nd Plaintiff found that the 1st Defendant, which the 2nd Plaintiff alleged it under the direction and control of the 8th and 9th Defendants, was ordering bottled drinking water from the 2nd Defendant in Malaysia using the “DR. WHO” marks. 4 [9] The 1st Plaintiff carried out investigations and discovered that the 2nd Defendant was producing bottled drinking water and supplying the same to the 1st Defendant in Singapore using the “DR. WHO” marks. [10] The 2nd Plaintiff also claimed that the 2nd Defendant had entered into the Distribution Agreement dated 10.6.2019 with the 1st Defendant which the 2nd Plaintiff alleged it under the direction and control of the 8th and 9th Defendants. [11] Not only that, the 2nd Plaintiff also discovered that the labels which displayed the “DR. WHO” marks were produced by the 3rd, 4th and 6th Defendants. The labels then sent to the 2nd Defendant which would fix the labels which displayed the “DR. WHO” marks on the bottled drinking water to the account of the 1st Defendant. The 2nd Defendant thereafter would pack the bottled drinking water in carton boxes which displayed the “DR. WHO” marks which were manufactured by the 5th and 7th Defendants for which the orders were placed by the 2nd Defendant in pursuant to the Distribution Agreement and to the account of the 1st Defendant. [12] In view of the above, the Plaintiffs filed the Writ of Summons and Statement of Claim dated 15.8.2020 against the 1st to 7th Defendants. [13] On 14.9.2020, the Plaintiffs filed an interim injunction (enclosure 15) against the Defendants as to inter alia restrain the latter from manufacturing, importing, distributing, dealing and trading products or materials which bearing “DR. WHO” trademarks until the disposal of the present action. This application was dismissed on 21.1.2021. However, the High Court decision was set aside by the Court of Appeal on 5

10.5.2022. As to date, the interim injunction remains valid and enforceable. [14] Later, the Plaintiffs discovered that the 4th Defendant, upon request of the 1st, 2nd and 8th Defendants, had been continuing to supply and deliver the labels to the 1st Defendant even after receiving the Plaintiffs’ letter of demand dated 31.7.2020. Due to this, the Plaintiff then applied to amend the Statement of Claim via Enclosure 9 as to include the 8th and 9th Defendants in this suit and the application was granted on 8.11.2020. The 1st Defendant appealed against the court order but the appeal was dismissed by the Court of Appeal on 9.8.2021. [15] On 17.1.2022, the 8th and 9th Defendants filed an application under O. 18 r. 19(1)(b) and/or (c) and/or (d) and/or O. 92 r. 4 of the ROC in Enclosure 139 to strike out the Plaintiffs’ Amended Statement of Claim. However, the application was dismissed by this court on 20.6.2022. Dissatisfied with the decision, on 18.7.2022, the 8th and 9th Defendants filed an appeal to the Court of Appeal which is pending for decision. [16] On 23.1.2022, the Plaintiffs filed this application for discovery of following documents: 6 7 8 [17] The Plaintiffs gave the following reasons on why the documents were needed: consent, for either the 1st Defendant and/or DR. WHO GROUP OF COMPANIES and/or the 2nd Defendant on or after 13.2.2017 until the date of this application; 9 consent, for either the 1st Defendant and/or DR. WHO GROUP OF COMPANIES and/or the 2nd Defendant on or after 13.2.2017 until the date of this application; OF COMPANIES on or after 10.6.2019 until the date of this application; and Plaintiffs as a result of the Defendants’ acts of infringement and/or passing off by wrongfully and/or unlawfully using the “DR. WHO” marks in Malaysia. The law of discovery of documents [18] On the law of discovery of documents, s. 25(2) and paragraph 14 of the Schedule to the Court of Judicature Act 1964 (“CJA”) as well as O. of the ROC give the court a discretionary power to grant an order of discovery. S. 25(2) of the CJA reads – Powers of the High Court 25.

Without prejudice to the generality of Article 121 of the Constitution the High Court shall in the exercise of its jurisdiction have all the powers which were vested in it immediately prior to Malaysia Day and such other powers as may be vested in it by any written law in force within its local jurisdiction.

Without prejudice to the generality of subsection (1) the High Court shall have the additional powers set out in the Schedule: 10 Provided that all such powers shall be exercised in accordance with any written law or rules of court relating to the same

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Subject to the provisions of this rule and of rules 4 and 8, the Court may at any time order any party to a cause or matter (whether begun by writ, originating summons or otherwise) to give discovery by making and serving on any other party a list of the documents which are or have been in his possession, custody or power and may at the same time or subsequently also order him to make and file an affidavit verifying such a list and to serve a copy thereof on the other party.

(There is no paragraph (2))

(There is no paragraph (3))

The documents which a party to a cause or matter may be ordered to discover under paragraph (1) are as follows:

the documents on which the party relies or will rely; and

the documents which could —

adversely affect his own case;

(ii) adversely affect another party’s case; or

(iii) support another party’s case. 11 [19] It is trite that the burden to prove that documents sought in the application for discovery are necessary lies with the party seeking the production. In Nguang Chan a.k.a Nguang Chan Liquor Trader & Ors v. Hai-O Enterprise Bhd [2002] 1 LNS 413; [2009] 5 MLJ 40, the Court of Appeal held that – “[11] Under r 13(1) an order for the production of documents for inspection is not to be made unless the court is of opinion that such order is necessary either for disposing fairly of the case or matter or for saving costs. It is for the party seeking production to satisfy the court that such production is necessary for the purpose specified in r 13(1) per Parker LJ in DollingBaker v Marrett & Ors [1991] 2 All ER 890 and Ventouris v Mountain [1991] 1 WLR 607. [20] Therefore it is incumbent upon the Plaintiffs to satisfy the court that discovery is necessary for disposing fairly the cause or matter. Merits of the Plaintiff’s application [21] As submitted by the Plaintiffs, the purpose of discovery of the intended documents is to assess and ascertain losses and damages suffered by the Plaintiffs as a result of the Defendants’ acts of infringement and/or passing off by wrongfully and/or unlawfully using the “DR. WHO” marks in Malaysia. [22] To consider the Plaintiffs’ application, I am guided by the principle laid down by the Federal Court in Kerajaan Negeri Kelantan v. Petroliam Nasional Berhad & Other Appeals [2014] 7 CLJ 597, where the discovery application for documents relate to the assessment of losses and quantum of damages was not allowed prior to the hearing of the suit. Abdull Hamid Embong FCJ when delivering the judgment of the court said: 12 [46] Learned counsel for Petronas contended that the documents sought by the plaintiff in the discovery application all relate to the issue of quantum of damages and they go nowhere towards establishing the issue of liability in this case. With that, we agree. [47] In our considered view, these documents do not relate and would not throw any light towards establishing or deciding the core issue in question. In view of the O. 14A application in this case, the learned trial judge of the High Court was right in holding that discovery is not necessary at this stage of the proceedings. In holding so, the learned judge had identified the core issue in the O. 14A application and found that the documents sought for by the plaintiff are not relevant in determining the said issue and gave her reasons in finding so, more so if the O. 14A application was decided against the plaintiff. In our view, the learned judge's decision in dismissing discovery at that stage of proceedings is in line with the underlying principle under O. 24 r. 4 which underscores that the discovery process is predicated on the issues involved in a particular case and therefore, in this case, the determination of the core issue in the O. 14A application ought to, and had rightly been decided to precede the discovery. [23] Flowing from the above principle, I find that the issue of infringement of the trademarks must firstly be determined before any discovery of documents relating to the assessment of damages is made by the Plaintiffs. [24] Nevertheless, the Plaintiffs contended that the Court of Appeal when granting the interim injunction order on 10.5.2022 agreed with the Plaintiffs that the Defendants had committed the acts of infringement by wrongful and unlawful use of the “DR. WHO” trademarks. Thus, the Plaintiffs argued that the issue of infringement of the “DR. WHO” trademarks has been settled by the Court of Appeal and an order for 13 discovery of such documents in the possession, custody and power the Defendants becomes relevant and material as part of discovery against the Defendants. [25] With respect, the Plaintiffs’ argument is misconceived. It is a cardinal principle that the purpose of an injunction is only to preserve the status quo pending trial of matters in dispute. It is trite that during any application for injunction, the court is only to consider there are serious issues to be tried, the damages will not be an adequate compensation and the balance of convenience favours the grant of the injunction (see Onestop Software Solutions (M) Sdn Bhd & Anor v Masteritec Sdn Bhd & Ors [2009] 8 MLJ 528). Instead, the court must refrain from making any determination on the merits of the claim or any defence in the main action. [26] Thus, I find that the Court of Appeal in hearing the Plaintiffs’ appeal on the interim injunction matter could not in any manner be treated that the Court had determined the merit of the Plaintiffs’ claim in this suit. [27] I derive support for the preceding proposition from the observation by Gopal Sri Ram JCA (as he then was) in Keet Gerald Francis Noel John v. Mohd Noor Abdullah & Ors [1995] 1 CLJ 293; [1995] 1 MLJ 193 where it was held that the judge in hearing an application for interlocutory injunction do not make any determination on the merit of the claim or the defences raised. The Lordship in delivering the judgment of the Court had this to say – To summarise, a Judge hearing an application for interlocutory injunction should undertake an inquiry along the following lines:- 14 first, he must ask himself whether the totality of the facts presented before him discloses a bona fide serious issue to be tried. He must, when considering this question, bear in mind that the pleadings and evidence are incomplete at that stage. Above all, he must refrain from making any determination on the merits of the claim or any defence to it. It is sufficient if he identifies with precision the issues raised on the joinder and decides whether these are serious enough to merit a trial. If he finds, upon a consideration of all the relevant material before him, including submissions of Counsel, that no serious question is disclosed, that is an end of the matter and the relief is refused. On the other hand if he does find that there are serious questions to be tried, he should move on to the next step of his inquiry; [28] The same principle was also echoed by the Court of Appeal in Tenaga Nasional Berhad v. Teobros Development Sdn Bhd [2008] 1 LNS 395; [2008] 4 MLJ 143, where Abdul Malik Ishak JCA held that – [6] Essentially, the object of the court in granting an interlocutory injunction is to prevent mischief and to keep things in status quo until the hearing is completed (Plimpton v. Spiller [1876-1877] 4 Ch.D. 286). It is the practice of the court, when an interlocutory injunction is granted, to require the applicant to give an undertaking to abide by any order that the court may make in the opponent's favour for damages. Such a requirement is also imposed notwithstanding that the case for an interlocutory injunction is clearly made out (Renard v. Levinstein (January 26, 27, 1865) English Reports, volume LXXI

(71); Vice-Chancellor's Court XVI page 607, Hemming & Miller, volumes 1 and 2; Holt, Equity Reports, volumes 1 and 2 paragraph 628). In short, the practice of requiring the applicant to undertake to pay any damages subsequently found due to the opponent as compensation if the injunction cannot be justified at the trial has been entrenched and adopted in almost every case. [7] In a proper case, the court will not deprive the applicant, with limited financial resources, the right to an injunction (Allen And Others v. Jambo Holdings Ltd And Others [1980] 1 WLR 1252). In most cases where the 15 applicant refuses to give an undertaking as to damages, he is unlikely to obtain an interlocutory injunction. [8] It must be borne in mind that the hearing of an application for an interlocutory injunction is not a trial on the merits. At that stage, there will be no oral evidence nor an opportunity for cross-examination. [29] I agree with the Defendants that it is blatantly wrong for the Plaintiffs to contend that the Court of Appeal had made a final determination on the merit of their claim or the Defendants’ defence. It is clear that the issue as to whether the Defendants had committed trade infringement had not been decided by the Court of Appeal. Instead the issue is only to be tested and ventilated at a full blown trial by this court. [30] It is not completed if I fail to refer to the Federal Court decision in Nicholas & Ors v. Gan Realty Sdn. Bhd. & Ors [1970] 1 LNS 90; [1970] 2 MLJ 89 where Azmi LP has this to say – It is my view that a temporary injunction under s. 50 of the Specific Relief (Malay States) Ordinance is the same thing as an interlocutory injunction mentioned in the English text books. Temporary injunctions are such as are to continue until a specific time or the hearing of the case upon the merits or generally until further order. Kerr on Injunctions 6th Edn. at p. 2 says this: The interlocutory injunction is merely provisional in its nature, and does not conclude a right. The effect and object of the interlocutory injunction is merely to keep matters in status quo until the hearing or further order. In interfering by interlocutory injunction, the Court does not in general profess to anticipate the determination of the right, but merely gives it as its opinion that there is a substantial question to be tried 16 and that till the question is ripe for trial, a case has been made out for the preservation of the property in the meantime in status quo. A man who comes to the Court for an interlocutory injunction, is not required to make out a case which will entitle him at all events to relief at the hearing. It is enough if he can show that he has a fair question to raise as to the existence of the right which he alleges, and can satisfy the Court that the property should be preserved in its present actual condition, until such question can be disposed of. Again at p. 15:- In exercising the jurisdiction, the Court does not pretend to determine legal rights to property, but merely keeps the property in its actual condition until the legal title can be established. The Court interferes on the assumption that the party who seeks its interference has the legal right which he asserts, but needs the aid of the Court for the protection of the property in q uestion until the legal right can be ascertained. The office of the Court to interfere being founded on the existence of the legal right, a man who seeks the aid of the Court must be able to show a fair prima facie case in support of the title which he asserts. He is not required to make out a clear legal title, but he must satisfy the Court that he has a fair question to raise as to the existence of the legal right which he sets up, and that there are substantial grounds for doubting the existence of the alleged legal right, the exercise of which he seeks to prevent. The Court must, before disturbing any man's legal right, or stripping him of any of the rights with which the law has clothed him, be satisfied that the probability is in favour of his case ultimately failing in the final issue of the suit. The mere existence of a doubt as to the plaintiff's right to the property, interference with which he seeks to restrain, does not of itself constitute a sufficient ground for refusing an injunction, though it is always a circumstance which calls for the attention of the Court. 17 [31] It is clear that there is no basis for the Plaintiffs to contend that they have successfully proven that Defendants had committed the acts of infringement by wrongful and unlawful use of the “DR. WHO” trademarks which led the Plaintiff to file this application for discovery. Conclusion [32] Having considered the facts and the circumstances of the present case, it is my considered view that the Plaintiffs failed to establish any merit in this application. As the application for discovery was purely for the purpose of assessment of damages, the issue of determination of the core issue in the main suit must have been decided to precede the discovery application. In light of this, I dismiss the Plaintiff’s application in Enclosure 141 with costs. Dated: 30.4.2023 -SIGNED- (SHAMSULBAHRI BIN HAJI IBRAHIM) Judicial Commissioner, Johor Bahru High Court Counsels: For the Plaintiffs – Lee Bao Ting; Messrs Albert Ding, Lee & Partners For the 1st, 8th and 9th Defendants – Wong Renn Xin; Messrs KL Wong For the 2nd Defendant – Fyiona Lai Phik-Wy (Lai Yee Fan with her) – Messrs. Benjamin Tan & Co 18 Cases referred to:  Keet Gerald Francis Noel John v. Mohd Noor Abdullah & Ors [1995] 1 CLJ 293; [1995] 1 MLJ 193  Kerajaan Negeri Kelantan v. Petroliam Nasional Berhad & Other Appeals [2014] 7 CLJ 597,  Nguang Chan a.k.a Nguang Chan Liquor Trader & Ors v. Hai-O Enterprise Bhd [2002] 1 LNS 413; [2009] 5 MLJ 40  Nicholas & Ors v. Gan Realty Sdn. Bhd. & Ors [1970] 1 LNS 90; [1970] 2 MLJ 89  Onestop Software Solutions (M) Sdn Bhd & Anor v Masteritec Sdn Bhd & Ors [2009] 8 MLJ 528  Tenaga Nasional Berhad v. Teobros Development Sdn Bhd [2008] 1 LNS 395; [2008] 4 MLJ 143 Legislations referred to:  Court of Judicature Act 1964 - s. 25(2) & para 14 of the Schedule  Rules of Court - O. 24 r.