Kotra Pharma (M) Sdn. Bhd. v Lau Tian Thye B/S Farmasi Mega Care (TA-22IP-1-05/2025)

Enclosure 9 is an application for summary judgment under Order 14 of the Rules of Court 2012 (“the Rules”) arising from an action for infringement of a registered trade mark. The Plaintiff, Kotra Pharma (M) Sdn Bhd, is the registered proprietor of the trade mark “CREOBIC” in respect of pharmaceutical products in Class 5. The Defendant, a sole proprietor operating a retail pharmacy under the name Farmasi Mega Care, resists the application on the basis that there exist triable issues warranting a full trial. The central question before this Court is whether, on the affidavit evidence before it, the Defendant has disclosed any bona fide triable issue, whether of fact or law, such that the Plaintiff should be put to strict proof at trial, or whether this is a plain and straightforward case where nothing would be gained by allowing the matter to proceed further.

The Plaintiff is a long-established pharmaceutical manufacturer and the registered proprietor of the trade mark “CREOBIC”, which is used in relation to antifungal cream products. The trade mark is duly registered under the Trademarks Act 2019, and its validity is not disputed.

The Defendant operates a retail pharmacy in Kuala Terengganu. It is not disputed that the parties had a prior commercial relationship, with the Defendant having purchased genuine CREOBIC products from the Plaintiff in earlier years. According to the Plaintiff’s records, the Defendant last purchased CREOBIC Cream 10g in December 2018, and CREOBIC Gold Cream 10g in January 2021.

On 16 May 2025, the Plaintiff’s sales representative, one Foo Beng Chui, visited the Defendant’s premises in the ordinary course of his duties. In the absence of the Defendant, two staff members were present. It is the Plaintiff’s case that several boxes of CREOBIC products nearing expiry were identified and, with the agreement of the Defendant’s staff, were returned for replacement. A return advice was issued, bearing the signature of the Defendant’s staff and the pharmacy’s stamp.

Upon inspection at the Plaintiff’s warehouse, it was discovered that three boxes of CREOBIC Cream 10g were counterfeit, while the CREOBIC Gold product was genuine. Subsequent checks revealed discrepancies in batch numbers, which corresponded to a different product altogether manufactured by the Plaintiff.

The Plaintiff contends that the Defendant has infringed its registered trademark by selling counterfeit CREOBIC cream, thereby passing off and/or engaging in trademark infringement under Section 54 of the Trademarks Act 2019. The Plaintiff claims that the Defendant, as a licensed pharmacist, owes a duty to ensure the authenticity of pharmaceutical products sold to the public and has breached this duty.

The Defendant denies all allegations. The Defendant’s primary defence is that the Plaintiff has failed to prove that the counterfeit products originated from the Defendant’s pharmacy. The Defendant challenges the authenticity of the return advice note, raises issues regarding the timeline of events, alleges mixing of products by Foo, and disputes the batch number discrepancies.

Vide Enclosure 9, the Plaintiff seeks the following reliefs from the

A declaration that the Defendant has committed the tort of passing off concerning the Plaintiff's CREOBIC goods, trade and business;

A declaration that the Defendant has wrongfully interfered with the Plaintiff's trade by infringing the Plaintiff's CREOBIC trademark, trade mark and/or name;

A declaration that the Defendant has supplied goods with false trade description and/or applied false trade description through the Plaintiff's name and the Plaintiff's CREOBIC trademark, trade mark and/or name;

A declaration that the Defendant has infringed the Plaintiff's copyright concerning the CREOBIC mark and fungal infection treatment cream product including its packaging;

A permanent injunction to restrain the Defendant, whether acting by its officers or agents or any of them, jointly or severally, howsoever from:

passing off or attempting to pass off or assisting others to pass off any goods including fungal infection treatment cream whether by importation, manufacture, supply, distribution for sale and offering for sale of goods through the "CREOBIC" trade name and/or trade mark or any trade mark, name and/or trade mark which is deceptive or confusingly similar thereto;

(ii) wrongfully appropriating the goodwill, reputation and commercial advantages arising from the same "CREOBIC" trade mark, trade mark and/or name or any trade mark, trade mark and/or name which is deceptively or confusingly similar thereto in the field of trade and business;

An order that the Defendant shall within seven (7) days from the date of the order produce and/or serve all relevant documents including invoices, contracts, customer records, sales records, bank records for payment and/or receipt of payment, delivery orders, customer declaration forms and delivery documents and other documents concerning the importation, manufacture, supply, distribution, sale and offering for sale by the Defendant of any goods including fungal infection treatment cream through the "CREOBIC" trade name and/or trade mark or any trade name, trade mark and/or trade mark which is deceptively or confusingly similar thereto;

An Order that the Defendant shall within seven (7) days from the date of the order deliver to the Plaintiff for destruction all infringing goods bearing the "CREOBIC" trade mark in the possession, custody, power or control of the Defendant;

Aggravated damages;

Exemplary damages;

General damages for loss of reputation;

An inquiry as to damages or at the Plaintiff's option, an account of the Defendant's profits for its passing off action;

Interest;

Costs; and

Such other relief as this Honourable Court deems fit and proper. ISSUES

The central issue before this Court is whether the Plaintiff is entitled to summary judgment under Order 14 of the Rules. This requires the Court to determine:

Whether the Plaintiff has established a clear case of trademark infringement and/or passing off; and

Whether the Defendant has raised any bona fide triable issues that warrant a full trial. COUNSELS’ CONTENTIONS

Learned Counsel for the Plaintiff, Mr Leong Zhi Hong argues that the Defendant has no arguable defence. Counsel relies on the return advice note, courier receipts, and affidavits from its employees to prove that the counterfeit products were returned from the Defendant’s premises.

Counsel contends that the Defendant’s denial is a bare denial unsupported by evidence, and that the issues raised by the Defendant, such as the absence of signatures, batch number discrepancies, and timeline inconsistencies, are not triable issues as they have been adequately explained in the Plaintiff’s affidavits.

Learned counsel for the Plaintiff cites authorities such as Cempaka Finance Bhd v Ho Lai Ying (trading as KH Trading) & Anor [2006] 2 MLJ 685 (FC), Abercrombie & Fitch Co & Anor v Fashion Factory Outlet KL Sdn Bhd & Ors [2008] 7 CLJ 413 (HC), and Acushnet Company v. Metro Gold Manufacturing Sdn Bhd [2006] 7 CLJ 557 (HC) to support the proposition that summary judgment is appropriate in intellectual property cases where no substantive defence is raised.

Learned counsel for the Defendant, Mr Horley Isaacs contends that there are multiple triable issues. Counsel challenges the authenticity of the return advice note, alleging that it was tampered with by the Plaintiff, that the Defendant’s employees did not sign it, and that Foo may have affixed the pharmacy chop himself.

Counsel also highlights the 79-day gap between the date of collection (16 May 2024) and the date of receipt by the Plaintiff (9 August 2024), suggesting that the products could have been mixed with other returned items.

Further, counsel points out discrepancies in the courier receipts and batch numbers, arguing that the Plaintiff has not conclusively proven that the counterfeit products originated from the Defendant’s pharmacy. Counsel relies on the principle that summary judgment should not be granted where there are disputes of fact requiring cross-examination.

The legal principles governing an application for summary judgment under Order 14 are well-established. The burden is initially on the plaintiff to show that there is no defence to the claim. Once this prima facie case is established, the burden shifts to the defendant to demonstrate that there is a triable issue or that there is a fair probability of a bona fide defence: Cempaka Finance Bhd v Ho Lai Ying (trading as KH Trading) & Anor (supra). A “triable issue” is one which raises a question of fact or law which ought to be tried: Syarikat Kerjasama Serbaguna Tunas Muda Sungai Ara v Ghazali bin Ibrahim [1985] 2 MLJ 225 (HC).

As stated by the Federal Court in Cempaka Finance Bhd v Ho Lai Ying (trading as KH Trading) & Anor (supra) the Defendant must do more than raise issues in the abstract. The issues must be shown, on affidavit evidence, to be real and capable of affecting the outcome of the case. Similarly, in Bank Negara Malaysia v Mohd Ismail & Ors [1992] 1 MLJ 400 (SC) the court emphasised that it must be satisfied that the defence raised is not only arguable but genuinely triable.

It is equally well established that bare denials, speculative assertions, or allegations unsupported by evidence do not constitute triable issues. The court is entitled to examine the quality of the defence and to reject explanations that are inherently improbable or inconsistent with the objective evidence.

In trademark infringement cases, courts have not hesitated to grant summary judgment where the defendant fails to raise a credible defence: Abercrombie & Fitch Co & Anor v Fashion Factory Outlet KL Sdn Bhd (supra); and Acushnet Company v Metro Gold Manufacturing Sdn Bhd (supra). The court in Acushnet emphasised that where infringement is clear and the defendant merely raises bare denials without evidence, nothing is gained by allowing the matter to proceed to trial.

Applying these principles to the current case, I am of the view that the Defendant does not positively assert that the impugned CREOBIC products were genuine, nor does the Defendant adduce evidence of lawful procurement. The absence of purchase invoices, delivery notes, or supplier records is particularly significant, given that the Defendant is a licensed pharmacist operating a regulated business. Such records would ordinarily exist if the Defendant’s explanation were true. The failure to produce them is not a matter of credibility to be tested at trial, but an evidential vacuum which renders the defence speculative.

The Plaintiff in this case has adduced detailed and technical evidence demonstrating that the impugned products were not genuine CREOBIC products. The affidavit of Daniel Chua Chong Liang in Enclosure 10 sets out a systematic comparison between the original and the counterfeit items returned from the Defendant’s premises. Among the more significant discrepancies are the use of a counterfeit KKM hologram sticker which could not be authenticated as genuine, the presence of a white tube cap on the impugned products as opposed to the distinctive pink cap used on the Plaintiff’s genuine products, and differences in the external packaging including colour tone, logo sizing, storage conditions, and product information printed on the outer box (See Figure 1). The counterfeit packaging further contained incorrect and incomplete product registration details, including erroneous regulatory information, in contrast with the Plaintiff’s authentic products which bear valid registration numbers for Malaysia and other jurisdiction. “A” “B” Figure 1: Side-by-side comparison between the original product (“A”) and the counterfeit product (“B”)

Of particular concern is the fact that the batch number printed on both the box and the tube of the impugned products, namely B2108005, corresponds to an entirely different pharmaceutical product manufactured by the Plaintiff, and not to CREOBIC Cream 10gm at all. This technical mismatch, together with the poor-quality reproduction of the rooted grass imagery on the packaging and the multiple regulatory inconsistencies, provides compelling objective evidence that the goods in question were counterfeit and not merely irregular or defective stock.

The Defendant’s suggestion that the counterfeit products may have originated from other premises or were commingled during the return process is similarly unsupported by evidence. This assertion is not accompanied by any factual basis demonstrating how such commingling could have occurred, nor is it supported by contemporaneous objection or documentation. In Jasmine Food Corp Sdn Bhd v Leong Wai Choon & Anor [2016] 11 MLJ 812 (HC) the High Court made clear that speculative explanations as to the source of counterfeit goods, unsupported by proof, do not constitute triable issues. I respectfully adopt that reasoning. Therefore, in the face of such detailed and uncontroverted technical evidence, the suggestion that the products were genuine or that their origin remains uncertain is unsustainable.

As for the alleged irregularities in the return advice, the batch number, and the conduct of the Plaintiff’s sales representative, these matters do not meet the evidential threshold required to defeat an application under Order 14. The Defendant’s case rests on conjecture and post-event allegations unsupported by independent or contemporaneous evidence, such as a complaint, police report, or internal record. Significantly, the Defendant himself exhibits the original return advice bearing his pharmacy’s stamp and his staff’s signature. The Plaintiff’s explanation that the initial batch number entry of “2103005” was a clerical error subsequently corrected to “2108005” upon verification is both plausible and supported by affidavit evidence. Likewise, the alleged inconsistencies in the courier receipts are satisfactorily explained by the fact that the receipts relate to different consignments, only one of which contained the Defendant’s returned products. In the absence of any cogent contrary evidence, these allegations remain bare assertions and do not raise a bona fide triable issue.

It is also relevant that the Defendant does not invoke any recognised statutory defence under Section 55 of the Trademarks Act 2019. The absence of such a defence reinforces the conclusion that the issues raised are not legally triable, even if taken at their highest. As observed in Acushnet Company v Metro Gold Manufacturing Sdn Bhd (supra) where infringement is established and no statutory defence is disclosed, the court is entitled to enter summary judgment.

I am mindful of the caution expressed in Ng Hee Thong & Anor v Public Bank Berhad [1995] 1 CLJ 609 (CA) that Order 14 should be exercised sparingly. However, sparing use does not mean hesitant use. Where, as here, the defence consists of denials, suppositions, and unsupported allegations, the refusal to grant summary judgment would undermine the very purpose of Order 14, which is to prevent plainly unmeritorious defences from consuming judicial time and imposing unnecessary costs on litigants.

Having considered the evidence and submissions, this Court finds that the Plaintiff has established a clear case of trademark infringement. The Plaintiff is the registered proprietor of the CREOBIC mark, and it is undisputed that the products returned were counterfeit. The evidence sufficiently links the counterfeit products to the Defendant’s pharmacy.

The Defendant has failed to raise any bona fide triable issue. Its defence is characterised by bare denials, speculative allegations, and minor technical objections that do not go to the heart of the claim. In the words of Blackburne J in Gillette UK Limited v Edenwest Limited [1994] RPC 279 (HC), adopted in Acushnet Company v Metro Gold Manufacturing Sdn Bhd (supra), “nothing would be gained by allowing the matter to go to trial.”

Accordingly, I am satisfied that the Defendant has failed to raise any bona fide triable issue, whether of fact or law. The issues advanced do not require credibility assessment at trial, nor do they disclose a defence capable of succeeding even if all allegations were taken at their highest. The Plaintiff is therefore entitled to summary judgment.

Accordingly, summary judgment in Enclosure 9 is allowed with regards to prayers (a) to (g). As to damages, while the Plaintiff’s pleadings and evidence make out a prima facie case that the Defendant’s conduct was serious and may warrant aggravated or exemplary damages, the quantification of such damages, and the final determination of whether they are justified, requires a detailed examination of evidence that is not yet before the Court.

It is therefore appropriate to order a general inquiry into damages, within which the Plaintiff may advance its claims for aggravated and exemplary damages. The Court hearing the assessment shall determine, on the evidence adduced during the inquiry, whether such awards are warranted. Accordingly, prayers (h), (i), and (j) are not granted as standalone reliefs but are to be considered and determined within the inquiry under prayer (k), as amended by this Court. Prayers (k), (l), and (m) are allowed. The costs of this application shall be quantified and dealt with together with the costs of the assessment of damages. Dated: 28th December 2025 Yusrin Faidz Bin Yusoff Judicial Commissioner High Court of Malaya Kuala Terengganu Counsel for the Plaintiff: Leong Zhi Hong (Together with Lim Yi Xuan) Messrs Richard Wee Chambers, No. 19 & 19-1, Jalan TAKH 15, Taman Ayer Keroh Heights 1, 7 5450 Hang Tuah Jaya, Melaka. Counsel for the Defendant: Horley Isaacs Messrs Horley Isaacs & Associates No. 30-J, Tingkat 1, Jalan Hiliran, 20300 Kuala Terengganu, Terengganu Darul Naim.

Cempaka Finance Bhd v Ho Lai Ying (trading as KH Trading) & Anor [2006] 2 MLJ 685 (FC).

Abercrombie & Fitch Co & Anor v Fashion Factory Outlet KL Sdn Bhd & Ors [2008] 7 CLJ 413 (HC).

Acushnet Company v Metro Gold Manufacturing Sdn Bhd [2006] 7 CLJ 557 (HC).

Syarikat Kerjasama Serbaguna Tunas Muda Sungai Ara v Ghazali bin Ibrahim [1985] 2 MLJ 225 (HC).

Bank Negara Malaysia v Mohd Ismail & Ors [1992] 1 MLJ 400

Jasmine Food Corp Sdn Bhd v Leong Wai Choon & Anor [2016] 11 MLJ 812 (HC).

Ng Hee Thong & Anor v Public Bank Berhad [1995] 1 CLJ

Gillette UK Limited v Edenwest Limited [1994] RPC 279 (HC).

Order 14 of the Rules of Court 2012.

Section 54 & 55 of the Trademarks Act 2019.