Osram Opto Semiconductors (Malaysia) Sdn Bhd v Ooi Mei Chien @ Wei Wei Chien (PA-22NCvC-57-03/2020)

an order restraining the defendant from dealing, using, utilising, divulging, communicating and/or disclosing to 2 any person or body ‘the confidential documents’ and/or the contents thereof and/or any copies, reproductions, extracts or summaries hereof whether in written, printed, digital or electronic form (“1st interim prohibitory injunction”);

(ii) an order restraining the defendant from dealing, using, utilising, divulging, communicating and/or disclosing to any person or body any information, trade secrets, know-how, inventions, techniques, processes, specifications, design plans, product plans, software, data, product and business strategies, financial information viewed, learned and/or received by the defendant or developed or provided by the plaintiff to the defendant in the course of her employment or otherwise required (“2nd interim prohibitory injunction”);

(iii) an order compelling the defendant to disclose all other documents aside from ‘the confidential documents’ which belongs to the plaintiff and/or created by the plaintiff which are currently, was or will be in the possession of the defendant within 7 days from the date of the order hereof 3 from dealing, using, utilising, divulging, communicating and/or disclosing to any person or body the confidential documents and/or the contents thereof and/or any copies, reproductions, extracts or summaries hereof whether in written, printed, digital or electronic form (“the interim mandatory injunction”); [2] The phrase ‘the confidential documents’ in (i) and (iii) of the preceding paragraph refer to the following documents which the company claims contain confidential information (“the impugned documents”):

HR Job Acquisition Report (as of 31st August FY 14/15) which contains personal data of all employees of the company which exposes the company to liability for the breach of personal data under the Personal Data Protection Act 2010.

Plant wide turnover analysis report (August 2015) which contains data on the turnover of staff for the year 2015. 4

Monthly shipment report dated 1.9.2015 which contains data on the monthly fluctuation of deliveries to EU, Asia and North America.

Detail profit and loss account for 2013/2014 and 2014/2015, investment report for August 2015, General Ledger extract of Financial Statements prior to being audited.

Benefits enhancement communication package, HR updates FY 14/15 re performance management process, productivity improvement incentive tool and related emails which are documents which contain information relating to payroll, employee remuneration and benefits.

The company’s internal regulations regarding the authorisation of signatures for internal and external authorisation and correspondences, reimbursable and non-reimbursable expenses, travel risk assessment etc.

Business processes regarding: accounts payable such as invoice verification, payment processing, down payment (for 5 assets); and accounts receivable such as payment from customers etc.

Commercial Organisational Chart effective 1.10.2015; BA Sales Global Organisation Chart effective 1.11.2016; Accounting, Tax and Treasury Organisation Chart effective April 2016; and Corporation, Tax, Transfer Pricing and GST Organisational Chart effective October 2016. [3] My reasons for dismissing the application are stated below. The background facts [4] The company is in the business of manufacturing electronic components and semiconductor based lighting products also known as LEDs. The defendant was an employee of the plaintiff company from 14.10.1991 as an executive assistant until her termination on the ground of redundancy on 30.9.2015. The last position she held in the company was from January 2010 until September 2015 was as the Treasury & Commercial Administration Director. Her job scope concerned certain finance and administration matters of the company. 6 [5] The defendant challenged the termination as unlawful dismissal under the guise of redundancy at the Industrial Court. To establish her case the defendant had on 6.3.2017 and 5.7.2017 filed at the said court and served the company’s solicitors her bundle of documents titled “Claimant’s Bundle of Documents” and the “Claimant’s Supplementary Bundle of Documents”. The impugned documents make up part of these two bundles of documents. [6] On 29.5.2019 the Industrial Court handed down its award dismissing the defendant’s claim. Undeterred, the defendant applied for leave to commence judicial review proceedings to quash the said award vide Judicial Review Application PA-25-51- 08/2019. Leave was granted on 19.12.2019. The affidavit verifying facts in support of the application contain the abovementioned bundle of documents which include the impugned documents. [7] While the judicial review proceedings were pending the plaintiff on 17.3.2020 filed the instant action for a declaration that it is the rightful owner of the impugned documents, damages, prohibitory and mandatory injunctions. The action was premised 7 on “breach of confidence” where it was alleged that the defendant had breached the ‘Employee Confidentiality & Non-Compete Agreement’ dated 27.7.2010 (“the confidentiality agreement”). The instant application [8] On 12.5.2020, ie almost 3 years after the impugned documents were used by the defendant in the Industrial Court, the company filed the instant application seeking the abovementioned interim prohibitory and mandatory injunctions. [9] In the affidavit in support thereof, the managing director of the company affirmed that it was discovered “upon the termination” and “upon the commencement of the Industrial Court case” that the defendant did not return all confidential documents and somehow after her departure managed to obtain further confidential documents of the company ie the impugned documents. (see paragraphs 18, 19 and 20 of the affidavit in support) [10] It was alleged that the impugned documents had not been made available to the public domain when the same were used 8 for the Industrial Court case and that the defendant knew that the documents were confidential and were never intended to be disclosed to the public. The managing director further affirmed that the impugned documents have the necessary quality of confidence and fell within the scope of the confidentiality agreement. (see paragraph 21 of the affidavit in support) [11] The managing director went on to alleged that the disclosure of the impugned documents had put the company in a position of vulnerability with its competitors on account of the documents containing information on internal administrative processes, remuneration packages, profit and loss figures and medical data of its employees. It was on this basis that the managing director averred that the interim injunctions were imperative to preserve the confidential nature of the documents and to ensure that that the documents do not leak to the public domain. (see paragraphs 23 and 24 of the affidavit in support) [12] The managing director said that he believed that the defendant may release the impugned documents to competitors as she knew that the information in the documents was vital 9 information of the company. (see paragraphs 25 and 26 of the affidavits in support). [13] In opposing the application the defendant denied executing the confidentiality agreement, or alternatively, that the agreement was not valid for want of fresh consideration. The defendant contended that (i) the impugned documents did not fall within the scope of the confidentiality agreement and/or the information contained therein were not confidential or trade secrets, (ii) the impugned documents either contained stale information or information that had been openly disseminated to employees of the company and easily obtainable by the public, (iii) that there was an inordinate delay in filing the instant application and that the company is estopped from claiming that the impugned documents are confidential. Decision of the court The governing principles [14] The granting of an interim or interlocutory injunction is a discretionary remedy. The principles applied in this country are 10 those established by the House of Lords in American Cyanamid v Ethicon [1975] 1 All ER 504. The often quoted case of Keet Gerald Francis Noel John v Mohd Noor bin Abdullah [1995] 1 CLJ 293 held that the correct approach to be adopted is that stated by Hashim Yeop A Sani J in Mohamed Zainuddin v Yap Chai Seng [1978] 1 MLJ 40 (which was upheld on appeal by the Federal Court) in the following words: The first question to be asked is simply whether there was a serious question to be tried in the sense that the claim was not frivolous or vexatious. Secondly, if the plaintiffs were to succeed at the trial, whether they would be adequately compensated for the interim continuance of the defendant’s activities. Conversely is the question that if the defendants were to succeed at the trial, whether they would be adequately compensated for the interim restriction on their activities which the grant of an interlocutory injunction would have imposed. The Judge then considers the balance of convenience, and if the relevant factors were evenly balanced the court should grant an interlocutory injunction which 11 would maintain the status quo. It is said that at that stage the Court is not justified, in embarking upon anything resembling a trial of the action upon conflicting affidavits. Serious question to be tried [15] In American Cyanamid Lord Diplock (at p 510) stated the test to determine whether an application for the remedy is frivolous and vexatious in the following words: So unless the material available to the Court at the hearing of the application for an interlocutory injunction fails to disclose that the plaintiff has any real prospect of succeeding in his claim for a permanent injunction at the trial, the Court should go on to consider whether the convenience lies in favour of granting or refusing the interlocutory relief that is sought. [16] Thus, if the application is frivolous and vexatious the inquiry ends and the relief will be refused. Only if there is a bona fide 12 serious question to be tried does the inquiry proceed to the balance of convenience stage. [17] It is not in dispute that the defendant had in her possession the impugned documents and had used the documents for the Industrial Court case. The company contended that the impugned documents were used by the defendant in breach of the terms stated in the confidential agreement. The defendant contended otherwise and showed in her affidavits filed in opposition why each of the impugned documents do not fall within meaning of the confidential agreement. Thus, the issue raised on the joinder is whether the impugned documents have the necessary quality of confidence and falls within the scope of the confidential agreement. [18] The question to be answered at this stage is whether on the material placed before me the company has any real prospect of succeeding in its claim for permanent injunction in the terms stated in the notice of application? To answer this question the relevant terms of the confidentiality agreement must be looked at. There are two principal parts. The first is the ‘interpretation’ 13 clause which defines confidential information to mean non-public information identified as follows:

technical and non-technical information including patents, copyright, trade secrets and proprietary information, techniques … bills of material, customer details related to business of OSRAM, and the current future and proposed products and services of OSRAM;

(ii) information concerning research, experimental work, development, design details and specifications of engineering;

(iii) information relating to payroll, remuneration and benefits enjoyed by OSRAM employees; and

(iv) all notes, memoranda, analyses, or other writings … using or referring to any information of OSRAM and/or such 3rd parties where OSRAM bears a duty of confidentiality to and is not generally known to the public through legitimate origins. 14 [19] The second is the ‘confidentiality’ clause which states as follows: Except where expressly authorized by OSRAM, the Employee agrees that he/she shall not, directly or indirectly, make use of, distribute or in any way disclose any Confidential Information to any 3rd party, except in connection with the performance of the Employee’s duties with OSRAM and for the benefit of OSRAM and will not breach such duty of confidentiality at any time during or subsequent to the Employee’s employment with OSRAM. [20] I am satisfied that some but not all of the documents fall within the meaning of confidential information. The documents relating to finance, payroll and remuneration do fall within the definition but definitely not the organisation charts. But whether the confidential information in the document is stale information or available to the public or have acquired the status of public documents are questions for the trial. I certainly cannot decide such matters which are contested on conflicting affidavits. 15 [21] In my view, having regard to the pleadings and the conflicting affidavits, there are serious issues to be tried: the first is whether the confidentiality agreement is a valid agreement, the second is whether the documents, the subject matter of the action, are confidential documents and if they are confidential documents whether the said documents fell within the scope of the confidential agreement, and the third is whether the documents have acquired the status of public documents and/or already in the public domain. Faced with such serious questions the application is certainly not frivolous and vexatious. Balance of convenience [22] On determining that there are serious issues to be tried I proceeded to the next stage of the inquiry which is to consider where the justice of the case lies. According to Keet Gerald Francis in making this assessment I have to consider all relevant matters which include the practical realities of the case and weigh the harm that the injunction would produce by its grant against the harm that would result from its refusal and arrive at the conclusion as to who would to suffer greater injustice. 16 [23] The crucial aspect of this stage of the inquiry is to identify the harm raised by the parties which the granting or refusal of the relief would produce. The company states that there is a clear danger that the documents may fall into the wrong hands or be used for some other detrimental purpose contingent on the fact of the unauthorised use of the documents in the Industrial Court case. The managing director merely said that the company is put in a position of vulnerability with its competitors as he believed that the documents would be disseminated by the defendant thereby causing the company to lose its competitive advantage edge. The harm that is envisaged from the above fact is purely financial. [24] The defendant says that she would suffer harm because the company intends to scuttle her case in the judicial review proceedings where she had used the documents for making her case of unlawful dismissal. [25] In my view, having weighed the material placed before me I find that the harm envisaged has not happened as it is based on the fear that the defendant will disseminate the documents to third parties which would in turn cause harm to the company. The 17 harm envisaged is purely speculative and based on a bare belief that suddenly arose years after the impugned documents were relied by the defendant at the hearing of the Industrial Court case. There are no facts to show that the defendant has done anything apart from using the documents to prove her case and which documents were also relied by the company to resist the defendant’s claim of ‘false’ redundancy. [26] Thus, on the facts of this case the company was asking me to weigh harm that it through its managing director feels will arise based on a bare belief that the defendant will take action to harm the company by disseminating the documents to its competitors 5 years after the termination of her employment. [27] Having considered the matter I am of the view that the balance of convenience does not weigh in favour of the company as it would not be in the interest of justice to grant the relief based on the managing director’s bare belief or allegation not supported by evidence. Judicial discretion 18 [28] The final stage of the inquiry according to Keet Gerald Francis entails determining whether the court’s judicial discretion ought to be exercised in favour of allowing or refusing the interim injunction. The remedy sought is discretionary and the court is entitled to take into account all discretionary considerations, such as delay in the making of the application or the existence of any adequate alternative remedy that would satisfy the plaintiff’s equity, such as an award of monetary compensation in the event that he succeeds in establishing his claim at the trial. Any question going to the public interest may, and in appropriate cases should, be taken into account. Delay in making the instant application [29] I found that the defendant made a very forceful case of an inordinate delay in making the instant application. The company was aware that the defendant had in her possession the impugned documents since 5.7.2017 and only on 12.5.2020 took out the instant application. [30] The principles in relation to delay in taking out an application for interim proceedings for injunctive relief is authoritatively 19 stated by the Supreme Court in Alor Janggus Soon Seng Trading Sdn Bhd & Ors v Sey Hoe Sdn Bhd &Ors [1995] 1 CLJ 461 as follows: As with all equitable reliefs, delay is a relevant factor in interlocutory proceedings for injunctive relief. … The essence of an application for interlocutory injunction is that it should be made with promptitude. … It must be pointed out, however, that not all delay is bad delay or, to be precise, inexcusable, as it may be explained or inevitable. … Salmon LJ in Allen v Sir Alfred McAlpine & Sons Ltd [1968] 2 QB 229 set out at page 268 three factors which are relevant in considering whether delay should be allowed as a ground to refuse an interlocutory injunction.… In order for such an application to succeed, the defendant must show:

That there has been inordinate delay. It would be highly undesirable and indeed impossible to attempt to lay down a tariff … What is or is not inordinate delay must depend upon the facts of each particular case. … 20

That this inordinate delay is inexcusable. As a rule, until a credible excuse is made out, the natural inference would be that it is inexcusable.

That the defendants are likely to be seriously prejudiced by the delay. This may be prejudice at the trial of the issue between themselves and the plaintiff, or between each other, or between themselves and the third parties. In addition to any inference that may properly be drawn from the delay itself, prejudice can sometimes be directly proved. As a rule, the longer the delay, the greater the likelihood of serious prejudice at the trial. It must also be emphasised here what is important to consider is not so much the length of the delay but whether the delay has in some ways made it unjust to grant the injunction claimed. [31] I found that the defendant made a very forceful case of an inordinate delay on part of the company in taking out the instant application and therefore refusing interlocutory injunctive relief 21 that is being sought. The facts of the case show that the delay of almost 3 years in taking out the application is inordinate and that the company had no explanation for the delay. The company merely contended that the defendant is not prejudiced by the delay. I disagree. There is certainly prejudice at the trial of the various issues especially the confidentiality of the documents and the information therein. The company relied on the documents at the Industrial Court and was successful to show redundancy. The company is only now claiming that the documents contain confidential information and should not have been disclosed. In my view the time for objection on the confidentiality of the documents was at the Industrial Court and that ship has long sailed. On the facts and circumstances of this case, I am of the view that it is unjust to grant the injunctive relief sought by the company. Damages is an adequate remedy [32] In my view, after considering the circumstances of the instant case, damages is an adequate remedy and on this factor alone interlocutory injunctive relief should not be granted. The alleged harm that is envisaged by the company is financial loss. It is trite that an 22 interim injunction would not be granted in cases where compensation or damages is an adequate remedy. In London & Blackwell Railway Co v Cross [1886] 3 Ch D 354 Lindley LJ said that, “The very first principle of injunction law is that you do not obtain injunctions for actionable wrongs for which damages are the proper remedy”. The Court of Appeal decisions in Sabil Mulia (M) Sdn Bhd v Pengarah Hospital Tengku Ampuan Rahimah & Ors [2005] 2 CLJ 122 and Inter Heritage (M) Sdn Bhd v ASA Sports Sdn Bhd [2009] 2 CLJ 221 are examples of the application of this principle. [33] For the above reasons I dismissed the 1st and 2nd interim prohibitory injunction sought by the company. Interim mandatory injunction [34] To recap the interim mandatory injunction sought was for an order compelling the defendant to disclose any other documents apart from the documents which belongs to the company and/or created by the company which are currently, was or will be in the possession of the defendant within 7 days from the date of the order hereof, or from dealing, using, utilising, divulging, 23 communicating and/or disclosing to any person or body the confidential documents and/or the contents thereof. [35] In considering this relief I was mindful of the principle that the courts as a matter of caution have insisted on a high degree of assurance that a plaintiff would be able to establish his right at a trial. It is only in exceptional cases where the court feels assured that there is an unusually strong and clear case that the mandatory injunction would probably be granted at the trial that the court would grant the remedy at an interlocutory stage of the proceedings. (see Tinta Press Sdn Bhd v Bank Islam Malaysia Bhd [1987] CLJ Rep 396 and Timbermaster Timber Complex (Sanah) Sdn Bhd v Top Origin Sdn Bhd [2002] 1 CLJ 566) [36] Apart from the fact that the defendant had in her possession or could obtain the documents which were necessary for her to prove her case of no redundancy there was merely suspicion or speculation that the defendant had any other document apart from the impugned documents. The company’s managing director merely relied on the fact that the defendant had in her possession the documents produced at the Industrial Court some of which were obtained by her after her termination. 24 [37] I am satisfied that the instant case is not one such exceptional or rare case which justifies the granting of the interim mandatory injunction. The company’s case is based purely on speculation and bare allegations being made 5 years after the defendant had left the company. I am not left with the assured feeling that there is an unusually strong and clear case that the mandatory injunction would probably be granted at the trial. Instead, I am left with the opposite feeling. [38] For the above reasons I dismissed the interim mandatory injunction sought by the company. …………………Sgd……………….. Amarjeet Singh Serjit Singh Judicial Commissioner High Court of Malaya at Penang Dated: 12th November 2020 Counsel for the Plaintiff: Taneswaran A/L Palaraman [TANES, KHOO & PAULRAJ] Counsel for the Defendant: 25 Pravin Kaur Jessy with Mohd Akmal [JESSY & ASSOC.] Cases referred to:

Alor Janggus Soon Seng Trading Sdn Bhd & Ors v Sey Hoe Sdn Bhd & Ors [1995] 1 CLJ 461.

London & Blackwell Railway Co v Cross [1886] 3 Ch D 354.

Sabil Mulia (M) Sdn Bhd v Pengarah Hospital Tengku Ampuan Rahimah & Ors [2005] 2 CLJ 122.

Inter Heritage (M) Sdn Bhd v ASA Sports Sdn Bhd [2009] 2 CLJ

221.

Tinta Press Sdn Bhd v Bank Islam Malaysia Bhd [1987] CLJ Rep 396.

Timbermaster Timber Complex (Sanah) Sdn Bhd v Top Origin Sdn Bhd [2002] 1 CLJ 566.