Southern Cable Sdn. Bhd. v Magnum Cable Sdn. Bhd. (WA-22IP-56-07/2024)

MAGNUM CABLE SDN. BHD. [Company No.: 200701023062 (781077-V)]

SHIFONG ALLOY WIRE SDN. BHD. [Company No.: 200701001475 (759473-M)]

TUI KIM CHUAN [NRIC No.: 550325-05-5445]

TUI KAI SIANG [NRIC No.: 880723-04-5551]

WONG ZHI MING [NRIC No.: 941128-04-5481]

PROTECH BUILDERS SDN. BHD. [Company No.: 200101006831 (542587-T)]

WONG CHAN WAH [NRIC No.: 610911-02-5873] ... DEFENDANTS GROUNDS OF JUDGMENT (Enclosure.1) A.

This case concerns electric cables. Though seldom seen, once a building is complete, cables are its lifeblood; the hidden arteries and veins through which power flows to every room, every machine, and every light. It is precisely because they lie concealed within walls and ceilings that their integrity matters so greatly. And it is precisely that integrity which the Plaintiff says was compromised by the conduct of the Defendants in this action.

The Plaintiff, Southern Cable Sdn. Bhd., a manufacturer and supplier of electric cables and wires bearing the registered "SOUTHERN CABLE" marks, sued seven Defendants on four distinct causes of action, namely: a. trade mark infringement under the Trademarks Act 2019 ("TMA 2019"); b. the tort of passing off; c. unlawful interference with the Plaintiff's trade and business; and S/N E4bsCq5bgEi3W85mOxrXzg d. conspiracy to injure the Plaintiff by unlawful means.

The Plaintiff further sought to lift and/or pierce the corporate veil of the 1st, 2nd and 6th Defendants (collectively "the Corporate Defendants") so as to hold the 3rd, 4th, 5th and 7th Defendants (collectively "the Individual Defendants") personally liable jointly with the Corporate Defendants for the same causes of action.

The trial was conducted over six days, namely from 5.1.2026 to 9.1.2026, and on 19.1.2026. The Plaintiff called two witnesses, while the Defendants called four witnesses. B.

The relevant particulars relating to the parties are set out as follows: Party Description Plaintiff Manufacturer/supplier of cables bearing the SOUTHERN CABLE Marks; subsidiary of Southern Cable Group Berhad (incorporated 1993) 1st Defendant (D1) Magnum Cable Sdn. Bhd. — manufacturer/trader of cables and wires (incorporated 2007) 2nd Defendant (D2) Shifong Alloy Wire Sdn. Bhd. — manufacturer/trader of cables and wires; 100% shareholder of D1 S/N E4bsCq5bgEi3W85mOxrXzg 3rd Defendant (D3) Tui Kim Chuan — Managing Director of D1 and D2 4th Defendant (D4) Tui Kai Siang — Assistant General Manager / Business Development Manager of D1 5th Defendant (D5) Wong Zhi Ming — IT Support Executive of D6; director of D1 and D2; son of D7 6th Defendant (D6) Protech Builders Sdn. Bhd. — electrical/mechanical engineering company (incorporated 2001) 7th Defendant (D7) Wong Chan Wah — Managing Director and 99% shareholder of D6

The witnesses who testified for the Plaintiff and the Defendants are as follows: Plaintiff i. PW1 — Lim Chee Hau (John) ii. PW2 — Mohd Muizz bin Zainal Abidin Defendants i. DW1 — Wong Zhi Ming (D5) ii. DW2 — Tui Kai Siang (D4) iii. DW3 — Wong Chan Wah (D7) iv. DW4 — Tui Kim Chuan (D3) S/N E4bsCq5bgEi3W85mOxrXzg C.

The Plaintiff, Southern Cable Sdn. Bhd., was incorporated in 1993 and is engaged in the business of manufacturing, exporting, supplying, distributing, and selling electric cables and wires in Malaysia and internationally. It is a subsidiary of Southern Cable Group Berhad, a public-listed company.

The Plaintiff is the registered proprietor of the "SOUTHERN CABLE" trademarks, including a word mark (Registration No. 08013082, registered 3 July 2008) and a word and figurative mark (Registration No. 2017066582, registered 29 August 2017), both in Class 9 for electrical cables and wires and related apparatus. Trademark Application No. Date of registration Type 08013082 03.07.2008 Word 2017066582 29.08.2017 Word & Figurative (collectively, “the Southern Cable Marks”).

The Southern Cable Marks are registered in Class 9 with the following specification: S/N E4bsCq5bgEi3W85mOxrXzg APPARATUS AND INSTRUMENTS FOR CONDUCTING, SWITCHING, TRANSFORMING, ACCUMULATING, REGULATING, OR CONTROLLING ELECTRICITY; APPARATUS FOR RECORDING, TRANSMISSION OR REPRODUCTION OF SOUND OR IMAGES; ELECTRIC CABLES AND WIRES; ALL INCLUDED IN CLASS 9.

The 1st Defendant, Magnum Cable Sdn. Bhd., and the 2nd Defendant, Shifong Alloy Wire Sdn. Bhd., are related companies incorporated in 2007. Both companies are engaged in the manufacturing and trading of cables and wires. The corporate structure shows that the 2nd Defendant is the sole shareholder of the 1st Defendant. Both companies also share the same directors, namely the 3rd Defendant, Tui Kim Chuan, who is the Managing Director, the 4th Defendant, Tui Kai Siang, and the 5th Defendant, Wong Zhi Ming.

The 6th Defendant, Protech Builders Sdn. Bhd., is an engineering company incorporated in 2001, specializing in electrical and mechanical projects. It does not manufacture cables but sources them from external suppliers for installation at project sites. The 7th Defendant Wong Chan Wah is the Managing Director and 99% shareholder of the 6th Defendant. The 5th Defendant Wong Zhi Ming is also an IT Support Executive of the 6th Defendant and the son of the 7th Defendant.

The Plaintiff had an established customer relationship with the 6th Defendant, having supplied cables for various projects including the Sultan Ismail Petra Airport project in Kota Bharu, Kelantan ("the S/N E4bsCq5bgEi3W85mOxrXzg Kelantan Airport Project"). The Plaintiff had no direct business relationship with the 1st or 2nd Defendants.

The critical events giving rise to this action occurred as follows. In or around November 2023, the Plaintiff obtained information suggesting that counterfeit products bearing the Southern Cable Marks were being manufactured at the premises of the 1st and 2nd Defendants. The Plaintiff lodged a complaint with the Ministry of Domestic Trade and Cost of Living ("KPDN") and obtained a Registrar's verification pursuant to Section 112(3) of the TMA 2019.

On 18 April 2024, KPDN conducted a raid at the premises of the 1st and 2nd Defendants, with the Plaintiff's representatives present. During the raid, KPDN seized various items including two (2) electric cables in black and orange colours bearing markings identical or similar to the Southern Cable Marks. Additional documents and materials were also discovered and documented. Subsequently, the 1st and 2nd Defendants were compounded by KPDN in the sums of RM50,000.00 and RM1,000.00 respectively, which amounts have been paid.

Following the raid, the Plaintiff commenced this action on 22 July 2024. D.

The issues that fall for determination are as follows:

Whether D1 and D2 have committed trademark infringement under section 54(1) of the TMA 2019, as it has used signs identical to the Southern Cable Marks in relation to goods identical to those for which the Southern Cable Marks are registered;

Whether D1, D2, and D6 have committed trademark infringement under section 54(2)(b) of the TMA 2019, as it has used signs similar to the Southern Cable Marks in relation to goods identical to those for which the Southern Cable Marks are registered, thereby giving rise to a likelihood of confusion on the part of the public;

Whether D1, D2, and D6 have also committed the tort of passing off by misrepresenting the cables produced by D1 and

Whether D1, D2, and D6 have unlawfully interfered with the Plaintiff’s trade;

Whether D1, D2, and D6 is liable for conspiracy to injure the Plaintiff by unlawful means; and

Whether in the circumstances of this case, it is in the interest of justice and there are special circumstances to pierce the corporate veils of D1, D2, and D6 to hold D3, D4, D5 and D7 accountable.

I shall address each of the issues in turn. S/N E4bsCq5bgEi3W85mOxrXzg ISSUE 1: Whether D1 and D2 have committed trademark infringement under section 54(1) of the TMA 2019

The legal framework for trade mark infringement is set out in sections 48, 52(c)(i) and 54 of the TMA 2019. Section 48 confers upon the registered proprietor the exclusive right to use the mark and to authorise others to do so. It provides as follows: Rights conferred by registered trademark

(1) The registered proprietor of trademark has the exclusive rights—

to use the trademark; and

to authorize other persons to use the trademark, in relation to the goods or services for which the trademark is registered.

The registered proprietor has the right to obtain relief for infringement of his trademark.

The acts amounting to infringement of a trademark are set out in section 54 and references to the infringement of a registered trademark shall be construed accordingly. (…)

Section 54 of the TMA 2019 then sets out the acts amounting to infringement of a trademark: Acts amounting to infringement of registered trademark

(1) A person infringes a registered trademark if he uses a sign which is identical with the trademark in S/N E4bsCq5bgEi3W85mOxrXzg relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor.

A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign—

that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or

that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public. (…)

In the present case, the Plaintiff contends that D1, D2 and D6 have contravened sections 54(1) of the TMA 2019 and have produced counterfeits of the Plaintiff's products.

I have had regard to the recent decision of the High Court in The Polo/Lauren Company LP v RCB Marketing Sdn Bhd [2026] 2 CLJ 441, in which the elements necessary to establish infringement under section 54(1) of the TMA 2019 were enunciated as follows: [13] The legal test applicable to identify infringement under s 54(1) of the TMA 2019 is well-articulated in the leading treatise Law and Practice of Intellectual Property Malaysia (Sweet & Maxwell) at p 291, which observes that s54(1) of the TMA 2019 contemplates infringement where two elements S/N E4bsCq5bgEi3W85mOxrXzg coincide: (a) the use of a sign which is identical to a registered trademark, and (b) the use of that sign in relation to goods or services which are identical to those for which the mark is registered. This interpretation is consistent with Kerly’s Law of Trade Marks and Trade Names (14th Ed) and cited in Louis Vuitton Malletier v City Chain Stores (S) Pte Ltd and another matter [2009] SCD 29; [2009] 2 SLR(R) 684, which emphasises that a sign will be identical where it reproduces, without modification or addition, all the elements constituting the mark or contains only differences so insignificant that they go unnoticed by the average consumer. … [27] On the totality of the evidence, I am satisfied that the plaintiff has discharged its burden under s. 54(1) of the TMA 2019. The elements are clearly established:

the defendant has used a sign identical to the plaintiff's registered "POLO" word mark;

(ii) such use occurred in the course of trade, without authorisation from the plaintiff; and

(iii) the sign was applied to goods - namely, clothing - that are identical to those covered by the plaintiff's registration in Class 25. [Underlined Emphasis Added]

It is to be emphasised that, under section 54(1) of the TMA 2019, proof of confusion or deception is not required. As was further held in The Polo/Lauren Company LP (supra): [14] Section 54(1) of the TMA 2019 governs identity infringement and encapsulates the essence of S/N E4bsCq5bgEi3W85mOxrXzg trademark protection: to safeguard the proprietor's exclusive right to use the mark in relation to the goods or services for which it is registered, and to prohibit others from appropriating that mark in the marketplace. Its object is to confer upon the proprietor an absolute monopoly over the use of an identical sign in respect of identical goods, dispensing with the need to prove confusion or deception. [Emphasis Mine]

Section 54(1) of the TMA 2019 governs identity infringement and encapsulates the essence of trademark protection which is to safeguard the proprietor's exclusive right to use the mark in relation to the goods or services for which it is registered, and to prohibit others from appropriating that mark in the marketplace. Its object is to confer upon the proprietor an absolute monopoly over the use of an identical sign in respect of identical goods, dispensing with the need to prove confusion or deception.

It follows that, to succeed under section 54(1) of the TMA 2019, the Plaintiff must establish that: i. the Defendants have used signs identical to the Southern Cable Marks; ii. such use occurred in the course of trade without the Plaintiff's authorisation; and iii. the identical signs were used on goods identical to those covered by the Southern Cable Marks in Class 9.

I now turn to consider whether each of these elements has been made out. i. Whether D1 and D2 have used signs identical to the

As stated in The Polo/Lauren Company LP (supra), a sign will be regarded as identical where it reproduces, without modification or addition, all the elements constituting the mark, or contains only differences so insignificant that they would go unnoticed by the average consumer.

As to what constitutes the use of a sign, section 54(3) of the TMA 2019 provides: 3) For the purposes of this section, a person uses a sign if he-

applies it to goods or their packaging;

(ii) offers or exposes goods for sale under the sign;

(iii) puts goods on the market under the sign;

(iv) stocks goods under the sign for the purpose of offering or exposing them for sale or of putting them on the market;

offers or supplies services under the sign;

(vi) imports or exports goods under the sign;

(vii) uses the sign on an invoice, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or

(viii) uses the sign in advertising. S/N E4bsCq5bgEi3W85mOxrXzg

I am satisfied that, prior to the KPDN Raid, there exists documentary evidence procured by the Plaintiff demonstrating that signs identical to the Southern Cable Marks had been applied to cables and wooden cable drums at the premises of D1 and D2. A comparison between the Southern Cable Marks and the signs found upon the items at the said premises is set out below: The Southern Cable Marks Items bearing signs identical to the Southern Cable Marks found at D1 and D2’s premises before KPDN

Subsequently, in the course of the KPDN Raid, further items were discovered at the premises of D1 and D2 which likewise bore signs identical to the Southern Cable Marks: The Southern Cable Marks Items bearing signs identical to the Southern Cable Marks found at D1 and D2’s premises during

Upon a consideration of the foregoing, I find that there can be no question that: a) the items recovered at the premises of D1 and D2, both before and during the KPDN Raid (the "Offending Goods"), bear signs that are identical to the Southern Cable Marks. Not only do the S/N E4bsCq5bgEi3W85mOxrXzg signs reproduce all of the constituent elements of the Southern Cable Marks namely, the words and the lightning-like device but any differences between them are immaterial and would escape the notice of the average consumer; and b) D1 and D2 have used the identical signs within the meaning of section 54(3) of the TMA 2019 by applying them to their goods and packaging, that is to say, the cables and wooden cable drums.

Accordingly, I am satisfied that, insofar as the requirement under section 54(1) of the TMA 2019, D1 and D2 have used signs identical to the Southern Cable Marks. ii. Whether such use occurred in the course of trade without the Plaintiff's authorisation

At the outset, it is not in dispute that the Plaintiff at no material time conferred upon the Defendants any form of authorisation or consent to use the Southern Cable Marks. This is borne out by the admissions of the Defendants' own witnesses.

D3 said during cross-examination that: GJS : Ok. And you know the Plaintiff had not given consent to the Defendants to use their mark on the products, isn't it? TKC : Agree.

D7 also testified during cross-examination that: S/N E4bsCq5bgEi3W85mOxrXzg GJS : You're ready, ok. So, you said in desperation to fulfil the contractual obligations for the project, you ordered cables from D1 with a request that the word “Southern” be printed onto the cables and delivered to the Kota Bharu Kelantan Airport site, correct? WCW : Agree. GJS : So, you can confirm that prior to making the request to D1, you and D3, you and the other Defendants, had not obtained the Plaintiff's consent to use the name Southern Cable? Correct? WCW : Correct, yes.

The only remaining question, therefore, is whether the use of the Offending Goods was "in the course of trade" within the meaning of section 54(1) of the TMA 2019. I am satisfied that this question, too, must be answered in the affirmative.

In this regard, I am guided by the decision in Philip Morris Brands Sarl v Goodness for Import and Export & Ors [2018] 7 MLJ 350, in which the High Court expounded the meaning of the phrase "in the course of trade" in section 35 of the Trade Marks Act 1976 (which is in pari materia with section 54 of the TMA 2019) as follows: [37] I accept the above cases and the opinion of Associate Professor Tay regarding the meaning of the phrase ‘in the course of trade’ in s 38(1) of the TMA. There is use of a mark on goods ‘in the course of trade’ under s 38(1)(a) of the TMA when:

the mark is used on goods in respect of a:

business conducted for profit;

(ii) business of a specified nature; or

(iii) transaction with a person for a thing (please see the Federal Court’s judgment in Mesuma Sports); and

the mark is used on goods before the ultimate delivery or sale of goods to the customer — please see Lord MacMillan’s judgment in Aristoc, Sony Corporation and Associate Professor Tay’s opinion. The phrase ‘in the course of trade’ in s 38(1) of the TMA is not confined to:

manufacture of goods in Malaysia;

import of goods into Malaysia;

offer to sell goods in Malaysia;

sale of goods in Malaysia; or

marketing, promotion or advertisement of goods in Malaysia.

Applying the principles enunciated in Philip Morris Brands Sarl (supra) to the facts before me, I am satisfied that the use of the Offending Goods by D1 and D2 plainly falls within the meaning of "in the course of trade".

The evidence establishes that the signs identical to the Southern Cable Marks were applied to cables and wooden cable drums in the context of a commercial enterprise conducted for profit, and were so applied prior to the ultimate delivery or sale of the goods to the customer. Indeed, the testimony of D7 reveals that the cables bearing the offending signs were ordered from D1 and intended for delivery to the Kota Bharu Kelantan Airport project site in fulfilment of a contractual obligation. This is, in my judgment, the very S/N E4bsCq5bgEi3W85mOxrXzg paradigm of use "in the course of trade", for the goods were destined to be supplied to a customer in the course of a commercial transaction. Thus, I find that both limbs of the test laid down in Philip Morris Brands Sarl (supra) are accordingly satisfied.

I therefore find that the second element under section 54(1) of the TMA 2019 namely, that the use occurred in the course of trade without the Plaintiff's authorisation has been duly established against D1 and D2. iii. Whether the identical signs were used on goods identical to those covered by the Southern Cable Marks in Class 9

I turn finally to the third element, that is, whether the Offending Goods are identical to those in respect of which the Southern Cable Marks are registered in Class 9.

The Southern Cable Marks are registered in Class 9 in respect of, inter alia, electric and electrical cables and wires. The Offending Goods recovered at the premises of D1 and D2, both before and during the KPDN Raid, consist of cables and wooden cable drums upon which the offending signs were applied. There can, in my view, be no doubt that the cables so found are identical to the very goods for which the Southern Cable Marks stand registered in Class 9. The element of identity of goods is, accordingly, made out.

Having considered the totality of the evidence, I am satisfied that the Plaintiff has discharged its burden of proof under section 54(1) of S/N E4bsCq5bgEi3W85mOxrXzg the TMA 2019 as against D1 and D2. Each of the three constituent elements has been established, namely:

D1 and D2 have used signs identical to the Southern Cable

such use occurred in the course of trade and without the authorisation or consent of the Plaintiff; and

the identical signs were applied to goods namely, cables and wooden cable drums which are identical to those covered by the Southern Cable Marks in Class 9.

It bears reiterating that, as held in The Polo/Lauren Company LP (supra), infringement under section 54(1) confers upon the proprietor an absolute monopoly over the use of an identical sign in respect of identical goods, and dispenses with any requirement to prove confusion or deception. I therefore find and hold that D1 and D2 have infringed the Southern Cable Marks within the meaning of section 54(1) of the TMA 2019. ISSUE 2: Whether D1, D2, and D6 have committed trademark infringement under section 54(2)(b) of the TMA 2019

The Plaintiff contended that, beyond the infringement under section 54(1), the 1st, 2nd and 6th Defendants have also contravened section 54(2)(b) of the TMA 2019. I now turn to consider this submission.

The elements of section 54(2)(b) of the TMA 2019 have been set out in The Polo/Lauren Company LP (supra), in the following manner: [59] Drawing these threads together, I am satisfied that the plaintiff has established all four elements required under s. 54(2)(b) TMA 2019:

the marks are similar in all material respects;

(ii) the goods are identical and marketed in the same class;

(iii) the defendant's use of the mark is in the course of trade and without consent; and there exists a likelihood of confusion among the relevant section of the public.

Section 54(2)(b) provides that a person infringes a registered trade mark if, without consent, he uses in the course of trade a sign that is similar to the trademark and is used in relation to goods identical with or similar to those for which the trade mark is registered, resulting in a likelihood of confusion on the part of the public. The distinguishing feature of this provision, as against section 54(1), is the additional requirement of a "likelihood of confusion." In assessing this element, section 9(2) of the TMA 2019 directs the Court to take into account all relevant circumstances, including whether the use is likely to be associated with the registered trademark.

I have considered the Registrar's Verification dated 19.02.2024. Upon examination, I am satisfied that: S/N E4bsCq5bgEi3W85mOxrXzg a) The Registrar has made a comparison between the mark with the signs on the Offending Goods found at D1 and D2’s premises before the KPDN Raid; and b) The Registrar has verified that the signs on the Offending Goods were confusingly similar or would likely to be mistaken as the mark.

I accept that the Registrar's Verification constitutes cogent evidence that D1 and D2 employed a mark similar to the mark, giving rise to a likelihood of confusion on the part of the public. This conclusion is fortified by two considerations. First, by operation of section 112(4) of the TMA 2019, the Registrar's Verification stands as prima facie evidence in any proceedings before this Court. Secondly, the Defendants have adduced no evidence to displace or rebut that prima facie position.

The same observations apply with equal force to the signs identified on the Offending Goods seized during the KPDN Raid. Among the items recovered were further cables bearing the words "SOUTHERN CABLE," which I find, on the strength of the Registrar's Verification, to be similar to the mark.

Accordingly, in respect of D1 and D2, I am satisfied that the requirement of use of similar signs, in the course of trade and upon S/N E4bsCq5bgEi3W85mOxrXzg identical goods, under section 54(2)(b) of the TMA 2019 has been made out.

I turn next to D6. I am satisfied that D6 has likewise used a sign similar to the SOUTHERN CABLE Marks in contravention of section 54(2)(b) of the TMA 2019. In particular, I make the following findings: a) The four delivery orders issued by D6 dated 04.11.2023 and 11.11.2023 in connection with the Kelantan Airport Project bear the word "SOUTHERN". b) The evidence establishes that D6 deployed the word "SOUTHERN" to convey the impression that the cables it delivered had been manufactured by the Plaintiff, when in truth they were counterfeit products manufactured by D1 and D2. This was candidly conceded by D7 during trial: GJS : And the brand if you could see under the DO, I’ll just use an example at page 146 also can. Yes. Can you see under brand, Southern, can you see that? … GJS : I see. Ok, no problem. Ok, so can you confirm that these are cables, just now you said these are the counterfeit cables and these are the cables that you ordered from D1, isn’t it, for the Kelantan Airport Project? WCW : Yes, correct. S/N E4bsCq5bgEi3W85mOxrXzg GJS : Yes. And you can confirm these are not manufactured by Southern Cable, right? GJS : Yes, agree. … GJS : So do you agree with me, not only did you ask D1 to manufacture counterfeit goods, you have also created documents with false information to give the impression that the products are genuine Southern Cable products, do you agree? WCW : Agree. c) This evidence is further corroborated by the testimony of D3 under cross-examination: GJS : And can you confirm you know that the Plaintiff, or Southern Cable, is also in the same business of manufacturing cables and wires, right? TKC : Yes, I know. GJS : And do you agree that there are no other companies in Malaysia that has the same or a similar name as the Plaintiff in the cable industry, right? TKC : Agree.

Upon a consideration of this evidence, I am satisfied that the word "SOUTHERN" employed by D6 was plainly derived from, and is similar to, the SOUTHERN CABLE Marks. Given that there exists no other cable manufacturer in Malaysia using the same or a similar word, I find that the average consumer would likely be confused into S/N E4bsCq5bgEi3W85mOxrXzg associating D6's use of the word "SOUTHERN" with the Plaintiff's cables.

It follows that, by using the word "SOUTHERN" in its delivery orders, D6 has used the sign within the meaning of section 54(3) of the TMA

I find guidance in, Acushnet Company v Metro Golf Manufacturing Sdn Bhd [2006] MLJU 412 where the High Court held: …Furthermore, the Defendant also used the "TITLEIST" mark on its delivery orders and invoices when issuing the same to third parties. In Cheetah Trade Mark (1993) FSR 263 Mr Morrit J. held when granting the Plaintiff's relief sought in their summary judgment application that:

use of a registered trade mark on invoices and delivery notes was just as much an infringement as stamping the mark on a container for the goods.

use of a registered trade mark on an invoice, even if rendered long after sale and delivery, was still a use in the course of trade. … The Defendant in the present case has used the offending mark not only upon goods but also in documents such as delivery orders and invoices. The Defendant has therefore used the offending mark in physical relation to the goods in which it deals with in this case being golf bags and parts and fitting for the same. [Underlined Emphasis Added] S/N E4bsCq5bgEi3W85mOxrXzg

I find this reasoning directly applicable. The delivery orders of D6 were submitted to the contractor and consultant of the Kelantan Airport Project and demonstrate that D6 had supplied counterfeit versions of the Plaintiff's products for that project. For these reasons, I am satisfied that D1, D2 and D6 have each contravened section 54(2)(b) of the TMA 2019.

To reiterate my views aforesaid, on the totality of the evidence, the Plaintiff is the registered proprietor of the SOUTHERN CABLE Marks. The Offending Goods seized during the KPDN Raid bore signs identical and/or confusingly similar to those marks and were affixed to electric cables, that is, goods identical to those for which the marks are registered. The use was in the course of trade and without the Plaintiff's consent. The compounding of D1 and D2 by KPDN, and their payment of those compounds, further reinforce the factual matrix.

In light of the admission of liability by the 1st, 2nd and 6th Defendants, and upon the strength of the evidence, I find that trade mark infringement under section 54(2)(b) of the TMA 2019 is established against D1, D2 and D6. ISSUE 3: Whether D1, D2, and D6 have also committed the tort of passing off by misrepresenting the cables produced by D1 and D2 as the Plaintiff’s

The tort of passing off protects goodwill against misrepresentation that causes or is likely to cause damage. The classic trinity of S/N E4bsCq5bgEi3W85mOxrXzg elements, as established in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 requires the plaintiff to establish: a. Goodwill or reputation attached to the goods or services supplied in the mind of the purchasing public; b. A misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered are those of the plaintiff; and c. Damage to the plaintiff, or a likelihood of damage, arising from the erroneous belief engendered by the defendant's misrepresentation.

These elements are often summarised as the "classical trinity" of goodwill, misrepresentation, and damage. In the context of counterfeit goods, where identical marks are applied to identical goods, the misrepresentation element is typically satisfied almost as a matter of course, and damage is readily inferred. i. Goodwill and Reputation

Firstly, in the case of IRC v Muller & Co's Margarine Ltd [1901] AC 217, the UK House of Lords has held the following on the meaning of goodwill: …What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection. It is the S/N E4bsCq5bgEi3W85mOxrXzg attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start. The goodwill of a business must emanate from a particular centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates… [Underlined Emphasis Added]

In this regard, I am satisfied that the Plaintiff has established, beyond doubt, goodwill in the Southern Cable Marks. The evidence shows:

Long trading history: The Plaintiff was incorporated in 1993 and has operated continuously for more than three decades.

Public-listed parent company: The Plaintiff is a subsidiary of Southern Cable Group Berhad, a company listed on the stock exchange, which enhances its corporate profile and transparency.

Extensive market presence: The Plaintiff has supplied products to major infrastructure projects, commercial developments, and government contracts throughout Malaysia.

International registrations: Trade mark protection has been extended to Indonesia and Myanmar, demonstrating the Plaintiff’s regional commercial reach.

KPDN recognition: The Plaintiff’s marks are sufficiently established that KPDN acted on its complaint, reflecting regulatory recognition of the Plaintiff’s position in the market.

The Defendants have not seriously contested the Plaintiff's goodwill. Indeed, their very decision to apply the Southern Cable Marks to their own products demonstrates the commercial value they attached to the Plaintiff's reputation. ii. Misrepresentation

Secondly, in the case of Yong Sze Fun & Anor (t/a Perindustrian Makanan & Minuman Layang-Layang) v Syarikat Zamani Hj Tamin Sdn Bhd & Anor [2012] 1 MLJ 585, the Court of Appeal held that “misrepresentation” in passing off entails the following: [149] 'Misrepresentation' is a crucial ingredient in an action for passing off. To succeed, the plaintiffs must prove not only the fact of misrepresentation but additionally that the misrepresentation was material and operative. In our judgment, the plaintiffs succeeded in proving the factum of misrepresentation. [150] To sell his goods, a trader usually marks his goods in a particular way or he may adopt a particular trading style. In doing so, the trader is making a representation to his customers that his goods is worth buying. And that representation becomes a misrepresentation if the trader adopts identifying features of another trader's goods. Thus, from the facts the defendants have S/N E4bsCq5bgEi3W85mOxrXzg appropriated the plaintiffs identifying features and pass off the defendants' goods as the plaintiffs. [Underlined Emphasis Mine]

The misrepresentation in this case is direct and unambiguous. By manufacturing cables bearing the Southern Cable Marks, the 1st and 2nd Defendants represented to all subsequent purchasers and users including the 6th Defendant, project inspectors, and ultimate beneficiaries of the installations that these were genuine Southern Cable products. This is not a case of "reverse confusion" or comparative advertising, but rather, it is straightforward counterfeit production intended to deceive.

The 6th Defendant's role in the misrepresentation is of particular significance. By accepting, installing, and documenting these counterfeit cables in the Kelantan Airport Project, the 6th Defendant perpetuated the misrepresentation. The project documentation, certification materials, and maintenance records would all identify these as Southern Cable products, creating a paper trail of deception that could extend for the operational lifetime of the installation.

Based on the evidence of PW1, John, the Plaintiff first became aware of the presence of counterfeit products in the market when PW1 was asked whether the Plaintiff had appointed D1 as its Original Equipment Manufacturer (OEM). In my view, this evidence is significant. It shows that confusion had already arisen in the market as to whether D1 was manufacturing products on behalf of, S/N E4bsCq5bgEi3W85mOxrXzg or with the authority of, the Plaintiff. The confusion was generated by the presence of counterfeit products bearing the Southern Cable Marks. Further, the evidence adduced at trial revealed that the production of the counterfeit products by D1, D2 and D6 was calculated to create the impression that those products were, or were connected with, the Plaintiff’s genuine products.

As I have stated earlier, it is pertinent to note that proof of actual confusion is not a necessary prerequisite in an action for passing off. In Ken Holdings Bhd & Ors v Sri Seltra Sdn Bhd & Ors [2014] 9 MLJ 858, the High Court held as follows: [97] It is now settled law that in establishing that there was a misrepresentation arising from the wrongful association, the plaintiffs need not prove actual confusion. Only mere proof of possibility of confusion is sufficient in a passing off action.

Applying the above principle to the facts of the present case, I find as follows: a. There was actual confusion in the market arising from the conduct of D1, D2 and D6 in producing counterfeit products bearing the Southern Cable Marks. The evidence that PW1 was asked whether D1 had been appointed as the Plaintiff’s OEM supports the conclusion that members of the trade were led, or at least were liable to be led, into believing that D1 was manufacturing products for or on behalf of the Plaintiff. S/N E4bsCq5bgEi3W85mOxrXzg b. In any event, even if actual confusion had not been established, the Plaintiff’s claim in passing off would nevertheless be made out. This is because the use by D1, D2 and D6 of signs identical and/or confusingly similar to the Southern Cable Marks amounted to a misappropriation of the Plaintiff’s goodwill and was likely to deceive or confuse members of the public and the trade into believing that the counterfeit products were produced by, authorised by, or otherwise connected with the Plaintiff.

The Defendants' submission that they were merely fulfilling contractual obligations with "equivalent" products is no defence to passing off. The tort protects against misrepresentation, not merely against direct competition. Even if the Defendants subjectively believed their products were technically equivalent (a proposition I address below regarding quality), the objective fact is that they represented them as Southern Cable products when they were not. The purchasing public is entitled to rely on trade marks as indicators of source, and the deliberate substitution of unidentified manufacture for branded product undermines this essential commercial function. iii. Damage

I find that as result of the misrepresentation caused by D1, D2, and D6 above, the Plaintiff has suffered loss or damage.

As further held in Ken Holdings Bhd (supra): S/N E4bsCq5bgEi3W85mOxrXzg [109] Case law shows that if goods or services offered by both parties in a passing off action are in direct competition with one another, the court would readily infer the like[li]hood of damage to a claimant's goodwill. There is no need to prove actual damage.

Damage in passing off may take multiple forms, and the law recognises that proof of actual damage is not always required where the likelihood of damage is established. In this case, however, the Plaintiff has demonstrated actual and potential damage of significant dimensions: a. Direct commercial loss: The Plaintiff was deprived of the sale that the 6th Defendant would otherwise have made to it for the Kelantan Airport Project. This is not merely theoretical as the established customer relationship makes this loss concrete and quantifiable; b. Reputational risk: The installation of counterfeit cables in a major infrastructure project creates ongoing reputational exposure. Should any defect manifest in these cables whether due to manufacturing inadequacy, material substitution, or quality control failures the Plaintiff's reputation would suffer though it had no involvement in their production; c. Dilution of distinctiveness: Each counterfeit use erodes the distinctive association between the Southern Cable Marks and the Plaintiff's genuine products, ultimately diminishing the marks' commercial value; and S/N E4bsCq5bgEi3W85mOxrXzg d. Price erosion and market distortion: The availability of counterfeit products at potentially lower prices distorts the market, pressuring the Plaintiff's pricing structure and dealer relationships.

The Defendants' contention that no actual damage has been proven ignores the established principle that damage is presumed in clear cases of passing off, particularly where the defendant's misrepresentation is deliberate and the parties operate in the same market. In Harris Tweed Association Ltd v Veitch [1953] 1 QB 701, the Court of Appeal recognised that the misappropriation of goodwill itself constitutes damage, even absent proof of lost sales.

For the foregoing reasons, I find that the tort of passing off has been established against the 1st, 2nd, and 6th Defendants jointly and severally. The 1st and 2nd Defendants created the misrepresentation through manufacture and marking and the 6th Defendant perpetuated it through distribution and installation. Each played an essential role in the deceptive commercial chain.

In my considered view, damage to the Plaintiff’s goodwill should be readily inferred because the Offending Goods are in direct competition with the Plaintiff’s products, namely electrical cables. The Plaintiff will also suffer potential damage in the form of reputational harm and loss of goodwill. ISSUE 4: Whether D1, D2, and D6 have unlawfully interfered with the Plaintiff’s trade

It is the Plaintiff’s case that D1, D2 and D6 unlawfully interfered with the Plaintiff’s trade and business by reason of the unlawful acts set out above, including the manufacture, supply, distribution and/or use of counterfeit products bearing the Southern Cable Marks.

The elements of the tort of unlawful interference with trade or business were set out by Low Hop Bing J, as His Lordship then was, in Megnaway Enterprise Sdn Bhd v Soon Lian Hock, sole proprietor of the firm Performance Audio & Car Accessories Enterprise [2009] 3 MLJ 525, where His Lordship held as follows: [48] The elements which constitute the tort of unlawful interference with trade or business are:

Interference with the plaintiff’s trade or business;

Unlawful means;

Intention to injure the plaintiff; and

The plaintiff is injured thereby. (See Bullen & Leake & Jacob’s Precedents of Pleadings [1990] p 464).

His Lordship further observed at paragraph [49] that although the tort of unlawful interference with trade is still developing and its precise ambit may not be fully settled, its existence is beyond doubt. In this regard, His Lordship referred to H & R Johnson (Malaysia) Bhd v H & R Johnson Tiles Limited & Anor [1995] 2 CLJ 581, where Zakaria Yatim J, as His Lordship then was, cited the principle in Torquay Hotel Co Ltd v Cousins & Ors [1969] 2 Ch 106 in the following terms: S/N E4bsCq5bgEi3W85mOxrXzg … If one person deliberately interferes with the trade or business of another, and does so by unlawful means, that is, by an act which he is not at liberty to commit, then he is acting unlawfully, even though he does not procure or induce any actual breach of contract: Torquay Hotel Co Ltd v Cousins & Ors [1969] 2 Ch 106, 139 per Lord Denning

In cases involving intellectual property infringement, the courts have recognised that where the infringement is accompanied by conduct which disrupts or diverts the plaintiff’s trade, misappropriates the plaintiff’s goodwill, or causes injury to the plaintiff’s business, the same conduct may also constitute unlawful interference with trade.

In Bestinet Technology Sdn Bhd v MYFWM System Sdn Bhd & Ors [2022] 3 CLJ 373, the plaintiff brought an action against the defendants for, among others, trademark infringement, passing off, unlawful interference with trade, and conspiracy to injure. Upon finding that the defendants have committed the tort of passing off, this led the High Court to find that there was unlawful interference with trade by the defendants as well: [69] As I had made an affirmative finding on the issue of tort of passing off, I decided in favour of the plaintiff that there was an unlawful interference with its trade by the defendants.

Similarly, in Jyothy Laboratories Limited v Puaneswaran Renganathan & Ors And Another [2019] 1 LNS 847, the case concerned multiple causes of action in relation to the “Neem Active” trademark, namely breach of contract, copyright infringement, S/N E4bsCq5bgEi3W85mOxrXzg passing off, unlawful interference with trade, and invalidation of trademark. Upon finding that there was passing off by the defendants, the High Court also found them liable for unlawful interference: [103] Although the foregoing cases found unlawful interference with trade because of copyright infringement which resulted in unfair adverse consequences to the plaintiff, I am of the opinion that this is directly applicable too if the tort of passing off has been committed that affected the plaintiff's reputation and goodwill with similar consequences. [104] In view of my finding on passing off in paragraph 90 above, I therefore find and hold that Puaneswaran, Bumitulin and Rajoo are liable to Jyothy for unlawful interference with trade too.

Further, in Hew Chai Seng (t/a Pertiland Trading Co) v Metronic Integrated System Sdn Bhd & Anor [2017] 7 MLJ 1, Azizah Nawawi J (as she then was) found that the defendants have unlawfully interfered with the plaintiff’s trade by infringing the latter’s “FERTI” trademark: [45] The plaintiff ’s third cause of action against the defendants is for the tort of unlawful interference with the plaintiff ’s trade and business. In view of my finding that the defendants have committed trademark infringement and passing off, then the defendants have unlawfully interfered with the plaintiff ’s trade and business.

It follows from these authorities that the tort is made out where a defendant deliberately interferes with the plaintiff’s business or trade S/N E4bsCq5bgEi3W85mOxrXzg by employing unlawful means, and where such interference results in injury to the plaintiff. The unlawful means need not be confined to inducing a breach of contract. It is sufficient if the defendant’s conduct is itself unlawful and is directed at interfering with the plaintiff’s commercial interests.

Applying the principles distilled above to the present case, I find that D1, D2 and D6 interfered with the Plaintiff’s trade by producing and/or dealing with counterfeit products bearing the Southern Cable Marks. I find that such conduct, was not merely competitive conduct. It was conduct carried out by unlawful means, namely by the unauthorised use of the Plaintiff’s marks and goodwill, and by placing into the market products which were liable to be mistaken for the Plaintiff’s genuine products. Based on the facts, this conduct was calculated to injure the Plaintiff’s business by diverting trade, eroding goodwill, damaging customer confidence and creating confusion in the market.

I therefore find and hold that D1, D2 and D6 had unlawfully interfered with the Plaintiff’s trade. ISSUE 5: Whether D1, D2, and D6 are liable for conspiracy to injure the Plaintiff by unlawful means

Before I address the issue of whether D1, D2 and D6 are liable for conspiracy to injure the Plaintiff by unlawful means I find it apposite to address the preliminary point raised by the Defendants on defective pleadings. The Defendants resisted the conspiracy claim on two principal grounds.

The Defendants submitted that the Plaintiff has failed to properly plead or prove its claim in conspiracy to injure. Relying on Renault SA v Inokom Corp Sdn Bhd & Anor and other appeals [2010] 5 CLJ 32, the Defendants contended that the tort of conspiracy requires proof of an agreement between two or more persons, an agreement entered into for the purpose of injuring the Plaintiff, acts done in execution of that agreement, and resulting damage. They further rely on Goh Bak Ming v Yeoh Eng Kong & Other Appeals [2019] 1 CLJ 461 for the proposition that, in a lawful means conspiracy, the predominant purpose of the alleged conspirators must be to injure the Plaintiff. It is insufficient to show merely that the Defendants intended acts which resulted in loss; the acts must serve no legitimate commercial purpose and must be actuated by malice or a predominant intention to harm the Plaintiff.

The Defendants further submit that a claim in conspiracy must be pleaded with sufficient particularity. Relying on A Santamil Selvi a/p Alau Malay @ Anna Malay & Ors v Dato’ Sri Mohd Najib bin Tun Abdul Razak & Ors [2015] 4 CLJ 1035, Ho Hup Construction Company Bhd v Zen Courts Sdn Bhd & Ors [2018] 1 LNS 340 and Datuk Hj Ishak bin Ismail v Kenanga Investment Bank Bhd & Ors [2011] 1 LNS 1358, the Defendants contended that a plaintiff must plead the parties to the conspiracy, their relationship with one another, the agreement said to have been reached, the period or circumstances in which it was entered into, the object and means of the conspiracy, the overt acts allegedly committed by each conspirator, and the injury or damage caused. A bare or formulaic S/N E4bsCq5bgEi3W85mOxrXzg allegation of conspiracy, without the material facts answering the questions of who, what, where, when and how, is insufficient.

Applying those principles, the Defendants submitted that the Plaintiff’s Statement of Claim contains only a general allegation that there was an “agreement and/or combined efforts” between all the Defendants to commit trade mark infringement, passing off and unlawful interference with the Plaintiff’s trade with the predominant purpose of injuring the Plaintiff. The Defendants contend that the Plaintiff has failed to plead the necessary particulars of the alleged conspiracy, including how each Defendant allegedly conspired with the others, how the Individual Defendants allegedly conspired with the Corporate Defendants, when and where the agreement was reached, the specific role played by each Defendant, the precise terms, object and means of the alleged conspiracy, and why the alleged acts were said to have been carried out with the predominant purpose of injuring the Plaintiff.

I have considered the pleading point raised by the Defendants. With respect, I find no merits in the same.

Order 18 Rule 7 of the Rules of Court 2012, is clearly worded in that only the material facts, and not the evidence, that need be pleaded. The pleading must be read as a whole as held in Melawangi Sdn Bhd v Tiow Weng Theong [2020] 3 MLJ 677 and not in the dissected and pedantic manner urged by the Defendants.

I accept the Plaintiff’s submission that pleadings are required to state material facts and not evidence. (per Farwell LJ in North-S/N E4bsCq5bgEi3W85mOxrXzg Western Salt Co Ltd v Electrolytic Alkali Co Ltd [1913] 3 KB 422). The Defendants’ objection, in substance, appears to require the Plaintiff to plead the evidence by which the conspiracy is to be proved. That is not the function of pleadings. The relevant question is whether the Defendants were sufficiently informed of the case they had to meet.

Reading the Statement of Claim as a whole, I am satisfied that:

the Plaintiff has expressly pleaded that the Individual Defendants are the alter ego and controlling minds of the

the Plaintiff has pleaded the directorships and shareholding interlinkages, the relationship between the Individual Defendants, and the assertion that they used the corporate structures to commit and conceal the infringing conduct.

There is, in my judgment, a further and weightier reason why the pleadings objection cannot prevail. The trial has been fully conducted. The Individual Defendants themselves gave evidence and were cross-examined precisely on the matters now said to be unpleaded namely, their respective roles, knowledge, and involvement in the affairs of the 1st, 2nd and 6th Defendants.

It is trite, on the authority of the Federal Court in Ang Koon Kau v Lau Piang Ngong [1984] 2 MLJ 277, that evidence led at trial may cure defects in pleadings where the effect is that the opposing party is not taken by surprise. On the facts of this case, I am satisfied that S/N E4bsCq5bgEi3W85mOxrXzg the Defendants were not taken by surprise. The Defendants did not object at trial to the Plaintiff’s evidence on conspiracy.

In these circumstances, even if there were any deficiency in the pleadings, which I do not find to be fatal, such deficiency was cured by the evidence led at trial. The authorities relied upon by the Plaintiff support the proposition that defects in pleadings may be overcome where evidence has been adduced without objection and where the opposing party has not been prejudiced or taken by surprise.

I also find that the Plaintiff did lead evidence relevant to the alleged conspiracy. Such evidence arose not only from the Plaintiff’s case, but also from the Defendants’ own testimony. In particular, the evidence showed that the businesses of D1, D2 and D6 complemented each other. D7 accepted in cross-examination that the businesses of D6, D1 and D2 complemented one another.

The evidence further showed that D6 was a long-standing customer of D1 and D2. D4 accepted that D6 had been a customer of D1 and D2 for a very long time, even before 2014. This established an enduring commercial relationship between the companies.

Further, D7 had a long-standing interest in D1 and D2. He was previously a director of D1 and D2 for several years before his son, D5, was appointed as director in 2022. This evidence is material because it demonstrates that the relationship between D6 on the one hand and D1 and D2 on the other was not merely an ordinary arm’s length commercial relationship.

I also take into account the evidence concerning the role of D6 as installer of the cables. D7 accepted that when D6 purchased cables and wires from external suppliers for its projects, D6 would be the party installing those cables and wires at the project site. He also accepted that D6 would be able to see the markings on the cables during installation. This evidence is significant because the markings on the cables were directly relevant to the identification of the goods supplied and installed.

In my judgment, the above matters constitute relevant circumstantial evidence from which concerted action may properly be inferred. The evidence points to a connected business arrangement involving D1, D2 and D6, and supports the Plaintiff’s case that the Offending Goods were produced, supplied and installed with the knowledge and participation of the relevant Defendants.

In arriving at this conclusion, I am mindful that conspiracy is not always capable of direct proof. As held in MGG Pillai v Tan Sri Dato’ Vincent Tan Chee Yioun & Other Appeals [1995] 2 MLJ 493, an agreement to do an unlawful act, or to do a lawful act by unlawful means, may be established by circumstantial evidence from which such an agreement may be inferred. However, there must be proof and not mere conjecture.

Applying that principle, I am satisfied that the Plaintiff’s case does not rest on conjecture alone. The evidence of the complementary nature of the businesses, the long-standing commercial relationship between D6 and D1/D2, D7’s prior involvement in D1 and D2, the S/N E4bsCq5bgEi3W85mOxrXzg appointment of D5, and D6’s role as installer of the cables provide a sufficient evidential basis for the Court to consider the conspiracy claim on its merits.

Accordingly, I reject the Defendants’ objection that the Plaintiff’s conspiracy claim ought to fail by reason of defective pleadings. The Plaintiff’s pleaded case, read as a whole, was sufficient to inform the Defendants of the case they had to meet. In any event, the evidence adduced at trial was sufficient to cure any alleged deficiency and to enable the Court to determine the issue on its merits.

Now, moving on to the core issue at hand, it is the Plaintiff’s case that the wrongful acts of D1, D2 and D6, as set out above, were not isolated or accidental acts, but formed part of a concerted arrangement and common design between them to injure the Plaintiff by unlawful means.

In Lee Yik Chieh & Ors v OTL Asia Sdn Bhd (formerly known as CKE Transport Agency Sdn Bhd) [2025] MLJU 3553, the Court of Appeal summarised the tort of conspiracy to injure as involving an agreement between two or more persons to cause harm to another, either by unlawful means or, where lawful means are employed, with the predominant purpose of causing injury or loss. The Court of Appeal referred with approval to Kuwait Oil Tanker Co SAK & Anor v Al Bader & Ors [2000] 2 All ER (Comm) 271, where the distinction between the two forms of actionable conspiracy was explained as follows: S/N E4bsCq5bgEi3W85mOxrXzg [80] The tort of conspiracy to injure can be summarise[d] as tort of two or more person agreeing to harm another person through either unlawful means or by using lawful means for the predominant purpose of causing injury or loss suffered by a person. This statement of law was discussed in Kuwait Oil Tanker Co SAK & Anor v Al Bader & Ors [2000] 2 All ER (Comm) 271 as follows: “107 …It is common ground that there are two types of actionable conspiracy, conspiracy to injure by lawful means and conspiracy to injure by unlawful means. The first is sometimes described simply as a conspiracy to injure and the second as a conspiracy to use an unlawful means (see e g Clerk and Lindsell on Torts (17th edn, 1995) pp 1267-1268, paras 23-76). In our view they are both conspiracies to injure and their ingredients are the same, with one crucial difference. In both cases there must be conspiracy to injure the claimant, but in the first case (in which the means employed would otherwise be lawful) the predominant purpose of the conspiracy must be to injure the claimant whereas in the second case, although the defendant must intend to injure the claimant, injury to the claimant need not be his predominant purpose…

The constituent elements of the tort were also set out by the Court of Appeal in Seow Hoon Hin v Hartalega Holdings Bhd & Ors [2019] 5 MLJ 421. In that case, the Court of Appeal referred with approval to Nagase Singapore Pte Ltd v Ching Kai Huat and others [2008] 1 SLR 80, where Judith Prakash J, as Her Ladyship then was, held that a claim in conspiracy requires proof of the following elements: [207] In Nagase Singapore Pte Ltd v Ching Kai Huat and others [2008] 1 SLR 80 at p 93, Judith Prakash J (as she then was) also held that in order for a claim of S/N E4bsCq5bgEi3W85mOxrXzg conspiracy to succeed, the elements that have to be satisfied are the following

a combination of two or more persons and an agreement between and amongst them to do certain acts;

if the conspiracy involves lawful acts, then the predominant purpose of the conspirators must be to cause damage or injury to the plaintiff but if the conspiracy involves unlawful means, then such predominant intention is not required;

the acts must actually be performed in furtherance of the agreement; and

damage must be suffered by the plaintiff.

Applying these principles to the present case, the Plaintiff’s case is that D1, D2 and D6 acted together in the manufacture, supply, distribution and/or use of counterfeit products bearing the SOUTHERN CABLE MARKS. These acts, if established, constitute unlawful means because they involve, among others, the unauthorised use of the Plaintiff’s marks, passing off, and unlawful interference with the Plaintiff’s trade.

Learned counsel for the Plaintiff submitted that the Plaintiff need not prove that D1, D2 and D6 were actuated by a predominant intention to injure the Plaintiff. It is sufficient if the evidence shows that they acted in concert, that the unlawful acts were carried out pursuant to that concerted arrangement, and that the Plaintiff suffered injury as a result. The Plaintiff relies on the close interrelationship between S/N E4bsCq5bgEi3W85mOxrXzg the Corporate Defendants, the common shareholding and directorships, and the documentary trail (including the technical and design cards).

I have no reasons to disagree with the Plaintiff on this issue.

The evidence adduced at trial established that the Offending Goods were produced by D1 and D2 pursuant to D6’s request for the Kelantan Airport Project. In his witness statement, D3 explained the relationship between the relevant Defendants and the circumstances in which the cables came to be produced as follows: Q3 Please describe the relationship between the Defendants, particularly between the 1st to 4th Defendants and 5th to 7th Defendants. A3 Sometime in late 2023, the 6th Defendant ordered some cables from us with a request that the word “Southern” to be printed onto the cables, among others, and to be delivered to Kota Bharu Kelantan Airport. We took the order and we instructed our staff to do the necessary production. I was not personally involved in the design and production of the cables as these are within the job scope of the production team. Thereafter, they were delivered directly to Kota Bharu Kelantan Airport.

This account is consistent with the evidence of D7 who confirmed in his witness statement that D6 had requested D1 to produce cables bearing the word “Southern” in order to meet the requirements of the Kelantan Airport Project. D7 stated: S/N E4bsCq5bgEi3W85mOxrXzg Q7 What happened after the incident? A1 We could not change the brand of cables to be used for the Project. The Project has a deadline, and we must comply with it. In desperation to fulfil the contractual obligations for the Project, the 6th Defendant ordered come cables from the 1st Defendant with a request that the word “Southern” be printed onto the cables and to be delivered to the Kota Bharu Kelantan Airport site.

Of particular significance is the fact that evidence was led at trial showing that D1, D2 and D6 knew that the Offending Goods were produced without the Plaintiff’s consent. Notwithstanding such knowledge, they proceeded with the production and supply of the Offending Goods.

During cross-examination, D3, accepted that the Defendants had intentionally used the Plaintiff’s trade mark and logo despite knowing of the Plaintiff’s trade mark rights.

D7, likewise made material admissions during cross-examination. His evidence was that D6 had not obtained the Plaintiff’s consent before making the request to D1, that he knew the products were not genuine Southern Cable products, and that he accepted they were counterfeit products. The relevant excerpt of D7’s testimony is reproduced below: S/N E4bsCq5bgEi3W85mOxrXzg GJS : So, you can confirm that prior to making the request to D1, you and D3, you and the other Defendants, had not obtained the Plaintiff's consent to use the name Southern Cable? Correct? WCW : Correct, yes GJS : So, when you did that, you know those products are not genuine Southern Cable products, correct? GJS : So, you admit those are counterfeit products, right? GJS : So, despite knowing counterfeit products are illegal, you still did it anyway? GJS : And you can confirm that Mr Tui Kim Chuan and his companies complied with your request, correct?

The above evidence is highly probative. It shows that the production of the Offending Goods was not accidental, inadvertent or the result of a mere misunderstanding. D6 specifically requested cables bearing the word “Southern” for the Kelantan Airport Project. D1 and D2 accepted and acted upon that request. The relevant Defendants knew that the Plaintiff had not authorised the use of the Southern Cable name or marks, and they further knew that the resulting products were not genuine Southern Cable products. In those circumstances, the production and supply of the Offending Goods S/N E4bsCq5bgEi3W85mOxrXzg were deliberate acts carried out with knowledge of their unlawful character.

Accordingly, I find that the elements of conspiracy are easily satisfied in this case. There was a clear agreement between D1, D2, and D6 to produce counterfeits of the Plaintiff’s cables using the Southern Cable Marks without the Plaintiff’s consent. Despite knowing that this was unlawful and that it would be attributed to the Plaintiff, they proceeded to do so at the expense of the Plaintiff.

For completeness, D7 stated that D6’s request for the production of the Offending Goods was made out of “desperation” to fulfil its own contractual obligations. With respect, that explanation does not absolve D6, or the other relevant Defendants, from liability. A defendant cannot justify the use of unlawful means merely by asserting that the unlawful conduct was undertaken to protect or advance its own commercial interests. The position is supported by Lonrho plc v Fayed and others [1991] 3 All ER 303, where the House of Lords held as follows: …But when conspirators intentionally injure the plaintiff and use unlawful means to do so, it is no defence for them to show that their primary purpose was to further or protect their own interests; it is sufficient to make their action tortious that the means used were unlawful.

Moreover, the damage suffered by the Plaintiff from the conspiracy of D1, D2, and D6 is readily apparent. In addition to the fact that its statutory rights have been infringed and that its goodwill has been misappropriated. S/N E4bsCq5bgEi3W85mOxrXzg ISSUE 6: Whether it is in the interest of justice and there are special circumstances to pierce the corporate veils of D1, D2, and D6 to hold the individual defendants

Having dealt with D1, D2 and D6, I now move to consider the case against the individual Defendants. The Plaintiff's case against the Individual Defendants is, in substance, channelled through the doctrine of piercing the corporate veil. It is the Plaintiff’s position that the individual defendants in this case, D3, D4, D5 and D7 should also be held personally liable.

The question that remains is whether the wrongdoing of D1, D2 and D6 can, in law and on the facts, be visited upon the individuals who stood behind them.

This is a question of separate legal personality. The doctrine of separate legal personality is one of the foundational pillars of company law, and the lifting of the corporate veil is the exception, not the rule.

In Salomon v A Salomon & Co Ltd [1897] AC 22, it was held that a company is a legal person separate and distinct from its members and directors. This principle is statutorily entrenched in section 20 of the Companies Act 2016, which provides that a company incorporated under the Act is a body corporate having legal personality separate from that of its members. A director is not, merely by reason of his office, personally liable for the torts or S/N E4bsCq5bgEi3W85mOxrXzg wrongs of the company. To hold otherwise would render the doctrine of separate legal personality meaningless.

In Malaysia, the leading pronouncement remains that of the Federal Court in Solid Investments Ltd v Alcatel-Lucent (Malaysia) Sdn Bhd [2014] 3 MLJ 785, where it was held that the corporate veil may be lifted where there are special circumstances indicating that it is a mere façade concealing the true facts, or where it is in the interest of justice to do so.

The Court of Appeal in Law Kam Loy & Anor v Boltex Sdn Bhd & Ors [2005] MLJU 225 (per Gopal Sri Ram JCA, as he then was) emphasised, following the English Court of Appeal in Adams v Cape Industries plc [1990] Ch 433, that the veil will not be lifted merely because justice so requires in a general sense; there must ordinarily be an element of fraud, sham or façade, or the use of the corporate structure as an engine of fraud or as a device or stratagem to evade existing legal obligations or to conceal wrongdoing.

The crucial distinction drawn in the more refined English jurisprudence Prest v Petrodel Resources Ltd [2013] UKSC 34 is between the concealment principle (where the corporate structure is interposed to conceal the identity of the real actors, and the court simply looks behind it to identify the facts) and the evasion principle (where there is a legal right against the person in control of the company which exists independently of the company's involvement, and the company is interposed to defeat that right). It is principally in the latter category that the veil is truly "pierced."

In the specific context of intellectual property infringement, the courts have recognised that directors who are the directing mind and will of a company, and who authorise, direct or procure the commission of the tortious acts, may be held personally liable as joint tortfeasors independently of, and as an alternative to, any piercing of the veil.

The locus classicus is Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1, and more pertinently the formulation in MCA Records Inc v Charly Records Ltd [2003] 1 BCLC 93, that a director will be jointly liable where he procured or induced the infringing acts, or where he and the company joined in a common design pursuant to which the infringement was committed.

Reverting to the present case, learned counsel relied on the case of Natural Transforms Sdn Bhd v Albany bin Hamzah, DSP & Ors (Goh Kim Heong, intervener) [2023] MLJU 2491, in which the High Court recognised that, in appropriate circumstances, it would be in the interest of justice to pierce the corporate veil in order to reveal the alter ego of a company.

Learned counsel relied on the following matters in support of her contention: a) D3, D4 and D5 are directors of D1 and D2, while D7 is a director of D6. S/N E4bsCq5bgEi3W85mOxrXzg b) D3 is the Managing Director of D1 and D2 and holds the majority shareholding in D2, which is the holding company of D1. During cross-examination, D3 admitted that he was responsible for making business decisions for both D1 and D2. c) D4 is the son of D3 and is presently the Assistant General Manager of D1. He is responsible for the sales and marketing of D1 and D2 and is involved in making business decisions for these companies. Although D4 sought to suggest that his authority was confined to sales matters, the Plaintiff contends that such a position is unrealistic, having regard to his long-standing involvement in the companies, his relationship with D3, and the fact that he is a director of both D1 and D2. d) D4's knowledge of the companies' sales, customers and products demonstrates that he would have been aware of the infringing activities carried out by the companies. This was borne out by his evidence during cross-examination, where he also admitted that he made decisions in relation to sales matters. e) D5 is likewise a director of D1 and D2. Although D5 attempted to deny involvement in the relevant matters, the evidence shows that he attended meetings concerning the affairs of D1 and D2 together with D3, D4 and his father, D7. The Plaintiff submits that this demonstrates that D5 had knowledge of the affairs of D1 and D2, a matter which was further confirmed by D7 during cross-examination. S/N E4bsCq5bgEi3W85mOxrXzg f) D7 is the Managing Director of D6 and a shareholder of D2. It is undisputed that D7 was the decision-maker of D6, which he admitted during cross-examination.

The Plaintiff submitted that D3, D4, D5 and D7 were not passive directors or shareholders but were actively involved in the business and management of D1, D2 and D6, such that they ought to be regarded as the alter egos of those companies. Consequently, it was contended that they could not disclaim knowledge of, or responsibility for, the companies' affairs in order to evade liability, and that the corporate veils of D1, D2 and D6 should be pierced in the interest of justice.

The Defendants resist the Plaintiff’s attempt to pierce the corporate veil and impose personal liability on the Individual Defendants. In essence, they submit that the Plaintiff’s case is founded merely on the Individual Defendants’ directorships, shareholdings and familial or business relationships with the Corporate Defendants. The Defendants contend that such matters, without more, are insufficient in law to justify lifting the corporate veil or to render the Individual Defendants personally liable as joint tortfeasors.

The Defendants further submit that the Plaintiff’s pleadings are vague and lacking in particulars. Although the Plaintiff pleaded that the Defendants had jointly and severally manufactured, stocked, supplied, distributed, sold, offered for sale and/or promoted the Offending Goods, the Plaintiff did not identify with sufficient particularity the specific acts allegedly committed by each Individual Defendant. There were no clear particulars as to how, when, where S/N E4bsCq5bgEi3W85mOxrXzg and why the Individual Defendants personally participated in the alleged infringement, passing off, unlawful interference or conspiracy.

The Defendants further contended that the Corporate Defendants were not incorporated for any unlawful purpose. D1, D2 and D6 were incorporated long before the alleged infringing acts were discovered in November 2023. In particular, D1, D2 and D6 were incorporated in 2007, 2007 and 2001 respectively. The Defendants also point out that D6 continued to do business with the Plaintiff even after the commencement of the suit, which they say undermines the allegation that D6 was created or used solely as a vehicle to commit the alleged wrongful acts.

The Defendants submitted that the evidence adduced at trial does not support the Plaintiff’s case. None of the Plaintiff’s witnesses gave evidence showing that the Individual Defendants personally carried out or authorised the alleged acts. The Defendants maintain that the Corporate Defendants were operated through their respective management teams. D4 was said to be involved only in sales and marketing and not in management decisions until April 2024; D7 was not involved in the management or operations of D1 and D2; and D5 was appointed merely to represent D7’s interests and served only as an IT Support Executive in D6. The Defendants also rely on PW1’s admission that he had no knowledge of how decisions were made within D1 and D2, or whether D4 and D5 played any role in those decisions.

Accordingly, the Defendants submitted that the Plaintiff has failed to discharge the burden of proving that the Individual Defendants should be made personally liable, whether by piercing the corporate veil or by treating them as joint tortfeasors.

I turn to the heart of the matter: whether, on the evidence, the requirements for fixing the Individual Defendants with personal liability are satisfied.

I begin by affirming what the Defendants have correctly submitted as a matter of law: that the mere facts of (a) directorship, (b) family relationship, and (c) involvement in the operations of a company are, without more, insufficient to lift the corporate veil. On this the Defendants are correct. If the analysis stopped at directorship and kinship, the Plaintiff's case would fail.

The question, therefore, is whether the Plaintiff has demonstrated something more that is, the personal authorisation, direction, procurement, or participation of each Individual Defendant in the wrongful conduct, or the use of the corporate vehicles as a device to conceal or perpetrate the wrong.

A critical principle must stressed here. The veil cannot be pierced, nor can joint tortfeasorship be established, by a broad-brush attribution of the company's admitted wrongdoing to all the individuals indiscriminately. The court must assess the position of each Individual Defendant separately, by reference to that individual's actual knowledge and participation.

I therefore consider each of the four Individual Defendants in turn. i. D3 (Tui Kim Chuan) — Managing Director of D1 and D2

The position of the 3rd Defendant stands on a markedly different footing from the others.

The evidence establishes that:

the 3rd Defendant is the Managing Director of both D1 and D2 the very entities which manufactured the Offending Goods;

the 3rd Defendant gave evidence in respect of the technical and design cards found at the premises (pages 91 to 93 of Bundle B5). On his own account, these cards were used to analyse the Plaintiff's cables so as to ensure that the cables produced would match the required electrical, mechanical and safety specifications;

critically, the 3rd Defendant admitted that, in respect of the printing section of these technical and design cards, "they will just insert whatever wordings which appear on the sample in the documents." This is direct evidence that the 3rd Defendant was personally cognisant of, and directed, the replication of the markings including the SOUTHERN CABLE Marks onto the goods to be manufactured; and

the 3rd Defendant personally managed the business dealing between D1 and the 6th Defendant.

The Defendants' explanation that the cards were for legitimate analysis and "common industry practice" does not, in my assessment, displace the inference of personal direction. The replication of a competitor's registered mark onto the printing specification of one's own manufactured product is not legitimate competitive analysis; it is the mechanism of counterfeiting. As the directing mind who superintended this process, the 3rd Defendant procured and directed the very acts that constitute the admitted infringement.

I find that the 3rd Defendant was the directing mind and will behind the manufacture of the Offending Goods and personally authorised and procured the infringing conduct. He is liable as a joint tortfeasor, and the veil of D1 and D2 is, in his case, properly lifted on the concealment principle wherein the corporate form was used to perpetrate and cloak his personal direction of the counterfeiting. ii. D7 (Wong Chan Wah) — Managing Director and 99%

The position of the 7th Defendant is also distinguishable. The evidence establishes that:

the 7th Defendant is the Managing Director and 99% shareholder of D6 being, in substance, the controlling and beneficial owner of that company;

D6 was the conduit through which the Plaintiff's genuine cables were supplied, and through which the Offending Goods were channelled into the Kelantan Airport Project;

on the Defendants' own account, the "unfortunate incident happened when the 6th Defendant was desperate to fulfil its contractual obligation and therefore requested the 1st Defendant for assistance." This is, in effect, an admission that the 7th Defendant's company instigated the procurement of substitute cables; and

the 7th Defendant gave evidence that D6 would take samples of other manufacturers' cables for testing — the very samples that found their way to the analysis underlying the Offending Goods.

Where the controlling owner-director of a company personally procures or requests the supply of infringing goods to fulfil his company's contractual obligations, and those goods are then passed off as genuine, he cannot shelter behind the corporate form. Given his near-total ownership and managerial control of D6, the 7th Defendant is D6 in any meaningful sense. I find that he personally procured the impugned transaction and is liable as a joint tortfeasor in respect of D6's admitted wrongs. iii. D4 (Tui Kai Siang) — Director of D1 and D2

The position of the 4th Defendant is considerably weaker for the Plaintiff.

The Plaintiff relies on his directorship, his relationship with the 3rd Defendant, and his "long-standing involvement in the sales and customers of the companies." Against this, the evidence is that:

the 4th Defendant was, at the material time, a Business Development Manager responsible only for sales and marketing, and managed only his own customers; and

the 6th Defendant had been a customer of the 1st Defendant before the 4th Defendant was employed, and that customer relationship was managed by the 3rd Defendant, not the 4th Defendant.

The Plaintiff's case against the 4th Defendant rests, in truth, on inference from his directorship and family relationship. This is precisely the kind of evidence that the law holds to be insufficient. There is no direct evidence that the 4th Defendant authorised, directed, or participated in the manufacture or marking of the Offending Goods, as distinct from generalised sales activity. I am not satisfied that the Plaintiff has discharged the burden of establishing the requisite personal involvement of the 4th Defendant. Accordingly, the doubt must be resolved in his favour. iv. D5 (Wong Zhi Ming) — Director of D1 and D2, IT Support

The position of the 5th Defendant is similarly tenuous.

He is named as a director of D1 and D2, but his substantive role was as an IT Support Executive of D6. The evidence is that he attended the premises of D1 and D2 "once or twice merely for annual meeting" and "did not do anything in the 1st and 2nd Defendants despite being named as a director."

A nominal or passive directorship, without evidence of actual participation in or direction of the wrongful acts, is insufficient to fix personal liability. The familial connection to the 7th Defendant (his father) and his attendance at meetings do not, without more, establish the knowing participation required. The Plaintiff has not, in my judgment, established a sufficient evidential basis to lift the veil against the 5th Defendant.

The Plaintiff's case is reinforced at least as against the 3rd and 7th Defendants by the allegation of a common design or conspiracy. The interlinkage between D1/D2 (manufacture, by the 3rd Defendant) and D6 (distribution and supply into the project, by the 7th Defendant) discloses a coordinated arrangement whereby counterfeit cables bearing the Plaintiff's marks were manufactured by one corporate vehicle and channelled into the market through another. The convergence of (a) the 7th Defendant's request "for assistance," (b) the 3rd Defendant's direction of the manufacture and marking, and (c) the supply into the Kelantan Airport Project, supports a finding of a common design between the 3rd and 7th Defendants to which their respective companies were party.

That said, I am unable to extend this finding of common design to the 4th and 5th Defendants, for the reasons already given regarding the paucity of evidence of their personal participation.

Drawing the threads together, I hold as follows: a) Mere directorship and family relationship are insufficient in law to lift the veil; an individualised assessment of knowledge and participation is required. b) The corporate veil of D1, D2 and D6 ought to be lifted, and the Individual Defendants held jointly liable, only in respect of the 3rd and 7th Defendants, who were the directing minds personally procuring and directing the admitted wrongful conduct. c) The Plaintiff's claim to lift the corporate veil against the 4th and 5th Defendants is dismissed, as the requisite element of personal authorisation, direction, or participation has not been established. E.

For completeness, I will address the other issues before this Court: a) Whether the Offending Goods Were Confined to the Kota

The Defendants submitted that the production of the Offending Goods was confined to the Kota Bharu Airport Project and that there was no evidence to suggest that the alleged counterfeit products had been manufactured or supplied for any other project. Having carefully considered the evidence before the Court, I am unable to accept the Defendants’ contention.

PW1 testified that the Plaintiff had reason to believe that the Defendants had manufactured and supplied counterfeit Southern Cable products beyond the Kota Bharu Airport Project. He explained that the counterfeit products seized during the KPDN raid at the premises of Magnum Cable and Shifong Alloy were not identical to the products described in the Delivery Orders relating to the Kota Bharu Airport Project. PW1 further referred to several other projects in which D6 had supplied products bearing the Southern Cable Marks, including the Mudajaya LRT Project, the Sultan Iskandar Water Treatment Plant Project, the Lotus Muar Project, the DRB-HICOM Automotive Complex in Pekan, Pahang, and the BDC Cyberjaya Project.

The Plaintiff's case is further supported by important documentary evidence adduced at trial, namely D1's Technical Cards and Design Cards dated between January and April 2022 ("the Technical Cards" and "the Design Cards"). These internal production documents contained express instructions for the words "SOUTHERN CABLE" to be printed on the cables.

In my judgment, these documents are highly significant.

First, it is undisputed that the Plaintiff had no commercial or business relationship whatsoever with D1 or D2. There was therefore no legitimate commercial reason for D1's internal manufacturing documents to contain detailed production instructions requiring the words "SOUTHERN CABLE" to be printed on its cables unless those documents were prepared for the manufacture of cables intended to bear the Plaintiff's trade marks.

Secondly, D3 attempted to explain that the Technical Cards and Design Cards had merely been prepared for the purpose of analysing the Plaintiff's products. However, that explanation was contradicted by his own evidence under cross-examination. When it was suggested to him that the documents were prepared solely for analytical purposes, D3 expressly disagreed. More importantly, D3 subsequently admitted that the Technical Cards and Design Cards were in fact manufacturing documents which had to be followed during production. I am unable to accept D3's attempt to characterise these documents as merely analytical in nature.

Thirdly, the chronology of events significantly undermines the Defendants' contention that the manufacture was confined to the Kota Bharu Airport Project. The evidence establishes that D6 was only appointed as a subcontractor for that project sometime in late

However, the Technical Cards and Design Cards were created between January and April 2022 which is several months before D6's appointment. Despite this, D6 was already identified as the customer in those documents.

This chronology strongly suggests that the Technical Cards and Design Cards were not prepared solely for the Kota Bharu Airport Project. Rather, they support the inference that D1 and D2 had already been producing, or intended to produce, cables bearing the Southern Cable Marks for purposes extending beyond that particular project.

The documentary evidence also reveals another material inconsistency. The Technical Cards and Design Cards prepared in 2022 referred to "AWA" (Aluminium Wire Armoured) cables. However, the Delivery Orders for the Kota Bharu Airport Project referred instead to "SWA" (Steel Wire Armoured) cables. D3 accepted during cross-examination that AWA and SWA cables are different products manufactured using different armouring materials.

This distinction materially weakens the Defendants' assertion that the Technical Cards and Design Cards related exclusively to the Kota Bharu Airport Project.

The Plaintiff's case is further reinforced by D7's own testimony. When referred to the cables shown at page 95 of Bundle B5, D7 accepted that the cable bore the words "Southern Cable" and that Protech was identified as the supplier. However, despite those features, he maintained that he had never seen that particular cable before. GJS : Ok. Since you say these are testing, can I just refer you to page 95 then? Ok. Do you also confirm that these cables are different from S/N E4bsCq5bgEi3W85mOxrXzg what, are not what you have supplied to the Kelantan Airport Project? WCW : Your question again? GJS : Can you confirm the cables here are not the same cables that you have supplied to the Kelantan Airport Project? WCW : We do supply the similar cable, so for this particular, I am not too sure where did it go. I mean, I have not seen this cable before. GJS : You have not seen this cable before? Ok. But yet, you can see the word “Southern Cable” being embossed on the cable, right? WCW : Yes, I do. …. GJS : Yes, you do. Ok. So, and in fact, you say you’ve not seen it before but you see the supplier’s name there is written as Protech, do you agree? WCW : Yes, I saw. …. GJS : Ok. But yet you say you’ve not seen it before, is that your testimony to Court? WCW : Yes, I do not –

Despite acknowledging that the cable bore the Plaintiff's mark and identified Protech as supplier, D7 was unable to explain its origin or destination.

In my view, D7's evidence is telling. If the Defendants' case were correct that all counterfeit products had been manufactured S/N E4bsCq5bgEi3W85mOxrXzg exclusively for the Kota Bharu Airport Project, one would have expected D7 to be able to identify every such product. His inability to do so gives rise to the reasonable inference that counterfeit products bearing the Southern Cable Marks existed outside the confines of that project.

Having considered the evidence as a whole, I find considerable force in the Plaintiff's contention that the activities of D1, D2 and D6 were not confined to a single isolated production for the Kota Bharu Airport Project. The Technical Cards and Design Cards pre-dated D6's appointment for that project; they contained express manufacturing instructions to print the words "SOUTHERN CABLE"; they identified D6 as customer long before the project commenced; they referred to different categories of cables from those supplied to the Kota Bharu Airport Project; and D7 himself was unable to account for certain counterfeit cables discovered during the investigations.

I further accept the Plaintiff's reliance on the photographs obtained before the KPDN raid. D4 acknowledged during cross-examination that several photographs depicted cables and equipment located within D1's and D2's premises. These included stencils bearing the Plaintiff's lightning device, which were subsequently recovered during the raid. D1 also did not seriously dispute that the Technical Cards and Design Cards appearing in those photographs belonged to it. This contemporaneous evidence lends further support to the Plaintiff's case that the counterfeit operation extended beyond the Kota Bharu Airport Project.

Accordingly, I find that the Plaintiff has established, on a balance of probabilities, that the infringing activities of D1, D2 and D6 were not confined solely to the Kota Bharu Airport Project. Rather, the evidence supports the inference that the manufacture and supply of counterfeit products bearing the Southern Cable Marks formed part of a broader and continuing course of conduct. b) Whether the Offending Goods Were Sub-Standard or

The Defendants submitted that the Plaintiff did not plead that the Offending Goods were sub-standard cables and that no laboratory test or expert evidence was tendered to prove that the cables were unsafe. I do not accept this submission.

Paragraph 44(b) of the Statement of Claim pleaded that the Offending Goods were not of the same standard, reliability and quality as the Plaintiff’s goods. The Plaintiff also pleaded, at paragraph 42 of the Statement of Claim and in its Replies to the Defences, that the Offending Goods had not been properly tested, inspected or certified. In my view, these pleadings sufficiently put in issue the Plaintiff’s case that the Offending Goods were not of the same standard and quality as genuine Southern Cable products.

More importantly, the evidence adduced at trial supports the Plaintiff’s position. D7 accepted during cross-examination that cables which are not designed, constructed, tested, approved, installed or used in accordance with prescribed standards or S/N E4bsCq5bgEi3W85mOxrXzg specifications may be regarded as sub-standard. He further agreed that cables not tested by a certification body would be sub-standard.

D3 also accepted that D1 and D2 had not sent products printed with the Southern Cable brand to SIRIM for testing because the Southern Cable trade mark did not belong to them. He agreed that the products bearing the Southern Cable print had not been certified by

The Defendants' assertion that their cables had undergone proper testing and certification was not supported by cogent documentary evidence specific to the Offending Goods. D7 accepted that if such tests had been carried out, documents would exist to prove this. No such documents were produced. D7's evidence that D6 conducted internal tests after installation does not address the Plaintiff's complaint. Such tests were internal, not conducted by an independent certification body, and did not establish the materials, specifications, or long-term durability of the Offending Goods.

D3 also accepted that D1 and D2 had not previously supplied cables for MRT or airport projects and that Magnum Cable was not one of the brands specified in the contract with WCT Berhad for the Kota Bharu Airport Project. This is significant, because the project specifications required established brands such as the Plaintiff’s. The Defendants could not simply replicate the external appearance of Southern Cable products and then contend that their products were equivalent in standard and reliability.

I therefore find that the Plaintiff has established that the Offending Goods were not genuine Southern Cable products, were not tested and certified as Southern Cable products, and were not shown to be of the same standard, reliability and quality as the Plaintiff’s goods. c) The Defendants’ Late Admissions and Conduct

I also take into account the manner in which D1, D2 and D6 conducted their defence. Prior to trial, they denied the Plaintiff’s claims of trade mark infringement, passing off and unlawful interference. D1 and D2 also opposed the Plaintiff’s application for summary judgment. However, during trial, they admitted to the production, sale and purchase of the Offending Goods through the evidence of D3 and D7, and thereafter conceded liability for trade mark infringement, passing off and unlawful interference.

I accept the Plaintiff’s submission that these admissions came late and only after the evidence adduced at trial became difficult to dispute. The Defendants’ reliance on settlement negotiations is of limited assistance and, in any event, cannot detract from the fact that they elected to contest the claim until trial.

I also find that the Defendants’ conduct did not demonstrate genuine remorse. D3 accepted that products found during the raid were manufactured by D1 and D2 and printed with the word “Southern”. Yet he later suggested that those products were Magnum Cable products. I find this explanation difficult to reconcile with the objective evidence.

D7’s evidence was also unsatisfactory in material respects. He accepted that the use of non-certified cables in an airport, which operates continuously and involves high human traffic, could pose high potential damage. He also accepted that a circuit breaker is not fool-proof. Despite this, D6 proceeded to procure and install the Offending Goods.

In my view, the Defendants’ conduct shows a serious disregard for the Plaintiff’s statutory rights, goodwill and reputation. It also reflects a willingness to use the Plaintiff’s marks on cables intended for a public infrastructure project, without certification from the Plaintiff or any proof that the products were of the same standard as genuine Southern Cable products. F.

On a balance of probabilities, I find that: i. D1 and D2 have committed trademark infringement under section 54(1) of the TMA 2019, as it has used signs identical to the Southern Cable Marks in relation to goods identical to those for which the Southern Cable Marks are registered; ii. D1, D2, and D6 have committed trademark infringement under section 54(2)(b) of the TMA 2019, as it has used signs similar to the Southern Cable Marks in relation to goods identical to those for which the Southern Cable Marks are registered, thereby giving rise to a likelihood of confusion on the part of the public; S/N E4bsCq5bgEi3W85mOxrXzg iii. D1, D2, and D6 have also committed the tort of passing off by misrepresenting the cables produced by D1 and D2 as the Plaintiff’s; iv. D1, D2, and D6 have unlawfully interfered with the Plaintiff’s trade; v. D1, D2, and D6 is liable for conspiracy to injure the Plaintiff by unlawful means; vi. In the circumstances of this case, it is in the interest of justice and there are special circumstances to pierce the corporate veils of D1, D2, and D6 to hold the individual defendants, namely D3 and D7. The corporate veil is pierced as against D3 and D7, who are held personally liable jointly with the relevant Corporate Defendants; and vii. The claims against D4 and D5 are dismissed

I now turn to the remedies. The Plaintiff seeks declaratory relief, injunctive relief, delivery up, disclosure, destruction or disposal of the Offending Goods, damages, an account of profits, additional, aggravated and/or exemplary damages, publication of notice or apology, interest and costs.

I accept the Plaintiff’s submission that the reliefs sought are broadly consistent with the TMA 2019. Sections 56(3) and 56(7) of the TMA 2019 empower the Court to grant remedies including injunction, S/N E4bsCq5bgEi3W85mOxrXzg damages, account of profits and additional damages. Section 58 provides for orders for erasure, removal or obliteration of infringing signs. Section 59 provides for delivery up of infringing goods, material or articles. Section 60 provides for orders concerning disposal.

In the present case, injunctive relief is plainly necessary to restrain further infringement and passing off. Given the Defendants’ admissions and the evidence of infringing goods bearing the Southern Cable Marks, I find that a permanent injunction should be granted.

I also find that orders for delivery up, removal, obliteration, disposal or destruction of the Offending Goods are justified. These orders are necessary to prevent further circulation or use of counterfeit goods bearing the Plaintiff’s marks. However, such orders should apply to goods, materials, articles, stencils, packaging, advertisements, documents or other items bearing the Southern Cable Marks which are within the possession, custody or control of the Defendants.

I agree with the Defendants that the law does not compel the impossible. The maxim lex non cogit ad impossibilia, referred to in Unilever (M) Holdings Sdn Bhd v So Lai & Anor [2015] 3 CLJ 900, is relevant insofar as the Defendants contend that certain cables may already have been installed and incorporated into the Kota Bharu Airport Project. However, that does not absolve the Defendants from their obligation to disclose the existence, location and particulars of such goods and to comply with all reasonable consequential orders within their power.

I further find that disclosure orders are necessary. The Defendants are in the best position to identify the quantity of Offending Goods manufactured, supplied, sold or installed, the persons to whom such goods were supplied, and the documents relating to the same. Without disclosure, the Plaintiff would not be able to ascertain the full extent of the infringement or properly assess damages. I therefore accept the Plaintiff’s submission that disclosure should not be confined only to suppliers but should include relevant customers, contractors, projects, delivery orders, invoices, purchase orders and related records, subject to appropriate safeguards for confidentiality where necessary.

I also find that an order for assessment of damages is warranted. The Plaintiff has shown infringement of its registered marks, passing off and unlawful interference with its trade and business. The assessment of damages will enable the Plaintiff to quantify its loss, including damage to goodwill and reputation, and any loss arising from the Defendants’ unlawful use of the Southern Cable Marks.

As to an account of profits, I find that this is a remedy available under section 56 of the TMA 2019. Whether the Plaintiff ultimately elects damages or an account of profits, and whether any account is to be pursued, may be dealt with at the consequential stage or at assessment, so as to avoid double recovery.

I also accept the Plaintiff’s submission that additional damages under section 56(7) of the TMA 2019 are available in an appropriate case. The Defendants knowingly used the Plaintiff’s marks on S/N E4bsCq5bgEi3W85mOxrXzg cables that were not genuine Southern Cable products. The conduct was deliberate and concerned goods used in construction and infrastructure works, where quality and certification are material considerations. These are aggravating circumstances relevant to the Court’s discretion.

On exemplary damages, I am guided by Sambaga Valli a/p KR Ponnusamy v Datuk Bandar Kuala Lumpur & Ors and another appeal [2018] 1 MLJ 784, where the Court of Appeal explained that exemplary or punitive damages are awarded to signify disapproval, condemnation or denunciation of the defendant’s tortious conduct, and to punish conduct involving vindictiveness, malice or contumelious disregard of the plaintiff’s rights. I also take into account the principles in Rookes v Barnard [1964] AC 1129, as applied in Dr Zakir Abdul Karim Naik v Ramasamy a/l Palanisamy and another suit [2024] 9 MLJ 881, namely that exemplary damages must be used with restraint, that the plaintiff must be the victim of the punishable behaviour, and that the means and conduct of the parties may be relevant.

In the present case, I find that the Defendants’ conduct justifies the Court’s consideration of exemplary damages. The Defendants knowingly reproduced the Plaintiff’s marks on non-genuine cables, supplied them for use in a public infrastructure project, and only admitted liability late in the proceedings. Such conduct warrants denunciation and deterrence, particularly in an industry where counterfeit or non-standard cables may pose risks beyond ordinary commercial loss.

As for aggravated damages, I am guided by Sambaga Valli and Great Food Industries Sdn Bhd v Mazlan bin Mahamad Isa (t/a Perniagaan Idaman Murni) & Ors [2024] 9 MLJ 738. Aggravated damages are compensatory in nature and may be awarded where the injury to the plaintiff has been intensified by the defendant’s conduct, including malice, insolence, arrogance or the manner in which the wrong was committed.

I find that aggravated damages are also justified in principle. The Plaintiff’s injury is not confined to ordinary commercial loss. The Defendants’ acts placed the Plaintiff’s marks on non-genuine cables used or intended to be used in projects, thereby exposing the Plaintiff to reputational damage and potential complaints or consequences arising from goods that the Plaintiff did not manufacture or certify. The manner in which the infringement was carried out intensified the harm to the Plaintiff’s goodwill and reputation.

I also accept the Plaintiff’s submission that a notice and/or apology may be justified. The purpose of such relief is not merely punitive. It serves to inform customers, contractors and the public that counterfeit products bearing the Southern Cable Marks had been supplied, and to reduce confusion between genuine Southern Cable products and the Offending Goods. This is especially important given that cables and wires are essential building components and may not be easily identified by end-users after installation.

The Defendants argued that a public notice or apology would cause unnecessary panic and confusion. I am not persuaded that this is a S/N E4bsCq5bgEi3W85mOxrXzg sufficient reason to refuse the relief altogether. The risk of confusion already arises from the Defendants’ own unlawful use of the Plaintiff’s marks. A properly worded notice can be framed in a measured and accurate manner so as to avoid unnecessary alarm while still protecting the Plaintiff’s goodwill and the interests of customers who may have received the Offending Goods.

As for the issue of costs, the Plaintiff has substantially succeeded against D1, D2, D6, D3 and D7, but has failed against D4 and D5. The Defendants, for their part, admitted the principal causes of action only at trial, occasioning avoidable expense.

Balancing these matters, I order that:

D1, D2, D6, D3 and D7 shall jointly and severally pay the Plaintiff's costs of RM 100,000.00.

there shall be no order as to costs as between the Plaintiff and D4 and D5, each bearing their own costs, having regard to the fact that the claims against them is dismissed. Dated this day of 30th June 2026. -Sgd-EDWIN PARAMJOTHY MICHAEL MUNIANDY JUDICIAL COMMISSIONER COMMERCIAL DIVISION (NCC 7) HIGH COURT OF MALAYA KUALA LUMPUR S/N E4bsCq5bgEi3W85mOxrXzg Counsel: For the Plaintiff : Cindy Goh Joo Seong together with Jessye Ng Ann Jerl, Yong Kin Ngai and Jessica Wong Yi Sing (Messrs. Tan, Cheong & Partners) For the Defendants : Foong Cheng Leong together with Low Li Qun and Rachel Tan Yi Ling (Messrs. Foong Cheng Leong & Co.)