The Polo/Lauren Company, L.P. v LAWA APPAREL SDN BHD (WA-24IP-13-04/2025)

This is the Court's Grounds of Judgment in respect of Enclosure 11, being the Defendant's application for security for costs in the sum of RM200,000.00 filed on 5 May 2025.

The Plaintiff is The Polo/Lauren Company, L.P., a limited partnership registered under the laws of New York, United States of America, bearing registration number F941102000287. The Plaintiff is the registered proprietor of various trademarks in Malaysia and globally, including the well-known "POLO" and "Ralph Lauren" marks. S/N wUmavZY1u0sqwM8gQQsmA

The Defendant is Lawa Apparel Sdn. Bhd., a company incorporated in Malaysia, which filed Trademark Application No. 2014010631 for the registration of a mark in Class 18.

The present proceedings arise from an appeal against the decision of the Registrar of Trademarks dated 15 January 2025, filed by way of Originating Summons (Enclosure 1) on 14 May 2025.

By Enclosure 11, the Defendant now seeks the following reliefs: a) That the Plaintiff provide security for the Defendant's costs in the sum of RM200,000.00 or such sum as the Court deems just; b) Payment of such security within seven (7) days of the Order; c) That all further proceedings be stayed until security is provided; d) That in the event of non-compliance, the Originating Summons be struck out with costs; e) Costs of the application on an indemnity basis.

Learned counsel for the Defendant had raised the following issues with respect to their application for security for costs. I shall address each of these issues raised in turn. S/N wUmavZY1u0sqwM8gQQsmA

The first issue deals with the objection raised by learned counsel for the Defendant’s to Enclosure 17. Enclosure 17 is the affidavit affirmed by Maggie Wong Ka Wai (Maggie) on behalf of the Plaintiff in resisting the Defendant’s application for security for costs.

Learned counsel for the Defendant objects to Enclosure 17 on two grounds: first, that it was affirmed before a Notary Public in Hong Kong (said to be a non-Commonwealth jurisdiction) rather than before a Malaysian Consular Officer; and second, that the affidavit is entirely in English without a national language translation.

With respect to the first ground of objection, the requirement to affirm before a Malaysian Consular Officer is provided under Order 41 rule 12 ROC 2012 which provides as follows: “Order 41 Rule 12 Affidavit taken outside Malaysia admissible without proof of seal A document purporting to have affixed or impressed thereon or subscribed thereto the seal or signature of a Court, Judge, notary public or person having authority to administer oaths in a Commonwealth country and in the case of any other country the seal or signature of a consular officer of a Commonwealth country in testimony of an affidavit being taken before it or him shall be admitted in evidence without proof of the seal or signature being the seal or signature of that Court, Judge, notary public or person.” S/N wUmavZY1u0sqwM8gQQsmA

The provision is directed at admissibility without proof of seal or signature. It draws a distinction between affidavits taken in a Commonwealth country and those taken “in the case of any other country”. The Defendant’s submission is that Hong Kong falls into the latter category and therefore requires the seal or signature of a consular officer in the manner contemplated by the rule.

To support that proposition, learned counsel for the Defendant submits that Order 41 rule 12 should be read together with s.3(1) and (2) of the Diplomatic and Consular Officers (Oaths and Fees) Act 1959 and s.5 of the Oaths and Affirmations Act 1949, which provide:

s.3(1) and (2) of Diplomatic and Consular Officers (Oaths and Fees) Act 1959

“Powers as to oaths and notarial acts abroad

Every diplomatic and consular officer exercising his functions in any country or place outside Malaysia may in that country or place administer any oath or affirmation and take any affidavit, and also do any notarial act which any notary public can do within Malaysia; and every oath, affirmation, affidavit and notarial act administered, sworn or done by or before any such person shall be as effectual as if duly administered, sworn or done by or before any lawful authority in any part of Malaysia.

Any document purporting to have affixed, impressed or subscribed thereon or thereto the seal and signature of any person authorised by this section to administer an oath or affirmation in testimony of any oath, affirmation, affidavit or act being administered, taken or done by or before him, shall be admitted in evidence without proof S/N wUmavZY1u0sqwM8gQQsmA of the seal or signature being the seal or signature of that person, or of the official character of that person. (3) The Yang di-Pertuan Agong may by order direct that so much of subsection (2) as relates to the proof of notarial acts done in any country or place outside Malaysia by diplomatic and consular officers of Malaysia shall apply in relation to notarial acts done by such persons as may be specified in the order, being persons serving in the diplomatic, consular or other foreign service of a Power which, by arrangement with the Yang di-Pertuan Agong, has undertaken to represent the interest of Malaysia in any country or place in which Malaysia has for the time being no diplomatic or consular representatives.”

(ii) s.5 of the Oath and Affirmation Acts 1949 “Taking of oaths out of Peninsular Malaysia

Any oath or affidavit required for the purpose of any court or matter in Peninsular Malaysia, or for the purpose of the registration of any instrument in any part of Peninsular Malaysia, may be taken or made in any place out of Peninsular Malaysia before any person having authority to administer an oath in that place: Provided that, subject to section 3 of the Diplomatic and Consular Officers (Oaths and Fees) Act 1959 [Act 348], this section shall not apply to any oath required to be taken for the purposes of the Constitution.”

Premised on the above salient provisions, learned counsel for the Defendant submitted that when an affidavit is to be affirmed outside Malaysia in a non-Commonwealth country, it must be sworn before a Consular Officer of Malaysia; absent such an officer, it must be sworn before a Consular Officer of a Commonwealth country. Learned counsel argued that a harmonious construction of the second part of S/N wUmavZY1u0sqwM8gQQsmA O.41 Rule 12 ROC 2012, which addresses affidavits sworn "in the case of any other country," dictates that it should be sworn before a Consular Officer. Thus, according to learned counsel, because Hong Kong is no longer a Commonwealth country, having acquired the status of a Special Administrative Region of the People's Republic of China in 1997, any affidavit affirmed there must be sworn before a Consular Office of Malaysia.

Learned counsel placed reliance on the case of Diageo Ireland v My Flexitank Industries Sdn Bhd [2015] CLJU 1176, where Wong Teck Meng JC had stated as follows: - “…It is only in the case of any other country (non Commonwealth) that the seal or signature of a consular of a Commonwealth country is recognised. In fact, section 5 of the Oaths and Affirmation Act 1949 (Revised 1977) allows any person having authority to administer an oath in any place out of Peninsular Malaysia for an affidavit required for the purpose of any court or matter in Peninsular Malaysia. O. 41 r. 12 ROC is consistent with the provision in section 5 Oaths and Affirmation Act 1949 (Revised 1977). With regards section 3(1) of the Diplomatic and consular Officers (Oaths and Fees) Act 1959, it merely provides that every diplomatic and consular officer exercising his functions in any country or place outside Malaysia may in that country or place administer oath or affirmation and take any affidavit but it does not mandate they are the only ones, to the exclusion of others, who can perform this function. This section is only about powers as to oaths and notorial acts abroad that our Malaysian diplomatic and consular officer can perform, and not as a bar against the others who are authorised to perform such a function under O. 41 r. 12 ROC.” S/N wUmavZY1u0sqwM8gQQsmA

As a starting point of my discussion on this issue, I find that the case of Diageo Ireland must be read in context. Wong Teck Meng JC held that Section 5 of the Oaths and Affirmation Act 1949 allows affidavits to be taken before "any person having authority to administer an oath" outside Peninsular Malaysia. His Lordship further clarified that Section 3(1) of the Diplomatic and Consular Officers (Oaths and Fees) Act 1959 does not mandate that Malaysian diplomatic or consular officers are the only persons who can administer oaths abroad.

In addressing the Defendant’s point in contention, I am also cognizant of the following provisions of the ROC 2012, which are directly relevant to the alleged procedural issues that have been raised by the Defendant. In this regard, I make references to 3 salient provisions which governs technical objections. Firstly, Order 2 Rule 3 of the ROC 2012 which provides as follows: “Order 2 Rule 3 Preliminary objection for non-compliance of rules not allowed A Court or Judge shall not allow any preliminary objection by any party to any cause or matter or proceedings only on the ground of non-compliance of any provision of these Rules unless the Court or Judge is of the opinion that such non-compliance has occasioned a substantial miscarriage of justice or occasioned prejudice that cannot be cured either by amendment or an appropriate order for costs or both. S/N wUmavZY1u0sqwM8gQQsmA

Further Order 41 Rule 4 of the ROC 2012 which provides as follows: Order 41 Rule 4 Use of defective affidavit An affidavit may, with the leave of the Court, be filed or used in evidence notwithstanding any irregularity in the form thereof.

Tying these provisions together is Order 92 Rule 4 of the ROC 2012, which preserves the Court’s inherent powers in the following terms: Order 92 Rule 4 Inherent powers of the Court For the removal of doubt it is hereby declared that nothing in these Rules shall be deemed to limit or affect the inherent powers of the Court to make any order as may be necessary to prevent injustice or to prevent an abuse of the process of the Court.”

Ultimately, the critical question is whether the alleged irregularity occasions any genuine prejudice, introduces any new factual dispute, or substantively affects the matter to the extent that justice cannot be served unless the affidavit is rejected. That said, in my considered view, the objection raised by learned counsel for the Defendant neither alters the substance of the evidence nor creates any unfairness to the Defendant that cannot be remedied. I find that any perceived irregularity is rectified by the filing of Enclosure 24, affirmed by Wong Ka Wai Maggie before the Malaysian Consular Officer in Hong Kong. This filing, in effect, addresses the Defendant's complaint and supersedes the objection previously raised regarding Enclosure 17. S/N wUmavZY1u0sqwM8gQQsmA

In the circumstances, I find no merit in the Defendant’s preliminary objections on this issue. Enclosure 17 is admissible. Further and in any event, Enclosure 24 has been properly affirmed before the Malaysian Consular Officer in Hong Kong and cures any alleged defect.

Regarding the second objection, that the affidavit (Enclosure 17) is exclusively in English without a translation in the national language, reference is drawn to Order 41 Rule 13(1) of the Rules of Court 2012, which stipulates: "An affidavit of a deponent who is out of the jurisdiction may be in the English language and unless the Court otherwise orders, need not be accompanied by a translation in the national language."

This provision creates a clear exception for affidavits affirmed outside the jurisdiction. Enclosure 17 was affirmed in Hong Kong by Wong Ka Wai Maggie, a citizen of Hong Kong. As such, it falls squarely within the exception under Order 41 Rule 13(1) and need not be intituled in, or translated into, the national language.

In this regard, I find that the Defendant's reliance on Order 92 Rule 1 ROC 2012 is misplaced. Order 92 Rule 1 governs the general use of language in court documents but does not override the specific exception provided under Order 41 Rule 13(1) of the ROC 2012 for S/N wUmavZY1u0sqwM8gQQsmA affidavits affirmed outside the jurisdiction. Thus, I find the objection taken on this ground to be wholly without merit.

Learned counsel for the Defendant raised doubts regarding the letter of authorization dated 9 April 2025, issued by the Plaintiff's paralegal, Wong Ka Wai Maggie ("Maggie"), which appears as Exhibit IAJ-1 of the Plaintiff's Affidavit in Support. The Defendant questions Maggie's credentials, asserting that, as a paralegal and not a lawyer, she lacks the authority to sign such a document. Furthermore, the Defendant alleges the letter was issued by Ralph Lauren Asia Pacific Limited, rather than the Plaintiff, to Mirandah Asia or Ivan.

I find this objection similarly misconceived. Maggie is duly authorised to act for the Plaintiff. As demonstrated in Exhibit MW-1 to the Plaintiff's Reply Affidavit, the relevant Power of Attorney expressly empowers her to do so. There is no requirement that such a representative be legally qualified. Maggie's role encompasses oversight of the protection and enforcement of the Plaintiff's intellectual property rights across the Asia Pacific region, and she is specifically authorised to issue instructions to external counsel where necessary. I find that this authority plainly extends to the present matter. Issue 3- Standing of Ivan Arnold Jonathan S/N wUmavZY1u0sqwM8gQQsmA

Learned counsel for the Defendant has also challenged the standing of Ivan Arnold Jonathan (“Ivan”) in affirming the Plaintiff’s Main Affidavit, contending that he lacks the requisite legal standing or authority to represent the Plaintiff. I find that this objection too is without merit. The Plaintiff had duly authorised Ivan to affirm the Plaintiff’s Main Affidavit.

It is pertinent to note that the Plaintiff’s Main Affidavit was confined to introducing the relevant pleadings, declarations, written submissions and the Bundle of Authorities previously filed by the parties before MyIPO. The Plaintiff’s Main Affidavit did not traverse or determine substantive matters but merely facilitated the placing of the existing record before this Court. Accordingly, any objection to Ivan’s standing is purely technical and does not prejudice the Defendant in any manner.

Learned counsel for the Defendant submitted that the failure to state the Plaintiff's registration number in the Originating Summons (Enclosure 1) is a fundamental defect going to the root of the matter, not a mere technical irregularity.

In this regard, I find that the Plaintiff has produced Exhibit MW-2 (in Enclosure 24), being the Certificate of Registration bearing registration number F941102000287, thereby curing the omission. S/N wUmavZY1u0sqwM8gQQsmA

In the same vein, I find that the Defendant has not demonstrated any substantial prejudice or substantial miscarriage of justice arising from the initial omission. The Defendant is fully aware of the Plaintiff's identity, has filed detailed affidavits in response, and has not been deprived of the ability to defend the proceedings or to seek costs.

The suggestion that the omission is a "tactical manoeuvre" to deprive the Defendant of costs is speculative and unsupported by evidence. The Plaintiff's identity and legal status are now clearly established on the record.

Cases such as Mohd Azli Abd Aziz v Datuk Ainon Marziah Wahi & Ors [2010] CLJU 995 and Balakrishnan Ramasundram v Sargunam P Seeniappan [2021] CLJU 2341 (cited by the Defendant) concern affidavits that were fundamentally defective and could not be cured by subsequent evidence where no application for leave was made under Order 41 rule 4 ROC 2012. Those cases are distinguishable.

Here, the defect (if any) relates to the Originating Summons, not an affidavit. The defect has been cured by the production of the Certificate of Registration, and no substantial prejudice has been shown.

The omission of the registration number in the Originating Summons is a technical irregularity that has been cured. It does not constitute a fundamental defect. S/N wUmavZY1u0sqwM8gQQsmA Issue 5: Plaintiff's Presence, Assets, and Standing in Malaysia

Learned counsel for the Defendant submitted that the Plaintiff is a foreign entity with no address, property, or assets in Malaysia, and that any costs order would be unenforceable.

With respect, I disagree. The evidence before the Court establishes the following: a) The Plaintiff trades in Malaysia through Ralph Lauren (Malaysia) Sdn. Bhd. (Company No. 200901012497), a registered Malaysian company. b) Ralph Lauren Malaysia's registered address is Level 21, Suite 21.01, The Gardens South Tower, Mid Valley City, Kuala Lumpur, is within the jurisdiction. c) Ralph Lauren Malaysia operates retail stores in Malaysia and distributes goods bearing the Plaintiff's trademarks. (See Exhibit MW-5 in Enclosure 17.) d) The Plaintiff owns valuable registered trademarks in Malaysia that are actively used in commerce. These trademarks are intangible assets of substantial commercial value located within the jurisdiction. S/N wUmavZY1u0sqwM8gQQsmA

The Plaintiff has exhibited in Exhibit MW-3 (in Enclosure 24) which is an extract from the Companies Commission of Malaysia confirming the registration and existence of Ralph Lauren Malaysia.

Learned counsel for the Defendant further argued that Ralph Lauren Malaysia is a separate legal entity and not a party to these proceedings, and therefore any costs order against the Plaintiff would be unenforceable.

This argument is misconceived for the following reasons: a) The Plaintiff's registered trademarks in Malaysia are assets that can be the subject of enforcement proceedings. b) The commercial activities of Ralph Lauren Malaysia, as part of the Ralph Lauren Group, demonstrate the Plaintiff's substantial commercial presence and interest in Malaysia. c) The Plaintiff, as the registered proprietor of valuable trademarks actively used in Malaysia, has a real and substantial connection to the jurisdiction.

To elaborate further on the points I have stated above, in trademark opposition and infringement matters, the plaintiff's ownership of registered trademarks within the jurisdiction constitutes a significant asset and connection to the jurisdiction for the purposes of enforcement of costs. S/N wUmavZY1u0sqwM8gQQsmA

Accordingly, it is clear that the Plaintiff does indeed have assets within the jurisdiction, notably in the form of its very valuable registered trademarks which are being actively used in commerce throughout Malaysia. Coupled with its substantial trading activities conducted via Ralph Lauren Malaysia, the Plaintiff undeniably has a significant stake in the Malaysian market. This conclusively rebuts the Defendant’s allegation of a lack of financial standing.

In addition, the Plaintiff brought this Honourable Court’s attention to the substantial sales turnover generated from the sale of goods bearing the Plaintiff’s various trademarks through Ralph Lauren Malaysia over the last five financial years. These figures, which are summarised in TABLE 2 in the Plaintiff’s Affidavit in Reply for Security for Costs clearly demonstrate the significant scale of the Plaintiff’s commercial operations and brand presence within Malaysia. The salient details of TABLE 2 is reproduced below: TABLE 2 Fiscal Year Ending 31 March Amount (in excess of RM$, rounded off) 2019/2020 76,721,000.00 2020/2021 39,687,000.00 2021/2022 61,313,000.00 2022/2023 101,030,000.00 2023/2024 127,361,000.00 S/N wUmavZY1u0sqwM8gQQsmA

This robust sales performance further underscores the Plaintiff’s strong financial stake and established goodwill in the Malaysian market. Taken together with the evidence already adduced namely, the existence and activities of Ralph Lauren Malaysia as evidenced by Exhibit MW-3 in the Plaintiff’s Affidavit in Reply for Security for Costs and the Plaintiff’s valuable registered trademarks actively used in commerce, it is beyond dispute that the Plaintiff possesses the requisite financial standing and legitimate interest to sustain these proceedings.

Moreover, the sales of goods bearing the Plaintiff’s trademarks are carried out through a well established, integrated retail network within Malaysia. This network, which is non-exhaustive, includes the following outlets and channels as listed in TABLE 3 in the Plaintiff’s Affidavit in Reply for Security for Costs. TABLE 3 NO. LOCATION

Pavilion Kuala Lumpur Lot. 3.55.00 & 3.56.00, Level 3, Pavilion Kuala Lumpur, 168 Jalan Bukit Bintang, 55100 Kuala Lumpur, Wilayah Persekutuan, Malaysia.

Parkson Pavilion Lot 5.41, Level 5, Parkson Pavillion Shopping Mall, 168 Jalan Bukit Bintang 55100, Kuala Lumpur, Wilayah Persekutuan, Malaysia.

Isetan KLCC Ground floor, Isetan KLCC, Suria KLCC, Kuala Lumpur City Centre, 50088 Kuala Lumpur, Wilayah Persekutuan, Malaysia. S/N wUmavZY1u0sqwM8gQQsmA

lsetan Gardens Isetan Gardens, Unit 1/F, the Gardens, Mid Valley City, Lingkaran Syed Putra, 59200 Kuala Lumpur, Wilayah Persekutuan, Malaysia.

KLIA Mitsui Lot No. G29, Ground Floor, Mitsui Outlet Park KLIA Sepang, Persiaran Komersial, 64000 KLIA, Sepang, Selangor Darul Ehsan, Malaysia.

KLIA Mitsui Lot No. G63, Ground Floor, Mitsui Outlet Park KLIA Sepang, Persiaran Komersial, 64000 KLIA, Sepang, Selangor Darul Ehsan, Malaysia.

Genting Highlands Suite 530 & 532, Genting Highlands Premium Outlets KM13, 69000 Genting Highlands, Pahang Darul Makmur, Malaysia.

Genting Highlands Suite 908, Genting Highlands Premium Outlets KM13, 69000 Genting Highlands, Pahang Darul Makmur, Malaysia.

Johor Premium Outlet Suite/Lot 604, Johor Premium Outlet Indahpura, 81000, Kulaijaya Johor Darul Takzim, Malaysia.

Johor Premium Outlet Suite/Lot 804, Johor Premium Outlet Indahpura, 81000, Kulaijaya Johor Darul Takzim, Malaysia.

Gurney Paragon 163D-1-26, Gurney Paragon Mall, Persiaran Gurney, 10250 Penang, Malaysia.

This extensive retail presence further illustrates the Plaintiff's substantial commercial footprint and sustained exploitation of its registered trademarks. This reinforces the position that the Plaintiff S/N wUmavZY1u0sqwM8gQQsmA possesses significant assets in the form of its registered trademarks and actively derives substantial revenue and goodwill through ongoing commercial activities within Malaysia.

In sum, I find that the Plaintiff's established and widespread trading operations, coupled with its valuable assets within this jurisdiction, conclusively negate the Defendant's allegations of a lack of financial standing.

The Defendant has not adduced evidence demonstrating that enforcement of a costs order against the Plaintiff would be practically impossible or unduly difficult.

I am satisfied that the Plaintiff has demonstrated sufficient presence, assets, and standing in Malaysia. The Plaintiff holds registered trademarks of significant value in Malaysia and conducts business through Ralph Lauren Malaysia. Consequently, I find that any costs order in favour of the Defendant would be enforceable against the Plaintiff's assets within this jurisdiction.

O. 23 r. 1 of the ROC 2012 empowers the Court to order for security for costs in the following manner: “Security for costs of action (O. 23, r. 1)

Where, on the application of a defendant to an action or other proceedings in the Court, it appears to the Court—

that the plaintiff is ordinarily resident out of the S/N wUmavZY1u0sqwM8gQQsmA jurisdiction;

that the plaintiff (not being a plaintiff who is suing in a representative capacity) is a nominal plaintiff who is suing for the benefit of some other person and that there is reason to believe that he will be unable to pay the costs of the defendant if ordered to do so;

subject to paragraph (2), that the plaintiff’s address is not stated in the writ or originating summons or is incorrectly stated therein; or

that the plaintiff has changed his address during the course of the proceedings with a view to evading the consequences of the litigation, then, if, having regard to all the circumstances of the case, the Court thinks it just to do, it may order the plaintiff to give such security for the defendant’s costs of the action or other proceedings as it thinks just.”

The application of Order 23 rule 1 involves a two-stage inquiry: a) First, whether the plaintiff falls within one of the grounds delineated under Order 23 Rule 1(1)(a) or (b) of the ROC

b) Second, whether, in the exercise of its discretion, security for costs should be ordered.

It is not disputed that the Plaintiff is ordinarily resident outside Malaysia. Therefore, the Plaintiff falls within Order 23 Rule 1(1)(a) of the ROC. In Lina Soo (F) v Ngu Chu Chiong @ Ngu Choo Chiong & Anor [1999] 1 LNS 76, the High Court held that Order 23 S/N wUmavZY1u0sqwM8gQQsmA Rule 1 of the ROC 2012 gives the court the jurisdiction and the discretionary powers to order security for costs as the court thinks just and on such terms as the court may direct.

In Goldquest International Ltd v Teh Leong Kiat [2003] AMEJ 0021, the court was of the view that it has the discretion to order security by: a) taking into account all the circumstances of the particular case in order to achieve a balance between ensuring that protection is afforded to the defendant; and b) at the same time, avoiding injustice to the plaintiff by unnecessarily shutting out the plaintiff in the conduct of his litigation.

The court will not order security for costs simply because the plaintiff is ordinarily resident out of the jurisdiction (refer cases of Kasturi Palm Products v Palmex Industries Sdn Bhd [1986] 2 MLJ 310; Yu Gouqin v Yap Kwee Yin [2020] AMEJ 0499). The court will require a foreign plaintiff to give security for costs if it is just to do so. (refer cases of Aeronave SpA v Westland Charters Ltd [1971] 3 All ER 531, CA (Eng), Taimoku Corporation v Mutiara Motors Performance Products Sdn Bhd [2020] AMEJ 0296).

In Sir Lindsay Parkinson & Co Ltd v Triplan Ltd [1973] 2 All ER 273, the English Court of Appeal (Lord Denning MR) set out the circumstances which the court would consider in deciding on whether to order security for costs. They are: S/N wUmavZY1u0sqwM8gQQsmA a. whether the claim is bona fide with good prospects of success; b. whether there is an admission on the pleadings or elsewhere that the money is due; c. whether there is payment into court of a substantial sum of money (not merely a payment into court to get rid of a nuisance claim) (Order 22A r 5(1)); d. whether the application for security for costs is being used to stifle a genuine claim; and e. whether the want of means of the plaintiff is a result of the conduct of the defendant.

Having discussed the trite principles with respect to the grant of security for costs, I will now consider the merits of this application. In the present case, the Defendant seeks security for costs solely on the basis that the Plaintiff is a foreign company. That, without more, is not determinative. The Plaintiff advances a legitimate grievance arising from the Defendant's impugned conduct, which is said to have prejudiced the Plaintiff's rights and commercial interests.

The Plaintiff has made substantial investments in this country, albeit through its authorised distributors, and has established considerable goodwill and a reputation as a leading brand in the fashion industry. Its trademarks, popularly known as “POLO”, are S/N wUmavZY1u0sqwM8gQQsmA widely recognised. As is often the case with prominent brands, the Plaintiff is continually obliged to police infringements by traders seeking to capitalise on its hard-earned goodwill and reputation.

I concur with the Plaintiff's submission that a party demonstrating bona fide commercial intentions to sustain investment and expand its presence within the domestic fashion market should not be encumbered, much less deterred, by an order for security for costs in each infringement action solely on the basis of its foreign status. To impose such a requirement as a matter of course would not only undermine the Plaintiff's legitimate investor confidence, but also exert a broader chilling effect on foreign rights holders seeking to protect their intellectual property within this jurisdiction.

Further, as recognised in Faridah Begum, the mere fact that a plaintiff is foreign does not, without more, justify an order for security as of right. The touchstone remains whether it is just, in all the circumstances, to order security. On the facts as presented, I agree with the Plaintiff that the present case does not warrant the exercise of the court’s discretion to require security for costs.

Further elucidating on the case of Kasturi Palm Products v Palmex Industries Sdn Bhd [1986] 2 MLJ 310, it was held that security for costs cannot be ordered as of right from a foreign plaintiff but only if the court thinks it is just to order security depending on the circumstances of the case. The Court in Kasturi Palm held as follows: S/N wUmavZY1u0sqwM8gQQsmA “Order 23 Rule 1(i) provides that the Court may order security for costs “if, having regard to all the circumstances of the case, the Court thinks it just to do so.” “These words have the effect of conferring upon the Court the real discretion and indeed the Court is bound, by virtue thereof, to consider the circumstances of each case, and in the light thereof to determine whether and to what extent or for what amount a plaintiff may be ordered to provide security for costs. It is no longer, for example, an inflexible or rigid rule that a plaintiff resident abroad should provide security for costs.” (Supreme Court Practice 1985 Vol. 1 p.384). In exercising its discretion, it is clear that the Court will have regard to all the circumstances of the case.”

In the present case, I do not find that the Defendant has demonstrated any particular difficulty in recovering costs from the Plaintiff, should such an order be made. Nor has the Defendant shown—beyond a bare assertion—that it would face undue difficulty or delay in enforcing a costs order in the United States. In the circumstances, the Plaintiff’s position that it is able to meet any costs order that may ultimately be made against it stands substantially unanswered.

Given the factual matrix of the case which clearly demonstrates the Plaintiff’s substantial and long-standing commercial presence in Malaysia, the active use of its trademarks, and its significant trading activities, the balance of justice plainly favours the Plaintiff. S/N wUmavZY1u0sqwM8gQQsmA

To reiterate my views aforesaid, the Plaintiff owns valuable registered trademarks in Malaysia. The Plaintiff trades in Malaysia through Ralph Lauren Malaysia and has a substantial commercial presence. There is no evidence that enforcement of a costs order would be practically impossible.

The Plaintiff's claim arises from an opposition to the Defendant's trademark application. The Plaintiff is the registered proprietor of well-known "POLO" and "Ralph Lauren" marks globally and in Malaysia. There is no suggestion that the claim is not bona fide or brought for an improper purpose.

While the merits of the appeal are not to be determined at this interlocutory stage, the Plaintiff's trademark opposition is based on established grounds under the Trade Marks Act 1976. There is no basis to conclude that the Plaintiff's case is weak or frivolous.

The Defendant seeks security in the sum of RM200,000.00. This is a substantial and, in my view, exorbitant sum for an appeal from the decision of the Registrar of Trademarks. The Defendant has not provided a detailed breakdown or justification for this quantum.

Ordering security for costs in such a substantial sum may have the effect of stifling the Plaintiff's legitimate appeal, particularly where the Plaintiff has established assets and commercial presence in Malaysia. In the exercise of discretion, it would not be just to order security for costs in this case. S/N wUmavZY1u0sqwM8gQQsmA

For the reasons set out above, I dismissed the Defendant's application for security for costs (Enclosure 11) with costs in the cause. Dated this 26th day of January 2026. -sgd-EDWIN PARAMJOTHY MICHAEL MUNIANDY JUDICIAL COMMISSIONER COMMERCIAL DIVISION (NCC 7) HIGH COURT OF MALAYA KUALA LUMPUR Counsel: For the Plaintiff : Mr. Sukumar Karuppiah together with Ms. Sarita Menon Mohan and Mr. George Mark Amirtharaj (Messrs. Sukumar Karuppiah & Co.) For the Defendant : Mr. Subramaniam a/l Paramasivam and Ms. Sivajothi a/p Ganason (Messrs. Adliza Subra Siti & Partners) S/N wUmavZY1u0sqwM8gQQsmA