U Care Products Sdn. Bhd. v LIM Xian Kun (JA-22IP-6-11/2024)

This suit is pertaining to trademark infringement and/or passing off. The Plaintiff contends to be the exclusive licensee of the registered trademark. The Defendant, via enclosure 15, applied to strike out the Amended Writ of Summons (“AW”) and Amended Statement of Claim (“ASOC”).

The AW and ASOC were amended via O. 20 r. 3 of the Rules of Court 2012 (“ROC”). This Court allowed enclosure 15 but with certain limitations, for the reasons laid out further below. S/N mzMF3n9sfkOZrTvkvB2xw

One of the grounds for enclosure 15 was that the Defendant’s Defence, filed on 15.1.2025, set out the crucial defence that the Plaintiff is not the sole and exclusive distributor in Malaysia of products bearing the SIMBA trademark.

The Plaintiff, through the ASOC, subsequently sought to include an averment that the Plaintiff is the exclusive licensee of the registered trademark owned by Sonison Malaysia. The AW and ASOC were filed by the Plaintiff on 28.1.2025, via enclosures 12 and 13 respectively. In the AW, the Plaintiff also seeks two additional declarations to the initial prayers dated 21.11.2024, one of which is a declaration that the Plaintiff is the exclusive licensee.

The ASOC inserted a new paragraph 9a stating that the Plaintiff is the exclusive licensee for the products listed carrying the registered trademark of a lion design with the word “Simba”. Paragraph 9a further listed 16 items and a detailed elaboration of the products with the said trademark.

A newly inserted paragraph 9b sets out the facts which the Plaintiff pleads to be the acts committed by the Defendant amounting to a breach of the registered trademark. These acts include, among others, “offers or exposes the Products for sale under the sign”, “imports or exports goods under the sign”, “uses the sign on an invoice, catalogue, business letter, business paper, price list or other commercial documents, including any such documents in any medium”. S/N mzMF3n9sfkOZrTvkvB2xw

Another newly inserted paragraph 9c states that the Defendant had infringed the registered trademark of the Plaintiff. In this paragraph, the Plaintiff pleads that the Defendant had sold products bearing the name and registered trademark on online marketplace platform by the Defendant without the approval (“kebenaran”), permission (“keizinan”) and/or consent (“persetujuan”) of Sonison and/or Plaintiff.

Several other paragraphs in the ASOC were amended to include references to the Plaintiff as the “exclusive licensee” (“pemegang lesen ekslusif”) and to insert a relief seeking a declaration that the Plaintiff is the exclusive licensee of the “Simba” registered trademark in Malaysia. Findings by this Court

This Court is of the view that the AW and ASOC, filed only after the Defence to be clearly an afterthought. Both the amended versions of the AW and ASOC, clearly are against O. 20 r.1(3) of the ROC as the amendments sought to insert new material facts touching on “capacity of party” and adding a new cause of action for trademark infringement. S/N mzMF3n9sfkOZrTvkvB2xw

O. 20 of the ROC states as follows: Amendment of writ without leave (O. 20, r. 1)

1.

Subject to paragraph (3), the plaintiff may, without leave of the Court, amend the writ once at any time before the pleadings in the action begun by the writ are deemed to be closed.

Where a writ is amended under this rule after service thereof, then, unless the Court otherwise directs on an application made ex parte, the amended writ shall be served on each defendant to the action.

This rule shall not apply in relation to an amendment which consists of:

Addition, omission or substitution of a party to the action or an alteration of the capacity in which a party to the action sues or is sued;

The addition or substitution of a new cause of action; or

Without prejudice to rule 3(1), an amendment of the statement of claim, if any, endorsed on the writ, unless the amendment is made before the service of the writ on any party to the action. S/N mzMF3n9sfkOZrTvkvB2xw Application for disallowance of amendment made without leave (O. 20, r. 4)

4.

Within fourteen days after the service on a party of a writ amended under rule 1(1) or of a pleading amended under rule 3(1), that party may apply to the Court to disallow the amendment.

Where the Court hearing an application under this rule is satisfied that if an application for leave to make the amendment in question had been made under rule 5 at the date when the amendment was made under rule 1(1) or rule 3(1) leave to make the amendment or part of the amendment would have been refused, it shall order the amendment or that part to be struck out.

Any order made on an application under this rule may be made on such terms as to costs or otherwise as the Court thinks just.

The AW and the ASOC contain amendments that concern the alteration of the Plaintiff’s capacity by adding a statement that the Plaintiff is the “exclusive licensee”. They also introduced a new cause of action for “trademark infringement”. In addition, the ASOC included a new allegation that the Defendant had marketed the products through online marketplace platforms. S/N mzMF3n9sfkOZrTvkvB2xw

This amendment amounts to a response to the Defence that the Plaintiff by relying on the “Sole Distribution Agreement” with Sonison of Taiwan, merely has “a sole and exclusive right as distributor” which is to sell the products and nothing more.

The Plaintiff as pleaded in the Defence, is not an exclusive licensee over the trademarks registered and/or own by Sonison in Malaysia, but only distributor of the trademark products of Taiwan.

It follows that without the said amendments, the Plaintiff neither has the right nor is an interested party to bring the “passing off” action against the Defendant.

By way of paragraph 9a, the ASOC sought to include a statement of fact that the Plaintiff is the “exclusive licensee”, in order to bring the Plaintiff’s claim within the ambit of a “passing off” action. This clearly constitutes an alteration relating to the capacity of a party and contravenes O. 20, r. 1(3) of the ROC.

The amendments in paragraphs 9b and 9c of the ASOC inserting facts relating to the online marketplace platform are viewed by this Court as an exercise by the Plaintiff, to expand the Plaintiff’s claim for damages, including general and exemplary damages. These amendments are also intended to justify the relief sought by the Plaintiff for the disclosure of sales and profits obtained, including those arising from such online sales. S/N mzMF3n9sfkOZrTvkvB2xw

The amendment is, without a doubt, a belated attempt by the Plaintiff to ensure that the relief sought for the removal of online postings is supported by the pleadings. Otherwise, the said relief would have no factual foundation.

This Court’s attention is directed to O. 18 r. 19 of the ROC which provides as follows: Striking out pleadings and endorsements (O. 18, r. 19)

19.

The Court may at any stage of the proceedings order to be struck out or amended any pleading or the endorsement, of any writ in the action, or anything in any pleading or in the endorsement, on the ground that—

it discloses no reasonable cause of action or defence, as the case may be;

it is scandalous, frivolous or vexatious;

it may prejudice, embarrass or delay the fair trial of the action; or

it is otherwise an abuse of the process of the Court, and may order the action to be stayed or dismissed or judgment to be entered accordingly, as the case may be. S/N mzMF3n9sfkOZrTvkvB2xw

Having read O. 20 and O. 18 of the ROC together, and taking into consideration all the earlier deliberation by this Court on the newly inserted amendments to the AW and ASOC, this Court ordered for the newly amended paragraphs of the ASOC be struck out, leaving only the original facts as pleaded in the original Writ and Statement of Claim in enclosures 1 and 2.

This Court is of the view, the exercise of discretion by this Court to set aside the amendments, is permissible as the clear wordings in the said O. 20 r. 4 and O. 18 r. 19 allow for “that part of the pleading” to be struck out. This Court, in doing so made the said pronouncement on 21.5.2025, when allowing enclosure 15 with only the inserted amendments be struck out.

The suit will proceed based on the original pleadings that were filed and not the AW, ASOC and it follows, the ASOD filed. In coming to this decision, this Court finds that the original suit in enclosure 1 and 2 contain some facts to be deliberated, irrespective of whether weak or otherwise. It is premature at this stage to conclude the Plaintiff’s claim in its original suit will not succeed (see: Nescajaya Sdn Bhd v Suairah bt Parigula & ors [2011] 9 MLJ 774). (NURULHUDA NUR’AINI BINTI MOHAMAD NOR) JUDGE HIGH COURT OF MALAYA JOHOR BAHRU S/N mzMF3n9sfkOZrTvkvB2xw Dated 21st of May 2025 Solicitors for the Plaintiff : Jason Looi Chun Leong, Messrs Chris Choo & Thomas Law Chambers Solicitors for the Defendant : 1.

Tan Kah Kiat Messrs Tan Kah Kiat & Co S/N mzMF3n9sfkOZrTvkvB2xw