WA-22IP-16-04/2017 & WA-22IP-17-04/2017 v WA-22IP-16-04/2017

1.

TUPPERWARE BRANDS MALAYSIA SDN. BHD. (Co. No.: 287324-M) … PLAINTIFFS

CMN INTERNATIONAL SDN. BHD. (Co. No.: 1181309-W)

NG YANG SWAN (NRIC No.: 740518-08-6376)

NURRAIDAH BINTI RAZALI (NRIC No.: 821012-14-5038) … DEFENDANTS (Heard together with) IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR (COMMERCIAL DIVISION) IN THE FEDERAL TERRITORY OF KUALA LUMPUR, MALAYSIA SUIT NO: WA-22IP-17-04/2017

1.

TUPPERWARE BRANDS MALAYSIA SDN. BHD. (Co. No.: 287324-M) … PLAINTIFFS

CMN INTERNATIONAL SDN. BHD. (Co. No.: 1181309-W)

AZRUL BIN SAMAT (NRIC No.: 930726-08-6693) 2

TAI YANG THING (NRIC No.: 760827-14-5972) … DEFENDANTS JUDGMENT (After trial)

The plaintiff companies (Plaintiffs) filed four suits (4 Suits) against various defendants for infringement of registered industrial designs

All the parties initially agreed for the 4 Suits to be heard together (1st Joint Hearing Order).

In the 4 Suits, the Plaintiffs applied for interlocutory injunctions to restrain all the defendants from, among others, infringing RID’s pending the disposal of the 4 Suits (Interlocutory Injunction Applications). I allowed the Interlocutory Injunction Applications - please see the judgment at [2018] 1 AMR 153 [Dart Industries (No. 1)]. The defendants’ appeal to the Court of Appeal against the judgment in Dart Industries (No. 1) has been withdrawn.

The parties subsequently agreed to vary the 1st Joint Hearing Order whereby the above two cases (2 Cases) are to be heard together and separately from the other two of the 4 Suits.

In the 2 Cases -

the first plaintiff company (1st Plaintiff) is an American company which is the registered owner of the following RID’s: 3

RID with registration no. MY09-00167-0101 (RID 0167) in the Register of Industrial Designs (Register). RID 0167 has been applied by the Plaintiffs in their “ECO Bottle” which is sold under the “Tupperware” trade mark. The pictorial representations of RID 0167 in the Register are reproduced in the left column of Appendix A to this judgment; and

RID no. MY13-01172-0404 (RID 1172) has been applied by the Plaintiffs to their “Modular Bowl Series” for food container covers and are sold under the Tupperware trade mark. The left column of Appendix B to this judgment depicts the pictorial representations of RID 1172 in the Register;

the second plaintiff company (2nd Plaintiff) is incorporated in Malaysia and is a sub-licensee of the 1st Plaintiff with the exclusive right to use RID 0167 and RID 1172 (2 RID’s);

the first defendant company (1st Defendant) is a Malaysian company which is involved in the business of retail and direct sales. The 1st Defendant distributes and retails, among others, the following products:

“Biolife Borneo” bottles. Photographs of Biolife Borneo bottles are shown in the right column of Appendix A; and

“Spuntino” and “Ciotolla” food container covers. Photographs of Spuntino and Ciotolla covers are shown in the right column of Appendix B; and 4

the individual defendants in the 2 Cases (Individual Defendants) are Malaysian citizens who are the 1st Defendant’s customers registered under the 1st Defendant’s “CMN Malaysian Entrepreneur” program (1st Defendant’s Program).

In the 2 Cases, the Plaintiffs claim that all the defendants in the 2 Cases (Defendants) have infringed the 2 RID’s under s 32(2) of the Industrial Designs Act 1996 (IDA). The Defendants have counterclaimed for declaratory orders that the Biolife Borneo bottles, Spuntino and Ciotolla food container covers (1st Defendant’s Products) do not infringe the 2 RID’s (Counterclaims).

The following questions arise in the 2 Cases:

whether the Defendants can contend that the 2nd Plaintiff has no right to claim for infringement of the 2 RID’s under s 33(1) and (4) IDA (Locus Standi Issue) when such a question -

has not been expressly pleaded in the Defence and

is not listed as an agreed issue to be tried in the 2 Cases (Agreed Issues). I am not able to find any previous Malaysian case which has decided on the Locus Standi Issue; and

what constitutes an infringement of the 2 RID’s pursuant to s 32(2)(a), (b) and (c) IDA? In this regard - 5

have the Plaintiffs pleaded sufficient particulars of the infringement of the 2 RID’s in the Statement of Claim in the 2 Cases (SOC’s) under O 18 rr 7(1) and 12(1) of the Rules of

is expert evidence required to prove or disprove a RID infringement?;

whether there is an application of -

the 2 RID’s to the 1st Defendant’s Products;

(ii) fraudulent imitations of the 2 RID’s to the 1st Defendant’s Products; or

(iii) obvious imitations of the 2 RID’s to the 1st Defendant’s Products;

has the 1st Defendant infringed the 2 RID’s?;

whether the Individual Defendants have infringed the 2 RID’s when they have not given evidence in the 2 Cases;

whether the Defendants can rely on the defence of “innocent” infringement of the 2 RID’s under s 35(3)(a) and (b) IDA. This is a novel question; and

what is the effect of judgments of Indonesian Courts (Indonesian Courts’ Judgments) regarding the 1st Plaintiff’s suits against an Indonesian company (an associate company of 6 the 1st Defendant) for the infringement of the 1st Plaintiff’s RID in Indonesia (identical to RID 0167) by Biolife Borneo bottles? C. Plaintiffs’ case

The Plaintiffs called six witnesses as follows:

Ms. Wong Suk Bun (SP1);

Mr. Seong Ho Baik (SP2);

Mr. Don Gerard Anthony Freeman (SP3);

Ms. Ding Yen Vern (SP4);

Mr. Taylor James Ross (SP5); and

Dr. Siti Noorbaiyah bt. Abdul Malek (SP6).

SP1, the 2nd Plaintiff’s Managing Director, gave the following evidence, among others:

the 1st Plaintiff -

is a wholly owed subsidiary of Tupperware Brands Corporation (TBC), a global direct selling company. The 1st Plaintiff is a licensee of TBC for the latter’s consumer products in more than 100 countries; and

owns all the intellectual property rights in Tupperware products and has state-of-the-art research and design facilities in the United States of America, Belgium and Singapore; 7

RID 0167 had been created by Ms. Famia E. Ablo in 2008 while RID 1172 was co-authored in 2013 by Ms. Julie L. Yessin and Ms. Jan-Hendrik de Groote. The creators of the 2 RID’s were employees of the 1st Plaintiff and had assigned the 2 RID’s to the 1st Plaintiff;

the Plaintiffs had spent a significant amount of time, effort, research and cost to design the 2 RID’s. The 2 RID’s have been applied to ECO Bottles and Modular Bowl covers (Plaintiffs’ Products). The Plaintiffs’ Products have been extensively promoted all over the world by brochures and on the internet; and

the sale of the 1st Defendant’s Products infringed the 2 RID’s. The 1st Defendant’s Products have also been promoted in a similar manner as that of the Plaintiffs’ Products.

SP2 is the 2nd Plaintiff’s Finance Director. SP2 testified on the amount of sales of the Plaintiffs’ Products in Malaysia from 2013 until March, 2017.

SP3 gave the following evidence, among others:

SP3 is a licensed private investigator (PI) in the employment of Star CMS Security Sdn. Bhd. (Star);

the Plaintiffs’ solicitors appointed Star to conduct investigation on behalf of the Plaintiffs regarding, among others, the 1st Defendant’s Products; and

SP3 had applied to be registered as a member of the 1st Defendant’s Program. SP3 then purchased the 1st Defendant’s 8 Products from the 1st Defendant (SP3’s Purchases). SP3’s Purchases are proven as follows -

“Customer Receipts” had been issued by the 1st Defendant to SP3 regarding SP3’s Purchases; and

the 1st Defendant’s Products purchased by SP3 from the 1st Defendant had been adduced as exhibits in the 2 Cases.

According to SP4, among others -

SP4 is employed by UC Security Sdn. Bhd. (UCS) and is a licensed PI;

the Plaintiffs’ solicitors have appointed UCS to investigate in the 2 Cases regarding, among others, the 1st Defendant’s Products; and

SP4 purchased the 1st Defendant’s Products from the Individual Defendants (SP4’s Purchases). The following evidence proved SP4’s Purchases -

SP4’s Purchases were paid by SP4’s deposit of cash into the bank accounts of all the Individual Defendants except for the third defendant in the first above case, Puan Nurraidah bt. Razali (Puan Nurraidah). Puan Nurraidah gave the bank account number of her husband, Encik Muhammad Asrul bin Aslah (Encik Asrul) and SP4 deposited the price of SP4’s Purchase from Puan Nurraidah into Encik Asrul’s bank account. All the cash deposit slips (Cash Deposit Slips) had been adduced by SP4; and 9

the subject matter of SP4’s Purchases had been produced as exhibits in the 2 Cases.

SP5 is the 1st Plaintiff’s Vice President. SP5 also holds the position as a director and Vice President of Tupperware Products Inc. (TPI). SP5 testified as follows, among others:

the 1st Plaintiff has granted a license to TPI (a wholly owned subsidiary of the 1st Plaintiff) to use the 1st Plaintiff’s products; and

TPI has entered into a sub-license agreement with the 2nd Plaintiff (Sub-License) wherein, among others, the 2nd Plaintiff has the exclusive right to use the 2 RID’s in Malaysia.

The Defendants have called an expert, Encik Mohd. Othman bin Mohd. Rahim (SD1) to give an expert opinion that the 1st Defendant’s Products have not infringed the 2 RID’s. SP6 is the Plaintiffs’ expert to rebut SD1’s expert view. I will discuss whether the Court can accept the expert testimonies of SD1 and SP6 in Part F(3) below. D. Defendants’ case

The Individual Defendants did not testify in the 2 Cases. In addition to SD1, the following witnesses testify on behalf of the Defendants:

Ms. Lindawaty (SD2);

Encik Adi Suhono Tjokro (SD3);

Encik Indra Mahaputra Pattiwaei (SD4); and 10

Mr. How Kam Chiong(SD5).

SD2, a homemaker, has testified that, among others, the 1st Defendant’s Products are different from the Plaintiffs’ Products.

SD3 is a Director of Operations of an Indonesian company, PT CMN Internasional Indonesia (CMNII), since 2017. According to SD3, among others -

the 1st Defendant’s Products were designed by a designer in CMNII and manufactured by an Indonesian company, PT Mitramulia Makumr (MM); and

the 1st Defendant’s Products do not infringe the 2 RID’s because they are different from the Plaintiffs’ Products; and

CMNII did not copy the 2 RID’s.

SD4 is the Chief Design Officer (CDO) of CMNII. SD4 gave the following evidence, among others:

after SD4 graduated from “Universitas Negeri Malang”, Indonesia in Visual Communication Designs in 2008, he worked as a part-time designer with many hotels until 2012;

in 2013, SD4 worked as a designer in an Indonesian company, PT Moor Sukses Internasional (MSI). MSI is now known as CMNII. In 2017, SD3 was transferred from MSI to CMNII and was promoted to be CMNII’s CDO; and 11

SD4 designed the 1st Defendant’s Products. In designing the 1st Defendant’s Products, SD3 did not copy the 2 RID’s or the Plaintiffs’ Products.

SD5, a director of the 1st Defendant, testified as follows, among others:

the 1st Defendant is an associate company of CMNII;

MM, the manufacturer of all “Moorlife” products (which include Biolife Borneo bottles, Spuntino and Ciatolla covers), has appointed the 1st Defendant to be MM’s sole distributor of Moorlife products in Malaysia;

any person may apply to be a member of the 1st Defendant’s Program (1st Defendant’s Program Member) so as to be entitled to purchase Moorlife products at a discount. The 1st Defendant’s Program Members are not the 1st Defendant’s employees or agents. The 1st Defendant’s Program Members do not have any exclusive right to market or promote Moorlife products;

the 1st Defendant has been granted a direct selling license by the Ministry of Domestic Trade and Consumer Affairs;

as a result of the interlocutory injunctions obtained by the Plaintiffs against the Defendants, sales of the 1st Defendant’s Products have dropped; and

the 1st Defendant’s Products do not infringe the 2 RID’s because they are different from the Plaintiffs’ Products. E. Locus Standi Issue 12 E(1). Whether Court may consider Locus Standi Issue which has not been pleaded

Section 33(1) and (4) IDA provide as follows: “33(1) The owner of a registered industrial design shall have the right to institute legal proceedings against any person who has infringed or is infringing any of the rights conferred by the registration of the industrial design. …

For the purposes of this section, “owner of a registered industrial design” means the registered owner and includes an assignee, a licensee or the beneficiary of a compulsory license granted under section 27; but if any proceedings are instituted by a person other than the registered owner, it must be proved that that person had made a prior request to the registered owner to institute proceedings for the infringement complained of by him and that the registered owner had refused or failed to institute the proceedings within three months from the receipt of the request, without prejudice however to the registered owner’s right to join in such proceedings.” (emphasis added).

Ms. Hemalatha Parasa Ramulu, the Plaintiffs’ learned counsel, submitted that the Defendants could not raise the Locus Standi Issue because such a question had not been pleaded in the DCC’s. I am not able to accept this submission for the following reasons:

paragraph 6 of the SOC’s (Paragraph 6) pleaded that the 2nd Plaintiff is a licensee of the 1st Plaintiff. Paragraph 6 is incorrect because the Sub-License states that TPI is a licensee of the 1st 13 Plaintiff and the 2nd Plaintiff is a sub-licensee of TPI. The Plaintiffs did not apply to Court to amend Paragraph 6 at any time. In such circumstances, before the time for the filing of DCC’s, the Defendants did not know and could not have known that the 2nd Plaintiff is only a sub-licensee of the 1st Plaintiff. Hence, the Defendants could not have pleaded in the DCC’s that the 2nd Plaintiff had no right to file an action for RID infringement pursuant to s 33(1) and (4) IDA. It is thus unjust to bar the Defendants from raising the Locus Standi Issue on the ground that this matter has not been pleaded in the DCC’s. It is to be noted that O 1A and O 2 r 1(2) RC enable the Court to deal with all cases with regard to the overriding interest of justice. O 1A and O 2 r 1(2) RC provide as follows: “Regard shall be to justice O 1A In administering these Rules, the Court or a Judge shall have regard to the overriding interest of justice and not only to the technical non-compliance with these Rules. O 2 r 1(2) These Rules are a procedural code and subject to the overriding objective of enabling the Court to deal with cases justly. The parties are required to assist the Court to achieve this overriding objective.” (emphasis added);

paragraph 2 DCC’s pleaded that the Defendants did not admit, among others, Paragraph 6 and the Defendants therefore put the Plaintiffs to prove Paragraph 6; 14

as explained below in paragraphs 27 and 28, the 2nd Plaintiff as a sub-licensee of the 1st Plaintiff has no right to file the 2 Cases under s 33(4) IDA. Even if it is assumed that the Defendants have not pleaded the Locus Standi Issue in DCC’s, this merely amounts to an erroneous admission by the Defendants regarding the legal effect of s 33(4) IDA. Such an erroneous admission of law does not bind the Defendants and the Court. I rely on Abdul Malek Ahmad JCA’s (as he then was) judgment in the Court of Appeal in Ahmad Tajudin bin Hj Ishak v Suruhanjaya Pelabuhan Pulau Pinang [1997] 1 MLJ 241, at 251, as follows - “Now, it is well-settled that counsel is not bound by an erroneous admission of law that he makes. Neither is the court. If counsel makes an erroneous admission of law, he may withdraw it at any time; even on appeal. If a judge acts upon an erroneous admission of law, this court is not bound by his views. We may look at the matter afresh. …” (emphasis added); and

all the cases relied on by Ms. Hemalatha could be distinguished on either one or both of the following grounds -

in the 2 Cases, Paragraph 6 had misled the Defendants to believe that the 2nd Plaintiff was a licensee of the 1st Plaintiff; and/or

as intended by Parliament, s 33(4) IDA shall be enforced irrespective of DCC’s and Agreed Issues - please see paragraphs 27 and 28 below. 15 E(2). Can Court consider Locus Standi Issue which is not listed in Agreed Issues?

O 34 r 2(2)(k) RC provides for the Agreed Issues. According to Ms. Hemalatha, the Locus Standi Issue is not listed in the Agreed Issues and consequently, the Defendants cannot be allowed to raise such a question in the 2 Cases. I am of the view that the Agreed Issues cannot bar the Defendants from raising the Locus Standi Issue because -

as explained in the above sub-paragraph 21(1), the Defendants had been misled by the erroneous Paragraph 6. In view of the erroneous Paragraph 6, it is contrary to justice to bar the Defendants from raising the Locus Standi Issue. O 1A and O 2 r 1(2) RC apply to O 34 r 2(2)(k) RC to ensure that the overriding interest of justice is not defeated by the Defendants’ erroneous omission to include the Locus Standi Issue in the Agreed Issues; and

irrespective of the Agreed Issues, s 33(4) IDA bars the 2nd Plaintiff’s right to file the 2 Cases - please see paragraphs 27 and 28 below. E(3). Whether 2nd Plaintiff can claim for RID infringement

Section 33(1) IDA confers a right to claim for RID infringement on an “owner” of a RID. Section 3(1) IDA has defined an “owner” of a RID as a “person who is registered” in the Register. In this case, the 1st Plaintiff is the registered “owner” of the 2 RID’s and is entitled to file the 2 Cases under s 33(1) IDA.

The Sub-License provides, among others, as follows: 16

the first recital (Recital 1) states that the 1st Plaintiff is the owner of, among others, certain designs regarding “Products” (defined in clause 1.1);

according to the second recital (Recital 2), the 1st Plaintiff has granted a license dated 1.1.1999 to TPI to manufacture and sell the Products in the “Territory” (clause 1.1 has defined “Territory” to mean Malaysia);

the third recital (Recital 3) provides that TPI is willing to grant and the 2nd Plaintiff desires to acquire, an exclusive license to distribute and sell the Products in Malaysia;

clause 2.1 (Clause 2.1) states that TPI grants “an exclusive license” to the 2nd Plaintiff to use, among others, the “Patents” (defined in clause 1.1 to include design registration) relating to the sale and distribution of the Products in this country;

clause 3.3 (Clause 3.3) provides that except as may be necessary for the purpose of, among others, carrying out the 2nd Plaintiff’s obligations under the Sub-License -

the 2nd Plaintiff agrees that it “will not represent in any manner whatsoever” that it has “any license, rights, title or interest” in any of the designs;

the 2nd Plaintiff acknowledges that it has no “license, rights, title or interest” in any of the designs; and 17

the 2nd Plaintiff acknowledges that it shall not “secure” “any license, rights, title or interest” in any of the designs; and

based on clause 6.4 (Clause 6.4) -

“TPI shall have the sole responsibility and discretion in taking any action as may be necessary or desirable to preserve and protect the validity of and goodwill pertaining to the Intellectual and Industrial Property Rights”; and

any litigation involving, among others, the designs, “shall be at the expense of and under complete control” of TPI.

Firstly, in the interpretation of an agreement the Court may refer to its recital - please see the judgment of the Court of Appeal delivered by Gopal Sri Ram JCA (as he then was) in Luggage Distributors (M) Sdn Bhd v Tan Hor Teng & Anor [1995] 1 MLJ 719, at 732-733. Accordingly, this Court may refer to Recitals 1, 2 and 3 in the construction of the Sub-License. It is clear from Recitals 1 to 3 and Clause 2.1 that the 1st Plaintiff is the owner of the 2 RID’s while TPI and the 2nd Plaintiff are the licensee and sub-licensee of the 2 RID’s respectively.

Secondly, under ss 91 and 92 of the Evidence Act 1950 (EA), no evidence can be adduced by any party to contradict, vary, add to or subtract from the terms the Sub-License - please see Chang Min Tat FJ’s judgment in the Federal Court case of Tindok Besar Estate Sdn Bhd v Tinjar Co [1979] 2 MLJ 229, at 227-228. Accordingly, oral evidence from SP1 and SP5 cannot contradict, vary, add to or subtract from the terms the Sub-License. 18

I am of the view that pursuant to s 33(4) IDA, the only circumstance a licensee of a RID has a right to file an action for a RID infringement is when the licensee has made a prior request to the RID owner to file a RID infringement suit (Request) and the latter has refused or failed to do so within three months from the receipt of the Request. This decision is premised on the following reasons:

there are two limbs in s 33(4) IDA as is clear from the use of the semicolon. The Court may refer to a punctuation mark in a statutory provision in the construction of the provision - please see the Supreme Court’s judgment delivered by Eusoff Chin SCJ (as he then was) in Prithipal Singh v Datuk Bandar, Kuala Lumpur (Golden Arches Restaurant Sdn Bhd, intervener) [1993] 3 MLJ 336, at 340-341. The two limbs of s 33(4) IDA are as follows -

an assignee, a licensee or a beneficiary of a compulsory license (granted under s 27 IDA) may file a RID infringement suit (1st

if a RID infringement action is instituted by a person who is not the RID owner (Claimant), it must be proved that that the Claimant has made a prior request to the RID owner to institute the RID infringement suit and the RID owner has refused or failed to file the RID infringement action within 3 months from the receipt of the request (2nd Limb);

the 1st Limb is subject to the 2nd Limb. This is clear from the use of the word “but” in the 2nd Limb. Accordingly, a licensee can only file a 19 RID infringement suit if the 2nd Limb is satisfied. A contrary interpretation will render redundant the 2nd Limb;

the above interpretation of s 33(4) IDA is similar to the construction of s 61(1)(a), (2) and (3) of the Patents Act 1983 (PA). I reproduce the relevant part of s 61 PA - “Infringement proceedings by licensee and beneficiary of compulsory licence. 61(1) For the purposes of this section, “beneficiary” means ‐

any licensee unless the licence contract provides that the provisions of this subsection do not apply or provides different provisions; …

Any beneficiary may request the owner of the patent to institute Court proceedings for any infringement indicated by the beneficiary, who shall specify the relief desired.

The beneficiary may, if he proves that the owner of the patent received the request but refuses or fails to institute the proceedings within three months from the receipt of the request, institute the proceedings in his own name, after notifying the owner of the patent of his intention but the owner shall have the right to join in the proceedings.

Notwithstanding that the three‐month period referred to subsection (3) has not been satisfied, the Court shall, on the request of the beneficiary, grant an appropriate injunction to prevent infringement or to prohibit its continuation, if the beneficiary proves that immediate action is necessary to avoid substantial damage.” 20 (emphasis added). In Kingtime International Ltd & Anor v Petrofac E & C Sdn Bhd [2018] MLJU 1840, at sub-paragraphs 18(3) and (4), it is decided as follows regarding s 61 PA - “18. I accept the Defendant’s submission that the 2nd Plaintiff as a licensee of the 2 Patents has no right under PA to claim for an infringement of the 3 Claims. This decision is premised on the following reasons: …

a patent licensee can only institute a patent infringement suit in the following two circumstances -

when a patent licensee has requested the patent owner to file a patent infringement action (Request) and the latter has refused or failed to do so within three months from the receipt of the Request (Three-Month Period) - please see s 61(1)(a), (2) and (3) PA; and

notwithstanding that the Three‐Month Period has not been satisfied, the patent licensee may apply to Court for an injunction (not for damages or account of profits) to restrain a patent infringement, if the patent licensee can prove that immediate action is necessary to avoid substantial damage to the patent licensee - please see s 61(4) PA; and

the above view is supported by the following High Court decisions -

in Premier Products Co Ltd & Anor v Zamrud Fibre Industries (M) Sdn Bhd & Anor [1994] 4 CLJ 1043, at 1053-1054, Abdul Malek Ahmad J (as he then was) held as follows - 21 “It is quite clear under s 59(1) [PA] that it is the owner of the patent who shall have the right to institute Court proceedings for infringement but a licencee may, under s. 61(2) [PA], request the owner of the patent to do so. Only if the owner had refused the request or failed to institute the proceedings within three months from the receipt of the request, as provided in s. 61(3) [PA], can the licencee institute the proceedings in his own name after notifying the owner but the owner shall have the right to join in the proceedings. … In effect the licencee cannot institute the proceedings and can do so only if the owner has failed to do so within three months of the licencee's request. In consequence, the second plaintiff in fact has no right to be a party to the action.” (emphasis added); and

Premier Products has been followed by Yaacob Md. Sam J (as he then was) in Fukuyama Automation Sdn Bhd v Xin Xin Engineering Sdn Bhd & Ors [2015] 9 MLJ 823, at paragraphs 92 and 93.” (emphasis added). The patent licensee in Kingtime International did not appeal to the Court of Appeal against the above judgment.

I find that the 2nd Plaintiff as a sub-licensee of the 2 RID’s cannot file the 2 Cases under s 33(1) and (4) IDA. On this ground alone, the 2nd Plaintiff’s claim in the 2 Cases is dismissed with costs. This decision is premised on the following reasons:

the 1st Plaintiff as the owner of the 2 RID’s has instituted the 2 Cases. Accordingly, TPI as a licensee of the 1st Plaintiff, is barred by the 2nd Limb from filing any RID infringement suit;

the 2nd Plaintiff as the 1st Plaintiff’s sub-licensee has no right under the 1st or 2nd Limb to institute the 2 Cases; and

even if it is assumed that the 2nd Plaintiff is not barred by s 33(4) IDA from filing the 2 Cases, the 2nd Plaintiff is estopped by Clauses 3.3 and 6.4 from filing the 2 Cases.

It is noted that our s 33(4) IDA is materially different from ss 234 and 235 of United Kingdom’s (UK) Copyright, Designs and Patents Act 1988 (CDPA). The relevant parts of ss 234(1), (2) and 235(1) CDPA provide as follows: “Rights and remedies of exclusive licensee 234(1) An exclusive licensee has, except against the design right owner, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

His rights and remedies are concurrent with those of the design right owner; and references in the relevant provisions of this Part to the design right owner shall be construed accordingly. … Exercise of concurrent rights 235(1) Where an action for infringement of design right brought by the design right owner or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the design right owner or, as the case may be, the 23 exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant. …” (emphasis added). F. RID infringement F(1). Elements of RID infringement

The definition of “industrial design” in s 3(1) and s 32 IDA provide as follows: “3(1) In this Act, unless the context otherwise requires - … “industrial design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include -

a method or principle of construction; or

features of shape or configuration of an article which -

are dictated solely by the function which the article has to perform; or

(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part; Infringement of registered industrial design 32(1) Subject to the provisions of this Act, the owner of a registered industrial design shall have the exclusive right to make or 24 import for sale or hire, or for use for the purposes of any trade or business, or to sell, hire or to offer or expose for sale or hire, any article to which the registered industrial design has been applied.

Subject to section 30, a person infringes the rights conferred by the registration of an industrial design if he, without the licence or consent of the owner of the industrial design, does any of the following things while the registration is still in force:

applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;

imports into Malaysia for sale, or for use for the purposes of any trade or business, any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the licence or consent of the owner; or

sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any of the articles described in paragraphs (a) and

(b).

Notwithstanding subsection (1), the right of the owner of a registered industrial design shall not extend to acts in respect of an article to which the registered industrial design is applied by or with the consent of the owner after the article has been lawfully imported into or sold in Malaysia.” (emphasis added).

Based on my understanding of the relevant provisions in IDA and the applicable cases, to succeed in a RID infringement action, the owner of a 25 RID (plaintiff) has to prove all the following three elements against a defendant:

the RID is in force and has not been -

expunged by the Court under s 24(1)(a) IDA; or

revoked by the Court pursuant to s 27(1)(a) IDA. Section 34 IDA provides that any ground to revoke the registration of a RID constitutes a defence in a RID infringement suit (1st Element);

no license or consent of the plaintiff has been obtained for the defendant’s act in question (2nd Element); and

the defendant has committed any one of the following infringing acts (3rd Element) -

the defendant has applied the RID to any “article” [please see the meaning of “article” in s 3(1) read with (2)(a), (b) and (c) IDA] in respect of which the RID is registered - please see s 32(2)(a) IDA;

the defendant has applied any “fraudulent imitation” of the RID (Fraudulent Imitation) to any article in respect of which the RID is registered - please see s 32(2)(a) IDA;

the defendant has applied any “obvious imitation” of the RID (Obvious Imitation) to any article in respect of which the RID is registered - please see s 32(2)(a) IDA; 26

when the defendant imports into Malaysia for -

sale; or

(ii) use for the purposes of any trade or business any article to which the RID, Fraudulent Imitation or Obvious Imitation has been applied outside Malaysia without the licence or consent of the plaintiff - please see s 33(2)(b) IDA]; or

when the defendant -

sells;

(ii) offers for sale;

(iii) keeps for sale;

(iv) hires;

offers for hire; or

(vi) keeps for hire any of the articles described in s 32(2)(a) or (b) IDA - please see s 32(2)(c) IDA.

To decide the 3rd Element -

the Court shall first identify the relevant customer, purchaser, consumer or user of the plaintiff’s “finished article” (Relevant Customer) - please see Ramly Ali JCA’s (as he then was) judgment 27 in the Court of Appeal case of F & N Dairies (M) Sdn Bhd v Tropicana Products Inc and other appeals [2013] MLJU 1591, at paragraphs 31-39, 44 and 45;

the Court must ascertain the “features of shape, configuration, pattern or ornament” of the plaintiff’s “finished article” (as registered in the Register) which “appeal to and are judged by the eye” of the Relevant Customer (Registered Eye Appeal Features) - F & N Dairies, at paragraphs 24-30. The Registered Eye Appeal Features cannot include the following matters -

“features of shape or configuration of an article which are dictated solely by the function which the article has to perform” - please see sub-paragraph (b)(i) of the definition of an “industrial design” in s 3(1) IDA and So Yin Yit & Anor v Choong Hon Ken & Anor [2018] AMEJ 1139, at paragraph 37;

“features of shape or configuration of an article which are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part” - please refer to sub-paragraph (b)(ii) of the definition of an “industrial design” in s 3(1) IDA and So Yin Yit, at paragraphs 39 and 40;

features of the plaintiff’s “unfinished” article - the definition of an “industrial design” in s 3(1) IDA has expressly referred to the features of the plaintiff’s “finished” article; and

features of the plaintiff’s “finished” article which have not been registered in the Register. 28

regarding UK cases, I have expressed the following view in Dart Industries (No. 1), at sub-paragraph 10(3) – “10(3) English cases have to be read with caution because the present UK’s Registered Designs Act 1949 [RDA 1949 (UK)] is worded differently from our IDA. In fact, RDA 1949 (UK) has been amended by [CDPA] - please see s 273 and Schedule 3 to CDPA. I will only rely on English cases regarding interpretation of provisions in RDA 1949 (UK) which are similar to our IDA;”;

to understand the Registered Eye Appeal Features, the Court may examine the plaintiff’s finished article (which embodies the Registered Eye Appeal Features) under s 60(3) EA - please see So Yin Yit, at sub-paragraph 31(3). In understanding the Registered Eye Appeal Features embodied in the plaintiff’s finished article, the Court cannot consider any feature in the plaintiff’s finished article which is not a Registered Eye Appeal Feature - please refer to the view of Martin Howe QC, “Russell-Clarke and Howe on Industrial Designs”, 7th Edition (2005), at paragraph 3-189;

to decide whether the defendant has applied -

the RID to the defendant’s article;

a Fraudulent Imitation; or

an Obvious Imitation the Court shall undertake a visual comparison between the Registered Eye Appeal Features and the features of shape, 29 configuration, pattern or ornament of the defendant’s article (Comparison) - please see Suriyadi Halim Omar J’s (as he then was) judgment in the High Court case of Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (M) Sdn Bhd & Anor [2005] 3 MLJ 30, at paragraph 19. The Comparison should be conducted as follows -

the Comparison is done from the viewpoint of the Relevant

(ii) the Registered Eye Appeal Features and the defendant’s articles are placed side by side - please see the decision of Aldous J (as he then was) in UK’s High Court case of Gaskell & Chambers Ltd v Measure Master Ltd [1993] RPC 76, at 79;

(iii) it is a matter of “impression created on the eye” of the Relevant Customer - please see Lloyd-Jacob J’s judgment in UK’s High Court in W. Lusty & Sons Ltd v Morris Wilkinson & Co (Nottingham) Ltd (1954) 71 RPC 174, at 180;

(iv) the Comparison is not conducted in a detailed manner. In Charles Henry Nevill & Ors v John Bennett & Sons (1898) 15 RPC 412, at 417, Hall VC decided as follows in the UK High Court - “I am afraid to go into any little details or too careful a comparison of the two, because all these cases the cleverer a designer the more careful he is that every detail shall be different. The whole thing can only be judged by 30 looking at the effect, the general effect, and the general comparison of the two. …” (emphasis added); and

the test is “whether treated as wholes, there is a sufficient resemblance” between the Registered Eye Appeal Features and the defendant’s article “to enable the Court to conclude that there is a substantial identity between them” - Lusty & Sons, at p. 180;

to determine whether the defendant has applied a Fraudulent Imitation -

the Court should first determine whether the defendant’s article is an imitation of the RID - please see Farwell J’s judgment in the UK High Court case of Dunlop Rubber Co Ltd v Golf Ball Development Ltd (1931) 48 RPC 268, at 279-280. Such a determination is done by way of the Comparison;

according to Dunlop Rubber Co, if the defendant’s article is an imitation of the plaintiff’s RID -

there is a Fraudulent Imitation if the defendant knows about the RID and has used the plaintiff’s RID in respect of the defendant’s article;

(ii) the plaintiff is not required to prove that the defendant has a “deliberate intention to steal the property of the owner of the registered design”; 31

(iii) the plaintiff does not have to prove that the defendant has a fraudulent or dishonest intention. This is because a defendant may have applied a Fraudulent Imitation even if the defendant has an honest belief that the defendant has altered the plaintiff’s RID so as to make a different design; and

(iv) a Fraudulent Imitation is less apparent than an Obvious Imitation”;

the judgment of a five-member coram of the High Court of Australia (its apex Court) in Polyaire Pty Ltd v K-Aire Pty Ltd & Ors [2005] HCA 32 concerns s 30(1)(a) to (c) of the then applicable Designs Act 1906 [DA (Australia)]. Section 30(1)(a) to (c) DA (Australia) is similar to our s 32(2)(a) to (c) IDA. Hence, Polyaire may be referred to in the construction of s 32(2)(a) to (c) IDA. According to Polyaire -

a Fraudulent Imitation may take place even though there is no dishonest concealment or disguise of the defendant’s copying of the RID; and

(ii) a Fraudulent Imitation is “a type of statutory fraud somewhat removed from fraud at common law, and the degree of moral turpitude or recklessness generally required for its establishment”. It was decided in Polyaire that the “kind of fraud that [DA (Australia)] seeks to remedy is closer in kind to, but is still not entirely analogous with, equitable fraud, which, for its establishment, does not 32 require that an actual intention to cheat must always be proved; proof of misconception of the extent of a person’s obligation, to act or to refrain from acting in a particular way, may suffice”; and

based on the Federal Court’s judgment delivered by Richard Malanjum CJ (Sabah & Sarawak) (as he then was) in Sinnaiyah & Sons Sdn Bhd v Damai Setia Sdn Bhd [2015] 7 CLJ 584, at paragraphs 48-52, the plaintiff is only required to prove a Fraudulent Imitation on a balance of probabilities and not beyond all reasonable doubt; and

the defendant has applied an Obvious Imitation in the following circumstances -

the defendant’s article is an imitation of the plaintiff’s RID -

based on Dunlop Rubber Co -

a defendant has committed an Obvious Imitation if the defendant’s article is “something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two”; and

(ii) there may be an Obvious Imitation even though the defendant may not know of the plaintiff’s RID. There is no requirement for the plaintiff to prove that the defendant has made an Obvious Imitation of the plaintiff’s RID; and 33

that, at the time of the infringement, he was not aware that the industrial design was registered; and

that he had, prior to that time, taken all reasonable steps to ascertain whether the industrial design had been registered.” (emphasis added). If a defendant can discharge the onus to prove the two cumulative conditions in s 35(3)(a) and (b) IDA regarding an Obvious Imitation, the Court has a discretion to refuse to order damages or an account of profits in favour of the plaintiff in an innocent RID infringement case. This discretionary power is clear from the use of the word “may” in s 35(3) IDA. In an innocent RID infringement case under s 35(3) IDA, the Court still has a discretion to grant injunctive relief (mandatory and prohibitory) to the plaintiff - please see s 35(1) and (2) IDA. F(2). Whether Plaintiffs have pleaded sufficient particulars of infringement of 2 RID’s in SOC’s 34

a defendant may have committed an “innocent” infringement in respect of an Obvious Imitation. Section 35(3) IDA provides as follows - “35(3) The Court may refuse to award damages, or to make an order for an account of profits, in respect of an infringement, if the defendant satisfies the Court -

Learned counsel for the Defendants, Mr. Mahendra Balakrishnan, has contended that the SOC’s have breached O 18 r 8(1) RC by not pleading sufficient particulars of the alleged infringement of the 2 RID’s by the Defendants (Required Particulars).

The relevant parts of O 18 rr 7(1), 8(1)(b), 12(1) and (3) RC state as follows: “Facts, not evidence, to be pleaded O 18 r 7(1) Subject to the provisions of this rule and rules 10, 11 and 12, every pleading shall contain, and contain only, a statement in a summary form of the material facts on which the party pleading relies for his claim … … Matters which shall be specifically pleaded O18 r 8(1) A party shall in any pleading subsequent to a statement of claim plead specifically any matter, for example, performance, release, any relevant statute of limitation, fraud or any fact showing illegality - …

which, if not specifically pleaded, might take the opposite party by surprise; or … Particulars of pleading O 18 r 12(1) Subject to paragraph (2), every pleading shall contain the necessary particulars of any claim, … …

The Court may order a party to serve on any other party particulars of any claim, defence or other matter stated in his pleading, or in any affidavit of his to stand as a pleading, or a statement of the nature of the case on which he relies, and the order may be made on such terms as the Court thinks just.” 35 (emphasis added).

I am not able to accept the above contention by Mr. Mahendra for the following reasons:

I am satisfied that the SOC’s have complied with O 18 rr 7(1) and 12(1) RC regarding the Required Particulars - please see paragraphs 19-27 and Table B of the SOC’s;

if the SOC’s lack the Required Particulars, before the filing of the DCC’s, the Defendants should have applied to Court for an order to compel the Plaintiffs to furnish “further and better particulars”

the Defendants have counterclaimed that the 1st Defendant’s Products do not infringe the 2 RID’s. The following DCC’s have pleaded in great detail why the 1st Defendant’s Products have not infringed the 2 RID’s -

in the above first case (1st Case) - please refer to paragraphs 7(b), 8, schedule 1, 9, 15, 20, 23, schedule 2, schedule 3, 25, 26, 28 and 34 DCC; and

in the above second case (2nd Case) - please see paragraphs 7(b), 8, schedule 1A, schedule 1B, 9, 15, 20, 23, schedule 2, schedule 3A, schedule 3B, 25, 26, 28 and 34 DCC. 36 In view of the above lengthy pleadings in the Counterclaims, I fail to see how the Defendants have been prejudiced by a lack of the

the Defendants have appointed an expert, SD1, to give an expert opinion that the 1st Defendant’s Products have not infringed the 2 RID’s. With the expert evidence of SD1, the Defendants cannot be caught by surprise regarding a lack of the Required Particulars; and

even if there is a lack of the Required Particulars in the SOC’s, I find that no injustice has been occasioned to the Defendants - please see O 1A and O 2 r 1(2) RC. Accordingly, the lack of the Required Particulars in the SOC’s is tantamount to an “irregularity” which is curable under O 2 r 1(3) RC. O 2 r 1(3) provides as follows - “The Court or Judge may, on the ground that there has been such non-compliance as referred to in paragraph (1), and on such terms as to costs or otherwise as it or he thinks just, bearing in mind the overriding objective of these Rules, exercise its or his discretion under these Rules to allow such amendments, if any, to be made and to make such order, if any, dealing with the proceedings generally as it or he thinks fit in order to cure the irregularity.” (emphasis added).

Before I end the above discussion, O 18 r 8(1) RC applies to a “pleading subsequent” to a SOC and not to a SOC. Hence, the Defendants cannot rely on O 18 r 8(1) RC in the 2 Cases. 37 F(3). Is expert evidence required to prove or disprove RID infringement?

In Dart Industries (No. 1), at sub-paragraph 10(8), I have followed previous cases decided in UK and Malaysia to decide that expert evidence is not required to assist the Court in the determination of a RID infringement action - “10(8) for the court to decide whether there is an Infringing Act or not, parties need not adduce expert evidence. This is clear from the following cases -

it was decided by Ghazali bin Cha J in the High Court case of Kean Beng Lee Industries (M) Sdn Bhd v Jintye Corporation Sdn Bhd [2011] 8 MLJ 572, at paragraphs 12- 15, as follows - “[12] Whether the expert evidence is necessary where the consumer products are in dispute? The answer to this, I will refer to two cases submitted by the plaintiff ie Gaskell & Chambers Ltd v Measure Master Ltd [1993] RPC 76 where Aldous J (as His Lordship then was) said: As is usual in registered design actions, embodiments of the plaintiff's and defendant's products and those of competitors were produced and considered by the witnesses The comparison that has to be made is between the 38 representations registered and the alleged infringements. And in the case of Leatheries Ltd v Lycett

26 RPC 166 Eve J said: The two cases before the House of Lords, to which Mr Terrell drew my attention when opening the case, have clearly demonstrated this - that in determining the issue of infringement in an action of this nature, the judge must disregard, and it seems to me as far as possible eliminate from his mind, all knowledge of the functions which the article illustrated in the design is intended to perform. Reading from what Lord Herschell said in those cases, it seems to me that what the judge has to do, and, as I read the observations, all that he has to do, is to look at the registered designs and the alleged infringement, and upon the view, he has to determine whether the one is a reproduction of the other, or, if not an exact and absolute reproduction, whether it is a reproduction so far embodying the nature, patter, shape or configuration (to use Lord 39 Herschell's words) of the design as to be in fact a mere colourable imitation or copy of the design. [13] Based on the above cases, the expert evidence is therefore not necessary to be brought during the trial. In determining the issue of infringement under the Act, the court only to make a visual comparison between the plaintiffs' registered industrial designs and the alleged infringing and/or offending flower pots. [14] From my observation, factors to be considered are the ordinary consumer, how their eye will judge the design, small differences in detail do not necessarily prevent infringement. Refer to Redland Tiles Ltd & Ors v Kua Hong Brick Tile Works [1966] 2 MLJ 62, where Abdul Aziz J said: The question whether a design which is alleged to infringe a registered designed is or is not an infringement must be determined by the eye alone. The court has to decide only whether the alleged infringement has the same shape or pattern, and must eliminate the question of the identity of function, since another design may have parts fulfilling the same functions without being an infringement. Small 40 differences in detail do not necessarily prevent infringement, but generally speaking, if under normal conditions of user the eye would not confuse the two designs, there is no infringement … Therefore, the eye is the sole test and looking at the two sets of tiles one would find that the sizes, the profiles and the configuration of these tiles when laid together are so similar that they are likely to confuse, and there appears to be no outstanding features to distinguish between these two sets of tiles. [15] Another factor is by looking at the design from a distance, as said by Lord Herschell in the case of Hecia Foundry Co v Walker, Hunter & Co (1889) 6 RPC 554 : It seems to me, therefore, that the eye must be the judge in such a case as this, and that the question must be determined by placing the designs side by side, and asking whether they are the same, or whether the one is an obvious imitation of the other. I ought perhaps to qualify this by saying that, as a design to be registered 41 must, by s 47, to be 'new or original design, not previously published in the United Kingdom,' one may be entitled to take into account the state of knowledge at the time of registration, and in what respect the design was new or original, when considering whether any variations from the registered design which appear in the alleged infringement are substantial or immaterial.” (emphasis added); and

according to Dunlop Rubber, at p. 277-278 - “… the test of a design is the eye and the eye alone. Now there is, I think, no possible doubt that "the eye" in that section means the eye of the Court, because the Court has ultimately to determine these questions, and it is the eye of the Court and the eye of the Court alone which has to be the judge of the design in question. That I think is plain from the language of the Section, and it is made even plainer by the authorities to which I have been referred. The eye is the eye of the Court, but the Court is entitled to be assisted and instructed by evidence so that when it applies its eye to the test, it may, have a mind to direct its eye which is instructed by the proper evidence, Such instruction may certainly be given to the Court by persons who are competent to do it with 42 regard to the prior art; that is to say, the Court is entitled to be told what the designs earIier than the registered Design represent, the differences or similarities between the earlier designs and the registered Design and the alleged infringing design. Evidence of that sort to instruct the Court is clearly relevant, and the Court must clearly pay attention to it. Such evidence was called before me on behalf of the Plaintiffs here. Mr. Gill and Mr. Swinburne both assisted me by explaining to me the structure, or the basic plan, of the various designs to which my attention has been called, and the similarities which they saw in the designs, but they did not, and rightly in my judgment did not, attempt to tell me that the alleged infringing design was an imitation of the registered Design, because that is a matter for me and for no one else.” (emphasis added). If expert evidence is required to decide whether there is an Infringing Act or not, this will unnecessarily increase legal costs and protract proceedings. These are the additional reasons why parties are not required to adduce expert evidence in RID Infringement Suits. Accordingly, if parties call expert witnesses in a RID Infringement Suit, the court may exercise its discretion under O 59 rr 2(2), 3(1), (2) and 8(b) [RC] to disallow costs for the experts in question. Based on the above cases and reasons, I reject the Defendants’ submission that the Plaintiffs are required to 43 tender expert evidence to prove that the Defendants have infringed the 1st Plaintiff’s RID’s; …” (emphasis added).

Despite Dart Industries (No. 1), the Defendants proceeded to call SD1. Consequently, the Plaintiffs called SP6 to rebut SD1’s expert view.

After a trial, the Court may decide the case without being bound by any interlocutory order previously made by the Court - please see the judgment of Gopal Sri Ram JCA (as he then was) in the Court of Appeal case of Hock Hua Bank (Sabah) Bhd v Yong Liuk Thin & Ors [1995] 2 MLJ 213, at 220. In other words, in deciding the 2 Cases after the trial, I am not bound by my own previous interlocutory injunction order granted in Dart Industries (No. 1). Accordingly, after the trial of the 2 Cases, I consider afresh the question of whether parties in a RID infringement suit may adduce expert evidence to prove or disprove the RID infringement.

After considering anew the above issue, I am not persuaded to depart from Dart Industries (No. 1). This is because the following High Court cases from UK support the stand taken in Dart Industries (No. 1):

it is decided in Gaskell & Chambers Ltd, at p. 79, as follows - “The decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses.” (emphasis added); and 44

Jacob J (as he then was) held as follows in Isaac Oren & Anor v Red Box Toy Factory Ltd & Ors [1999] FSR 785, at paragraphs 10 and 11 - “10. The defendants put in affidavits from two experts, Mr Anslow and Ms Stevenson. I have to say that I did not find either report helpful. This design is not for a technical product. The eye of the ordinary consumer needs no education from experts for this sort of article. …

I do not think, generally speaking, that “expert” evidence of this opinion sort (i.e. as to what ordinary consumer would see) in cases involving registered designs for consumer products is ever likely to be useful. There is a feeling amongst lawyers that one must always have an expert, but this is not so. No one should feel that their case might be disadvantaged by not having an expert in an area when expert evidence is unnecessary. Evidence of technical or factual matters, as opposed to consumer “eye appeal” may, on the other hand, sometimes have a part to play - that would be to give the court information or understanding which it could not provide itself.” (emphasis added). Based on the above cases and the reasons expressed in Dart Industries (No. 1), I cannot accept the expert evidence of SD1 and SP6 in deciding whether the 1st Defendant’s Products have infringed the 2 RID’s. Accordingly, the Plaintiffs and Defendants have to bear their own costs for calling SP6 and SD1 respectively to testify in the 2 Cases - please see Dart Industries (No. 1). 45

SD1 has undertaken a minute comparison between the 2 RID’s (as registered in the Register) and the 1st Defendant’s Products (Detailed Comparison). Based on the Detailed Comparison, SD1 gave his expert opinion regarding the differences between the 2 RID’s and the 1st Defendant’s Products. I am constrained to reject SD1’s expert testimony because -

SD1 did not identify the Registered Eye Appeal Features for the 2 RID’s - please see F & N Dairies;

SD1 should only have compared the Registered Eye Appeal Features for the 2 RID’s with the 1st Defendant’s Products - F & N Dairies. However, in the 2 Cases, SD1 had compared all the features of the 2 RID’s with the 1st Defendant’s Products;

the Comparison should be conducted from the viewpoint of the Relevant Customer of the Plaintiffs’ Products which embody the 2 RID’s - F & N Dairies; and

the Detailed Comparison should not have been conducted by SD1 because it is only a matter of general impression - please see Lusty & Sons and Charles Henry Nevill. F(4). Fulfilment of 1st and 2nd Elements

Section 9(1) IDA provides that the Register “shall” constitute prima facie evidence of all matters required or authorized by IDA to be entered therein. Based on s 22(3) IDA, the certificates of registration of the 2 RID’s “shall be prima facie evidence of the facts stated therein and of the validity of the registration” of the 2 RID’s - please see Honda, at 46 paragraph 8. In this case, the Defendants did not apply in the

expunge the 2 RID’s under s 24(1)(a) IDA; or

revoke the registration of the 2 RID’s pursuant to s 27(1)(a) IDA. In view of the above reasons, the 2 RID’s are valid and the 1st Element has thus been satisfied.

It is not disputed that the Defendants have not obtained a license or consent from the 1st Plaintiff in this case. Hence, the 2nd Element is fulfilled in the 2 Cases. F(5). What are Registered Eye Appeal Features of 2 RID’s?

I find as a fact that -

the Relevant Customer for RID 0167 is a consumer of a drinking bottle; and

as for RID 1172, the Relevant Customer is a user of a food container which has a cover.

Regarding RID 0167 -

I don the mantle of the Relevant Customer for RID 0167 (consumer of a drinking bottle) and peruse the features of RID 0167 as they appear on the Register. Such an examination reveals the following Registered Eye Appeal Features [Registered Eye Appeal Features (RID 0167)] - 47

features of shape and configuration of an overall curved shape that -

extends from the neck of the article outwardly to form a bulge at the shoulder of the article;

(ii) the shape then flows inwardly to form a narrow waist;

(iii) the shape subsequently extends outwardly again to form a broad hip; and

(iv) the shape lastly extends downwards towards the base;

features of shape and configuration in the form of four depressions in the shape of a spoon that extend vertically from the top to the bottom (Depressions); and

features of shape and configuration in the form of four protruding shapes (Protruding Shapes) which correspond with the Depressions; and

pursuant to s 60(3) EA I have taken the liberty to examine the ECO bottles which embody RID 0167 (exhibits P2 and P3A) but I have excluded features of those exhibits which are not on the Register. The examination of these exhibits confirmed the Registered Eye Appeal Features (RID 0167) as enumerated in the above sub-paragraph (1).

In respect of RID 1172 - 48

I assume the role of the Relevant Customer for RID 1172 (user of a food container with cover) and peruse the features of RID 1172 which have been registered. This reveals the following Registered Eye Appeal Features [Registered Eye Appeal Features (RID 1172)] -

features of shape and configuration in the form of a round shape cover that has a rim;

a singular tab that extends from the rim at one end;

a circular wall that extends upwardly from the top of the cover at the edge of the cover and after the rim portion; and

a circular groove or a trench that is created on the underside of the cover which corresponds to the wall that extends from the top part of the cover; and

the Registered Eye Appeal Features (RID 1172) are confirmed by my examination of the Modular Bowl cover (exhibit P4) (without considering the features of exhibit P4 which have not been registered). F(6). Whether Defendants have applied 2 RID’s to 1st Defendant’s Products

There is no evidence adduced by the Plaintiffs that the 2 RID’s have been applied by the Defendants to the 1st Defendant’s Products. On the contrary, there is evidence that SD4 has designed the 1st Defendant’s Products. 49 F(7). Are 1st Defendant’s Products imitations of 2 RID’s?

From the perspective of a user of a drinking bottle (Relevant Customer of RID 0167), I have compared Biolife Borneo bottles (exhibits P5A and P6A) side by side with the Registered Eye Appeal Features (RID 0167). As a matter of general impression (not a minute examination) and on a balance of probabilities, I am satisfied that Biolife Borneo bottles are imitations of RID 0167. This decision is premised on the following evidence and reasons:

Biolife Borneo bottles have the following Registered Eye Appeal Features (RID 0167) -

Biolife Borneo bottles have an overall curved shape that -

extends from the neck of Biolife Borneo bottles outwardly to form a bulge at the shoulder of the bottles;

(ii) the shape then flows inwardly to form a narrow waist;

(iii) the shape subsequently extends outwardly again to form a broad hip; and

(iv) the shape lastly extends downwards towards the base; and

Biolife Borneo bottles have -

the same Depressions in the shape of a spoon that extend vertically from the top to the bottom; and 50

(ii) the same Protruding Shapes which correspond with the Depressions; - please see Appendix A; and

based on Lusty & Sons, at p. 180, there is a sufficient resemblance between the Registered Eye Appeal Features (RID 0167) with Biolife Borneo bottles for this Court to conclude that there is “a substantial identity” between them (Sufficient Resemblance). I cannot accept Mr. Mahendra’s submission that the existence of a motif on Biolife Borneo bottles (Motif) negative the Sufficient Resemblance. This is because from the viewpoint of a user of a drinking bottle (Relevant Customer of RID 0167), the Sufficient Resemblance will not be displaced by the Motif.

Donning the mantle of the Relevant Customer for RID 1172 (a consumer of food container with cover), this Court compares -

Spuntino food container cover (exhibit P11B) side by side with the Registered Eye Appeal Features (RID 1172); and

Ciotolla food container covers (exhibits P7B, P8B, P9B and P10B) side by side with the Registered Eye Appeal Features (RID 1172) - please see Appendix B. On a balance of probabilities and as a matter of general impression, I find as a fact that Spuntino and Ciotolla food container covers are imitations of RID 1172. This finding is based on the following evidence and reasons: 51

Spuntino and Ciotolla food container covers possess the following

round shape cover that has a rim;

(ii) a singular tab that extends from the rim at one end;

(iii) a circular wall that extends upwardly from the top of the cover at the edge of the cover and after the rim portion; and

(iv) a circular groove or a trench that is created on the underside of the cover which corresponds to the wall that extends from the top part of the cover; and

there is a sufficient resemblance between the Registered Eye Appeal Features (RID 1172) on the one part with Spuntino and Ciotolla food container covers on the other part, for this Court to decide that there is “a substantial identity” between them. F(8). Whether fraudulent imitations of 2 RID’s have been applied to 1st

Ms. Hemalatha has contended that fraudulent imitations of the 2 RID’s have been applied to the 1st Defendant’s Products. I am not able to accept this submission due to the following evidence and reasons:

SD4 has given detailed evidence on how he has designed the 1st Defendant’s Products. SD4’s testimony is supported by his own contemporaneous hand drawn drawings in - 52

exhibits D67, D70A, D70B and D70C (regarding Biolife Borneo bottles); and

exhibits D68, D71A, D71B and D71C (regarding Spuntino and Ciotolla food container covers). The vigorous cross-examination of SD4 by Ms. Hemalatha has not revealed any reason to doubt SD4’s veracity;

there is no evidence to prove that SD4 has actual knowledge of the 2 RID’s and has applied fraudulent imitations of the 2 RID’s to the 1st Defendant’s Products; and

as decided in Polyaire, there is no evidence of “misconception of the extent of [SD4’s] obligation, to act or to refrain from acting in a particular way” which supports a finding of fraudulent imitations of the 2 RID’s to the 1st Defendant’s Products. I cannot accede to Ms. Hemalatha’s contention that this Court should consider Biolife Borneo bottle (exhibit P60) because such an exhibit is not the basis of the Plaintiffs’ claim in the 1st Case.

In any event, premised on the evidence and reasons elaborated in the above paragraph 50, I find as a fact that the 1st Plaintiff has failed to discharge the legal and evidential burden under ss 101(1), (2) and 102 EA to prove that fraudulent imitations of the 2 RID’s have been applied to the 1st Defendant’s Products. F(9). Have obvious imitations of 2 RID’s been applied to 1st Defendant’s Products? 53

I accept Ms. Hemalatha’s submission that obvious imitations of the 2 RID’s have been applied to the 1st Defendant’s Products because -

based on the evidence and reasons explained in the above paragraphs 48 and 49, the 1st Defendant’s Products are “very close to [2 RID’s], the resemblance to the [2 RID’s] being immediately apparent to the eye looking at the two” - please see Dunlop Rubber Co; and

even though SD4 or the Defendants may not know of the 2 RID’s, obvious imitations of the 2 RID’s have been applied to the 1st Defendant’s Products - Dunlop Rubber Co. F(10). Whether 1st Defendant has infringed 2 RID’s

As obvious imitations of the 2 RID’s have been applied to the 1st Defendant’s Products in Indonesia, the 1st Defendant has infringed the 2 RID’s as follows:

without the license or consent of the 1st Plaintiff, the 1st Defendant has imported the 1st Defendant’s Products into Malaysia for -

sale of the 1st Defendant’s Products [s 32(2)(b) IDA]; and/or

use of the 1st Defendant’s Products for the purposes of the 1st Defendant’s trade or business [s 32(2)(b) IDA];

the 1st Defendant has sold the 1st Defendant’s Products to SP3 [s 32(2)(c) IDA] - please see the evidence of SP3; 54

the 1st Defendant has offered to sell the 1st Defendant’s Products [s 32(2)(c) IDA]; and/or

the 1st Defendant has kept the 1st Defendant’s Products for sale [s 32(2)(c) IDA]. F(11). Have Individual Defendants infringed 2 RID’s?

Mr. Mahendra has contended that the Individual Defendants cannot be liable for infringement of the 2 RID’s because -

the Individual Defendants are not employees, agents or independent contractors of the 1st Defendant;

the Individual Defendants do not possess the knowledge, resources and capability to design, manufacture, import, market and distribute the 1st Defendant’s Products;

the Individual Defendants have no right or authority to act for the 1st Defendant regarding the 1st Defendant’s Products;

the Individual Defendants are merely customers of the 1st Defendant’s Program; and

the Individual Defendants have full-time day jobs as follows -

in the 1st Case, the second defendant is a senior design engineer while the third defendant is a hostel’s assistant manager; and 55

regarding the 2nd Case, the second defendant is a real estate negotiator and the third defendant trades in adhesive tapes.

I am not able to accede to the above submission. This decision is premised on the following evidence and reasons:

SP4 has testified that the Individual Defendants have sold the 1st Defendant’s Products to SP4. SP4’s Purchases are supported by the following evidence -

Cash Deposit Slips; and

the subject matter of SP4’s Purchases have been adduced as evidence in the 2 Cases;

according to the Federal Court’s judgment delivered by Gopal Sri Ram FCJ in Takako Sakao v Ng Pek Yuan & Anor (No. 1) [2009] 6 MLJ 751, at paragraphs 4 and 5, when there is sworn evidence adduced by one party (X) in a trial against another party (Y) and there is no evidence from Y to rebut X’s testimony, the following two consequences arise -

the Court may presume X’s evidence against Y to be true; and

the Court may draw an adverse inference under s 114(g) EA against Y. The Individual Defendants did not testify in the 2 Cases. No evidence has been adduced by the Individual Defendants to explain or excuse their failure to testify in the 2 Cases. In the circumstances, based on Takako Sakao (No. 1) - 56

I find as a fact that SD4’s evidence against the Individual Defendants is true; and

(ii) I invoke an adverse inference under s 114(g) EA against the Individual Defendants; and

based on the evidence and reasons explained in the above sub-paragraphs (1) and (2), I decide that the Individual Defendants had infringed the 2 RID’s when they sold the 1st Defendant’s Products to SP4 under s 32(2)(c) IDA. F(12). Whether Defendants can rely on defence of innocent infringement of 2 RID’s under s 35(3) IDA

I find as a fact that the Defendants cannot rely on the defence of innocent infringement of the 2 RID’s because they have not adduced any evidence to prove that prior to the infringement of the 2 RID’s, they have taken all reasonable steps to ascertain whether the 2 RID’s have been registered - please see s 35(3)(b) IDA. F(13). What is effect of Indonesian Courts’ Judgments?

A Malaysian Court may take cognizance of a decision of a foreign court but is not bound by it. As such, this Court is not bound by Indonesian Courts’ Judgments. It is decided in GS Yuasa Corp v GBI Marketing Malaysia Sdn Bhd [2017] 8 MLJ 166, at paragraphs 40 and 41, as follows: “40. It is undeniable that Intellectual Property rights (IP Rights) in respect of a particular product may be protected and enforced in many 57 jurisdictions. The Court should not take a blinkered view regarding the protection and enforcement of IP Rights. If a foreign court, especially its apex court, has decided on an issue regarding IP Rights of a particular product and an identical or similar issue also arises regarding the same product in a Malaysian case, the Malaysian Court should consider the foreign judgment in deciding that issue. Needless to say, Malaysian Courts are not bound in any manner by any decision from a different jurisdiction. If a Malaysian Court however reaches a decision which is identical or similar to that decided by a foreign court regarding IP Rights of the same product, this will ensure consistency and predictability in the protection and enforcement of IP Rights of that product in different jurisdictions.

This Court has considered the Indonesian Supreme Court’s Decision and is comforted to know that the decision in the above Part J (the use of the Defendant’s Registered Trade Mark on the Defendant’s goods is likely to deceive and/or confuse the public under s 14(1)(a) read with s 37(b) TMA), is consistent with the Indonesian Supreme Court’s Decision.” (emphasis added). The appeal to the Court of Appeal against the above judgment has been dismissed.

There is another reason why the Defendants cannot rely on Indonesian Courts’ Judgments. According to SP5, there are conflicting Indonesian Courts’ Judgments.

Last but not least, I cannot apply Indonesia Courts’ Judgments because I am duty bound to give effect to the 2 RID’s based on our IDA. G. Court’s decision 58

A summary of the above decision is as follows:

the Defendants are not barred by the DCC’s and Agreed Issues from raising the Locus Standi Issue because -

Paragraph 6 has erroneously pleaded that the 2nd Plaintiff is a licensee (not a sub-licensee) of the 1st Plaintiff and it is thus unjust under O 1A and O 2 r 1(2) RC to confine the Defendants to the DCC’s and Agreed Issues; and

the DCC’s did not admit Paragraph 6. Even if the Defendants had erroneously admitted the effect of s 33(4) IDA in DCC’s and Agreed Issues, such an erroneous admission of law does not bar the Defendants and the Court from giving effect to s 33(4) IDA;

as the 1st Plaintiff has filed the 2 Cases -

TPI has no right under the 2nd Limb of s 33(4) IDA to institute a RID infringement suit; and

the 2nd Plaintiff as a sub-licensee of the 2 RID’s has no right pursuant to the 1st or 2nd Limb of s 33(4) IDA to file the 2 Cases. Furthermore, the 2nd Plaintiff is estopped by Clauses 3.3 and 6.4 from filing the 2 Cases; and

regarding RID infringement - 59

the SOC’s had pleaded sufficient particulars of the Defendants’ infringement of the 2 RID’s as required by O 18 rr 7(1) and 12(1);

expert evidence is not required to prove or disprove a RID infringement under s 32(2)(a) to (c) IDA;

there is no evidence that the 2 RID’s have been applied by the Defendants to the 1st Defendant’s Products;

the 1st Defendant’s Products are imitations of the 2 RID’s based on -

an identification of the Relevant Customers for the 2 RID’s;

(ii) an identification of the Registered Eye Appeal Features of the 2 RID’s from the perception of the Relevant Customers for the 2 RID’s; and

(iii) a side by side visual comparison between the 2 RID’s Registered Eye Appeal Features and the 1st Defendant’s Products which, as a matter of general impression, shows that there is a sufficient resemblance between the 2 RID’s Registered Eye Appeal Features and the 1st Defendant’s Products for this Court to find that there is “a substantial identity” between them;

no fraudulent imitations of the 2 RID’s have been applied to the 1st Defendant’s Products because of SD4’s evidence that SD4 has designed the 1st Defendant’s Products; 60

obvious imitations of the 2 RID’s have been applied to the 1st Defendant’s Products outside Malaysia and consequently -

the 1st Defendant has infringed the 2 RID’s;

(ii) the Individual Defendants have infringed the 2 RID’s when they elect not to testify in the 2 Cases; and

(iii) the Defendants have failed to prove s 35(3)(b) IDA (prior to the infringement of the 2 RID’s, the Defendants have taken all reasonable steps to ascertain whether the 2 RID’s have been registered) and cannot therefore rely on the defence of innocent infringement of the 2 RID’s; and

this Court is not bound by Indonesian Courts’ Judgments.

Based on the above evidence and reasons -

the costs of calling expert witnesses SP6 and SD1 shall be borne by the Plaintiffs and Defendants respectively;

the 2nd Plaintiff’s claim is dismissed with costs to the Defendants;

the 1st Plaintiff’s claim is allowed with costs against the Defendants and the following relief, among others, is granted -

declarations that the Defendants have infringed the 2 RID’s by, among others, selling and offering for sale the 1st Defendant’s Products which are obvious imitations of the 2 RID’s (Infringing Products); 61

a perpetual prohibitory injunction to restrain the Defendants from infringing the 2 RID’s;

a perpetual mandatory injunction to compel the Defendants to deliver to the 1st Plaintiff -

all Infringing Products; and

(ii) all information, materials and documents regarding the Infringing Products;

upon the 1st Plaintiff’s election, the taking of an account of profits obtained by the Defendants as a result of the infringement of the 2 RID’s (Profit); and

the Defendants shall pay the Profit to the 1st Plaintiff; and

the Counterclaims are dismissed with costs to the 1st Plaintiff. WONG KIAN KHEONG Judge High Court (Commercial Division) Kuala Lumpur DATE: 11 FEBRUARY 2019 Counsel for Plaintiffs: Ms. Hemalatha Parasa Ramulu, Ms. Alyshea Low Khye Lyn & 62 Ms. Lam Rui Rong (Messrs Skrine) Counsel for Defendants: Mr. Mahendra Balakrishnan, Mr. Mark Ho Hing Kheong, Puan Adhuna bt. Kamarul Ariffin & Cik Nur Atiqah bt. Samian (Messrs Bustaman) 63 APPENDIX A SUIT NO. 22IP-16-04/2017 RID 0167 “BIOLIFE BORNEO” PRODUCTS PERSPECTIVE VIEW 64 SIDE VIEW TOP VIEW BOTTOM VIEW 65 APPENDIX B SUIT NO. 22IP-17-04/2017 RID 1172 “SPUNTINO” AND “CIOTOLLA” PRODUCTS PERSPECTIVE VIEW 1 PERSPECTIVE VIEW 2 66