[2021] 1 LNS 26 Legal Network Series

DALAM MAHKAMAH TINGGI DI KUALA LUMPUR

DALAM WILAYAH PERSEKUTUAN MALAYSIA
[SAMAN PEMULA N: WA-24IP-7-05/2019]

Dal am Pe rka ra Cap D agang an Be rda ft ar No .

2016007852 bagi Cap dalam

Kelas 25 yang didaftarkan di bawah nama
Foong Yit Meng

Dan

Dalam Perkara Cap Dagangan Berdaftar No.

05000826 bagi Cap

dalam Kelas 25 yang didaftarkan di bawah
nama Foong Yit Meng

Dan

Dalam Perkara Seksyen-Seksyen 8, 9(1) &

9(2) Akta Perihal Dagangan 2011

Dan

Dalam Perkara Aturan 42 Kaedah 13 Kaedah

Kaedah Mahkamah 2012

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1. RADICAL GALAXY SDN BHD

(No. Syarikat.: 647838-H)

2. FOONG YIT MENG

(No. K/P: 660807-08-6276) ... PEMOHON-PEMOHON

DAN

1. QI SHENG SDN BHD

(No. Syarikat.: 1297359-M)

2. TAI WENG KEN

(No. K/P: 970517-08-5877) ... PENCELAH-PENCELAH YANG
DICADANGKAN / RESPONDEN-
RESPONDENYANG DICADANGKAN

JUDGMENT
(Enclosure 8)

Introduction

[1] This is an Application (Enclosure 8) filed by the Proposed

Interveners/Intended Respondents to set-aside the ex-parte Trade Description
Order (TDO) given to the Applicants by this court on 26.6.2019. Having heard
the arguments, I dismissed the Application. This judgment contain the full
reasons for the dismissal.

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[2] The proposed Interveners/Intended Respondents had filed the Application

(Enclosure 8) dated 11.10.2019 pursuant to Order 42 rule 13 and Order 15 rule
6(2) (b) of the Rules of Court (ROC) 2012 for the following orders:-

(a) That the above-named Proposed Interveners/Intended Respondents

be granted leave to intervene in the application to set aside ex-parte
TDO dated 26.6.2019;

(b) Ex-Parte TDO dated 26.6.2019 be set aside;

(c) A declaration that the use of the “ ” mark by Qi Sheng

Sdn Bhd., Tai Weng Ken and/or any authorised persons or
companies would not constitute infringement of Foong Yit Meng’s

“ ”and “ ” marks and/or passing off;

(d) A declaration that the use of the “ ” mark by Qi Sheng

Sdn Bhd., Tai Weng Ken and/or any authorised persons or
companies would not constitute infringement of Foong Yit Meng’s

“ ” and “ ” marks and/or passing off;

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(e) A declaration that the use of the “ ” mark by Qi Sheng Sdn

Bhd., Tai Weng Ken and/or any authorised persons or companies
would not constitute infringement of Foong Yit Meng ’s

“ ” and “ ” marks and/or passing off;

(f) A declaration that the use of the “ ”, mark by Oi

Sheng Sdn. Bhd., Tai Weng Ken and/or any authorised persons or
companies would not constitute infringement of Foong Yit Meng’s

“ ” and “ ” marks and/or passing off;

(g) A declaration that the use of the “ ” mark by Qi Sheng Sdn. Bhd.,
Tai Weng Ken and / or any authorised persons or companies would not

constitute infringement of Foong Yit Meng’s “ ”

and “ ” marks and/or passing off;

(h) Damages to be assessed;

(i) Costs; and

(j) Such further or other relief as this Honourable Court may deem fit.

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[3] The Proposed Interveners/Intended Respondents relied on the following

grounds in support of the Application: -

(a) The 2nd Proposed Intervener/Intended Respondent, Tai Weng Ken is

the registered proprietor of Trade Mark Registration Nos. 96003868

for “ ” in Class 25 and o8008365 for “ ” in

Class 25 as well as Trade Mark Application No. 2018015831 for

“ in Class 25.

(b) The 1 st Proposed Intervener/Intended Respondent has been

authorized by 2 nd Proposed Intervener/Intended Respondent to use
the Proposed Interveners/Intended Respondents ’ Goco Comfort
Trademarks in respect of the slippers and other Class 25 goods
in view of the fact this is a family business and 2 nd Proposed
Intervener/Intended Respondent handles the administrative aspects
of all the intellectual property rights of the 1 st Proposed
Intervener/Intended Respondent.

(c) On 18.09.2019, pursuant to the said ex-parte TDO dated 26.06.2019,

a raid and seizure was conducted by a team of officers from Ministry
of Domestic Trade and Consumer Affairs (MDTCA) at the 1 st
Proposed Intervener/Intended Respondent’s premises at Plot 17 and
Plot 18, Jalan Johan 2/1, Kawasan Perindustrian Pengkalan 2, 31550,

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Pusing, Perak whereby a total of 76,632 pairs of slippers were seized

by the MDTCA officers.

(d) Radical Galaxy and Foong Yit Meng have acted mala fide by applying
for ex-parte TDO given the fact that both Radical Galaxy and Foong
Yit Meng have known that the Proposed Interveners/Intended
Respondents have been using “Goco Comfort” marks and variants
thereof for slippers since a long time ago.

(e) Radical Galaxy and Foong Yit Meng have failed to disclose the
relevant crucial information in applying for the ex-parte TDO which
resulted in the raid and seizure conducted by MDTCA on 18.09.2019
and hence is of substantial detrimental to the 1 st Proposed
Intervener/Intended Respondent’s business. The 1 st Proposed
Intervener/Intended Respondent has not been able to supply,
distribute, sell and / or offer for sale the seized slippers and
therefore suffers substantial losses and damages.

(f) The said raid / seizure was widely publicised in the media and the
members of public and consumers would be led into believing that
the slippers bearing the Proposed Interveners/Intended Respondents’
Goco and Goco Comfort Trademarks are counterfeit products.
Further, the 1st Proposed Intervener/Intended Respondent’s
customers have now refused to place orders from the 1st Proposed
Intervener/Intended Respondent on rain boots, safety shoes, slippers
and sandals bearing “Goco” trademarks.

(g) The Applicants should not have applied for the said TOO on an ex-
parte application as there was no urgency for doing so. The said ex-

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parte TDO was granted on 26.06.2019 and the raid/seizure was only
conducted on 18.09.2019.

h) The 1 st Proposed Intervener’s/Intended Respondent’s customers

have always associated slippers bearing the “ ”

“ ” and “ ” marks with the Proposed

Interveners/Intended Respondents and no others in Malaysia. Th e
suppliers, customers and other traders in the course of trade would
definitely recognize and/or know that the “Goco” mark and its variant
thereof used by the 151 Proposed Intervener/Intended Respondent.
Further, the 1”1 Proposed Intervener/Intended Respondent does not
use the word “Comfort” as a trademark as the word “Comfort” is an
ordinary English word and should not be monopolized by any
particular trader.

(i) Radical Galaxy and Foong Yit Meng have made a wrongful

Comparison between “ ” mark and the word

“Comfort” and should have compared the Proposed
Interveners/Intended Respondents’ Goco Comfort Trademarks as a

Whole with the “ ” marks.

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(j) The 1 st Proposed Intervener/Intended Respondent has acquired

reputation and goodwill for “ ”, “ ” and

“ ” marks by reason of sales and promotion. This is

another reason the members of public and trade would not be

confused between “ ” mark and proposed

Interveners/Intended Respondents’ Goco Comfort Trademarks.

(k) Foong Yit Meng’s “ ” and “ ” marks

are not distinctive as the word “Convert” is an ordinary English word

Further, the stylized “C” letter in “ ” and

“ ” marks are substantially / confusingly similar to the

stylized “C” letter in “ ”, a well-known international brand

belonging to Worldwide Brands Inc.

(l) Radical Galaxy and Foong Yit Meng have acted in bad faith in

copying/adopting the stylized “C” letter from the “ ” mark

and use the said “C” letter in an ordinary English “Convert” word and

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subsequently wrongfully applied for and registered both

“ ”, and “ ” marks in Class 25.

[4] The following cause papers have been filed by the parties: -

(a) Applicants’ Ex-Parte Originating Summons dated 13.5.2019

(Enclosure 1); (Applicants’ TDO Application)

(b) Affidavit in Support affirmed by Foong Yit Meng on 9.5.2019

((Enclosure 2); (Applicants’ TDO AIS)

(c) Ex-Parte TDO dated 26.6.2019 (Enclosure 7);

(d) Proposed Interveners’/Intended Respondents’ Notice of Application

dated 11.10.2019 (Notice of Application to Intervene and Set
Aside) (Enclosure 8);

(e) Affidavit in Support affirmed by Tai Chee Foong on 11.10.2019

(“Proposed Interveners’/Intended Respondents’ (AIS) 1st
Affidavit”) (Enclosure 9);

(f) Affidavit in Reply affirmed by Foong Yit Meng on 31.10.2019

(“Applicants’ Affidavit in Reply (AIR) (1)” (Enclosure 12);

(g) Affidavit in Reply affirmed by Tai Chee Foong on 15.11.2019

(“Proposed Interveners’/Intended Respondents’ Affidavit in
Reply (AIR) (1)” (Enclosure 13);

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(h) Affidavit in Reply affirmed by Foong Yit Meng on 27.11.2019

(“Applicants’ Affidavit in Reply (AIR) (2)” (Enclosure 14); and

(i) Affidavit in Reply affirmed by Tai Chee Foong on 10.12.2019

(Proposed Interveners’/Intended Respondents’ Affidavit in
Reply (AIR) (2)” (Enclosure 15).

The Salient Facts

[5] It is to be noted that the facts are elucidated from the various affidavits, and
the written submissions of the respective parties. The salient facts as alluded to
by the respective parties in their written submissions are adopted herein with
and/or without modifications.·

[6] The 1 st Applicant is a Malaysian company that carries on the

business of manufacturing, distributing and/or sale of footwear
products, leather goods and related products under the “CONVERT”
brand and name. The 2 n d Applicant is a director of the 1 s t Applicant.

[7] The 2 n d Applicant is the registered proprietor of the following

trademark registrations (collectively the “Applicants’ Marks”):

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Registered Trade Mark Trade Mark Class Specifications of Goods

No.

05000826 Class 25 Clothing, Footwear Headgear; all

included in Class 25
Date of Registration:
18.01.2005

2016007852 Class 25 Clothing, footwear, headgear,

sandals, slippers, shoes all
included in class 25.
Date of Registration:
25.07.2016

2016004888 Class 18 Leather and imitations of

leather, and goods made of these
materials and not included in
Date of Registration:
other classes;
10.05.2016
animal skins, hides; trunks and
travelling bags; umbrellas and
parasols; walking sticks; whips,
harness and saddlery; all
included in class 18.

2016002959 Class 35 Advertising; business

management; business
administration; office functions;
Date of Registration:
all included in class 35.
24.03.2016

[8] The Applicants’ Marks are registered in the name of the 2 nd

Applicant based on internal business arrangements whereby the 2 nd
Applicant handles administrative aspects of the Applicants’ Marks.
The 1 s t Applicant uses the Applicants ’ Marks on its goods distributed
and sold in the course of its business, for which all goodwill accrues

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to the Applicants’ Marks. It is also authorized to enforce all rights

arising from the Applicants’ Marks in Malaysia.

[9] The 1 s t Applicant has manufactured, distributed and sold

footwear bearing the Applicants’ Marks ,

and (“Applicants’ Products”) since

at least 2014. Since then, the 1 st Applicant had expanded significant

time and resources to promote the Applicants ’ Products with
advertising and conducting various promotional activities such as
printing of brochures, advertising on billboards and newspapers. The
1st Applicant also has a website for the sale of the Applicants ’
Products bearing the Applicants’ Marks.

[10] On or around May 2019, the Applicants discovered advertising

materials offering for sale footwear and slippers bearing the marks

, , and

(collectively, “the Infringing Marks”) being circulated amongst the 1 st

Applicant’s customers.

[11] This is a comparison of the Applicants’ brochure and the said

advertising circular with Infringing Marks:

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Applicant’s Products with Applicants’ Infringing Products with Infringing Marks

Marks

[12] The Applicants were at once alarmed by the infringement of their

rights upon realising that the slippers bearing the Infringing Marks
(“the Infringing Products”) are nearly if not entirely identical to their
products bearing the Applicants ’ Marks. Examples include: -

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Applicant’s Products with Applicants’ Infringing Products with Infringing

Marks Marks

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Applicant’s Products with Applicants’ Infringing Products with Infringing
Marks Marks

[13] It was clear to the Applicants that a simple visual comparison

between the Applicants’ Products and the Infringing Products clearly
showed calculated intention and bad faith to infringe the Applicants ’
Marks and to pass off the Infringing Marks and Infringing Products as
that of the Applicants. The similarities and resemblances were far too
overwhelming to be mere coincidences.

[14] Then the Applicants discovered through a search on the

Intellectual Property Corporation of Malaysia (MYIPO) online
database that an individual by the name of Tai Weng Ken, the 2nd

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Intended Respondent, had filed an application to register the

mark.

[15] At that time, the Applicants also received information that the
slippers bearing the Infringing Marks were being or to be imported into
Malaysia from China rather than manufactured here.

[16] In light of the above, the Applicants had a valid concern that once
the Infringing Products entered the Malaysian market, it was certain
that it will cause immediate deception and confusion to the Malaysian
public as well as overwhelming prejudice to the Applicants.

[17] Thus, the Applicants’ TDO Application was filed on 13.05.2019

applying for an ex-parte TDO pursuant to Sections 8 and 9 of the
Trade Description Act (TDA) 2011. The TDO was granted by Justice
Lim Chong Fang in the Kuala Lumpur High Court on 26.06.2019 in the
following terms: -

(a) A declaration that the use of the mark by any

Persons or companies in relation to clothing, footwear,

headgear, sandals, slippers or shoes that is not
manufactured, distributed, sold, supplied, authorized or

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licensed by the Applicants, is a use of a false trade

description for the purposes of the TDA 2011;

(b) A declaration that the use of the mark and/or

by any persons or companies in relation to

clothing, footwear, headgear, sandals, slippers or shoes
that is not manufactured, distributed, sold, supplied,
authorized or licensed by the Applicants, is a use of a false
trade description for the purposes of the TDA 2011;

(c) A declaration that the use of the mark by any

persons or companies in relation to clothing, footwear,

headgear, sandals, slippers or shoes that is not
manufactured, distributed, sold, supplied, authorized or
licensed by the Applicants, is a use of a false trade
description for the purposes of the TDA 2011.

[18] Having obtained the T DO, on 12.07.2019 the Applicants sent in

a complaint to the MDTCA upon discovering that the Infringing
Products were being supplied out of and/or being stocked for sale
and/or offered for sale from the following premises: -

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(a) Qi Sheng Sdn Bhd (the 1 s t Intended Respondent) at Plot

18, Jalan Johan 2/1, Kawasan Perindustrian Pengkalan 2,
31550 Pusing, Perak;

(b) Goco Industries Sdn Bhd at Plot 17, Jalan Johan 2/1,
Kawasan Perindustrian Pengkalan 2, 31550 Pusing, Perak;

(c) LMH Shoes Trading at No. A.29, Lorang 11/1 -B, Taman
Bandar Baru, 08000 Sungai Petani, Kedah;

(d) KW Kenwin Trading Sdn Bhd at No. 9, Jalan Kelisa Emas 2,

Taman Kelisa Emas, 13700 Seberang Jaya, Prai, Pulau
Pinang.

[19] On 18.09.2019, MDTCA carried out a raid at Plot 17 and Plot 18,
Jalan Johan 2/1, Kawasan Perindustrian Pengkalan 2, 31550, Pusing
Perak where a total of 76,632 pairs of slippers bearing the Infringing
Marks were seized by the MDTCA officers.

[20] As a result of the raid and seizure, the Proposed

Intervener/Intended Respondents claimed to have suffered
substantial losses and damages to its business. The 1 s t Proposed
Intervener/Intended Respondent has not been able to supply,
distribute, sell and/or offer for sale the seized slippers and
t h e r e f o r e suffers substantial losses and damages.

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[21] The said raid and seizure was widely published in the media and
the members of public and consumers would be led into believing that
the slippers bearing the Proposed Interveners/Intended Respondents ’
Goco and Goco Comfort trademarks are counterfeit products. The 1 s t
Proposed Intervener’s/Intended Respondent’s customers have now
refused to place orders from the 1 s t Proposed Intervener/Intended
Respondent on rain boots, safety shoes, slippers and sandals bearing
“Goco” trademarks.

[22] Then, on 11.10.2019, the Proposed Interveners/Intended

Respondents filed the present Application to among others set -aside
the ex-parte TDO.

Findings of this Court

[23] Having fully and carefully considered the Proposed

Interveners’/Intended Respondents’ and the Applicants’ case and the
issues raised in the Application, Affidavits and the Written
Submission, dismissed the Proposed Interveners ’/Intended
Respondents ’ Application (Enclosure 8). This is my judgment setting
out the full reasons for my decision.

The Proposed Interveners’/Intended Respondents ’ grounds in

support of this Application to set -aside the ex-parte Trade
Description Order (TDO) dated 26.6.2019

(A) Failure to make full and frank disclosure

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[24] The Proposed Interveners/Intended Respondents had submitted that the

Applicants have acted mala fide by applying for an ex-parte TDO without making
full and frank disclosure of material facts.

[25] It was submitted that in the instant proceeding, the Applicants had failed to
disclose to the court that both the Applicants have known that the Proposed
Interveners/Intended Respondents have been using the the ‘Goco Comfort’
marks and variants thereof for footwears since a long time ago and that the
Applicants did not disclosure that the 2 nd Intended Respondent is the registered

proprietor of and

[26] Upon careful perusal of the cause papers, I find that the identity of the 2 nd
Proposed Intervener/Intended Respondent, Tai Weng Ken was. made known to
the court from the beginning of the proceeding.

[27] This can be seen in the Applicants’ TDO AIS (Enclosure 2) where it clearly
avers as follows:-

20. Selepas mendapat tahu tentang bahan-bahan pengiklanan tersebut, Pemohon

Pertama telah menjalankan pencarian cap dagangan melalui pangkalan data dalam

talian MYIPO, dan mendapati bahawa seorang individu dengan nama TAI WENG KEN

telah membuat permohonan untuk mendaftarkan tanda Pelanggaran berikut dengan

Pendaftar Cap Dagangan ..........

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21. Saya telah dinasihatkan oleh peguam cara Pemohon -pemohon dan

sesungguhnya percaya bahawa dengan membuat permohonan untuk mendaftar tanda

Perlanggaran tersebut, ia menunjukkan bahawa terdapat niat sebenar oleh pemohon

untuk menggunakan tanda Perlanggaran tersebut di Malaysia. Walau bagaimanapun ,

ia tidak diketahui Pemohon-pemohon jika TAI WENG KEN adalah individu atau pihak

yang berkaitan dengan dan/atau memberi kuasa kepada kegiatan salah berikut.........

(see paragraphs 20 and 21 Applicants’ TDO. AIS Enclosure 2)

[28] Based on the above, I am of the view that the court was duly notified and
had the opportunity to make an order that the relevant cause papers to be served
on the 2 nd Proposed Intervener/Intended Respondent but the court did not make
such order.

[29] Therefore, I am satisfied when the court heard the Originating Summons
(Enclosure 1) ex-parte, the court was satisfied that the TDO was warranted based
on the evidence tendered by the Applicants.

[30] As to the Trade Mark Application No. 2018015831 for in class

25, this court finds that this is a non-issue because I find that the mark is not
registered but merely a trademark application and the said trademark application
and identity of the 2 nd Proposed Intervener/Intended Respondent was duly
disclosed to the court.

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[31] This court also finds that other “GOCO” marks are not material facts which
were required for the determination of whether the Infringing Marks infringe or
pass off on the Applicants’ Marks for the purposes of Section 9 of the TDA 2011.

[32] Further, I am of the view that in considering there has been full and frank
disclosure, the court will look into whether all material facts relevant to a particular
trade description application under Section 9 of the TDA 2011 have been
disclosed.

[33] I find support in this context by referring to the case of Tan Kim Hock Tong
Seng Food Industry Sdn Bhd v. Tan Kim Hock Product Centre Sdn Bhd &
Anor [2016] 7 MLJ 561 at 574 where Azizah Nawawi J (now JCA) held that:-

[42] Therefore, the next issue is whether the applicant has failed to disclose

the material facts as set out by the interveners above. Bearing in mind that

this application is for a T DO, the material facts must be relevant for the

purpose of the TDO itself.

[34] Further at page 575 Her Ladyship said as follows: -

[45] With regards to the non-disclosure of the letter dated 16 April 2014 , I

am of the considered opinion that the same is not a material fact for the

purpose of the TOO as it pertains to the fight over the unregistered

trademark which is now pending in the courts. It is not relevant to the TOO

application, which is premised on the registered trademark, currently

under the name of the applicant.

(emphasis added)

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[See N. V Sumatra Tobacco Trading Co v. PT Sampoerna JL Sdn Bhd

[1997] 3 CLJ 946 at 960; Hu Kim Ai & Anor v. Liew Yew Thoong [2004] 5
CLJ 515]

[35] Having perused the cause papers filed, I am of the view that the material
facts that should be disclosed by the Applicants in its ex-parte Originating
Summons (Enclosure 1) as contended by the Proposed Interveners/Intended
Respondents, are not material facts if one examines them and tested them
against the facts that are required to be disclosed in an application for
TDO as provided by Section 16 of TDA.

[36] Even assuming that I was wrong in my above finding, I find that the Court
of Appeal in Tan Kim Hock Product Centre Sdn Bhd & Anor v. Tan Kim Hock
Tong Seng Food Industry Sdn Bhd [2017] 1 MLJ 730 at 745, has stated that
the position in law today on material disclosures in an ex-parte application is no
longer as strict as previously viewed by the courts, when it held as follows:-

[37] It was also apposite to also be reminded that the position in law in so far
as material disclosures were concerned when seeking orders of court ex-parte
were no longer as strict as previously viewed by the courts. In Damayanti Kantilal
Doshi & Anor v. Jigarlal Kantilal Doshi [2004] 1 MLJ 456 it was held that there
was no obsolute right in any case to have an ex-parte order set-aside just
on the grounds of ‘non-disclosure’. The court said:-

It does not, however, necessarily follow that because the Plaintiff had failed to
disclose these facts that an order for discharge of the injunction must inevitably
follow, for the court would still have to consider whether justice requires the
injunction to continue. In considering this part of the case, I have asked myself

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whether the non-disclosure concerned was so severe that, had there been full
disclosure, this court would not have granted the interlocutory injunction.

(emphasis added)

[37] In the instant case, I find that all material facts within the knowledge of
the applicants at the material time and that were relevant for the purposes of
the application for a false trade description order of the following marks

and

were duly disclosed to the Court.

[38] Regarding purported use ‘since long time ago’: the Proposed
Interveners/Intended Respondents seem to argue that they have prior use and
goodwill but I find that there is no evidence that goods bearing the Infringing

Marks

were offered for sale prior to 2019.

[39] Even if this Court finds that there has been material non -disclosure, this
Court must still decide whether or not to continue the order by considering the
justice and merits of the case [see Noor Jahan bt Abdul Wahab v. Md
Yusoff b. Amanshah & Anor [1994] 1 MLJ 156].

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[40] Upon perusing the cause paper in the instant case, I am of the view that
the earlier findings of the learned trial judge that the Applicants’ Marks are
infringed and passed off by the Infringing Marks are sound and valid and
supported by evidence. Therefore, I am of the view that justice and merits of
the case favours the Applicant and thus, the TDO should be maintained.

(B) Application should not have been made ex-parte

[41] The Proposed Interveners/Intended Respondents submit that the ex-

parte TDO applications can only be made ‘in urgent’ application.

[42] However, I find that case law seems to suggest that an application for a
TDO under the TDA 2011 is regularly and properly made on an ex-parte
basis.

[43] The Federal Court in Tan Kim Hock Product Centre Sdn Bhd & Anor
v. Tan Kim Hock Seng Food Industry Sdn Bhd [2018] 2 MLJ 1 at 13 held
that:-

[ 41] For a meaningful and effective use of a T DO, obtaining it swiftly and
characterized with some elements of surprise is an essential ingredient.
Hence, an ex-parte application would be the most suitable and appropriate.
Having obtained the order is not the end of the matter. An owner who obtained a
TDO has to go to the relevant enforcement agency, namely the Enforcement
Division of the Domestic Trade and Consumer Affairs Ministry to move the
machinery of the criminal law under the other provisions of Act 730.

[42] Besides being evidentiary, a TDO in a sense, creates an offence. Until a TDO
is made, there would have been no evidence on which to prosecute a case for an d

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infringement. Without the same too, it would virtually be impossible for the
authorities to identify and seize the imitation goods. Unless a TDO is obtained
swiftly through the mechanics of an ex-parte application any effort to curtail
the problem of imitation goods flooding the market would be seriously
hampered.

(emphasis added)

[44] Further at page 16 and 17, the Federal Court held: -

[57] As submitted by learned counsel for the appellants, the practice that has
developed among practitioners in an application for a TDO under s. 9 of Act 730 has
been by way of an ex parte application (see: In-Comix Food Industries Sdn Bhd v. A
Clouet & Co (KL) Sdn Bhd, NV Sumatra Tobacco Trading Co v. PT Sampoerna JL
Sdn Bhd [1997] 3 CLJ 946, Hu Kim Ai (trading as Geneve Timepiece) & Anor v.
Liew Yew Thoong (trading as Crystal Hour) [2004] 7 MLJ 590 and Tohtonku
Sdn Bhd v. Superace (M) Sdn Bhd [1989]2 MLJ 298).

[58] We do not see anything wrong or illegal in such practice. It is permissible in

law.

[45] Based on the above, I am of the view that an ex-parte TDO under
Section 9 of the TDA 2011 can be made by the Applicant as long as the
elements of the said section 9 has been established by them.

(C) Delay in executing the said ex-parte TDO

[46] The Proposed Interveners/Intended Respondents submit that the T DO

was granted on 26.6.2019 whilst the raid and seizure was only conducted on
18.9.2019. Therefore, there was a delay of almost 3 months from the time

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when the said ex-parte TDO was obtained to the date when the raid and
seizure was conducted.

[47] Upon perusing the chronological event in the instant case, I find that
there was no delay in the enforcement of the T DO by the Applicants. It is
observed that the Applicants had acted as quickly as they could upon receiving
news of potential Infringing Products; the timeline as follows: -

[48] Added to that, I am of the view that urgency is also not a required element
for a TDO application on an ex-parte basis. Based on the Federal Court case of
Tan Kim Hock (supra), it is clear that the TDO can be obtained on an ex-parte
basis.

(D) Alleged infringing goods and/or marks of the Proposed

Interveners/Intended Respondents

[49] The Proposed Interveners/ Intended Respondents submit that in order to

obtain a TDO, an applicant is required to establish that his rights are being
infringed. It is further submitted that there is no infringement of the

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“ ” and “ ”marks as alleged by the

Applicants.

[50] Further, it is not disputed that the Applicants’ TDO Application was made

pursuant to Section 9 of the TDA 2011 that the

and marks were identical with or

nearly resembling the Applicants’ registered and

marks as is likely to deceive or cause confusion.

[51] It is to be noted that the issue to be determined is whether the proposed

Interveners/Intended Respondents’ Infringing marks is so nearly resembling the
Applicants’ marks as to likely to deceive or cause confusion as envisaged in
Section 38 of the Trade Marks Act (TMA) 1976.

[52] Section 38(1) of the TMA 1976 provides that:-

38. Infringement of a trade mark

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(1) A registered trade mark is infringed by a person who, not being the registered
proprietor of the trade mark or registered user of the trade mark using by way of
permitted use, uses a mark which is identical with it or so nearly resembling it as is likely
to deceive or cause confusion in the course of trade in relation to goods or ser vices in
respect of which the trade mark is registered in such a manner as to render the use of
the mark likely to be taken either:

(a) as being use as a trade mark;

(b) in a case in which the use is use upon the goods or in physical relation
thereto or in an advertising circular, or other advertisement, issued to the
public, as importing a reference to a person having the right either as
registered proprietor or as regist ered user to use the trade mark or to
goods with which the person is connected in the course of trade; or

(c) in a case in which the use is use at or near the place where the services
are available or performed or in an advertising circular, or other
advertisement issued to the public, as importing a reference to a person
having a right either as registered proprietor or as registered user to use
the trade mark or to services with the provision of which the person is
connected in the course of trade.

[53] Under Section 38(1) of the TMA 1976, the offence of passing off is
committed when the infringing party uses a trade mark identical with or closely
resembling the registered trade mark of another person, as it is likely to deceive
or cause confusion. It is a question of fact in the light of evidence for the court
to reach a conclusion whether there is in truth a likelihood or deception and
confusion.

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The Test of Resemblance

[54] The Test of Resemblance, namely whether the Proposed

Interveners’/Intended Respondents’ infringing marks “so nearly resembles the
Applicants’ Trade Mark as is likely to deceive and cause confusion” to
consumers, was propounded in The Matter of an Application by the Pianotist
Company Ld for the Registration of a Trade Mark [1906] 23 RPC 774 at 777
as reported in Reports of Patent, Design, Trade Mark and other cases vol. XXIII.

“You must take the two words [marks]. You must judge of them, both by their look and
by their sound. You must consider the goods to which they are to be applied. You must
consider the nature and kind of customer who would be likely to buy those goods. In
fact, you must consider all the surrounding circumstances; and you must further
consider what is likely to happen if each of those trade marks is used in a normal
way as a trade mark for the goods of the respective owners of the marks. If, considering
all those circumstances, you come to the conclusion that there will be a confusion that is
to say, not necessarily that one man will be injured and the other will gain illicit benefit,
but that there will be a confusion in the mind of the public which will lead to confusion
in the goods-then you may refuse the registration, or rather you must refuse the
registration in that case”.

[55] In the case of Tiga Gajah Cho Heng Sdn Bhd v. Majuperak Tepung
Beras Sdn Bhd [1997] 1 CLJ Supp 52; [1997] 4 MLJ 504 at 527, Kamalanathan
Ratnam JC (as he then was) has stated in deciding whether the Defendants ’ use
of the Defendants’ marks is likely to deceive or cause confusion, the following
five (5) elements must be taken into consideration:

(1) the idea of the mark;

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(2) the elements of the mark taken as a whole;

(3) imperfect recollection;

(4) ear as well as eye to be considered; and

(5) variations might well be supposed to be made by owners.

The Imperfect Recollection Test

[56] The relevant consumer that must be considered is the ordinary consumer
with an ordinary. memory, who pays only ordinary attention to the details of a
trade mark. Such a consumer, who knows only the Applicants Trade Mark is the
consumer who is likely to be deceived or confused by the Proposed
Interveners’/Intended Respondents’ infringing marks.

[57] Such consumers do not recall or remember every detail of the trade marks
they know. Consequently, they may confuse a similar mark with the one they
know, even if there are minor differences between the marks. This principle is
known as the Imperfect Recollection Principle. The Imperfect Recollection Test
applies equally to all types and all manner of trade marks, including word marks ,
device marks and composite marks.

[58] Further, the consumer must not placed in a position to compare the
Proposed Interverners’/Intended Respondents’ infringing marks and the
Applicants’ Trade Mark side-by-side, comparing the minute details of either mark,
as it does not reflect the reality of the circumstances in which the
consumer would purchase the products.

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[59] The Court of Appeal in Bata Ltd. v. Sim Ah Ba @ Sim Teng Khor & Ors
(trading as Kheng Aik Trading) [2006] 1 LNS 46; [2006] 6 MLJ 445 at 458 to
459, has this to say concerning the Imperfect Recollection Test and the
erroneous act of comparing the two competing marks side -by-side:

“We have reminded ourselves that two marks placed side-by-side may exhibit
many and obvious differences but what is important is the idea of the mark left
in the minds of the probable consuming public. To elaborate this significance, we
reproduce a passage from Kerty’s Trade Marks & Trade Names (13 th Ed) p. 603,
which states:

‘Two marks, when placed side-by-side, may exhibit many and various
differences, yet the main idea left on the mind by both may be the same. A
person acquainted with one mark, and not having the two side -by-side for
comparison, might well be deceived, seeing the second mark on other goods,
into a belief that he was dealing with goods which bore the same mark as that
with which he was acquainted’

(emphasis added)

The whole of Applicants’ product must be looked at in its entirety

[60] The Applicants’ Trade Mark consists of the entire get-up or packaging
of the Applicants’ product and must be looked at in its totality. There are
many essential features of the Applicants ’ Trade Mark. These essential
features must be looked at in their entirety, as all the features make up the
Applicants’ Trade Mark.

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All relevant surrounding circumstances must be considered

[61] An expansion of the Imperfect Recollection Test is the principle that all
relevant surrounding circumstances must also be considered by the Court
when deciding whether a mark is likely to be deceived or causes confusion.
The relevant surrounding circumstances have been propounded in the case
of Jellinek’s Application [1946] 63 RPC 59 at 70, include:

(1) the nature and composition of the products;

(2) the respective uses or purposed of the products; and

(3) the trade channel through which the goods are respectively bought
and sold.

[62] In the case of Rotta Research Laboratorium SPA & Anor v. Ho Tack
Sien & Ors; Chai Yuet Ying (Third Party) (No.2) [2011] 1 LNS 597; [2011]
6 MLRH 584 at 592 where Mah Weng Kwai JC (as he then was) held that:

“The test for comparison of confusingly similar marks is not to compare them side-
by-side but to take all circumstances into account. The test is an objective o ne
and the Court has to consider the general impression or the basic idea that the
mark creates in the mind of the consumer. It is·not sufficient for the Court just to
consider the sound and look of the 2 opposing marks but to also consider all
surrounding factors and features” .

[63] Coming back to the facts of the present case and based on the above
principles of law, I find that by looking at the Proposed Interveners’/Intended
Respondents’ Infringing Marks used on the Infringing products and then
looking at the Applicants Marks on the Applicant products, it clearly shows

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that there has been an attempt by the Proposed Interveners/Intended

Respondents to get as close as possible to the Applicants ’ Marks.

[64] I find that the Applicants’ Marks are being infringed in the course of
trade by the Proposed Interveners’/Intended Respondents’ Infringing mark
or get-up which to my mind bears identical and/or confusing similarities with
the Applicants’ Marks and can be passed off as the Applicants ’ Marks.

[65] The Infringing mark and/or get up is identified as the following: -

(Infringing Mark 3)
(Infringing Mark 1)

(Infringing Mark 4)
(Infringing Mark 2)

[66] Based on the evidence produced in court, the Infringing marks are applied
to footwear and slippers which overlap with goods which the Applicants’ Marks
are registered and used in respect of and are being sold and/or offered for sale
in the market.

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[67] I find that there are similarities between the Applicants ’ Marks and
Proposed Interverners’/Intended Respondents’ marks as can be shown in the
table below:

Applicants’ Marks Infringing Marks

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Applicant’s Products with Applicants’ Infringing Products with Infringing

Marks Marks

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Applicant’s Products with Applicants’ Infringing Products with Infringing

Marks Marks

[68] I am of the considered view that the Infringing Marks can be passed off as
the Applicants’ Marks because:-

(a) the Infringing Marks are identical with or nearly resembling the
Applicants’ Marks as is likely to deceive or cause confusion; and

(b) the use of the Infringing Marks is in the course of trade in relation to
goods within the scope of registration of the Applic ants’ Marks in
Class 25 for footwear.

[69] Added to that, I find that the marks “CONVERT’ and “COMFORT” are
visually and phonetically similar for the following reasons: -

(a) Both marks are made up of seven alphabets whi ch begins with a
stylized “C” and ends with “T”;

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(b) The stylized “C” distinguishes the first letter from the rest of the word;

(c) The layout of the words are identical; and

(d) The placements of the vowels and consonants in both marks is identical.

[70] Further, I view the Marks utilizes a similar device in

the shape of a “C” positioned on top of a seven-letter word in an identical manner

as . The “C” shape device, is similarly stylized as the

C” shape device in the Applicants’ Mark, which is a prominent and distinguishing
characteristic. Therefore, I am of the considered opinion that with the Infringing
Marks adopting this same distinguishing feature, confusion is very likely to result.

[71] Therefore, taking into account the doctrine of imperfect recollection, and

the similarity of the leading features, visual and phonetic similarity between the
Applicants’ Marks and the Infringing Marks as set out above, I am of the view that
the likelihood of confusion cannot be denied.

[72] Further, I find that the Applicants have been long established in the market.

Goodwill and reputation attached to the Applicants’ Marks such that the

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Applicants’ Marks and CONVERT trade name are recognized by the public as
distinctive specifically of the Applicants and originate from the Applicants.

[73] It is also to be noted that this is also a case where the goods are identical ,
ie, slippers and with very highly similar trade channels. The Proposed
Interveners’/Intended Respondents’ themselves adduced a list of suppliers and
customers that are common between the Applicants and the Intended
Interveners/Intended Respondents [see Intended Respondents’ AIR: Exhibit
TCF-22 at pages 75 to 82]. Thus, to my mind it is no doubt that the likelihood
of confusion and/or deception is even higher.

[74] The use of the Infringing Marks in the course of trade is a

misrepresentation to the public that the slippers bearing the Infringing Marks
originate from, connected to and/or are associated with the Applicants. Clear
evidence of this misrepresentation can be seen from the way the Infringing Marks
are used and the get-up of the slippers compared side-by-side with the
Applicants’ goods bearing the Applicants’ Marks as follows:-

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[75] Based on the above, I find that the overwhelming number of features
overlapping between the Infringing Marks and the Applicants’ Marks, as well as
the manner in which they are employed have shown that the Infringing Marks
were adopted with the intention to deceive, confuse and to pass-off. In these
circumstances, in my mind the likelihood of deception and confusion among the
public can only be the natural conclusion.

[76] The Proposed Interveners/Intended Respondents further submitted the

alleged infringing ‘COMFORT’ mark is an ordinary English word which the
Proposed Interveners/Intended Respondents have no intention to use as
a trademark.

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[77] To me, the usage of the word “comfort’ by the Proposed

Interveners/Intended Respondents is irrelevant to the case at hand. It is
because, I find that there is no requirement under Section 9 of the TDA 2011
that the marks alleged to be infringing or guilty of passing off must be used as
a trade mark. The only requirement is that the said mark or get up complained
of must be specifically identified.

(E) The Applicants’ ‘CONVERT’ Marks

[78] The proposed Interveners/Intended Respondents also submit that the

Applicants had acted in bad faith and wrongfully applied for and registered the

Applicants’ Marks in light of this mark and reference was made

to section 14(1)(d) of the TMA 1976.

[79] However upon perusal of the Proposed Interveners’/Intended

Respondents’ prayers and grounds of the Application, I find that this issue was
never raised or pleaded in the Application (Enclosure 8).

[80] It is a cardinal rule in civil litigation that parties are bound by their pleadings
and are not allowed to adduce facts and issues which they have not pleaded
(see Samuel Naik Siang Ting v. Public Bank Bhd [2015]8 CLJ 944; [2015]6
MLJ 1).

[81] Even if I accept this issue to be raised in this Application, I find that the
Applicants’ Marks have not been challenged by any party, and have remained
valid and subsisting at all material times. The law is clear, whereby the

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Applicants’ registrations are prima facie evidence of its validity. Further, I find
that the Applicants’ Marks are clearly used as a trademark through the manner
of use and have since obtained its own goodwill and reputation.

(F) Non-registration of the said ex-parte Trade Description Order (TDO)

[82] It is the submission of the Proposed Interveners/Intended Respondents

that the Applicants have failed to adduce sufficient evidence to prove that the
said ex-parte TDO has been registered with the Registrar of TDO and therefore
the said ex-parte TDO is not enforceable.

[83] It is my view that Registration under Section 9(6) of the TDA 2011 is an
administrative requirement and thus, unable to make an order made by the High
Court becomes void.

[84] Further, I am of the opinion that Section 9(6) of the TDA 2011 cannot be
read in isolation but must be read together with section 2 of the TDA 2011 which
provides that “Registrar means the Registrar of Trade Description Order
appointed under Section 4.

[85] I also find that the Registrar of Trade Description Order has not been
appointed. As such, formal registration could not have been carried out by the
Applicants. However I find in substance, Section 9(6) of the TDA 2011 was
clearly fulfilled. Looking at the purpose or object underlying the Act and the said
provision [as required by Section 17A of the Interpretation Acts 1948 and 1967,
section 9(6) of the TDA 2011 is clearly an administrative requirement so that

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notice is given to the relevant authority responsible for enforcing false

trade descriptions.

[86] Such notice was given to MDTCA when a copy of the T DO was
furnished together with the Applicants’ letter dated 12.07.2019 [see
Applicants’ AIR (1), pages. 59-61].

Conclusion

[87] By reason of the foregoing, I dismissed the Proposed Interveners ’

/Intended Respondents’ Application (Enclosure 8) with cost of RM20,000.00
subject to payment of the allocator.

DATED: 25 JANUARY 2021

(AHMAD KAMAL MD SHAHID)

Judge
High Court Kuala Lumpur

COUNSEL:

For the applicant - Kuek Pei Yee, Mellisa Ong & Lam Rui Rong; M/s
Skrine
Peguambela dan Peguamcara,
Unit No: 50-8-1, Tingkat 8,
Wisma UOA Damansara,
50, Jalan Dungun,
50490 Kuala Lumpur.

For the proposed interveners/intended respondents - Micheal Soo,

Henry Poon & Annabelle Koh; M/s Shook Lin & Bok
Peguambela dan Peguamcara,
20th Floor, Ambank Group Building,
55, Jalan Raja Chulan,
50200 Kuala Lumpur.
Case(s) referred to:

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Tan Kim Hock Tong Seng Food Industry Sdn Bhd v. Tan Kim Hock
Product Centre Sdn Bhd & Anor [2016] 7 MLJ 561

N. V Sumatra Tobacco Trading Co v. PT Sampoerna JL Sdn Bhd [1997]

3 CLJ 946

Hu Kim Ai & Anor v. Liew Yew Thoong [2004] 5 CLJ 515

Tan Kim Hock Product Centre Sdn Bhd & Anor v. Tan Kim Hock Tong
Seng Food Industry Sdn Bhd [2017] 1 MLJ 730
Noor Jahan bt Abdul Wahab v. Md Yusoff b. Amanshah & Anor [1994] 1
MLJ 156

Tan Kim Hock Product Centre Sdn Bhd & Anor v. Tan Kim Hock Seng
Food Industry Sdn Bhd [2018] 2 MLJ 1
The Matter of an Application by the Pianotist Company Ld for the
Registration of a Trade Mark [1906] 23 RPC 774

Tiga Gajah Cho Heng Sdn Bhd v. Majuperak Tepung Beras Sdn Bhd
[1997] 1 CLJ Supp 52; [1997] 4 MLJ 504

Bata Ltd. v. Sim Ah Ba @ Sim Teng Khor & Ors (trading as Kheng Aik
Trading) [2006] 1 LNS 46; [2006] 6 MLJ 445

Jellinek's Application [1946] 63 RPC 59

Rotta Research Laboratorium SPA & Anor v. Ho Tack Sien & Ors; Chai
Yuet Ying (Third Party) (No.2) [2011] 1 LNS 597; [2011] 6 MLRH 584

Samuel Naik Siang Ting v. Public Bank Bhd [2015] 8 CLJ 944; [2015] 6
MLJ 1

Legislation referred to:

Trade Description Act 2011, ss. 2, 4, 8, 9(6), 16

Trade Marks Act 1976, ss. 14(1)(d), 38(1)

Interpretation Acts 1948 and 1967, s. 17A
Rules of Court 2012, O. 15 r. 6(2) (b), O. 42 r. 13

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