The court established that copyright protects original artistic works, and a valid Statutory Declaration serves as prima facie evidence of ownership, leading to findings of infringement and passing off.

Mohd Radzi Harun J:

Introduction

[1] After a full trial, this Court made the following findings:

(i) the drawings and the design of the box and product packaging containing the Plaintiff's beauty product called "Women Desiree Triple Advance Cream" ("the Plaintiff's Box"), is an artistic work and is a work protected by copyright pursuant to the Copyright Act 1987 (" CA 1987");

(ii) the Statutory Declaration ("SD") affirmed by Khairunisa Nadia binti Karip (PW1) on 9 October 2020 is valid and recognisable in law as a prima facie evidence as to the Plaintiffs ownership of the Plaintiffs Box and the copyright to that Plaintiffs Box;

(iii) the drawings and design of the boxes and product packaging containing the Defendants' beauty products "Turmeric Advance Cream" ("the Defendants' Box") had infringed the copyright of the Plaintiffs Box;

(iv) the Defendants' Box passed off as the Plaintiff's Box as the Defendants' Box is nearly similar and strongly resemble, although not identical to, the Plaintiff's Box.

(v) although the copyright law protects the expression of original or inventive thoughts and the overall artistic expression of the Plaintiff's Box, the copyright protection does not include and cannot extend to certain elements found on the Plaintiff's Box namely:

(a) the plastic transparent window allowing a view of the product inside the Plaintiff's Box;

(b) the word "15g" printed on the said box; and

(c) the filigree and butterfly motifs on the said box,

as these are commonly used elements in the market particularly for beauty products.

[2] Based on the above findings, this Court allowed partially the Plaintiffs claims and declared the Defendants to have infringed the Plaintiffs copyright on the Plaintiffs Box and the Defendants' Box had passed off as the Plaintiffs Box. Consequently this Court allowed paras 25 (a) (b) (c) (d) (e) (f) (g) (i) (j) of the Plaintiff's Amended Statement of Claim. However, the Plaintiff's claim for damages on the Plaintiffs goodwill was disallowed.

[3] The Defendants now filed an appeal only against the part of the decision of this Court which declared the Defendants to have infringed the Plaintiff's copyright on the Plaintiff's Box and the Defendants' Box had passed off as the Plaintiff's Box, and the consequential orders following the declarations, viz:

(a) permanent injunction to prohibit the Defendants from infringing the copyright of the Plaintiff's Box and passing off the Defendants' Box as the Plaintiffs Box; and

(b) damages.

Background

[4] The Plaintiff's witnesses who testified at the trial were:

(i) Khairunisa Nadia binti Karip (PW1) - a director of the Plaintiff company and designer of the Plaintiffs Box;

(ii) Mohd Haniff bin Karip (PW2) - younger brother of PW1 - and former staff of the Plaintiff;

(iii) Tengku NurSyamimi binti Tengku Sahrum (PW3)-staff of the Plaintiff.

Defendants' witnesses were;

(i) Lizawati binti Raflis (DW1) - the 2nd Defendant, owner and founder of the 1st Defendant company;

(ii) Siti Khadijah binti Mazli (DW2) - designer of Defendants' Box;

(iii) Siti Armiza binti Basir (DW3) - former staff of the 1st Defendant;

(iv) Iwan Zawawi bin Nordin (DW4) - the Defendants' staff, former staff of the Plaintiff; and

(vi) Nordin bin Mohd Mokhtar (DW5) - former staff of the 1st Defendant.

Plaintiffs Case

[5] The Plaintiffs case was that it started marketing the Plaintiffs beauty cream for women called "Women Desiree Essential Cream" on 7 August 2018. This beauty cream is contained in the Plaintiffs Box and available at physical stores and via online orders. At the material time, the beauty product's name was changed to "Women Desiree Triple Advance Cream", still contained in similar Plaintiffs Box but depicting the name change of the beauty product. Sometime in 2020, the Plaintiff was informed of a beauty product called "Turmeric Advanced Cream" marketed by the Defendants contained in the Defendants' Box that closely resembled the Plaintiffs Box. The Plaintiff found that the Defendants' marketi