JUDGMENT

Mohd Radzi Harun J:

Introduction

[1] This is an appeal filed by the Plaintiff against the decision of this Court which had dismissed their application for summary judgment against the Defendant under O.14 Rules of 2012 (" ROC 2012").

[2] Below are my grounds in coming to such decision.

Background

[3] Plaintiff is the registered proprietor of the trademarks with detail as below:

The above trademarks are hereinafter collectively referred to as the "Arm & Axe Marks".

[4] The Plaintiff produce/manufactured one of the leading brands of medicated oil in Asia known as the Axe Brand or Minyak Cap Kapak which is a recognized heritage brand in Singapore and Malaysia and has been in the business of the medicated oil for over 90 years.

[5] The Defendants are partners in a partnership trading under the style and name of GLR Cash & Carry and at all material times trade groceries, foods and beverages.

[6] On 30 September 2020, the Defendants1 shop was raided by the officer from the Enforcement Division of the Ministry of Domestic Trade and Consumer Affairs, where units of allegedly counterfeited Minyak Cap Kapak were seized from the Defendants' shop.

[7] Pursuant to the raid and seizure action, the Plaintiffs (through its solicitor) issued letters to the Defendants demanding for damages and costs by reason of its infringement and passing off of the Axe & Arm Marks.

[8] Due to the non-settlement between parties, the Plaintiffs proceeded with the filing of this suit against the Defendants for trademark infringement and passing off.

The Application

[9] The Plaintiffs filed this application under O. 14 of the Rules for summary judgment mainly on the basis that the Plaintiffs have established that there are trademark infringement and passing off on part of the Defendants, and defence forwarded by the Defendants are not triable issues.

[10] The Plaintiffs prayed for similar reliefs as set out in its Statement of Claim to be entered summarily against the Defendants which include:

(i) permanent injunction against infringement, passing off and continued sale of the alleged counterfeit goods;

(ii) discovery order of relevant documents including shipping documents, bills of lading, insurance policies, customs declaration forms, certificates of origin, manufacturing records, purchase orders, delivery orders, bills, invoices, receipts, contracts, records, accounts and all other documents ("the said documents") relating to the acquisition, importation of the Counterfeit Goods;

(iii) delivery up order of the Counterfeit Goods bearing the Arm & Axe Marks in the Defendants' possession, custody, control or power;

(iv) an order directing the Defendants to destroy all promotional materials bearing the infringing trademarks in the possession, control, custody or power of the Defendants;

(v) apology; and

(vi) damages.

[11] The Defendants argued that there are bona fide triable issues to be determined by the Court, namely:

(i) The Plaintiffs have not in their Statement of Claim stated about the infringement and/or passing off done;

(ii) The second Plaintiff does not have locus standi against the Defendants since the second Plaintiff is not the registered owner of the trademarks;

(iii) The Defendants are a bona fide purchaser from a 3rd party (ie Fu Da Trading Sdn Bhd).

Finding

[12] It is well established and already settled law that once an O 14 application is demonstrated to be correctly and properly filed, the burden shifts and thus rests on the other party who seeks to resist the application to raise a defence which shows a bona fide triable issue, in the sense of an issue which justifies and warrants the matter to be considered at the trial proper. This is entirely in keeping with the requirements of O 14 r 3 of the Rules.

[13] The celebrated decision of the former Supreme Court in National Company For Foreign Trade v. Kayu Raya Sdn Bhd , ; ruled as follows:

"We think it appropriate to remind ourselves once again that in every application under O 14 the first considerations ar