The court has the inherent jurisdiction to set aside subpoenas if no relevant evidence can be obtained, balancing the right to call witnesses against potential oppression.

Table of Content
1. court examines the authority of registrar in relation to subpoenas. (Para 1)
2. court issues subpoenas to ensure witness testimonies are available for just adjudication. (Para 2 , 3 , 4 , 5)
3. courts consider the relevance of evidence and necessity for subpoenas. (Para 6)

[1] In Court Encl No 50 (This Application), the following 2 questions arise:

(1) whether the Registrar of Trade Marks (Registrar) can apply to Court to set aside subpoenas which have been issued to the Registrar's officers [subpoenas had been applied for by the plaintiff company (Plaintiff)] on the ground that the subpoenas are frivolous as all the information needed by the Plaintiff from the Registrar's officers for the trial of this case may be obtained from a search of the records of Intellectual Property Corporation of Malaysia (MyIPO); and

(2) if the Court dismisses This Application, in view of s 63(1) of the Trade Marks Act 1976 ( TMA ), can the Court order costs of This Application be paid by the Registrar to the Plaintiff?

B. Background

[2] In this case:-

(1) the Plaintiff had filed an action (Original Action) against 5 defendants (Defendants) for the tort of passing off in respect of a mark used by the Plaintiff in its business; and

(2) the Defendants had made various counterclaims against the Plaintiff (Counterclaim).

[3] During pre-trial case management of this case:-

(1) the Plaintiff and Defendants had agreed for the Original Action and Counterclaim to be tried together; and

(2) pursuant to O 34 r 2(2)(e)(ii) of the Rules of 2012 (RC), the Defendants had classified the following 3 letters issued by MyIPO (MyIPO's Letters) as "Part C" documents (Part C Documents):-

(a) a letter dated 30 June 2015 signed and issued by Puan Suhaila binti Saleh (Puan Suhaila), MyIPO's Trade Marks Officer, on behalf of the Registrar, to the first defendant company (1st Defendant); and

(b) 2 letters, both dated 16 July 2015, signed and issued by Puan Nor Seri binti Mohammad (Puan Nor), an Assistant Trade Marks Officer of MyIPO, on behalf of the Registrar to the 1st Defendant.

[4] As the Defendants had classified MyIPO's Letters as Part C Documents, the Plaintiff applied to this Court to issue 2 subpoenas to Puan Suhaila and Puan Nor (2 Subpoenas) to testify and produce documents at the trial of this case.

[5] This Application had originally been filed by Puan Nor only. On the hearing date of This Application, the Applicant's learned counsel applied orally to amend This Application to include an application by Puan Suhaila (Oral Application). The Plaintiff's learned counsel, to her credit, did not object to the Oral Application. Accordingly, I allow the Oral Application and This Application is thus made by both Puan Suhaila and Puan Nor (collectively referred to in this judgment as the "Applicants").

C. Submission Of Applicants And Plaintiff

[6] The Applicants' learned counsel had forwarded the following contentions, among others, for this Court to set aside the 2 Subpoenas:

(1) based on the Federal Court's judgment delivered by Zulkefli Makinudin CJ (Malaya) in Ho Tack Sien & Ors v. Rotta Research Laboratorium SpA & Anor, Registrar of Trade Marks (Intervener) & Another Appeal, [2015] 4 CLJ 20 at paras 1, 24, 26, 29 and 46:-

(a) in a suit to rectify the Register of Trade Marks (Register) under s 45(1)(a) TMA (Rectification Suit), there is no necessity to cite the Registrar in the Rectification Suit. This is because the evidence of the Registrar is not material to prove a trade mark infringement and the Registrar is not a key witness to establish likelihood of confusion; and

(b) according to s 62(2) TMA , in lieu of the Registrar appearing and being heard in the Rectification Suit, the Registrar may submit to the Court a statement in writing signed by the Registrar, giving particulars of the proceedings before the Registrar in relation of the matter in issue or of the grounds of any decision given by the Registrar affecting the same or of the practice of the office in lik

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