Haidar Mohd Noor J:

PT Sampoerna JL Sdn. Bhd. (the intervener/proposed respondent) filed a summons-in-chambers in this originating summons on 17 December 1996 (Encl. 9) for the following orders:

(1) that leave of this Honourable Court be granted to the intervener to intervene in this action and that the intervener be joined as the respondent to this action;

(2) that Order obtained herein dated 13 November 1996 be set aside;

(3) alternative to prayer (2), that Order dated 13 November 1996 be varied to the effect that PT Sampoerna JL Sdn. Bhd. be permitted to manufacture cigarettes bearing the trade mark "JET" and a lion head device with wings as represented in schedule B to the said Order dated 13 November 1996, for purposes of export;

(4) that the applicant be ordered to pay damages to PT Sampoerna JL Sdn. Bhd. and that an assessment of damages be conducted by the Deputy Registrar;

(5) that the entry of registered trade mark no. 87/03950 for the word "JET" and a lion head device with wings in Class 34 on the Register of Trade Marks be rectified by expunging the said registered trade mark no. 87/03950 and all entries pertaining thereto from the Register of Trade Marks, and the Registrar of Trade Marks, Malaysia, be directed to give full effect to this Order upon being served with a copy hereof;

(6) that the applicant be ordered to pay the costs of this application in any event;

(7) such further and other reliefs as this Honourable Court may deem fit and proper in the circumstances.

The grounds in support of the application are, inter alia, that the applicant has wrongfully obtained the Order dated 13 November 1996 and that the registered trade mark no. 87/03950 is an entry wrongfully entered or remaining on the Register of Trade Marks as are more specifically stated in the affidavit of Lim Jit Choong dated 16 December 1996 (Encl. 8) in support thereof and the further affidavits of David Ch'ng Chin Hong (Encl. 12), Lim Jit Choong (Encl. 13), Geetha a/p Thuraisamy (Encl. 14), Lim Jit Choong (Encl. 16) and the affidavit in reply of Lim Jit Choong (Encl. 21).

The applicant, that is, N.V. Sumatra Tobacco Trading Co. ('STTC') opposed the application vide the affidavit of Karen Abraham (Encl. 15) and the affidavit of Cik Sintra Sumardi, its Senior Manager (Encl. 17).

Ex Parte Order Dated 13 November 1996 Obtained Vide Encl 1 (As Amended Vide Encl 6)

STTC, an Indonesian company, says that it manufactures, produces, distributes and sells cigarettes worldwide using a distinctive trade mark, get up and packaging, namely the mark "JET" in block letters and the device of a lion head edged with wings all in gold on a white background ("the Trade Mark, Get-Up and Packaging") (see Exh. SS-11 in Encl. 2).

In Malaysia, STTC is the registered proprietor of trade mark no. 87/03950 in respect of the trade mark, get-up and packaging by way of an assignment on 16 July 1996 from one Chan Mew Yew who was the original registered proprietor as at 1 September 1987 (see Exh. PKHP-3 in Encl. 4). The trade mark no. 87/03950 was registered in Class 34 in respect of "tobacco, raw or manufactured, matches, smokers' articles (see Exh. PKHP-1). It has been renewed for a period of 14 years from 1 September 1987 (see Exh. PKHP- 2). All the particulars are duly certified by Assistant Registrar of Trade Marks Malaysia pursuant to Trade Marks Act 1976 for use in legal proceedings (see Exh. PKHP-4).

In addition thereto, STTC by way of Exh. SS-4 in Encl. 2 showed that it is the registered proprietor of the trade marks JET, JET label and JET & device (being the mark JET in block letters with the device of a lion head edged with wings) in 23 countries outside Malaysia and STTC has pending applications for these trade marks in another 32 countries outside Malaysia.

By way of Exhs. SS-5 to SS-8 of Encl. 2, STTC claims that as a result of extensive sales, advertising and promotional activities worldwide, including in Malaysia, it has acquired a substant