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2023 MarsdenLR 475
HIGH COURT MALAYA KUALA LUMPUR
PLK ELECTRICAL ACCESSORIES MANUFACTURERS SDN BHD – Appellant
Versus
SUASA DAMAI (M) SDN BHD & ORS; LIEW WAI HOU & AN.... – Respondent
[Civil Suit No: WA-22IP-63-10-2019]
Trademark infringement and passing off require proof of ownership, unauthorized use, and public confusion, with corporate veil lifted to hold directors accountable for wrongful acts.
Headnote:(A) Trade Marks Act 1976 - Infringement of trademark and passing off - Plaintiff claimed infringement of "PLK" trademark due to Defendants selling counterfeits - Defendants alleged manufacturing was at Plaintiff's behest - Court found no evidence supporting Defendants' claims - Established criteria for trademark infringement and passing off - Corporate veil lifted to hold directors liable. (Paras 27, 29, 31, 40-43)
(B) Trademark Infringement - Plaintiff must prove ownership, unauthorized use, and public confusion - Defendants failed to provide credible evidence. (Paras 27, 28)
(C) Passing Off - Required elements include goodwill, misrepresentation, and resultant damage - Court found misrepresentation by Defendants damaging to Plaintiff's goodwill. (Paras 31-39)
(D) Corporate Veil - Special circumstances justified lifting corporate veil to hold directors liable for infringement. (Paras 40-43)
Facts of the case:
Plaintiff manufactured and sold electrical components under "PLK" trademark; Defendants admitted to selling counterfeits but claimed they acted under Plaintiff's instructions.
Findings of Court:
Plaintiff proved infringement and passing off; Defendants' counterclaims dismissed.
Issues: Whether Defendants' manufacturing was authorized by Plaintiff and whether Plaintiff's claims were an abuse of process.
Ratio Decidendi: Court held Defendants' claims lacked credible evidence; established legal principles for trademark infringement and passing off.
Result: Plaintiff's claims allowed; Defendants' counterclaims dismissed.
| Table of Content |
|---|
| 1. trademark infringement and passing off claims (Para 1 , 2 , 3) |
| 2. background of plaintiff's business and product (Para 4 , 5 , 6 , 8 , 9 , 10 , 11) |
| 3. defendants' claims and counterarguments (Para 12 , 14 , 15 , 17) |
| 4. court's evaluation of witness credibility (Para 18 , 19 , 20 , 23 , 25 , 26) |
| 5. criteria for trademark infringement (Para 27 , 28 , 29 , 30) |
| 6. elements of passing off tort (Para 31 , 32 , 33 , 34) |
| 7. plaintiff's proof of misrepresentation (Para 36 , 37 , 38) |
| 8. lifting of corporate veil (Para 40 , 41) |
| 9. court's final orders and conclusions (Para 42 , 43 , 44) |
Introduction
[1] The subject matter in issue is a product called "low voltage cut off fuse switch disconnector" bearing the Plaintiff's "PLK" trade mark (Plaintiffs Product"). The Plaintiff claimed that the Defendants had committed an infringement of the Plaintiff's trade mark for their acts of selling counterfeits of the Plaintiff's Product at lower prices ("Infringing Product"), and in so doing the Defendants committed the tort of passing off.
[2] The Defendants admitted that they had manufactured the Infringing Products but alleged that the said manufacturing was done consequent to orders made by Liew Wai Hou ("LWH") and Yong Kek Min ("YKM"), both of whom were instructed by Fong Swee Yen ("FSY"), the Plaintiff's director and main shareholder. Based on this allegation, the Defendants counterclaimed against the Plaintiff for a declaration that the Plaintiff's action against the Defendants was an abuse of the Court's process. They also brought in LWH and YKM into the proceeding as the Third Party, to indemnify the Defendants for any relief or remedy ordered in favour of the Plaintiff against the Defendants.
[3] The Defendants appealed against the decision of this Court allowing the Plaintiff's claims and dismissing the Defendants' counterclaim and the Defendants' claims against the Third Party.
Background
[4] For over 30 years, the Plaintiff's core business is the manufacturing and trading of electrical components. Many of the Plaintiff's products received the approval of Tenaga Nasional Bhd ("TNB") for consumer usage.
[5] The 1st Defendant (D1) was established by the 2nd and 3rd Defendants (D2 and D3) to conduct the business of selling industrial components and tools. D2 and D3 are D1's directors, were one of the Plaintiff's distributors.
[6] Realising the need to protect its products particularly to ensure that customers would purchase TNB-certified safe and high standard electrical components products, the Plaintiff registered its "PLK" trade mark in 1993 that would be applied on those products.
[7] Due to the reliability and high standard of the said products, the Plaintiff was appointed as TNB's licensed supplier of electrical fuse box in 2003.
[8] In 2016, the Plaintiff manufactured the Plaintiff's Product, which is a new version of fuse boxes and calling this product "low voltage cut off fuse switch disconnector". This new version fuse boxes bore the "PLK" trade mark.
[9] The Plaintiff's Product which was launched for consumer purchases in May 2016 is highly regarded having received SIRIM certification. Apart from that, TNB approved the Plaintiff's Product for all of TNB's projects requiring fuse boxes. The Plaintiff's Products also attained certification from the International Electrotechnical Commission ("IEC").
[10] Around 2017, the Plaintiff received complaints that the Plaintiff's Product was sold cheaper at various shops selling electrical items. Acting on the complaints, on 19 October 2017, Plaintiff's representatives went to the Defendants' premise and found the Defendants selling counterfeits of the Plaintiff's Product bering the Plaintiff's "PLK" trade mark ("Infringing Product").
[11] That the Plaintiff is the registered owner of the "PLK" trade mark is not disputed. The Defendants also did not dispute that the 1st Defendant had in actual fact manufactured the Infringing Product. But the Defendants alleged that the manuf
