(delivering the Judgment of the Board): Section 16 of the Trade Descriptions Act 1972 of Malaysia, so far as material, provides that: —

"(1) Where any person being a proprietor ... of a registered trade mark within the meaning of any written law relating to trade marks ... established —

(a) ... that his rights in respect of such trade mark are being infringed in the course of trade within the meaning of the written law ...

the High Court may on the application of such person make an order declaring that the infringing trade ... mark ... is for purposes of this Act a false trade description in its application to such goods as may be specified in the Order."

Sabah is a territory comprised in the Borneo States which form part of the federation of Malaysia. The Trade Marks Ordinance of Sabah is a written law relating to trade marks within Section 16 of the Trade Descriptions Act 1972. The Ordinance established a register of trade marks and conferred on a registered proprietor the exclusive right to the use of the registered trade mark in Sabah.

On January 22, 1976 the respondents, Ng Brothers Import & Export Company, were registered under the Trade Marks Ordinance of Sabah as the proprietors of Trade Mark 19862 comprising a device of a golden coloured dragon enclosed in a circle and the words "Golden Dragon" in respect of edible oils only.

In 1978 the appellant, Socoil Corporation Bhd., began to sell in Sabah cooking oil under a mark which infringed the respondents' registered trade mark. On July 31, 1979, on the application ex parte of the respondents, B.T.H. Lee J., sitting in the High Court in Borneo, made an order which, on February 21, 1980 after a hearing inter partes he refused to discharge, that pursuant to section 16 of the Trade Descriptions Act 1972 "the trade mark 'Golden Dragon' consisting of the device of a golden coloured dragon enclosed in a circle used in relation to edible oils and in particular to cooking oil not manufactured by or distributed by" the respondents "shall be deemed for the purposes of the Trade Descriptions Act 1972 to be false trade description". The appellant appealed from B.T.H. Lee J. to the Federal Court of Malaysia. The appeal was heard and dismissed by that court (Lee Hun Hoe C.J. (Borneo), Chang Min Tat and Syed Othman F.JJ.) on December 5, 1980. The appellant appeals with the leave of the Federal Court to his Majesty the Yang di-Pertuan Agong.

The respondents, having proved registration and infringement, were entitled to an order under section 16 of the Trade Descriptions Act 1972 unless the appellant succeeded in satisfying the court that in the judicial exercise of the discretion conferred by the section the judge of the High Court in Borneo should not have made any order. The appellant made a number of complaints which did not move the learned judge to exercise his discretion in its favour. The Federal Court were not persuaded and the Board are not persuaded that the learned judge erred in exercising his discretion in favour of the respondents.

The appellant submits that in the exercise of his discretion B.T.H. Lee J. should have declined to make an order because the order which he did make prevents the appellant from using the golden dragon mark in every part of Malaysia, although the trade mark of the respondents was only registered in Sabah. This argument is misconceived. Although by article 121(3) of the Federal Constitution of Malaysia any order of the High Court in Borneo has full force and effect throughout the Federation, the order made by B.T.H. Lee J. only had the effect, and could only have had the effect, of rendering the use in Sabah of the golden dragon mark by the appellant a false trade description in Sabah. If a somewhat equivocal passage in the judgment of the Federal Court is to be understood as meaning that the territorial ambit of the order extended beyond Sabah, that, in their Lordships' view would not be justified.

Section 6 of the Trade Marks Act