Personal liability can arise under trade mark infringement when corporate roles facilitate unlawful actions, validated by statutory provisions.

Table of Content
1. individual liability for corporate infringement. (Para 1 , 2 , 6)
2. infringement facts and evidence concerning goods. (Para 3 , 4 , 5)

[1] This judgment discusses a novel question of whether an individual may be personally liable for a company's infringement of a registered trade mark under s 38(1)(a) of the Trade Marks Act 1976 (TMA).

B. Background

[2] In these 4 suits (4 Suits):

(1) the plaintiff companies (plaintiffs) are proprietors of registered trade marks for various goods in Classes 3, 9, 14, 18, 24, 25 and 35 (plaintiffs' Registered Trade Marks);

(2) the 1st defendant company (1st defendant) is a company incorporated under the Companies Act 1965 [ CA (1965)];

(3) the 2nd defendant (2nd defendant) is an Indian national who is a director and owner of 78% shares in the 1st defendant; and

(4) the 3rd defendant (3rd defendant) is an individual who is a director and owner of 17% shares in the 1st defendant.

[3] The 1st defendant is not a distributor or retailer authorised by the plaintiffs to sell goods bearing the plaintiffs' Registered Trade Marks. However, the 1st defendant sold goods bearing the plaintiffs' Registered Trade Marks (Infringing Goods) at the 1st defendant's business premises at Regency Suite, 30th Floor, Pacific Regency Hotel Suites, Jalan Punchak, off Jalan Ramlee 50250 Kuala Lumpur (1st defendant's Premises).

[4] The plaintiffs' representatives had gone to the 1st defendant's premises and purchased Infringing Goods on 27 April 2012, 23 November 2013, 29 March 2014, 14 June 2014, 7 September 2014 and 25 December 2014. Consequently, officers of the Ministry of Domestic Trade, Co-operatives and Consumerism (Ministry) raided 1st defendant's premises on 22 July 2012, 16 August 2014, 20 September 2014 and 25 December 2014 and seized items of Infringing Goods (Ministry's Raids).

[5] The 4 Suits have been filed by the plaintiffs against the 1st to 3rd defendants (defendants) based on infringement of the plaintiffs' Registered Trade Marks under s 38(1)(a) TMA.

[6] In the 4 suits:

(1) The plaintiffs had served the writ and statement of claim of 4 suits (4 SOC's) on the 1st and 2nd defendants by way of substituted service. The 1st and 2nd defendants however did not enter appearance;

(2) The 3rd defendant had entered appearance and had filed a defence;

(3) The plaintiffs initially filed four applications for summary judgment against 3rd defendant (4 SJ Applications). Subsequently, the plaintiffs obtained leave of court to amend 4 SJ applications to apply for summary judgment against all the defendants (4 Amended SJ Applications);

(4) after the plaintiffs had obtained leave of this court to amend 4 SJ applications, the 3rd defendant filed four applications for security for costs against the plaintiffs (4 SFC Applications);

(5) the plaintiffs and the 3rd defendant consented to the following:

(a) 4 SFC Applications to be heard together before 4 Amended SJ applications; and

(b) 4 Amended SJ Applications to be heard together after the disposal of 4 SFC applications; and

(6) this court dismissed 4 SFC applications with costs on the ground that those applications had not been made in good faith but were instead filed with a collateral purpose to stifle 4 Amended SJ Applications (Dismissal of 4 SFC Applications). No appeal to the court Of Appeal has been filed by the 3rd defendant against the dismissal of 4 SFC applications.

C. Relevant Principles In Deciding Summary Judgment Application

[7] The following trite principles apply in deciding 4 Amended SJ Applications: (1) once the plaintiffs have fulfilled the following three matters in O 14 rr 1(1) and 2(1) of the Rules of 2012 ( ROC ), namely:

(a) 4 SOC's have been served on the defendants;

(b) The defendants have entered appearance; and

(c) deponents of the plaintiffs have affirmed affidavits verifying the facts on which 4 SOC's are based and the belief of the plaintiff 's deponents that there is no defence by the defendants to 4 SOC's

- the burden then shifts to the defendants

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