The Trade Descriptions Act 2011 permits ex parte applications for Trade Description Orders to protect against counterfeit goods.

[1] This appeal centres on the scope and application of s 9 of the Trade Descriptions Act 2011 which empowers the High Court to declare an infringing mark as a false trade description. An order obtained under the aforesaid section, called the Trade Description Order may subject a trader using such infringing mark to prosecution under s 5 of the same. A Trade Description Order was obtained by the respondent in this appeal.

[2] As a background, it would be useful to narrate the facts leading to this appeal in the following chronological order as stated before the learned High Court Judge.

[3] The respondent was incorporated in Malaysia in 1975 with its business address at No 153, Wisma Tan Kim Hock, Jalan Laksamana Cheng Ho, Malacca. It was established to manufacture, process, distribute and sell the respondent's products, which products include 'dodol' products.

[4] The founder of the respondent was Mr Tan Kim Hock, who together with his late wife, created the durian dodol, coconut dodol and coconut biscuits. Prior to the establishment of the respondent, Mr Tan Kim Hock and his late wife had been selling the 'dodol' products from house to house since the 1950's.

[5] When their business expanded, the said products were sold at a shop called Syarikat Tong Seng in Bunga Raya, Malacca. Subsequently, the business expanded and came to be known as Tong Seng Product Centre, then 'Perusahaan Tan Kim Hock', and later to Tan Him Hock Tong Seng Sdn Bhd.

[6] In 1976, based on an application by Mr Tan Kim Hock, the trade mark application No M/72924 was registered as shown below on 21 September 1976 under Class 30 for 'dodol being a sweet confection made of glutinous rice, kaya, coconut biscuit, coconut candy':-

CAP POKOK KELAPA

[7] The same trade mark was renewed until 21 September 2021. It is not in dispute that the said trade mark has gained recognition, both locally and overseas. The respondent has acquired substantial reputation and goodwill in the said trade mark.

[8] In 2001, Tan Kim Hock Product Centre Sdn Bhd (the 1st appellant) was established by Mr Tan Kim Hock. The directors of the 1st appellant were Mr Tan Kim Hock and Madam Siah Siu Eng, the 2nd appellant. Both Mr Tan Kim Hock and Madam Siah Siu Eng were the shareholders of the 1st appellant.

[9] The 1st appellant was established to sell and market the 'dodol' products, which were manufactured in the respondent's factories.

[10] In 2012, Mr Tan Kim Hock sold his interest in the 1st appellant to Madam Siah Siu Eng and her family. After this transfer, the respondent's 'dodol' products continued to be sold by the 1st appellant.

[11] In November 2013, the respondent stopped distributing its 'dodol' products to the 1st appellant and subsequently found that the 'dodol' products, which were not its 'dodol' products but bearing similar trade marks, were still being sold by the 1st appellant.

[12] The respondent also raised its concerns that its 'dodol' products are "halal certified" and there was the issue of whether the 'dodol' products bearing a confusingly similar trade mark being sold by the 1st appellant (which were also described as 'halal') were actually "halal certified". The respondent's concern was that if the same were not actually 'halal' certified, it would jeopardise the respondent's reputation.

[13] By way of an ex parte Originating Summons dated 26 May 2014, the respondent applied for a Trade Description Order ('TDO') under subsections 9(1) and (2) of the Trade Description Act 2011 ('Act 730') that the durian dodol, coconut dodol and coconut biscuits ('dodol products') bearing the trade mark in the shape of a 'T' containing a red and white coconut tree

which is a stylised letter in the middle of the coconut tree consists of a logo 'S', on its packaging, which is confusingly