JUDGMENT

Nurulhuda Nurain Mohamad Nor J:

(Enclosure 15)

[1] This suit is pertaining to trademark infringement and/or passing off. The plaintiff contends to be the exclusive licensee of the registered trademark. The defendant, via encl 15, applied to strike out the Amended Writ of Summons ("AW") and Amended Statement of Claim ("ASOC").

[2] The AW and ASOC were amended via O 20 r 3 of the Rules of 2012 ("ROC"). This Court allowed encl 15 but with certain limitations, for the reasons laid out further below.

[3] One of the grounds for encl 15 was that the defendant's Defence, filed on 15 January 2025, set out the crucial defence that the plaintiff is not the sole and exclusive distributor in Malaysia of products bearing the SIMBA trademark.

[4] The plaintiff, through the ASOC, subsequently sought to include an averment that the plaintiff is the exclusive licensee of the registered trademark owned by Sonison Malaysia. The AW and ASOC were filed by the plaintiff on 28 January 2025, via encls 12 and 13 respectively. In the AW, the plaintiff also seeks two additional declarations to the initial prayers dated 21 November 2024, one of which is a declaration that the plaintiff is the exclusive licensee.

[5] The ASOC inserted a new para 9a stating that the plaintiff is the exclusive licensee for the products listed carrying the registered trademark of a lion design with the word "Simba". Paragraph 9a further listed 16 items and a detailed elaboration of the products with the said trademark.

[6] A newly inserted para 9b sets out the facts which the plaintiff pleads to be the acts committed by the defendant amounting to a breach of the registered trademark. These acts include, among others, "offers or exposes the Products for sale under the sign", "imports or exports goods under the sign", "uses the sign on an invoice, catalogue, business letter, business paper, price list or other commercial documents, including any such documents in any medium".

[7] Another newly inserted para 9c states that the defendant had infringed the registered trademark of the plaintiff. In this paragraph, the plaintiff pleads that the defendant had sold products bearing the name and registered trademark on online marketplace platform by the defendant without the approval ("kebenaran"), permission ("keizinan") and/or consent ("persetujuan") of Sonison and/or plaintiff.

[8] Several other paragraphs in the ASOC were amended to include references to the plaintiff as the "exclusive licensee" ("pemegang lesen ekslusif") and to insert a relief seeking a declaration that the plaintiff is the exclusive licensee of the "Simba" registered trademark in Malaysia.

Findings By This Court

[9] This Court is of the view that the AW and ASOC, filed only after the Defence to be clearly an afterthought. Both the amended versions of the AW and ASOC, clearly are against O 20 r 1(3) of the ROC as the amendments sought to insert new material facts touching on "capacity of party" and adding a new cause of action for trademark infringement.

[10] O 20 of the ROC states as follows:

Amendment of writ without leave (O 20, r 1)

1. (1) Subject to paragraph (3), the plaintiff may, without leave of the Court , amend the writ once at any time before the pleadings in the action begun by the writ are deemed to be closed.

(2) Where a writ is amended under this rule after service thereof, then, unless the Court otherwise directs on an application made ex parte, the amended writ shall be served on each defendant to the action.

(3) This rule shall not apply in relation to an amendment which consists of:

(a) A ddition, omission or substitution of a party to the action or an alteration of the capacity in which a party to the action sues or is sued;

(b) The addition or substitution of a new cause of action; or

(c) Without prejudice to r 3(1), an amendment of the statement of claim, if any, endorsed on the writ,

unless the amendment is made before the service of the writ on any party to the action.

Application for disall