JUDGMENT

Edwin Paramjothy Michael Muniandy JC:

(Enclosure 5 - Application For Summary Judgment)

Introduction

[1] This is the plaintiff's application vide encl 5 for summary judgment against the defendant pursuant to O 14 of the Rules of 2012 ("ROC 2012") for trademark infringement under ss 54(1) and 54(2) of the Trademarks Act 2019 ("TMA 2019").

[2] Having considered the submissions of both parties and the evidence adduced, I allowed the plaintiff's application for summary judgment on 23 September 2025 with costs of RM10,000.00. I now state my grounds for doing so.

Background Facts

[3] The Plaintiff, The Polo/Lauren Company, L.P., is a well-known global fashion company and the registered proprietor of several trademarks in Malaysia, including the "POLO" Word Mark and various Polo Player Device marks for Class 25 goods, namely clothing, footwear and headgear. The salient details of the plaintiff's POLO Word Mark and the plaintiff's Polo Device Marks are reproduced below:

[4] The Defendant on the other hand is a Malaysian company engaged in the business of manufacturing, marketing, and selling apparel products.

[5] It is the plaintiff's case that the defendant has engaged in the unauthorised use of trademarks that are either identical to, or constitute substantial reproductions of, the plaintiff's registered "POLO" Word Mark and Polo Player Device Marks (collectively referred to as "the Plaintiff's Marks").

[6] According to the plaintiff, these impugned marks are affixed to goods sold by the defendant and are prominently featured in the course of trade, including on the defendant's e-commerce platform as well as at its physical retail outlets. The representations which the plaintiff contends constitute such unauthorised use are reproduced below.

[7] It is pertinent to highlight here as well that the defendant has registered the mark, in class 25, TM No 2016069124, which incorporates a device of a polo player, without a mallet, and the letters, "RCBPC" are not the subject matter before this Court .

[8] On 28 March 2025, the plaintiff instituted the present proceedings against the defendant, alleging that the defendant had infringed its trademarks through the unauthorised use of signs identical to or substantially similar to the plaintiff's registered marks. The Plaintiff's action is anchored on ss 54(1) and 54(2) of the TMA 2019, under which the plaintiff seeks, among other reliefs, a prohibitory injunction and an order for the delivery of the impugned goods.

[9] Thereafter, on 13 May 2025, the plaintiff took out the instant application for summary judgment (encl 5).

Analysis

[10] The matter before me presents three key issues for determination:

I. Has the Plaintiff demonstrated identity infringement as outlined under s 54(1) of the TMA 2019?

II. Has the Plaintiff established similarity infringement pursuant to s 54(2)(b) of the TMA 2019?

III. Are there any triable issues arising from the case?

[11] I shall address each of these issues in turn.

I) Identity Infringement Under Section 54(1) Of The TMA 2019

[12] The relevant provision for identity infringement under the TMA 2019 is s 54(1) which provides as follows:

Section 54(1):

"A registered trademark is infringed by a person who, without the consent of the proprietor of the trademark, uses in the course of trade a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered."

[13] The legal test applicable to identity infringement under s 54(1) of the TMA 2019 is well-articulated in the leading treatise Law and Practice of Intellectual Property Malaysia (Sweet & Maxwell) at p 291, which observes that s 54(1) of the TMA 2019 contemplates infringement where two elements coincide: (a) the use of a sign which is identical to a registered trademark, and (b) the use of that sign in relation to goods or services which are identical to those for which the mark is registered. This interpretation is consistent with Kerly's Law of Trade M