Trademark infringement is established when a product's resemblance causes consumer confusion, alongside breaches of confidentiality when employees misuse proprietary information.

AnanthamKasinather JCA:

BACKGROUND FACTS

[1]The 1st respondent is a company incorporated in Italy and is involved in the research, development and manufacturing of various pharmaceutical products. One of the products manufactured by it is a glucosamine sulphate based drug called Viartril-S used for the treatment of osteoarthritis. The 1st respondent's Viartril-S trade mark was duly registered in Malaysia in Class 5 on 8th July 1976. The 1st respondent is the holder of the Product Licence for Viartril-S issued by the National Pharmaceutical Control Laboratory under the Ministry of Health, Malaysia. The product Viartril-S was registered with the Drug Control Authority (DCA), Ministry of Health on 12th July 1991.

[2]The 2nd respondent is a company incorporated in Malaysia and has since 1979 been the distributor appointed by the 1st respondent for the sale of Viartril-S in Malaysia. In Malaysia and in other South East Asian countries, the 1st respondent's product is distributed and sold under the trade name of Viartril-S. The 2nd respondent entered into a Distribution Agreement with the 1st respondent on 15th May 1979.

[3] The 1st appellant is a pharmacist and was first employed by Antah Sri Radin Sdn Bhd, a related company of the 2nd respondent on 2nd March 1990. Until his dismissal by the 2nd respondent on 6th June 2001, the 1st appellant had held the positions of Sales Executive cum pharmacist, Product Executive cum pharmacist, Product Manager and Group Product Manager. As the Group Product Manager, the 1st appellant was required to oversee the product management and product registration of the 2nd respondent. One of the terms of his employment was that the 1st appellant would not either during or subsequent to his employment divulge any confidential information relating to the affairs of the 2nd respondent which had come to his knowledge. During his employment the 1st appellant was provided with or given access to confidential information by the 2nd respondent for the sole purpose of enabling him to better carry out his duties and functions.

[4]On 21st May 2001, the 2nd respondent issued a letter of suspension against the 1st appellant. In the said letter the 1st appellant was required to attend a domestic inquiry on 28th May 2001 for serious breaches of confidentiality of information and for acting in conflict of interest of the 2nd respondent. The 1st appellant was found guilty of the charges and he was dismissed from employment.

[5]The 2nd appellant is the wife of the 1st appellant and is the third party in this suit, having been added as a third party by the 4th appellant. The 2nd appellant is also a pharmacist and was engaged by the 2 respondent on 15 April 1998 on a part-time basis to provide independent consultancy services on the registration of the 2nd respondent's products with the DCA. During her engagement, the 2nd appellant was also provided with or given access to confidential information by the 2nd respondent. On 21st May 2001, the 2nd appellant's services were terminated by the 2nd respondent. The 1st respondent contended that the 1st and 2nd appellants had utilized confidential information accessed during their tenure of employment in connection with the submission to the DCA by the third appellant to obtain the Product Licence for the 1st respondent's product. The submission to DCA contained detailed pharmaceutical data of Viartril-S including its manufacturing process. The 2nd respondent contended that the 1st and 2nd appellants, in particular the 1st appellant, had access to the database of its distribution network which included lists of customers, sales volumes and figures and generally, the marketing strategy of Viartril-S.

[6]The 3rd appellant is a company incorporated by the 2nd appellant together wi