Wong Kian Kheong JC:

JUDGMENT

(After trial)

A. Introduction

[1]This is another dispute in the long running saga between two senior lawyers, Mr. David Chong Kok Kong (Mr. Chong) and first defendant (1^st Defendant).

[2]This case concerns the following subject matter:

(1)12 trade marks registered in the name of plaintiff company (Plaintiff) with Registrar of Trade Marks (Registrar) in Classes 35, 41 and 45 (12 Registered Trade Marks);

(2)4 trade marks (Portcullis Trade Marks) whereby applications to register Portcullis Trade Marks in Class 36 by Plaintiff are pending before the Registrar (Plaintiff’s 4 Trade Mark Applications). The Portcullis Trade Marks are –

(a)“PORTCULLIS TRUSTNET”,

(b)“PORTCULLIS”,

(c)a logo (Portcullis Logo). Portcullis Logo is annexed to this judgment as Annexure A; and

(d) (Portcullis TrustNet in Chinese characters);

(3)2 applications had been filed by 1^st Defendant to register Portcullis Logo and “PORTCULLIS TRUSTNET” (1^st Defendant’s 2 Trade Mark Applications). The 1^st Defendant’s 2 Trade Mark Applications are still pending before Registrar; and

(4)6 domain names (Portcullis Domain Names).

B. Issues

[3]The issues that arise in this case are, among others:

(1)whether Plaintiff must comply with s 66(1)(a)(b)Trade Marks Act 1976TMA) before Plaintiff can admit the following evidence -

(a)trade marks registered by Plaintiff in countries outside Malaysia; and

(b)Plaintiff’s applications to register trade mark in a foreign country.

(c)In this regard, does s 66(1)TMAss 74(a)(iii)78(1)(f)Evidence Act 1950EA) on admissibility of “public documents”;

(2)whether Plaintiff can tender as evidence documents regarding creation of Portcullis Logo (Portcullis Logo Documents) –

(a)when Mr. Chong is one of the co-makers of certain drawings; and

(b)whether Portcullis Logo Documents can be admitted as “real evidence” under s 60(3)EAs 32(1)(b)EA

(3)whether defendants (Defendants) can rely on certain findings made in the following proceedings -

- to estop Plaintiff in this case by reason of 2 limbs of res judicata doctrine, namely cause of action estoppel and issue estoppel;

(a)arbitral proceedings commenced by Portcullis International Ltd. (Portcullis International) against 1^st Defendant (Arbitral Proceedings); and/or

(b)Kuala Lumpur High Court Originating Petition No. D3-36-50/2006 (Oppression Suit) filed by 1^st Defendant against Portcullis International, Mr. Chong and Portcullis Holdings (M) Sdn. Bhd. (2^nd Defendant)

(4)whether there were certain admissions made by Mr. Chong in Arbitral Proceedings and/or Oppression Suit which bound Plaintiff in this case. This question discusses, among others, ss 17(1),31,57(1),80115EARC);

(5)whether Defendants can rely on Memorandum of Agreement dated 2.4.1998 between Portcullis International and 1^st Defendant (MOA) in this case;

(6)who is first user and Common Law owner of Portcullis Trade Marks?;

(7)whether Defendants can apply to Court to expunge 12 Registered Trade Marks under s 45(1)(a)TMA

(8)whether 1^st Defendant’s 2 Trade Mark Applications have been lawfully made under s 25(1)TMA^st Defendant be compelled by a mandatory injunction to withdraw 1^st Defendant’s 2 Trade Mark Applications?;

(9)whether Defendants have infringed 12 Registered Trade Marks. If there is no evidence of trade mark infringement, can the Court grant a perpetual quia timet injunction under s 52(3)(e)Specific Relief Act 1950SRA) to restrain a future infringement of the registered trade mark;

(10)whether Defendants have committed tort of passing off in this case;

(11)whether copyright subsisting in Portcullis Logo was –

In this respect –

(a)first owned by Portcullis Investment Pte. Ltd. (Portcullis Investment);

(b)subsequently distributed to Mr. Chong and his wife (Mrs. Chong) upon Portcullis Investment’s voluntary winding up; and

(c)finally assigned by Mr. and Mrs. Chong to Plaintiff.

(i)can the Court accept Mr. Chong’s evidence on the applicable law of Singapore; and

(ii)if there is no expert evidence on the applicable law of Singapore, is the assignment