Azlan Sulaiman JC:

JUDGMENT

[AFTER TRIAL]

Introduction

[1] After a full trial of the action. I allowed the Plaintiff’s claim and dismissed the Defendant’s counterclaim. This is my Judgment for doing so.

The claim, the counterclaim, and the order for deciding them

[2] The Plaintiff is the registered owner of Utility Innovation No. MY-165197-A for a “Torque Shear Tamper Resistant Nut” (“the Plaintiffs Ul”). The Certificate for Utility Innovation issued for the Plaintiff’s Ul is dated 28.2.2018.

[3] The Plaintiff claims that an anti-theft nut manufactured by a company in China named Hebei Xinde Power Fittings Co. Ltd (“Hebei”), distributed in Malaysia by the Defendant as Hebei’s sole distributor, and supplied by the Defendant to Sarawak Energy Berhad (“SEB”) for use in SEB’s transmission line projects, infringed the Plaintiff’s Nut. For convenience I will refer to that anti-theft nut as “the ATN”.

[4] The Plaintiff therefore seeks the following relief against the Defendant:

“(1) an injunction be granted to restrain the Defendant, whether acting by itself, its officers, servants or agents or any of them or otherwise howsoever from doing the following acts or any of them, that is to say:

(a) infringing, or causing, enabling or assisting others to infringe Utility Innovation No. MY-165197-A (“Plaintiffs Ul”) in Malaysia;

(b) manufacturing, causing others to manufacture, importing, supplying, distributing, offering to sell, selling, using or stocking any torque shear tamper-resistant nut and any shear-off type anti-theft locknut that are functionally identical, or similar to the Plaintiff’s Ul or that have the same function or solves the same theft or vandalism problems as the Plaintiff’s Ul (“Infringing Products”) without the license, consent or permission from the Plaintiff;

(2) the Defendant is to deliver up for destruction on oath, all Infringing Products within 14 days from the date of this Judgment, irrespective of the formal service of the sealed Judgment on the Defendant;

(3) an order for the assessment of damages;

(4) at the option of the Plaintiff, an order for an account of the profits made by the Defendants from the importation, supply, distribution, offer to sell, sale, use or stock of any Infringing Products;

(5) interest at the rate of 5% per annum be chargeable on the amount of damages assessed or profits accounted for that is payable by the Defendant from the date of this Judgment to the date of full and final payment;

(6) costs on an indemnity or solicitor-client basis; and

(7) such further or other reliefs as this Honourable Court deems fit and just.”

[5] In response, apart from denying that the ATN infringes the Plaintiffs Ul, the Defendant further counterclaims to invalidate the Plaintiff’s Ul as a utility innovation. In brief, the Defendant essentially contends that the registration of the Plaintiff’s Ul as a utility invention should be invalidated because it lacks novelty, is not industrially applicable, and lacks sufficient disclosure.

[6] Consequently, the Defendant therefore counterclaims for the following relief:

A.A declaration that the Plaintiff’s Ul is and always has been invalid and unenforceable;

B.A declaration that the manufacture, import, offer for sale, sale, use and/or stocking of the ATN for the purpose of offering for sale, selling or using the ATN, do not constitute an infringement of the 197 Ul;

C.An order that the Plaintiff’s Ul be revoked and invalidated and that upon the Order (if granted) being served on the Registrar of Patents, the Registrar of Patents may take such action as may be necessary to revoke and remove from the Register of Patents under serial no.: MY-165197-A including the publication of such revocation in the relevant Government Gazette;

D.Costs of this action; and

E.Such further and other orders or reliefs as this Honourable Court deems fit.

[7] If I allow the Defendant’s counterclaim, the Plaintiff’s Ul would be invalidated as a utility innovation, and there would obviously be no issue of infringe