2026 MarsdenLR 98343

HIGH COURT MALAYA KUALA LUMPUR
EDWIN PARAMJOTHY MICHAEL MUNIANDY, JC
LEUNG KAI FOOK MEDICAL CO PTE LTD & ANOR – Appellant
Versus
ZAINAH MISDIN – Respondent
[Suit No: WA-22IP-70-11/2023]

Damages for intellectual property infringement must be compensatory, following the principle of restitutio in integrum. Quantification requires strict proof of causation between the infringement and the loss, with awards based on specific evidence rather than speculation, ensuring proportionality and avoidance of overcompensation or double recovery.

Headnote:(A) Trademarks Act 2019 - Section 14 - Trademark infringement and passing off - Assessment of damages - Determining quantum for loss of business profit, loss of goodwill, countermeasure costs, and general damages - Object of damages is compensatory in nature, aimed at restitutio in integrum - Court must balance need to adequately compensate plaintiff against ensuring damages are not speculative or punitive. (Paras 24, 25, 37)

(B) Damages - Assessment - Proof of causation - Plaintiff bears evidential burden to prove defendant's infringement caused loss claimed - Recoverable losses include direct consequences like loss of profits and injury to goodwill, provided they are not too remote. (Paras 28, 48)

(C) Goodwill - Passing off - Presumption of damage - Law presumes damage to goodwill in passing off once interference is established - Quantum remains subject to judicial discretion based on evidence and specific facts - No rigid formula exists for assessment. (Paras 58, 63, 81)

(D) Investigative Costs - Countermeasure costs - Costs for investigation and verification of infringement are recoverable as they are a natural and direct consequence of the unlawful act. (Paras 100, 101)

Facts of the case:
The plaintiffs were proprietors of registered trademarks and brought an action for trademark infringement and passing off. Summary judgment was entered against the defendant, who was a sole proprietor found to be selling counterfeit goods. The court proceeded to assess the quantum of damages for loss of business profit, loss of goodwill, countermeasure costs, and general damages, following the raid and seizure of counterfeit items.

Findings of Court:
The court rejected the plaintiffs' claim for profit loss based on overall revenue decline as speculative, finding a lack of causal connection to the specific defendant. The court also rejected the defendant's request for nominal damages. Damages were assessed based on the specific volume of counterfeit goods, market evidence, and the limited scale of the defendant's operation, ensuring the award was compensatory rather than punitive.

Issues: The main issues were the appropriate methodology for calculating loss of business profits and goodwill in intellectual property infringement and whether investigative costs are recoverable as damages.

Ratio Decidendi: Damages must restore the plaintiff to their pre-infringement position (restitutio in integrum) without resulting in overcompensation or penalizing the defendant. Causation must be established on a balance of probabilities, and while damage to goodwill is presumed in passing off, the quantum must be proportionate to the evidence of the defendant's limited or wide-scale involvement. Result : Total damages assessed at RM162,305.00 with 5% interest per annum from the date of judgment.