JUDGMENT

Mohd. Yusoff Mohamed SCJ:

This is an appeal against the decision of the learned trial Judge who held, on the preliminary issue, that the intervener had a direct interest in the matter and should therefore be allowed to intervene in these proceedings. The learned trial Judge also held, on another preliminary issue, that an ex parte order is always a provisional order and that being so is always liable to be set aside by the Court on the application of any person who is affected by the order.

It is settled law, on the authorities, that a party may be added if his "legal interests" will be affected by the judgment in the action but not if his commercial interests alone would be affected: per Lord Diplock in Pegang Mining Co. Ltd. v. Choong Sam & Ors. [1973] In that case, the Privy Council had formulated the test to determine whether a party's interests in the matter are "legal" or merely "commercial" in the following words (at p. 56):

A better way of expressing the test is: will his rights against or liabilities to any party to the action in respect of the subject matter of the action be directly affected by any order which may be made in this action?

The answer to that question, as far as the interveners in this case are concerned, are definitely in the affirmative. We therefore hold that the learned trial Judge was correct in his decision on this point.

With regard to the merits of the case, the principal issue before the learned trial Judge was whether the trade mark of the appellant had been infringed by the intervener. Under s. 35 of the Trade Marks Act 1976 the registered proprietor of a trade mark in respect of any goods has the exclusive right to the use of the trade mark in relation to those goods.

Under s. 16 of the Trade Description Act, where any registered proprietor or registered user of any trade mark finds that his rights in respect of such trade mark has been infringed, he may apply for an order declaring such infringing trade mark to be a false trade description for the purposes of this Act.

Under s. 38 of the Trade Marks Act, a registered trade mark is infringed by a person who uses a mark which:

(a) is identical with it; or

(b) so nearly resembling it as is likely to deceive; or

(c) so nearly resembling it as is likely to cause confusion.

On the evidence, the learned trial Judge had held that the appellant's goods and the intervener's goods were not identical. On the question of resemblance and likelihood of deception, the learned Judge said that, having regard to "not only the whole mark" but also to their "distinguishing or essential features", he was satisfied that:

It is not likely ordinary purchasers would be deceived into regarding the intervener's product to be the produce of the applicant.

Having so found that the appellant's rights have not been infringed, the learned Judge consequently held that the appellant was not entitled to the order made under s. 16 of the Trade Description Act 1972.

In their submissions during the hearing of their appeal to this Court, Counsel for the appellant had cited several authorities in support of their arguments, including Hille International Ltd. v. Tiong Hin Engineering Pte. Ltd.[1983] 3 CLJ 1002 (Rep)Jordache Enterprises Inc. v. Millennium Pte. Ltd. [1985] 1 MLJ 281 and Chong Fok Shang & Anor. v. Lily Handycraft & Anor.[1989] 1 CLJ 424 (Rep).

In Hille International, the plaintiffs were the registered proprietor of a trade mark "hille" in respect of their product (prolypropylene chair shells) since 1968. The defendants came out with a similar product under the brand name "CILLY'. The learned trial Judge, Rajah J held (at p. 1004) that:

I am satisfied that on the evidence before me ... the defendants deliberately invented the word "CILLY" to deceive and cause confusion in the trade.

The Court, however, held that there was no passing-off as the colors and shapes used in the manufacture of the product was common to the trade.

In Jordache, the appellants were t