JUDGMENT

Wong Kian Kheong JC:

(Court Enclosure No 1)

A. Issues

[1] This originating summons (OS) raises the following two novel questions:

(1) whether the Court has the discretionary power under s 41 of the Specific Relief Act 1950 (SRA), and/or its inherent jurisdiction to grant, among others, a "negative declaration" that the plaintiff company's (plaintiff) use in good faith of the plaintiff's own name (Diesel) and "Diesel" trade marks (plaintiff's Diesel Trade Marks) does not infringe the defendant company's (defendant) four registered Diesel trade marks (defendant's Registered Diesel Trade Marks) under s 40(1)(a) of the Trade Marks Act 1976 (TMA); and

(2) if the Court has the discretionary power under s 41 SRA to grant a negative declaration in this case, whether the Court should exercise its discretion to do so in view of the following:

(a) the availability of the remedy under ss 37(a) to (c) read with 45(1)(a) TMA for the plaintiff to apply to Court to expunge the defendant's Registered Diesel Trade Marks from the Register of Trade Marks (Register); and/or

(b) there is unexplained and inordinate delay by the plaintiff in the filing of this OS.

B. Affidavits Filed By Parties

[2] The plaintiff's first affidavit affirmed by Mr Stefano Iesurum (Mr Iesurum) on 26 March 2015 (the plaintiff's first Affidavit) claimed, amongst others, as follows:

"(1) the famed Italian entrepreneur, Mr Renzo Rosso (Mr Rosso), created the Diesel trade mark in 1978 after being inspired by the oil crisis that affected the world during the period. Mr Rosso also founded the plaintiff in 1978 with the Diesel name. The plaintiff was subsequently incorporated in Italy as a private limited liability company in 1982 with the same Diesel name. The plaintiff is now one of Italy's leading business enterprises with an annual turnover of more than US$1 billion. Mr Rosso has won "GQ Man of the Year 2005" award;

(2) since the plaintiff's establishment, the plaintiff has manufactured, exported, distributed and sold jeans, clothing and accessories bearing the plaintiff's Diesel Trade Marks. Regarding the plaintiff's Diesel Trade Marks:

(a) the plaintiff is the Common Law proprietor of the plaintiff's Diesel Trade Marks worldwide;

(b) the plaintiff is the registered owner of the plaintiff's Diesel Trade Marks in many countries, notably in the United States of America where the plaintiff's registration of the Diesel trade mark dated back to 24 October 1978;

(c) the plaintiff has registered the plaintiff's Diesel Trade Marks in Malaysia for goods in Class nos 3, 9, 14, 16, 18 and 24 (plaintiff's Registered Diesel Trade Marks). The plaintiff has also registered stylish verbal marks "D" for goods in Class no 25;

(d) the plaintiff's application to register "Diesel Black Gold" for class no 25 (articles of clothing, footwear and headgear) is still pending with the Registrar of Trade Marks (Registrar);

(e) the Diesel trade mark is the plaintiff's most valued trade mark and is used in relation to the entire range of the plaintiff's goods. The plaintiff has over 5,000 retail points of sales and 300 single-branded Diesel stores in more than 80 countries around the world. The plaintiff has extensively used the plaintiff's Diesel Trade Marks worldwide since 1978;

(f) the plaintiff's first Affidavit had exhibited random copies of sale invoices of the sales of the plaintiff's goods bearing the plaintiff's Diesel Trade Marks;

(g) in building the goodwill and reputation of the plaintiff's business in relation to the plaintiff's Diesel Trade Marks, the plaintiff has expended substantial sums of money to advertise and promote the plaintiff's Diesel Trade Marks worldwide. The plaintiff's first Affidavit had exhibited "representative samples" of advertisements and promotional materials regarding the plaintiff's Diesel Trade Marks (plaintiff's Advertisements). The plaintiff alleges that the plaintiff's Advertisements enjoy circulation in Malaysia. The plaintiff's Advertisements have won prestigious award