In this application, a permanent injunction was allowed based on five elements as set out by Fabrique Ebel Societe Anonyme v Syarikat Perniagaan Tukang Jam City Port & Ors (supra) and Leo Pharmaceutical Products AS (Lovens Kemiske Produktionsaktieselskab) v Kotra Pharma (M) Sdn Bhd (supra).
The five elements considered by the Court in coming up with its decision are described in detail below.
Firstly, the Plaintiff’s “BINTANG” mark is a registered marks with the Intellectual Property Corporation of Malaysia (MyIPO) in Class 32. Therefore, the Plaintiff has the exclusive rights to use the registered mark in relation to the goods which include alcoholic beer and non-alcoholic beer.
Secondly, the Defendant used its own mark which is identical or similar to the Plaintiff’s registered “BINTANG” mark. It must be noted that, the Plaintiff has never licensed or authorized the Defendant to use the registered mark. Therefore, the Defendant is neither registered proprietor nor registered user of the registered mark.
Thirdly, the Defendant has used its mark in the course of trade, being: leased its import license and imported shipments of counterfeit beer to third parties which cover both local and foreign markets. To this, the Defendant had submitted in its affidavit in reply to be merely the middle-man and therefore, does not own the counterfeit beers. In here the Court took the view that the Defendant’s secondary act of abetment of others sufficed in connecting it with the use of the counterfeit beer i.e. the act of abetment or facilitation rendered to a principal infringer is not a statutory excusable act.
Fourthly, the Defendant used its mark in relation to the Plaintiff’s “BINTANG” mark and its goods registered in Class 32 including alcoholic beer and non-alcoholic beer from the Defendant’s shipping documents. It was noted by the Court that forms obtained from the consignment include invoices, packing list and other forms which all contained the description “Bintang Beer”, “Bintang 16%” or “Bintang Beer 16% which make reference to the Plaintiff’s “BINTANG” mark.
Finally, the Defendant used its mark in such manner as to render the use of its mark likely to be taken used as a trademark i.e. crafted to mimic or imitate the registered mark to mislead the public consumer that the counterfeit beer was in fact produced by the Plaintiff.
The Court has summarily made out its case of trade mark infringement and as neither a triable issue raised by the Defendant nor otherwise a reason to hold a trial, the learned Judge entered summary judgement for the Plaintiff.[:]