Perusahaan Otomobil Kedua Sdn. Bhd. and Perodua Sales Sdn. Bhd. (hereinafter referred as the “Plaintiffs”) in their suit alleged that Lee Lap Kee, sole proprietor carrying a business under the name “Eco Auto Supply” (hereinafter referred as the “Defendant”) had, without licence and authority of the Plaintiff, imported, manufactured, produced, reproduced, distributed, supplied, sold and/offered for sale engine oil bearing the Perodua Trademarks and Get-Up, which are goods not permitted and authorised by the Plaintiffs.
The 1st Plaintiff is the registered and owner of thirteen trademarks in Malaysia under Classes 4 and 12, bearing the well-known Perodua Trademarks. The Plaintiffs have been marketing, promoting, distributing, supplying, selling and/or offering for sale engine oil bearing the Perodua Trademarks. Ministry of Domestic Trade and Consumer Affairs had instructed the Enforcement Division to raid the Defendant’s business premises on 16 May 2019. The items seized at the raid include “Perodua” cap liners (P1), “Perodua” empty bottles (P2) and “Perodua” engine oil (P3). These items were examined by the Plaintiffs’ representatives and found out that the items were recycled, counterfeited and does not match to the standard of specification by the Plaintiffs. Therefore, the Plaintiffs pleaded that the Defendant had infringed the Plaintiff’s’ Perodua Trademarks and passed off his business and the counterfeited goods. The Plaintiffs demanded (a) a declaration from the Defendant that the Perodua Trademarks are international well know trademarks, (b) an injunction to restrain the Defendant to use the Perodua Trademarks without the Plaintiffs’ consent and authority, (c) a delivery up order of the infringing items, (d) a public apology for the infringement by the Defendant and (e) damages.
The Plaintiffs have filed an Order 14 application for this case, therefore, the Defendant is required to raise a defence which shows a bona fide triable issue, in the sense of an issue or question in dispute which ought to be tried. The Defendant’s affidavit is now very crucial as the IP Court will take it as the primary factor in determining whether there is a triable issue and why a summary judgement should not be entered against the Defendant. The affidavit provided by the Defendant on 26/6/2020, stating that the Defendant is aware of the Perodua Trademarks and the Defendant denied to have imported, manufactured, produced, reproduced, distributed, supplied, sold and/offered for sale engine oil bearing the Perodua Trademarks and Get-Up, which are goods not permitted and authorised by the Plaintiffs. The Defendant was carrying out a recycling activity of the engine oil, bottles and cap liners where the Defendant is not required to obtain permission or licence as he is not carrying out any business or trade.
The IP Court perused over the affidavits of the parties and also the Defendant’s Statement of Defence and he found that the Plaintiffs had fulfilled the threshold for the IP Court to consider its application. However, the IP Court has also dismissed the application as he found that the Defendant had successfully raised an inherently probable disputes and denials. There are issues that ought to be tried at a full trial but they are not suitable to be determined at this stage through affidavit evidence and it would not be appropriate for a summary judgement to be granted.
The Plaintiffs’ application was dismissed.