1. ) Lim Wei Ying 2. ) Caramay Malaysian Sdn Bhd v TE Electrical Sdn Bhd

Case Significance

Instructive on obtaining Order 14 summary judgment for trademark infringement under the Trademarks Act 2019, and on the injunctive, delivery-up, disclosure and damages relief that follows, where a defendant's supplier defence is a bare assertion.

This High Court decision at Johor Bahru concerns an application for summary judgment in a trademark-infringement suit. The first plaintiff was the registered proprietor of the trademark CARAMAY, registered in Class 9 for electric cables and related goods, and the second plaintiff, a company owned by the first plaintiff, manufactured the electrical and cabling products under that mark. In July 2023 the plaintiffs discovered that the defendant had supplied a product bearing the CARAMAY mark through an e-commerce platform; on purchasing and inspecting a sample, examining the packaging, colour, label, SIRIM number, date coding and markings, they concluded it was a counterfeit using the CARAMAY trademark, and they lodged a report with the Ministry of Domestic Trade and Cost of Living against the defendant and against the alleged supplier. The plaintiffs then sued and applied for summary judgment under Order 14 of the Rules of Court 2012, seeking an injunction, delivery up of infringing goods, disclosure of the supply chain, and an inquiry as to damages. The court, per Dr Noradura binti Hamzah JC, held that the plaintiffs had satisfied the prerequisites under Order 14 and established a prima facie case of infringement under the Trademarks Act 2019. The defendant's contention that it had merely obtained the goods from a supplier and was itself misled was held to be, at most, relevant to remedies at the inquiry stage and not a matter that displaced infringement; the defendant had produced no evidence of any verification or authorisation and had taken no action against the alleged supplier, so its contention was a bare assertion that did not amount to a triable issue. The court accordingly allowed the application and granted a final injunction restraining infringement, ordered delivery up or destruction on oath of the infringing goods, packaging and materials, ordered the defendant to disclose on affidavit within 14 days full particulars of its suppliers and chain of supply, directed an inquiry as to damages or, at the plaintiffs' election, an account of profits, and fixed costs at RM7,000. The judgment is instructive on obtaining summary judgment for trademark infringement and the relief that accompanies it.