Maiden Heritage Empire Sdn Bhd v 1. ) Tungku Herba Mathika Enterprise 2. ) Nurr Ayu Athika Binti Mohd Rodzi 3. ) Mahani Binti Manab

Case Significance

Illustrates a combined IP-and-defamation dispute in which a patent is tested against the validity requirements of the Patents Act 1983 and a rights-holder is held liable for defamatory publications made while asserting its rights.

This High Court decision at Georgetown concerns intertwined claims of intellectual-property infringement, patent invalidity, and defamation. The plaintiff company sued in respect of what it alleged was an infringement of its intellectual property, contending that the defendants had promoted, sold and distributed a product bearing a substantial resemblance to the plaintiff's product across social-media and e-commerce platforms throughout Malaysia without its consent, licence or authorisation. The first defendant traded as a registered business; the remaining defendants are natural persons and are referred to here by role. By their counterclaim, the defendants sought the invalidation of the plaintiff's patent on the ground that it did not satisfy the requirements of sections 11, 12, 13 and 14 of the Patents Act 1983, and claimed damages for defamation arising from a number of allegedly defamatory publications made by the plaintiff.

The court's analysis therefore moved on two fronts. On the patent, it assessed the statutory requirements of patentability — including novelty and inventive step under the cited provisions of the Patents Act 1983 — against the defendants' challenge. On defamation, it examined the plaintiff's publications and the availability of the defences of justification and fair comment, applying the principle that a defence of fair comment does not fail merely because the truth of every factual allegation is not proved, provided the expression of opinion is fair having regard to such of the alleged facts as are proved.

The court found against the plaintiff on the defamation front. It held that the plaintiff had failed in its defences of justification and fair comment, and that the five publications it had made constituted defamatory statements that injured the defendants, while the defendants were found not to have committed the infringement alleged against them. On that basis the court allowed the defendants' counterclaim. The judgment is a useful illustration of how a court disentangles a combined IP-and-defamation dispute, testing a patent against the statutory conditions of validity while holding a rights-holder to account for defamatory publications made in asserting its rights.