KOTRA PHARMA (M) SDN. BHD. v LAU TIAN THYE B/S FARMASI MEGA CARE

Case Significance

Illustrates the grant of summary judgment under Order 14 in a trade-mark infringement and passing-off claim over counterfeit goods where the defence is a bare denial, and confirms that a licensed pharmacist owes a duty to ensure the authenticity of the products it sells under the Trademarks Act 2019.

This High Court decision at Kuala Terengganu concerns an application for summary judgment under Order 14 of the Rules of Court 2012 in a trade-mark infringement action. The plaintiff, Kotra Pharma (M) Sdn Bhd, is a long-established pharmaceutical manufacturer and the registered proprietor of the trade mark "CREOBIC", used for antifungal cream products and duly registered under the Trademarks Act 2019, its validity undisputed. The defendant, a sole proprietor operating a retail pharmacy under the name Farmasi Mega Care, had previously bought genuine CREOBIC products from the plaintiff. When the plaintiff's sales representative visited the pharmacy and returned several boxes of near-expiry CREOBIC products for replacement, inspection at the plaintiff's warehouse revealed that three boxes of CREOBIC Cream were counterfeit, with batch-number discrepancies corresponding to a different product.

The plaintiff contended that the defendant had infringed its registered trade mark and passed off by dealing in counterfeit CREOBIC cream, contrary to section 54 of the Trademarks Act 2019, and that as a licensed pharmacist the defendant owed a duty to ensure the authenticity of the pharmaceutical products it sold. The defendant denied the allegations, its primary defence being that the plaintiff had not proved the counterfeit products originated from its pharmacy. The court examined whether, on the affidavit evidence, the defendant had disclosed any bona fide triable issue, distinguishing between issues of credibility and evidential sufficiency and holding that it was entitled to reject bare denials and inherently improbable assertions unsupported by documents.

Finding no bona fide triable issue and no statutory defence available, the court held this to be a proper case for summary judgment. It entered judgment on the infringement claim and, rather than granting the monetary reliefs as standalone orders, directed a general inquiry into damages within which the plaintiff could pursue its claims for aggravated and exemplary damages. The judgment illustrates the grant of summary judgment in a counterfeit-goods trade-mark case where the defence amounts to bare denial.