The Polo/Lauren Company, L.P. v RCB MARKETING SDN BHD

Case Significance

Shows trademark infringement under sections 54(1) and 54(2) of the Trademarks Act 2019 disposed of summarily under Order 14, with delivery up, disclosure of the infringement chain, and an inquiry as to damages or account of profits ordered.

This High Court decision in the Commercial Division at Kuala Lumpur concerns an application for summary judgment in a trademark-infringement suit. The plaintiff, The Polo/Lauren Company, L.P., the registered proprietor in Malaysia of the POLO word mark and various Polo Player Device marks for Class 25 goods such as clothing, footwear and headgear, sought summary judgment under Order 14 of the Rules of Court 2012 against the defendant, RCB Marketing Sdn Bhd, for infringement under sections 54(1) and 54(2) of the Trademarks Act 2019. The court considered whether the defendant had raised any triable issue against the registered marks and the allegation that it dealt in goods bearing marks said to infringe the plaintiff's registered rights. Having considered the submissions and evidence, the court was satisfied that summary judgment was appropriate and allowed the plaintiff's application with costs of RM10,000. The relief granted reflected the standard remedies for established trademark infringement: an order for delivery up or disposal of the infringing goods and of the invoices, books, contracts, delivery notes, correspondence, customs declarations and other materials relating to the storage, supply, distribution, import, export or sale of the infringing goods in the defendant's possession, custody or control; an order for disclosure, within seven days and verified by affidavit, of the names and addresses of everyone who had supplied or offered to supply the defendant with the prohibited marks and of the retail customers to whom the defendant had supplied them, together with the dates and quantities of each supply; and an inquiry as to damages or, at the plaintiff's election, an account of profits, with payment of the sums found due and interest at 5% per annum. The judgment is a useful illustration of trademark infringement being disposed of summarily under Order 14 where the registered proprietor's rights and the infringing dealing are clear.