KOTRA PHARMA Sdn Bhd

On the court record

Illustrates how a registered mark owner enforces its rights by summary judgment against counterfeiters and resellers, and the distinct evidential process for assessing infringement damages.

Kotra Pharma (M) Sdn Bhd appears in the reported judgments as a pharmaceutical manufacturer and registered trade-mark proprietor litigating as plaintiff in the High Court (Mahkamah Tinggi) to protect its marks against the sale of counterfeit goods, together with the procedural mechanics of assessing damages. The decisions place the company within trade-mark enforcement and the summary disposal of infringement claims.

In one decision the company sought summary judgment under Order 14 of the Rules of Court 2012 against a reseller who sold goods bearing its registered mark through an online marketplace. The court considered whether the defence of reseller status and a lack of knowledge raised a bona fide triable issue, and examined the nature of trade-mark infringement as a strict-liability wrong — whether innocent infringement or a lack of knowledge is a defence, and whether the liability of a reseller is displaced by the role of a supplier. A companion decision concerned counterfeit pharmaceutical products and passing off, where the defendant was a licensed pharmacist said to be under a duty to ensure the authenticity of the goods, the court noting the absence of a statutory defence under the Trade Marks Act 2019 and distinguishing between the credibility of a defence and its evidential sufficiency.

A further decision addressed the procedural question of how damages, once judgment was entered with damages to be assessed, should be quantified. The court considered whether it should determine the quantum at an interlocutory stage or whether damages had to be assessed through an evidential inquiry before the Registrar, holding that the proper course was an assessment rather than a determination on affidavit evidence, under Orders 36 and 37 of the Rules of Court 2012. Across the matters, the company illustrates how a mark owner enforces its registered rights through summary judgment against counterfeiters and resellers, and how the courts treat the strict-liability character of infringement and the distinct process for assessing the damages that follow.