22ip-49-09/2014 antara nctech int bhd

DALAM MAHKAMAH TINGGI DI KUALA LUMPUR
DALAM WILAYAH PERSEKUTUAN, MALAYSIA
GUAMAN NO: 22IP-49-09/2014
ANTARA
NCTECH INT BHD
(No. Syarikat : 736148 – X)
...
PLAINTIF
DAN
NCV TECHNOLOGIES SDN BHD
(No. Syarikat : 862416 – K)
...
DEFENDANT
Grounds of Decision
Azizah Nawawi, J:
Application
[1]
Enclosure (27) is an ex parte application filed by the Plaintiff
under Order 52 rule 3 of the Rules of Court 2012 (‘ROC 2012’) for
leave to commence committal proceedings against the Defendant
for non – compliance with the orders of this Court dated
30.10.2014.
[2]
The application is supported by the Statement pursuant to O. 52 r
2 of the ROC 2012 and an affidavit affirmed by Lim Han Kiong on
5.11.2014.
[3]
After hearing the ex parte application, the same was dismissed by
this Court with no order as to costs.
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The Salient Facts
[4]
In this suit, the Plaintiff is seeking several injunctive orders
against the Defendant from selling electronic goods, “callers” and
“receivers” bearing the trademarks NCV, NCTECH, Vellux and
any other corresponding marks or goods which the Plaintiff claims
to be their trademarks.
[5]
The Plaintiff claims to be the registered proprietor of ‘Vellux
Wireless Call System’ in Class 9, ‘NccVellux’ in Class 9 and
‘NCTECH’ in Class 9. The Plaintiff also claims to be the patent
owner of MY – 152154 – A, ‘A Wireless Data Alert System’.
[6]
On 5.8.2012, the Plaintiff filed an ex parte application for an
interlocutory injunction pending the hearing of the suit. The Court
directed that the application be heard inter parte and that the
Defendant be served with the same. On 30.9.2014, in the
presence of Mr. Ng Wai Leong, a director of the Defendant
company, an ad interim order was granted. On 17.10.2014, the
said ad interim order was extended, but was amended to exclude
the trademark ‘NCTECH’ as the same belongs to the Defendant.
The matter was then fixed for hearing on 30.10.2014 pending the
exchange of the affidavits.
[7]
On 30.10.2014, the exchange of the affidavits have not been
completed and the matter was adjourned to 13.11.2014. Pending
the hearing of the inter parte application on 13.11.2014, another
ad interim order was granted, inter alia, in the following term:
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“Defendan dihalang dan disekat dari menggunakan dan/atau
terus menggunakan jenama ataupun representasi “vellux”
ataupun apa-apa jenama/nama yang menggandungi perkataan
“vellux” dalam perniagaannya.”
[8]
After hearing the parties on the interlocutory injunctions, the
Plaintiff’s application was dismissed with costs on 21.11.2014.
The said decision reads as follow:
“DATE: 21.11.2014
PLAINTIFF: WL KANG
DEFENDANT:
CL FOONG/EDMOND TEH
Mahkamah:
Decision on encl (3) – inter parte application for injunction – full
grounds on appeal.
[1]
This is the plaintiff’s application for an interlocutory injunction
under O. 29 ROC 2012. The plaintiff’s application is to injunct the
defendants from infringing the trademark ‘NCV’, the trademark
‘Vellux’ and the patent MY-152154-A.
[2]
In an application for interlocutory injunction, the onus is on
the plaintiff to show bona fide serious issues to be tried, balance of
convenience lies with the plaintiff and that damages is not an
adequate remedy. (see Keet Gerald case)
[3]
As the defendant is the registered proprietor of the mark
‘NCV’, the defendant therefore has the exclusive right to use the
same. Thus, there is no serious issue to be tried with regards to the
trademark ‘NCV’.
[4]
On the issue of the patent infringement, I find that the
plaintiff did not plead patent infringement.
[5]
On the vellux trademark, there is an issue on the locus
standi of the plaintiff as the assignment was made by Chan Yuet
May vide a Deed of Assignment dated 27.1.2014. However, the
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said Chan Yuet May had been declared a bankrupt in May 2012.
There is therefore a serious issue on the validity of the assignment.
[6]
Premised on the reasons above, I find that there are no bona
fide serious issues to be tried at this stage that would warrant the
granting of the interlocutory injunction.”
[9]
In the meantime, on 7.11.2014, the Plaintiff filed this application,
for leave to commence committal proceedings against the
Defendant. The application was heard on 5.12.2014 and was
dismissed with no order as to costs.
The Findings of the Court
[10]
Order 52 Rule 3(2) ROC 2012 provides that in order for committal
proceedings to be issued against any person, leave of Court must
first be obtained. It is trite law that in order for leave to issue
committal proceedings to be granted, this Court must first be
satisfied that there is a prima facie case for contempt. In Wee
Choo Keong v Mbf Holdings Bhd [1993] 2 MLJ 217, the
Supreme Court held at page 221/I:
“Prima facie case for contempt
In the appeals before us, leave to issue committal
proceedings has been granted. This means that the
learned High Court Judge has accepted that there was a
prima facie case for contempt against the appellant.”
[11]
Thus, to obtain leave to commence committal proceedings
against an alleged contemnor, the onus is on the Plaintiff to
demonstrate a prima facie case of contempt. In Dato Onn Ah
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Baa & Ors v Eagle and Pagoda Brand Teck Aun Medical
Factory Sdn Bhd [2003] 7 CLJ 81, the Court held that:
“Be that as it may, the approach of the court in an
application for leave which is actually a permission
stage was to consider whether the applicant has
shown or demonstrated a prima facie case of
contempt and this process is conducted ex parte and in
the absence of the alleged contemnor. It is important to
state at this stage that the hearing of the ex parte
application for leave is not an adjudication on the merits
of the case...” (emphasis added)
[12]
Even though this application was meant to be heard ex parte, this
Court has allowed the counsel for the alleged contemnor to
submit as amicus curiae. Indeed in the case of Dato Onn Ah
Baa & Ors (supra) itself, counsel for the alleged contemnor was
allowed to submit at leave stage.
[13]
The basis of the Plaintiff’s application is the order of this Court
dated 30.10.2014, which reads:
“Defendan dihalang dan disekat dari menggunakan
dan/atau
terus
menggunakan
jenama
ataupun
representasi “vellux” ataupun apa-apa jenama/nama yang
menggandungi perkataan “vellux” dalam perniagaannya.”
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[14]
It is the submission of the Plaintiff that the draft orders have been
served on the defendant company and that they are well aware of
the terms of the Orders. The first order was obtained in the
presence of a director of the Defendant, whereas the other two
orders were secured in the presence of legal counsel for the
Defendant. Therefore, pursuant to Order 45 r. 7(6) ROC 2012,
the Defendant have notice of the Order dated 30.10.2014.
[15]
On the issue of the requirement of penal notice to be endorsed on
the draft order, the Plaintiff relied on the case of Muhammad
Said Amin v Haszeri Hussin [2014] 3 CLJ 3 where the Court
held that there was no mandatory requirement of a penal notice to
be endorsed in the order sought to be enforced. In any event, in
this case we are dealing with an ad-interim order where parties
are well aware that the injunctive orders are in place until the next
hearing date, that is, on 13.11.2014.
[16]
Despite having notice of the Court order dated 30.10.2014, the
Plaintiff submits that the Defendant has failed to comply with and
were in breach of the said Order. This can be seen from the two
letters appearing on the Defendant’s website, which was
downloaded on 5.11.2014, and displays two (2) documents:
(i)
A certificate issued by SIRIM, ‘Sijil Pematuhan’ (Certificate
of Conformity) issued on 18.12.2012, and due to expire on
17.12.2015, for the brand Vellux.
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(ii)
Letter from DUNAN Co Ltd, company based in Korea –
letter dated 4.7.2011 – giving exclusive rights to the
Defendant to distribute Vellux products in Malaysia.
[17]
Therefore, the Plaintiff submits that there is a prima facie case for
contempt. The Order prohibits the Defendant from using the
trademark ‘Vellux’ or any brand containing the word ‘Vellux’ in its
business. By displaying the two letters on its website, the Plaintiff
submits that the Defendant has committed an act of contempt.
[18]
Mr. Edmond Teh, acting as Amicus Curiae, submitted that the two
documents are letters issued by third parties, SIRIM and DUNAN
Co Ltd, a company based in Korea. These two documents are
not documents issued by the Defendant and therefore they
cannot be said to have used by the Defendant of the trademark
‘Vellux’ in their business. This falls outside the ambit of the Court
orders and there is therefore no prima facie case of contempt.
[19]
It is common ground that parties are duty bound to obey an order
of the Court. In Wee Choo Keong’s case (supra), Abdul Hamid
Omar LP held that:
“a person against whom an order of court has been
issued is duty bound to obey the order until it is set
aside.”
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[20]
The next issue is to ascertain the ambit of the Court order which
binds the parties. The task of this Court then is to ascertain and
determine the scope and implication of the injunctive orders in the
court order dated 30.10.2014. In Goh Boon Kim v Taman
Sungai Dua Development Sdn Bhd [1995] 3 AMR 2807, the
Court held as follows:
“In ascertaining and determining the scope and
implication of the aforesaid term of the injunction, I
am of the considered view that the injunction is to
construe by reference to the intention as expressed
in the said injunction itself. If the words in the injunction
are themselves precise and unambiguous, there is no
room for any construction other than the one expounding
those words in their ordinary and natural meaning. Effects
must be given to the language used, whatever may be the
consequences.” (emphasis added)
[21]
In the present case, the intention of the injunction is to prohibit the
Defendant from ‘using’ the trademark ‘Vellux’ or any brand
containing the word ‘Vellux’ in its business for the interim period
of 30.10.2014 to 13.11.2014. As this is a trademark case, then
the definition of the word ‘use’ must be read in the context of the
Trade Marks Act 1976 (‘the TMA 1976’).
[22]
In the context of the TMA 1976, the definition of the word ‘use’ of
a trade mark is defined in section 3(2) of the TMA which
provides:
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“In this Act –
(a)
references to the use of a mark shall be
construed as references to the use of a
printed or other visual representation of the
mark; and
(b)
references to the use of a mark in relation to
goods shall be construed as references to
the use thereof upon, or in physical or other
relation to, goods;”
[23]
Several cases have made reference to the term ‘use of the mark’
in the context of the TMA 1976. In Godrej Sara Lee Ltd v Siah
Teong Teck & Anor (No. 2) [2008] 7 CLJ 24, Justice Ramly Ali
(as His Lordship then was) held that:
“For actual use to arise there must be use of the mark on
or in relation to goods. This would include affixing the
marks to the goods or in an advertisement, circular or a
catalogue.”
[24]
In Acushnet Company v Metro Golf Manufacturing Sdn Bhd
[2006] 7 CLJ 557, the Court that the use of a registered trade
mark on an invoice is a use in the course of trade.
[25]
In Oishi Group Public Company Limited v Liwayway
Marketing Corporation [2015] 2 CLJ 1121, the case involved an
application to expunge the registration of a trade mark premised
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on non –use. In paragraph (23) on the Judgment, it was held by
the Court that:
“[23] Therefore from section 3(2) read with section
46(1)(b), the reference to use of the mark must be
physical use of the mark on or in relation to the
goods by the registered proprietor or registered user. By
simply showing the mark noted on cash invoice of a
third party, and not of the registered proprietor or
registered user is not ‘use’ of the registered mark
within the meaning of section 46(1)(b) read with
section 3.” (emphasis added)
[26]
Therefore, from the above cases, the use of the mark must be the
physical use of the marks by the Defendant, in relation to the
goods, such as affixing the marks on the good itself (such as on
handbags/shirts), on sale invoices or in an advertisement, circular
or a catalogue. Where the mark is used on an invoice belonging
to a third party, it is not considered as ‘use’ of the said mark.
[27]
In this case, the word ‘Vellux’ can be found in the two (2) letters,
but the two (2) letters were not issued by the Defendant but by
third parties. No doubt the letter from Dunnan Co Ltd indicates
consent for the Defendant to use the mark, but it cannot be said
to be physical use of the mark by the Defendant. There is no
physical use of the mark by the Defendant in this letter, as the
letter was issued by a third party. With regard to the “Sijil
Pematuhan” issued by SIRIM, the same carries a disclaimer Note
which states that:
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“Certificate of communications product means that the
product has met the requirement of the above noted
standards. The certification of the communications
product does not in itself confer a right on the certificate
holder to operate the communications product.”
[28]
In the premise, I find that the express terms of the injunctive
orders have not been breached by the Defendant. The Court
order prohibits the Defendant from using the mark ‘Vellux’ and the
Defendant did not use the mark ‘Vellux’ on its website as the two
(2) letters were not issued by the Defendant, but by third parties.
The Plaintiff further submits that this may make the injunctive
order meaningless as the Defendant may use third parties to go
around the injunction orders. But then again, it depend on how
wide the injunctive orders are, and in the present case, the
injunctive orders are only against the Defendant, no one else.
Therefore, I find that the Plaintiff has failed to establish a prima
facie case of contempt against the Defendant. The said Order
has not been breached by the Defendant.
[29]
In Dato Onn Ah Baa & Ors (supra), after hearing the
submissions of the parties, the Court finds that the applicant has
failed to establish a prima facie case, as the Court is of the view
that:
“the complaints raised by the plaintiffs did not show that
the express terms as stipulated in the said order has been
breached by the defendants ..This court also found that
the complaints raised against the defendants No. 2 – 6
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did not constitute any violation or any act of disobedience
of the terms of the said order dated 12.9.2002.
Accordingly, this court found that the plaintiffs have failed
to demonstrate a prima facie case of contempt against
defendants No. 2 – 6 for leave to be granted.”
[30]
In the premise, I find that no prima facie case has been shown
and the application is dismissed with no order as to cost.
(AZIZAH HAJI NAWAWI)
JUDGE
HIGH COURT MALAYA
(Commercial Division)
KUALA LUMPUR
Dated: 15th April 2015
For the Plaintiff
: WL Kang/Alex Gan
Messrs Gan & Kang Chambers
Kuala Lumpur.
Watching Brief
: CL Foong/Edmond Teh
Messrs Shu Yin Teh and Tho
Subang Jaya, Selangor.
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