Case Summary for PATENT TUNAS DUTA CEMERLANG & Ors v MOHD HAFIZUDDIN HIEW BIN ABDULLAH

PARTIES:

MAIN CLAIM

Plaintiff –

1. PT Tunas Duta Cemerlang
2. Hiew Chee Keong
3. Arabi Binti Mohamed

Defendant –

1. Mohd Hafizuddin Hiew Bin Abdullah

COUNTER-CLAIM

Plaintiff –

1. Mohd Hafizuddin Hiew Bin Abdullah

Defendants –

1. Hiew Chee Keong
2. Arabi Binti Mohamed
3. Digital Joy Sdn Bhd
4. C2Joy (M) Sdn Bhd

BACKGROUND

1. 2^nd Plaintiff in the Main Suit (P2) is the Defendant’s biological father. The 3^rd Plaintiff (P3) is the Defendant’s ex-wife.
2. P2 created the name “C2Joy” for his business in year 2008 and thereafter file an application at MyIPO to register the “C2Joy” trademark through his company Platinum Joy Sdn Bhd but the application was aborted.
3. In 2016, P2 allowed his son, the Defendant, and P3 to carry out their business using “C2Joy” mark in Malaysia, through Tunas Duta Cemerlang Sdn Bhd, a company owned by P3 and the Defendant.
4. It is the P’s case that P2 had entrusted the Defendant to register “C2Joy” trademark and that P2, P3 and the Defendant shall be named as co-proprietors of that trademark upon its registration. P2 subsequently found out that the “C2Joy” trademark had been registered in Class 5 solely in the name of the Defendant on 11/09/2017 and the Defendant has further applied for registration in Classes 16 & 35 of the same mark in his name.
5. Main Suits – the Plaintiffs filed a suits against the Defendant by way of writ for the invalidation of the registration of “C2Joy” trademark in the Defendant’s name on the ground that the registration was obtained by misrepresentation and that P2 & P3 shall be registered as co-owners. P also sought an injunctive relief against the D to be restrained form using the C2Joy trademark.
6. Counter-claim – the Defendant claimed that P2, Digital Joy Sdn Bhd and C2Joy (M) Sdn Bhd had wrongly used the C2Joy trademark without his consent and permission. The Defendant also claimed that P2 & P3 had continuously defamed the Defendant.
7. Both the Plaintiffs and Defendant had filed interlocutory applications for injunctions against each other.

CURRENT APPLICATION

1. The Defendant’s main ground for his current application to strike out the Plaintiffs’ Statement of Claim is that the Plaintiffs had wrongly and improperly chosen to begin their civil proceeding against the Defendant by way of a Writ.
2. The Defendant argued that as the Plaintiffs’ actions under ss. 43 & 47 of the TMA 2019 are fundamentally “application”, such applications are governed by and shall comply with the requirement of O.87r2 ROC in that it should have begun by way of an originating summons and not a Writ. Most importantly the D argued that as the P had blatantly disregarded and contravened O87 r2, this Court must strike out the P’s claim pursuant to O18r19(1)(d) to prevent an abuse of the process of the Court.
3. In determining this application, the Defendant raised the following issues for the Court to answer:
   1. Whether an action under the repealed Trade Mark Act 1976 must commence by way of originating summons according to o87r2?
   2. Whether the TMA 2019 continues to follow O87r2 / whether O87r2 applies to an action under the TMA 2019?
   3. If the answer to the 2^nd issue is positive, whether the irregularities (for non-compliance with O87r2) are remediable?

1^st question: Whether an action under the repealed Trade Mark Act 1976 must commence by way of originating summons according to o87r2?

The court ruled that applications concerned expungement of registered trademark and application of an appeal against the registrar’s decision in an opposition proceeding all being actions and application under the relevant provisions of the TMA1976, without doubt, those applications were governed by O87r2. Hence, the answer to Defendant’s 2nd question is in the affirmative.

2^nd question:  Whether the TMA 2019 continues to follow O87r2 / whether O87r2 applies to an action under the TMA 2019?

1. The court decided that as the Plaintiffs’ action against the Defendant under ss43 and 47 of the TMA 2019 is undoubtedly an application, the Plaintiffs should have filed their application using the Originating Summons, as provided by O87r2, instead of a writ.
2. Based on the Court’s findings on the workings of the legislative provisions as enumerated above, the position in law is that when the TMA 2019 repealed the TMA 1976 and the provisions in the TMA 1976 having been re-enacted, with or without modifications, in the TMA 2019, references in O87r1 of ROC to the repealed TMA1976 shall be construed as references to the provisions of the TMA2019. It follows therefor that, until and unless the Rules Committee promulgate new provisions to replace O87, the provision in O87 as it currently stand shall apply mutatis mutandis. It follows further that O87r2 is the applicable procedure that governs the Plaintiffs’ applications. Hence, the answer to the D’s 2^nd question is in the affirmative.

3^rd question: If the answer to the 2nd issue is positive, whether the irregularities (for non-compliance with O87r2) are remediable?

1. Having answered the D’s 2^nd question in affirmative and based on the Court’s findings, it follows that the P’s mode of beginning their actions against the D by way of writ is irregular and not in compliance with O87r2.
2. The court is mindful of the requirement that in administering the Rules, the Court shall have regard to the overriding interest of justice and not only to the technical non-compliance with the Rules, as provided by O1A. The Court would further apply in full force the intent of O2r1(1)-(3) where the Court would treat the P’s non-compliance with the requirements of O87r2 as an irregularity and shall not nullify the proceedings merely by that non-compliance.
3. In applying O1A, this Court is cognizant to the principle that this provision does not supersede a mandatory requirement of the Rules and that O1A cannot be invoked when the non-compliance with a mandatory rule was intentional: Duli Yang Amat Mulia Tunku Ibrahim Ismail Ibni Sultan Iskandar Al-Haj Tunku Mahkota Johor v Datuk Captain Hamzah bin Nohd Noor [2009] 4 MLJ 149, [2009] 4 CLJ 329. The Court did not find that the P’s non-compliance to be intentional.
4. The court’s answer to the D’s 3^rd question is in the affirmative. The Court ruled that the P’s non-compliance with O87r2 is curable and remediable. The Court further finds that such action does not cause any injustice or prejudice to the Defendant.

O18R19

Having determined that the P’s non-compliance with O87r2 of the ROC is curable irregularity, the Court finds that there was no abuse of the Court’s process in any manner by the P in making such irregular applications. That irregularity also does not bring the P’s action to fall within the meaning of scandalous, frivolous, or vexatious applications. The Court further found that the P’s claim, on the face of it, is obviously sustainable.

CONCLUSION

The court concluded that there is no abuse to be prevented. Defendant’s application is dismissed with costs and the Court further ordered that the Ps Write shall be deemed to be an OS and having complied with O87r2.