User Name: Chris Yee Ziherng

Date and Time: Friday, 4 October, 2019 4:07:00 PM MYT

Job Number: 99144887

Document (1)

1. MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE PROPRIETOR OF THE FIRM
PERFORMANCE AUDIO & CAR ACCESSORIES ENTERPRISE)
Client/Matter: -None-
Search Terms: [2009] 3 MLJ 525
Search Type: Natural Language
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Chris Yee Ziherng
 MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE
PROPRIETOR OF THE FIRM PERFORMANCE AUDIO & CAR ACCESSORIES
ENTERPRISE)
CaseAnalysis | [2009] 3 MLJ 525 | [2009] MLJU 142

MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE

PROPRIETOR OF THE FIRM PERFORMANCE AUDIO & CAR ACCESSORIES
ENTERPRISE)
[2009] 3 MLJ 525; [2009] MLJU 142

Court: High Court

Judges: LOW HOP BINGJ

Judgment Date: 1/12/2009

Catchwords & Digest

Trade Marks — Infringement of — Whether defendant infringed plaintiff[rsquo ]s trademark — Allegation of

infringement of copyright and unlawful interference with plaintiff[rsquo ]s trade or business — Application
for injunction to restrain defendant from infringing plaintiff[rsquo ]s registered trademark and damages —
Whether infringement established — Whether plaintiff entitled to injunction and damages

Held, allowing the plaintiff[rsquo ]s claim: (1) The plaintiff[rsquo ]s artistic work came within the ambit and purview
of sá7(3)(a) ie, in terms of sufficient effort which had been expended to make the artistic work original in character,
and the degree of effort, skill or labour expended was inextricably linked to the originality of the work. It was evident
that the plaintiff[rsquo ]s rights covered not only the drawings of the metal components for an anti-theft system but
extended to the metal components thereof which the plaintiff had manufactured, based on the drawings. The
copyright (of the drawings and the metal components for the anti-theft system which are three-dimensional
reproductions of the drawings) subsisted in favour of the plaintiff (see paras 26[ndash ]28). (2) In copyright law,
once substantial similarity is established, a prima facie presumption of copying by the defendant arises and the
burden is shifted to the defendant to rebut the causal connection. When comparing the metal components found in
the [lsquo ]SAFETY-FIRST ANTI-CAR THEFT SYSTEM[rsquo ] sold by the defendant, with the plaintiff[rsquo ]s
metal components and drawings, there existed substantial objective similarity between them. A substantial part of
the defendant[rsquo ]s metal components were identical and/or substantially similar to the metal components or the
drawings of the plaintiff (see paras 43 & 46). (3) The fact that the defendant had sold and was selling anti-theft
system undoubtedly established an infringement of copyright on the part of the defendant under s 13(1)(e) ie, by
distributing infringing copies to the public by sale. The right to distribute the work or any reproduction thereof is
vested exclusively on the copyright owner or its licensee and this right extends to copies or any reproduction of the
works (see para 47). (4) By selling, offering for sale and distributing an anti-theft system which was infringing the
plaintiff[rsquo ]s copyright, the defendant had interfered with the plaintiff[rsquo ]s trade. The unlawful means
employed here was the act of selling, offering for sale and distributing an infringing copy of the plaintiff[rsquo ]s anti-
theft system. As a result of the defendant[rsquo ]s unlawful interference with the plaintiff[rsquo ]s trade, the
plaintiff[rsquo ]s goodwill and reputation have been injured with direct and indirect negative consequences on the
plaintiff[rsquo ]s sales. In the circumstances, the defendant was liable to the plaintiff for the tort of unlawful
interference with the plaintiff[rsquo ]s trade or business (see paras 50[ndash ]53).

Chris Yee Ziherng

 Page 2 of 7
MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE PROPRIETOR OF THE FIRM
PERFORMANCE AUDIO & CAR ACCESSORIES ENTERPRISE)

Summary: The plaintiff's claim was based on the defendant's infringement of their copyright and unlawful
interference with the plaintiff's trade or business. The plaintiff sought, inter alia, an injunction to restrain the
defendant from the infringement and interference and damages for the infringement. The plaintiff was a private
limited company carrying on the business of manufacturing and distributing the anti-car theft system made
specifically for Proton and Perodua cars, sold under the trademark 'THEF-PRO', since 1991. Meanwhile, the
defendant was the sole proprietor of a business, selling car accessories. The plaintiff alleged that the defendant had
infringed and was continuing to infringe the plaintiff's copyright by distributing, selling, offering or exposing for sale
metal components of an anti-theft system, sold under the trademark 'SAFETY-FIRST ANTI-CAR THEFT SYSTEM',
which were reproductions of the whole work or substantial reproductions of the plaintiff's artistic work in the
drawings of the metal components in Malaysia without the plaintiff's licence or consent. Since the defendant was
selling and distributing to the public infringing goods under the above trademark, it followed that the defendant had
also infringed the plaintiff's copyright in the drawings. The defendant had business dealings with and sold the anti-
theft system bearing the trademark 'SAFETY-FIRST' to one Kelvin Lee of Mobilesave Trading which was based in
Melaka. By way of a trap purchase conducted by the plaintiff's manager, the plaintiff obtained evidence that the
defendant was selling, offering for sale and distributing the infringing goods.

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MOHD SYAMSUL BIN MD YUSOF & ORS v ELIAS 27/3/2019

MYFC
BIN IDRIS

[2019] 4 MLJ 788

Referred

SKYWORLD DEVELOPMENT SDN BHD & ANOR 31/1/2019

MYHC
v SKYWORLD HOLDINGS SDN BHD & ORS

[2019] 9 MLJ 137

Referred

SITI KHADIJAH APPAREL SDN BHD v ARIANI 10/8/2018

MYHC
TEXTILES & MANUFACTURING (M) SDN BHD

[2019] 7 MLJ 478

(refd)

CHUAH AIK KING (SOLE PROPRIETOR OF SYKT 30/4/2018

MYHC
B THREE TECHNOLOGY) v KEYDONESOFT SDN
BHD

[2019] 8 MLJ 515

(refd)

Chris Yee Ziherng

 Page 3 of 7
MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE PROPRIETOR OF THE FIRM
PERFORMANCE AUDIO & CAR ACCESSORIES ENTERPRISE)

ELIAS BIN IDRIS v MOHD SYAMSUL BIN MD 29/3/2018

MYCA
YUSOF & ORS

[2019] 1 MLJ 530

(refd)

WARMAL WIL HEAVY DUTY PUMPS SDN BHD v 25/1/2018

MYHC
PUMP MATRIX ENGINEERING SDN BHD

[2018] 10 MLJ 99
(refd)

SYKT FAIZA SDN BHD & ANOR v FAIZ RICE SDN 24/10/2017
MYHC
BHD & ANOR AND ANOTHER SUIT

[2019] 7 MLJ 175

(refd)

HONDA GIKEN KOGYO KABUSHIKI KAISHA 17/10/2017

MYHC
(ALSO KNOWN AS ‘HONDA MOTOR CO, LTD’) v
DNC ASIATIC HOLDINGS SDN BHD & ORS AND
ANOTHER SUIT

[2018] 9 MLJ 251

(refd)

YKL ENGINEERING SDN BHD v SUNGAI 28/2/2017

MYHC
KAHANG PALM OIL SDN BHD & ANOR

[2017] 11 MLJ 331

(refd)

PUBLIC PROSECUTOR v CHOO SOON ONN 18/1/2017

MYHC

[2017] 9 MLJ 598

(refd)

RISK-X SDN BHD v CAPITAL MARKET RISK 12/10/2016

MYHC
ADVISOR SDN BHD & ORS

Chris Yee Ziherng

 Page 4 of 7
MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE PROPRIETOR OF THE FIRM
PERFORMANCE AUDIO & CAR ACCESSORIES ENTERPRISE)

[2017] 8 MLJ 475

(refd)

HEW CHAI SENG (T/A PERTILAND TRADING CO) 20/9/2016

MYHC
v METRONIC INTEGRATED SYSTEM SDN BHD &
ANOR

[2017] 7 MLJ 1
(refd)

PLASTECH INDUSTRIAL SYSTEMS SDN BHD v 6/11/2012

MYHC
N & C RESOURCES SDN BHD & ORS

[2012] 5 MLJ 258; [2012] MLJU 605; [2012] 2 AMCR 545

Referred

ELSTER METERING LTD & ANOR v DAMINI 23/4/2010

MYHC
CORP SDN BHD & ANOR

[2011] 8 MLJ 253; [2010] MLJU 435

Referred

RADION TRADING SDN BHD v SIN BESTEAM 5/4/2010

MYHC
EQUIPMENT SDN BHD & ORS

[2010] 9 MLJ 648; [2010] MLJU 324

Referred

Cases considered by this case

H & R JOHNSON TILES LTD 12/11/1997

MYHC
& ANOR v H & R JOHNSON
(M) BHD

[1998] 4 MLJ 13; [1995] 2 AMR 1390

Referred

Chris Yee Ziherng

 Page 5 of 7
MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE PROPRIETOR OF THE FIRM
PERFORMANCE AUDIO & CAR ACCESSORIES ENTERPRISE)

PEKO WALLSEND 22/2/1993

MYHC
OPERATIONS LTD & ORS v
LINATEX PROCESS
RUBBER BHD AND
ANOTHER ACTION

[1993] 1 MLJ 225

Referred

RE AUVI TRADEMARK; 15/11/1991

MYHC
AUVI PTE LTD v SEAH
SIEW TEE & ANOR

[1992] 1 SLR 639

Referred

LONGMAN MALAYSIA SDN 22/9/1986

MYOCJ
BHD v PUSTAKA DELTA
PELAJARAN SDN BHD

[1987] 2 MLJ 359

Referred

INCHCAPE MALAYSIA 30/3/1985

MYSC
HOLDINGS BHD v RB GRAY
& ANOR

[1985] 2 MLJ 297; [1985] CLJ (Rep) 132

Referred

A-ONE ACCESSORY -

IMPORTS PTY LTD & ORS v

OFF ROAD IMPORTS PTY
LTD & ORS

[1996] 144 ALR 559; [1996] 34 IPR 332; [1996]

AIPC 91-228; [1996] 66 FCR 199
Referred
AUTODESK AUSTRALIA -

PTY LTD AND ANOTHER v

CHEUNG

Chris Yee Ziherng

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MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE PROPRIETOR OF THE FIRM
PERFORMANCE AUDIO & CAR ACCESSORIES ENTERPRISE)

[1990] 94 ALR 472; [1990] 17 IPR 69; [1990]

AIPC 90-665
Referred
GENERAL TYRE AND -

RUBBER CO v FIRESTONE
TYRE & RUBBER CO

[1975] 1 WLR 819 ; [1976] RPC 197; [1975]

1B IPR 713; [1975] 2 All ER 173; [1975] 1
WLR 819 ; [1975] FSR 273
Referred
HANFSTAENGL v WH -

SMITH & SONS

[1905] 1 Ch 519
Referred
PRIOR v LANSDOWNE -

PRESS PTY LTD

[1977] VR 65; [1975] 12 ALR 685; [1975] 29

FLR 59; [1977] RPC 511
Referred
PUREFOY ENGINEERING -

CO v SYKES BOXALL & CO

[1955] 72 RPC 89
Referred
RAVENCROFT v HERBERT -

[1980] RPC 193

Referred
STESIN PTY LTD AND -

ANOTHER v JOHNSON
AND OTHERS

[1995] 29 IPR 461

Referred
SUTHERLAND PUBLISHING -

CO LTD v CAXTON
PUBLISHING CO LTD

[1936] Ch 323 ; [1936] 1 All ER 177; [1936]

105 LJ Ch 150; [1936] 154 LT 367; [1936] 52
TLR 230

Chris Yee Ziherng

 Page 7 of 7
MEGNAWAY ENTERPRISE SDN BHD v SOON LIAN HOCK (SOLE PROPRIETOR OF THE FIRM
PERFORMANCE AUDIO & CAR ACCESSORIES ENTERPRISE)

Referred

Legislation considered by this case

Legislation Name & Jurisdiction Provisions

Copyright Act 1987 ss 3, 13(1), 13(1)(e), 26, 26(2)(b), 36(1), 37,
37(1), (2)

End of Document

Chris Yee Ziherng