MALAYSIA: ORIGINATING SUMMONS MUST BE SERVED ON FOREIGN ENTITIES PERSONALLY AND NOT ON THEIR MALAYSIAN AGENTS

June 19th, 2017

 

In the case of Louis Vuitton Malletier vs Renown Incorporated, the Plaintiff is the manufacturer of high-end products in relation to various fashionable goods for the very well-known brand Louis Vuitton whereas the Defendant, Renown Incorporated is a Japanese company whose neither office nor business is located in Malaysia.

The Plaintiff had filed a suit in Malaysia to expunge the Defendant’s registered trade mark from the Register on the ground that the Defendant did not use their mark in good faith. However, this Originating Summon (OS) was only served to the Defendant’s Malaysian trade mark agent even though the Defendant is located in Tokyo, Japan.
The Defendant had filed a counter-suit and argued that serving of the OS to Defendant’s trade mark agent in Malaysia is not acceptable.

It is a known fact that Section 79(1) of the Trade Marks Act provides for a foreign applicant that does not have any business or office in Malaysia, he shall use his agent’s address as the address of service. Therefore, the address registered with the Registrar is deemed to be the address of the registered proprietor. It is also stated that all written communications shall be addressed to address that was given by the applicant and shall be treated as the actual address of the foreign applicant.
In this case, the Court had decided that the serving of the OS to the Defendant’s agent in Malaysia does not constitute a proper serving of the OS to the Defendant.

Subsequently, the Plaintiff had requested for and had obtained the leave of court to serve the OS out of jurisdiction on the Japanese address. Interestingly, after having fought the way the OS was served on their agent in Malaysia, the Defendant had then responded that they had no intention to use the mark in Malaysia and would not defend themselves in the suit.