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24th October, 2016

In the case of World Grand Dynamic Marketing Sdn Bhd v Fjvaa Spa Sdn Bhd & Ors, the High Court of Malaya in Kuala Lumpur has decided that the Registrar of Trade Marks (Registrar) cannot apply to Court to set aside subpoenas which have been issued to the Registrar.

In this case, the facts of the case showed that the Plaintiff applied to the Court to issue subpoenas to two Officers of Intellectual Property Corporation of Malaysia (MyIPO) for failure to produce documents. The Registrar then applied for these subpoenas to be set aside.

The officers as the applicants argued that the subpoenas are frivolous as all the information needed by the Plaintiff from the Registrar’s officers for the trial of this case may be obtained from a search of the records of MyIPO.

The Plaintiff rebutted this point on many reasons. The Plaintiff had to call the Applicants to testify and produce MyIPO’s Letters in this case because the Defendants had classified MyIPO’s Letters as Part C Documents; hence, the documents in issue must be produced. The Trade Marks Act 1976 does not allow the Applicants to apply to Court to set aside the two subpoenas. Under the Rules of Court 2012, Order 38 Rule 14(3), (4) and (5) provide that The Registrar may, in any case, revoke a subpoena upon an application by any person or on his own motion. Any party who is dissatisfied with any decision of the Registrar made under this rule may apply to a Judge for a review of that decision. Except for these provisions in the Rules of Court 2012, there is no express provision in it or any other written law which empowers the Court to set aside a subpoena.

However, the Plaintiff relied on many case laws that have shown how the courts have rejected the application to set aside subpoenas issued to the Registrar such as Godrej Sara Lee Ltd v Siah Teong Teck & Anor (No 1) [2007] 7 MLJ 153, Malayan Banking Bhd v Shariffudin Hassan & another case [2013] 1 LNS 688, and many more. In the Federal Court case of Ismail v Hasnul & another appeal [1968] 1 MLJ 108, it was held that a subpoena may be issued against anybody, be he a Minister of the Government or a non-entity, but the court possesses inherent jurisdiction to see that this privilege is properly exercised and in a proper case can restrain its abuse. if a subpoenaed witness cannot give any relevant evidence in a case to assist the Court to decide the case in a just manner, the application and service of the subpoena on the witness, constitutes an abuse of Court process and the subpoena should be set aside by the Court. In Wong Sin Chong & Anor v Bhagwan Singh & Anor [1993] 3 MLJ 679, it was held that in every case, the onus is on the party issuing the subpoena to show the materiality of the witness for the just decision of the case. It must outweigh any oppression that may be caused to the party objecting.
In this case, the Judge held that the Applicants have failed to discharge the Onus and on this ground alone, this Application was dismissed. The two subpoenas were not held to be oppressive, or abuse of Court process. In fact, the two subpoenas were necessary for the Court to decide the case justly.

Lastly, Section 63(1) Trade Marks Act 1976 (TMA) provides that in all proceedings under TMA, the Registrar shall not be ordered to pay the costs of any party. This Application is not a proceeding under the TMA. The Applicants were officers of the Registrar who were merely performing their official functions and duties in this case. Accordingly, the Registrar was held to be vicariously liable for the costs of this application to the Plaintiff. The Registrar, not the Applicants, was to bear the costs of this application.