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13th December, 2016

In the case of Doretti Resources Sdn Bhd v Fitters Marketing Sdn Bhd & Ors, it was concerning a trade mark dispute.

The issue was whether the 3rd Defendant has supplied goods which infringed the Plaintiff’s registered trade mark.

The Plaintiff was granted an Anton Piller Order against the 3rd Defendant. The Order was authorised for the 3rd Defendant’s office to be raided and investigated. The raid did not reveal any goods bearing the Plaintiff’s Trade Mark (Infringing Goods) in the 3rd Defendant’s Office and Warehouse.

It was the Plaintiff’s pleaded case that the 3rd Defendant had infringed the Plaintiff’s Trade Mark by producing and selling, among others, the products of the first and defendant companies. The Plaintiff’s pleaded case against the 3rd Defendant fell within Section 38 Trade Marks Act 1976 because the 3rd Defendant had used the Plaintiff’s Trade Mark as a trade mark in the course of the 3rd Defendant’s trade by supplying the Infringing Goods to the 1st and 2nd Defendants.

One of the issues that were discussed was whether the Court was bound to a Striking Out Decision. The Court referred to the case of Asia Commercial Finance (M) Bhd v Kawal Teliti Sdn Bhd [1995] 3 MLJ 189 where Peh Swee Chin FCJ explained that the doctrine of res judicata consisted of 2 limbs, namely cause of action estoppel and issue estoppel. According to the issue estoppel principle, if there is a decision in the first litigation between parties “A” and “B”, the issue estoppel principle may bar A, B, and all the privies of A and B from raising any issue which has been raised or can be raised in the first litigation from being raised in the second and subsequent litigation. In Gleeson v J. Wippell & Co Ltd [1977] 1 WLR 510, a party “C” may be deemed a privy of A or B by way of blood relationship with A or B, title assumed by C from A or B, or interest between C; and A or B.

In this case, there is no evidence that the 3rd Defendant is a “privy” of the 4th or 5th Defendants within the 3 meanings of “privy” in the case of Gleeson. Furthermore, the doctrine of res judicata with its action estoppel and issue estoppel is not a compulsory statutory provision proposed by Parliament to be applicable in all circumstances. Res judicata doctrine is based on case law and should not be applied indiscriminately so as to cause injustice. Due to these decisions, the Court was not bound by the Striking Out Decision.

It should be also noted that the Court looked at the Statement of Claim presented by the Plaintiff and decided that there was no reasonable cause of action under Section 38(1) of the Act against the 3rd Defendant.