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Federal Court Ruling on ‘Is an Ex Parte Trade Description Order an affront to Justice’?

Owner of a registered trade mark may apply for a TDO pursuant to the Trade Descriptions Act 2011 (“the Act”) to declare that another mark or get-up is being used by any other person in the course of trade to infringe his statutory rights. A TDO is seen as an effective legal measure to combat counterfeit goods in the market when the identities of the infringers are not known.

Tan Kim Hock Product Centre Sdn Bhd & Anor v Tan Kim Hock Tong Seng Food Industry Sdn Bhd (Federal Court ) 28.11.2017

The legality of a TDO obtained ex parte was questioned in Tan Kim Hock Product Centre.

The appellants argued before the Federal Court that, inter alia, that it is against all norms of criminal justice that an ex parte order carrying criminal liability should ever be imposed on a person affected without him being given notice of or being heard in the proceedings. The appellants further argued that any ex parte TDO is unjustified and wrong in law as the Act does not expressly provide that a TDO can be applied ex parte.

The Federal Court dismissed the appeal and stated that the Act is aimed at combating the menace of counterfeit goods in the market. The court further noted that until a TDO is made, there would have been no evidence on which to prosecute a case for infringement and it would be virtually impossible for the authorities to identify and seize the imitation goods. Therefore, unless a TDO is obtained on an urgent basis by way of an ex parte application, any effort to curtail the problem of imitation of goods flooding the market would be seriously hampered as there will be risk of destruction of the goods by the infringer. The purpose and intent of the Act must be given paramount consideration. There is no denial of justice as the right of an affected person to apply to set aside an ex parte order is a right which exists over and above the other civil remedies available to him.

The Federal Court declined to adopt a narrow interpretation of the relevant provisions of the Act, emphasising that if it were Parliament’s intention that a TDO cannot be obtained on an ex parte basis, it would be up to Parliament to change the law, and not the courts.

This decision by the Federal Court therefore affirms the validity of a TDO obtained ex parte.

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