Sony awarded injunction in summary judgment

Malaysia

In Sony Computer Entertainment Inc v Lee (D2-22-111-2002), the High Court of Kuala Lumpur has issued, as part of a summary judgment against the defendant, a permanent injunction preventing the defendant from further infringing the plaintiff's PLAYSTATION mark. In granting the injunction, the court held that the fact that the defendant had already ceased the infringing activity was irrelevant.

Sony, the famous Japan-based manufacturer of electronics, owns a number of registrations for the trademark PLAYSTATION in relation to, among other things, a type of games console and related games software. It brought a trademark infringement and passing-off action against the defendant, Lee Jee King, following a criminal raid at Lee's business premises conducted by the Enforcement Division of the Malaysian Ministry of Domestic Trade and Consumer Affairs. The enforcement division seized a large number of CD-ROMs, a significant proportion of which were confirmed to be exact copies or substantial reproductions of Sony games and 196 of these carried the PLAYSTATION mark.

Sony moved for summary judgment on the trademark infringement claim based on the use of the PLAYSTATION mark on the counterfeit games, and as part of that claim, it requested that the court grant a permanent injunction preventing Lee from further infringing its trademark.

The court allowed Sony's claim for summary judgment and granted its injunction request. The court reasoned that the grant of a final, permanent injunction in a summary judgment application is within its jurisdiction. However, the court was at first uncertain as to the appropriateness of granting a permanent injunction in a case where the defendant had purportedly ceased the infringing activity prior to the claimant's application. Following further submissions on behalf of Sony, the court held that this is possible. The court's final decision also included orders for:

  • delivery up and destruction of all infringing goods and packaging materials;

  • full discovery of all relevant documents in relation to the manufacture, sale and import of the infringing goods; and

  • an inquiry as to the level of damages.

Bong Kwang Teo, Raja Darryl & Loh, Kuala Lumpur

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