Summary judgment process works for Intel

Malaysia

In Intel Corporation v Intelcard Systems Sdn Bhd (Civil Suit D8-22-1381-2002), the High Court of Kuala Lumpur has upheld the plaintiff's application for summary judgment on its trademark infringement claim against a Malaysian company using the INTEL mark as part of its company name.

Intelcard Systems Sdn Bhd was registered with the Malaysian Registry of Companies in 1997. Its main business is in the manufacture and supply of smart cards, magnetic access cards, security banking cards and credit cards. It maintains a website bearing a name incorporating the words 'Intelcard Systems' for the purpose of promoting its business. Upon discovering the existence of Intelcard Systems in November 2001, Intel Corporation sent a cease and desist letter demanding, among other things, that Intelcard Systems immediately cease all infringing activities, including the use of the offending corporate name. After protracted negotiations, Intelcard Systems was adamant that it was entitled to continue using the disputed corporate and domain names. Finally, Intel commenced a civil action in September 2002 for passing off and conspiracy to injure against Intelcard Systems and two of its directors.

In mid 2004 Intel amended its pleadings to include an additional claim for infringement of trademark. It then moved for summary judgment.

The High Court of Kuala Lumpur held that Intelcard Systems had failed to raise any triable issue with regard to the claim for trademark infringement. It further held that it is within the jurisdiction of the court to grant a summary judgment for, among other things, a permanent injunction and an assessment of damages based on this cause of action. Accordingly, it issued an order restraining, by way of a permanent injunction, Intelcard Systems and its two directors from further infringing Intel's registered INTEL mark through use of the word 'Intel' or any other words incorporating that term in their business dealings. In addition, the court ordered Intelcard Systems to (i) take immediate steps to change its corporate name to one that did not contain the word 'Intel', and (ii) cancel the website bearing the name Intelcard Systems within 30 days from the date of the order. It also made an order for inquiry of damages suffered by Intel for infringement of trademark and the costs of the action.

This case is of importance as it clearly demonstrates that summary judgment relief is available in an action for trademark infringement. It is a decision to be welcomed by mark owners as summary judgment proceedings can spare trademark owners the substantial time and costs in having to litigate trademark infringement during a protracted trial.

Teo Bong Kwang and Azrul Hamid, Wong Jin Nee & Teo, Kuala Lumpur

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