The concept of territorial jurisdiction and criteria governing the determination of the most appropriate forum before which a dispute ought to be adjudicated is often seen as trite. However, the manner in which such criteria are to be applied is not necessarily as clear, when the dispute at hand concerns the infringement of intellectual property rights.

In this regard, the learned Judge succinctly summarised how such criteria are to be applied when the subject matter of the dispute was trademark infringement and passing off in Pirelli & C SpA v Chip Hwa Sdn Bhd [2022] MLJU 1927 (“Pirelli”), when his Lordship was called upon to consider whether an application to transfer proceedings from the High Court of Kuala Lumpur to the High Court of Alor Setar ought to be allowed.

In Pirelli, the Plaintiff commenced action for the infringement and passing off of its well-known “PIRELLI”, “ ” and “ ” marks; as well as for the invalidation of “ ” mark before the High Court of Kuala Lumpur. The Defendant contended that the proper forum before which the dispute ought to be adjudicated is the High Court of Alor Setar on the basis that:-

a) The cause of action had occurred in Alor Setar, Kedah;
b) The Defendant’s registered address is in Alor Setar, Kedah;
c) The Defendant’s business address is in Alor Setar, Kedah; and
d) The Defendant’s witnesses were mostly residing in Alor Setar, Kedah.

While it may appear on the face of the matter that there was basis for the transfer application to be allowed, the learned Judge dismissed the Defendant’s transfer application on the basis that:-

a) The cause of action arose in Kuala Lumpur as there was evidence to the effect that infringing goods were being sold at a hypermarket known as “NSK” at Pusat Perdagangan Kuchai, which was in Kuala Lumpur;
b) The Defendant’s business was not confined to Alor Setar as it was conducting business in various different states in Malaysia, including in Kuala Lumpur;
c) There would be no inconvenience caused to the Defendant, its witnesses or its solicitors as proceedings may be conducted through remote communication technology, if necessary; and
d) There was no evidence as to why the action could not be fairly tried before the High Court of Kuala Lumpur when it is a specialised Intellectual Property Court specifically established to hear intellectual property disputes.

This was not the first instance in which such transfer applications were dismissed. Similar transfer applications were also dismissed in Muhammad Hafidz bin Mohd Dusuki v Hassan bin Zulkifli [2020] MLJU 2042 when an application was filed to transfer proceedings to the High Court of Kota Bharu, and in Ramani a/l Ramalingam v Deluxe Exclusive Lounge Sdn Bhd & anor suit [2017] 8 MLJ 302 when an application was filed to transfer proceedings to the High Court of Johor Bharu.

However, it is significant that the Courts’ perspective appears to have shifted to accept the fluid nature of intellectual property rights and the importance of the specialised Intellectual Property Court in developing Malaysian jurisprudence on intellectual property law, which was considered in all 3 decisions.