Patent litigation in Malaysia is rare and not popular amongst Malaysian companies, the more so when the dispute involves both patent and passing-off. The case of SKB Shutters Manufacturing v Seng Kong Shutter Industries and Anor, which was decided by the Kuala Lumpur High Court on October 4 2010 is one such exception.

The case involves a patent in respect of a rolling door or rolling shutter wherein the plaintiff claimed that the defendants have infringed the patent by incorporating features into their products without the plaintiff’s consent.

In their defence, the defendants sought to invalidate the plaintiff’s patent instead of contending their innocence, by arguing that it was wrongly granted on the grounds of lack of novelty and inventiveness, thus failing requirements of patentability. This is a bold move in defending a suit in that if the Court were to favour the defendants, not only would the defendants end the litigation unscathed, the plaintiff also no longer enjoys any monopoly of the patent. However, if the defendants are unsuccessful in their case for invalidation, it would inevitably follow that they have infringed the plaintiff’s patent; the defendants would not be able to raise any further defence on infringement.

In this case, the defence back-fired, making the plaintiff successful in its infringement claim.

In passing-off, the judge recognised that the tort is no longer anchored to a trademark but encompasses other material such as visual images, provided that such material became part of the goodwill of the product.

However, the judge was reluctant to hold in favour of the plaintiff for passing-off as the plaintiff has did not provide evidence of goodwill attached in the features of the shutters, neither could the consumers identify such features without the aid of the plaintiff’s trademark.

It is interesting to note how this case would affect future patent infringement claims, especially in relation to pharmaceutical patents in view of the number of generic drugs in the market. Would the defence of invalidity actually bear fruit rendering a patent invalid? Only time and future cases will tell meanwhile, the present case does bring some comfort to parties seeking to enforce the rights granted by their patent against any infringer, so as long as the patent is proven to be valid.