LNS 2018 1 277 Ag02

[2018] 1 LNS 277 Legal Network Series
IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR
(COMMERCIAL DIVISION)
[SUIT NO: WA-22IP-5-02/2016]
BETWEEN
SINGHAM SULAIMAN SDN BHD

(Co. No.: 78217-X) ... PLAINTIFF
AND
1. APPRAISAL PROPERTY MANAGEMENT SDN BHD

(Co. No.: 906133-M)
2. JLL PROPERTY SERVICES (MALAYSIA) SDN BHD
(Co. No.: 640511-U) ... DEFENDANTS
(By Original Action)
JLL PROPERTY SERVICES (MALAYSIA) SDN BHD

(Co. No.: 640511-U) ... PLAINTIFF
AND

(Co. No.: 78217-X) ... DEFENDANT
(By Counterclaim)
CONSOLIDATED WITH
IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR
(COMMERCIAL DIVISION)
[SUIT NO: WA-22IP-31-06/2016]
1
BETWEEN
JONES LANG WOOTTON LTD

(UK Co. No.: 01081258) ... PLAINTIFF
AND

(Co. No.: 78217-X) ... DEFENDANT
EVIDENCE: Adverse inference - Failure to adduce any evidence to rebut

evidence - Whether court may draw an adverse inference - Evidence Act
1950, s. 114(g)
EVIDENCE: Judge - Power to put questions or order production -

Application made during cross-examination - Whether documents were
relevant to case - Whether application was a fishing expedition - Whether
application was filed with a collateral purpose and an abuse of court
process
EVIDENCE: Admissions - Email written without prejudice - Contents of

email did not suggest any inference as to any fact in issue - Whether
email amounted to an admission within meaning of s. 17(1) Evidence Act
1950
COMPANY LAW: Lifting of corporate veil - Power of court - Lifting of

corporate veil of a group of companies to reveal a single entity
controlling all relevant companies - Alter ego - Whether court’s power
regarding lifting of corporate veil for group of companies should be same
as that for an individual
TORT: Passing off - Trade marks - Real estate services - Goodwill -

Whether SSSB was owner of goodwill in its real estate business regarding
2
use of Jones Lang Wootton (‘JLW’) Marks - Whether The London

Proprietors, Pacific Proprietors, JLWP and JLWL could claim any
goodwill in any real estate business with respect to JLW Marks - Whether
there was likelihood of damage to goodwill attached to plaintiff’s
business which has been caused by defendant’s misrepresentation
INTELLECTUAL PROPERTY: Registered trade mark - Expungement -

Whether original registration of Jones Lang Wootton registered trade
mark has been obtained by fraud on registrar - Whether court could
expunge registered trade mark pursuant to s. 37(a) Trade Marks Act
1976
[SSSB’s claim is allowed with costs. JLLP’s counterclaim is dismissed

with costs. Second suit is dismissed with costs.]
Case(s) referred to:
Atlas Maritime Co SA v. Avalon Maritime Ltd (The Coral Rose) (No. 1)

[1991] 4 All ER 769 (refd)
Boustead Trading (1985) Sdn Bhd v. Arab-Malaysian Merchant Bank

Berhad [1995] 4 CLJ 283 FC (refd)
Chanel v. Melwani2 International Sdn Bhd & Ors and other suits [2017]
10 MLJ 592 (refd)
Chew Lip Seng v. Perwira Habib Bank (M) Bhd [1999] 1 MLJ 310 (refd)
Colliers International Property Consultants Inc v. Colliers International

Property Consultants Sdn Bhd [2015] 1 LNS 252 HC (dist)
Dato Mohamed Hashim Shamsuddin v. Attorney-General, Hong Kong

[1986] CLJ Rep 89 SC (refd)
Doretti Resources Sdn Bhd v. Fitters Marketing Sdn Bhd & Ors And
Another Case [2017] 1 LNS 738 HC (refd)
3
Erven Warnink v. Townend & Sons (Hull) Ltd [1979] AC 731 (refd)
Giga Engineering & Construction Sdn Bhd v. Yip Chee Seng & Sons Sdn
Bhd & Anor [2015] 9 CLJ 537 FC (refd)
Guan Teik Sdn Bhd v. Hj Mohd Noor Hj Yakob & Ors [2000] 4 CLJ 324
CA (refd)
Gurbachan Singh Bagawan Singh & Ors v. Vellasamy Pennusamy &

Other Appeals [2015] 1 CLJ 719 FC (refd)
Guthrie Sdn Bhd v. Trans-Malaysian Leasing Corp Bhd [1991] 1 CLJ

Rep 155 SC (refd)
Ho Tack Sien & Ors v. Rotta Research Laboratorium SpA & Anor;
Registrar of Trade Marks (Intervener) & Another Appeal [2015] 4 CLJ
20 FC (dist)
Lam Soon (M) Bhd v. Forward Supreme Sdn Bhd & Ors [2001] 4 CLJ
673 HC (dist)
Maestro Swiss Chocolate Sdn Bhd & Ors v. Chocosuisse Union Des
Fabricants Suisses De Chocolat (a co-operative society formed under
title XXIX of the Swiss Code of Obligations) & Ors and another appeal
[2016] 3 CLJ 345 FC (refd)
Mohammed Ali bin Johari v. PP [2008] 4 SLR 1058 (refd)
Oceanbulk Shipping and Trading SA v. TMT Asia Ltd & Ors [2011] AC
662 (dist)
Palaniappa Chettiar v. Arunasalam Chettiar [1962] 1 LNS 115 (refd)
Paramill Sdn Bhd & Anor v. Datuk Joseph Pairin Kitingan [2007] 6 CLJ
192 CA (refd)
PP v. Yuvaraj [1968] 1 LNS 116 (refd)
4
Public Prosecutor v. Kau Joo Huat [1988] 1 CLJ Rep 258 SC (refd)
Reckitt & Colman Products Ltd v. Borden Inc & Ors [1990] 1 All ER 873
(refd)
Scandecor Development AB v. Scandecor Marketing AB & Anor [1999]

FSR 26 (dist)
Seet Chuan Seng & Anor v. Tee Yih Jia Food Manufacturing Pte Ltd
[1994] 3 CLJ 7 SC (refd)
Sinma Medical Products (M) Sdn Bhd v. Yomeishu Seizo Co Ltd & Ors
[2004] 3 CLJ 815 CA (refd)
Solid Investments Ltd v. Alcatel Lucent (Malaysia) Sdn Bhd [2014] 3 CLJ
73 FC (refd)
SPM Membrane Switch Sdn Bhd v. Kerajaan Negeri Selangor [2016] 1

CLJ 177 FC (refd)
Takako Sakao v. Ng Pek Yuan & Ors & Another Appeal [2009] 5 CLJ
200 CA (refd)
Tan Guan Eng & Anor v. Ng Kweng Hee & Ors [1991] 4 CLJ Rep 74 HC
(refd)
Teng Boon How v. Public Prosecutor [1993] 4 CLJ 545 SC (refd)
The Commissioners of Inland Revenue v. Muller & Co’s Margarine Ltd

[1901] AC 217 (refd)
Tokai Corporation v. DKSH Malaysia Sdn Bhd [2016] 1 LNS 1092 HC

(refd)
Unilever plc v. The Proctor & Gamble Co [2001] 1 All ER 783 (dist)
5
Yong Sze Fun & Anor v. Syarikat Zamani Hj Tamin Sdn Bhd & Anor
[2011] 1 LNS 1307 CA (refd)
Legislation referred to:
Companies Act 2016, s. 20
Evidence Act 1950, ss. 17(1), 23, 114(g), 145(1), (2), 155(c), 165
Rules of Court 2012, O. 59 rr. 8(b), 14(1), 16(1), (2), (3), 19(1)
Trade Marks Act 1976, ss. 36, 37(a), (c), 45(1)(a)
Valuers, Appraisers And Estate Agents Act 1981, ss. 2, 10(b), 19,
23(4A)(d)
Other source(s) referred to:
Evidence - Practice and Procedure, Augustine Paul, 3rd Ed. (2003), at p.

162.
JUDGMENT
(after trial)
A. Introduction
[1] This judgment concerns the tort of passing off (and counter
passing off) regarding real estate services and the effect of s. 23
of the then Valuers and Appraisers Act 1981 (VAA). In 1984,
Parliament amended and renamed VAA as Valuers, Appraisers
and Estate Agents Act 1981 (VAEA). With effect from 2.1.2018,
Parliament has further amended and renamed VAEA as Valuers,
Appraisers, Estate Agents and Property Managers Act 1981
(VAEAPM).
[2] In Civil Suit No. WA-22IP-5-02/2016 (1 st Suit)-
6
(1) Singham Sulaiman Sdn. Bhd. (SSSB) uses the following

trade marks (JLW Marks) in its real estate business -
(a) “Jones Lang Wootton” name;
(b) Jones Lang Wootton composite mark has been

registered by SSSB in the Register of Trade Marks
(Register) for services in Class 36 (Jones Lang
Wootton Registered Trade Mark). A copy of Jones
Lang Wootton Registered Trade Mark is annexed to
this judgment as Annexure A;
(c) “Jones Lang” name; and
(d) “JLW” mark;
(2) SSSB claims that Appraisal Property Management Sdn.

Bhd. (APM) and JLL Property Services (M) Sdn. Bhd.
(JLLP) have committed the tort of passing off their real
estate services as SSSB’s business (SSSB’s Claim) by the
use of the following marks -
(a) “Jones Lang LaSalle” name; and
(b) “JLL” mark. Jones Lang LaSalle IP Incorporated

(JLL IP Inc.) has registered JLL Mark with the
Registrar of Trade Marks (Registrar) in classes 36,
37 and 42 (JLL Registered Trade Marks). One of
JLL Registered Trade Marks is annexed hereto as
Annexure B.
In this judgment, APM and JLLP will be referred

collectively as “Defendants (1 st Suit)”; and
(3) JLLP counterclaims against SSSB (JLLP’s Counterclaim)

based on the tort of passing off, namely SSSB has passed
7
off its real estate services as being associated with the

services offered by Jones Lang LaSalle group of
companies (JLL Group).
[3] In the second case, Civil Suit No. WA-22IP-31-06/2016 (2 nd

Suit), Jones Lang Wootton Ltd. (JLWL) applies to court under
s. 45(1)(a) of the Trade Marks Act 1976 (TMA) to remove Jones
Lang Wootton Registered Trade Mark from the Register.
[4] The 1 st and 2 nd Suits (2 Cases) have been consolidated. In this

judgment, APM, JLLP and JLWL shall be referred collectively
as “Defendants (2 Cases)”.
B. Issues
[5] The 2 Cases raise the following questions:
(1) whether the court should allow SSSB’s Claim against APM -
(a) due to APM’s failure to call any witness to rebut

evidence in support of SSSB’s Claim; and/or
(b) by drawing an adverse inference against APM under

s. 114(g) of the Evidence Act 1950 (EA);
(2) should JLLP be ordered by the court under s. 165 EA to

produce certain documents regarding its holding company,
AHCM Holdings Sdn. Bhd. (AHCM)?;
(3) whether an email dated 14.10.2015 (Email dated

14.10.2015) from Mr. Chris Fossick (Mr. Fossick) [sent
on behalf of Jones Lang LaSalle Property Consultants Pte.
Ltd. (JLLPC)] to Mr. Navaneethasingam a/l Ratnasingham
(SP1) [from SSSB] is admissible as evidence when the
Email dated 14.10.2015 has been made during “without
8
prejudice” negotiations. This issue discusses the scope of

ss. 17(1) and 23 EA;
(4) whether the court should exercise its discretion to lift the
corporate veil to reveal that-
(a) JLLPC is the “alter ego” of the Defendants (2

Cases); and
(b) all the relevant companies in JLL Group (Relevant

JLL Companies) have acted as a single entity (JLL
Group) in the 2 Cases;
(5) have the Defendants (1 st Suit) breached or unlawfully

circumvented s. 23 of the then VAEA?;
(6) whether the Defendants (1 st Suit) have passed off their real
estate services as SSSB’s business (by the use of Jones
Lang LaSalle name and/or JLL mark). In this regard-
(a) has SSSB acquired goodwill in its business regarding

JLW Marks to enable it to sue for the tort of passing
off?; and
(b) whether any breach of s. 23 VAEA would deprive the

Defendants (1 st Suit) of their right to defend
themselves against SSSB’s Claim;
(7) whether SSSB has only a contractual license or a

proprietary interest in Jones Lang Wootton name and JLW
mark;
(8) whether the Defendants (2 Cases) are estopped from

denying that SSSB has-
9
(a) goodwill attached to SSSB’s business regarding JLW

Marks; and
(b) a proprietary interest in Jones Lang Wootton name

and JLW mark;
(9) does SSSB’s Claim constitute a tort of abuse of court

process?;
(10) whether SSSB has passed off its real estate services as
being associated with the services provided by JLL Group;
(11) regarding the 2 nd Suit-
(a) is JLWL “aggrieved” by Jones Lang Wootton

Registered Trade Mark and is therefore entitled to
apply to court under s. 45(1)(a) TMA to expunge
Jones Lang Wootton Registered Trade Mark from the
Register?; and
(b) if JLWL is aggrieved by Jones Lang Wootton

Registered Trade Mark, whether Jones Lang Wootton
Registered Trade Mark has been registered by way of
fraud on the Registrar?; and
(12) regarding costs to be awarded in the 2 Cases, should the

court certify fees for two counsel pursuant to O. 59 r.
14(1) of the Rules of Court 2012 (RC)?
C. Background
[6] Jones Lang Wootton started real estate business as a partnership

in London in 1783 (London Firm). The London Firm expanded
its real estate business worldwide, including Malaysia, by
operating as partnerships within the countries in question.
10
[7] “LaSalle Partners” originated in the United States of America

(USA) in 1968.
[8] Mr. William George Wicks (Mr. Wicks) carried on business as

Chartered Surveyors, Valuers and Property Manager in Kuala
Lumpur under the name and style “Wicks & Partners”. By way
of a Sale and Purchase Agreement dated 8.10.1974 [SPA
(1974)], Mr. Wicks sold his business, name and goodwill in
Wicks & Partners to the then partners of -
(1) “Jones, Lang, Wootton, St. Helier, Jersey, Channel

Islands” (Jersey Partners); and
(2) “Jones, Lang, Wootton, Sydney, Australia” (Australian

Partners).
Clause 5 of the SPA (1974) provided that the Jersey and

Australian Partners would carry on real estate business under the
name and style “Jones, Lang, Wootton incorporating Wicks &
Partners” (Malaysian Firm).
[9] A partnership agreement regarding the Malaysian Firm was

entered into on 1.3.1977 [Partnership Agreement (1977)].
According to the Partnership Agreement (1977)-
(1) clause 25 provided that the “name and style of JONES,

LANG, WOOTTON is the property of the [London Firm]
and that the carrying on of [the Malaysian Firm] under
such style is by license” of the London Firm; and
(2) clause 26 stated that the Malaysian Firm shall execute an

irrevocable power of attorney (PA) in favour of the
Australian partners to execute “as and when necessary’’
the relevant form for the change of the name of the
Malaysian Firm. Such a PA had been granted by SP1 on
11
1.3.1977 [PA (1977)]. The second recital to the PA (1977)

reiterated clause 25 of the Partnership Agreement (1977).
[10] On 8.6.1979, the partners of the Malaysian Firm signed a

partnership agreement with Encik Sulaiman bin Mustafa (Encik
Sulaiman) to admit Encik Sulaiman as a new partner in the
Malaysian Firm [Partnership Agreement (1979)]. Clauses 24
and 25 of the Partnership Agreement (1979) are similar to
clauses 25 and 26 respectively of the Partnership Agreement
(1977). Pursuant to clause 25 of the Partnership Agreement
(1979), Encik Sulaiman granted an irrevocable PA on 15.8.1979
[PA (1979)]. The second recital to the PA (1979) repeated
clause 24 of Partnership Agreement (1979).
[11] VAA came into force on 6.2.1981. Initially, VAA only required
the registration of valuers and appraisers by the Board of
Valuers and Appraisers (Board). At its inception, VAA did not
require estate agents to be registered with the Board. I will
discuss the effect of s. 23 VAA in Part I below.
[12] On 19.5.1982, a deed of license [License (1982)] was entered

into by the then proprietary partners of the London Firm
(London Proprietors) and Australian Partners whose names
were listed in Part 2 of the First Schedule to the License (1982)
(Pacific Proprietors). In clause 1 of the License (1982), the
London Proprietors gave a licence to the Pacific Proprietors to
licence and supervise on behalf of the London Proprietors, the
use of the Jones Lang Wootton name and JLW mark in six
countries (including Malaysia).
[13] The following agreements, among others, were executed on

1.9.1982:
12
(1) a Sale and Purchase Agreement wherein SSSB purchased

the interest of the Australian Partners in the Malaysian
Firm [1 st SPA (1982)]. In clause 9 of the 1 st SPA (1982),
the Australian Partners and SSSB agreed that the 1 st SPA
(1982) did not confer on SSSB any title, right or interest in
Jones Lang Wootton name or JLW mark which shall
remain the property of the London Proprietors;
(2) a Sale and Purchase Agreement wherein SSSB purchased

the interest of the Malaysian partners in the Malaysian
Firm [2 nd SPA (1982)]. Clause 9 of the 2 nd SPA (1982) is
similar to clause 9 of the 1 st SPA (1982);
(3) by a “Deed of Sub-Licence of Name” [Sub-Licence

(1982)], the Pacific Proprietors granted an exclusive sub-
license to SSSB to use Jones Lang Wootton name and JLW
mark for a term expiring on 1.12.1990 or “such later date
as may be mutually agreed”. According to clause 3(a) of
the Sub-License (1982), SSSB expressly acknowledged
that Jones Lang Wootton name and JLW mark were the
property of the London Proprietors; and
(4) a deed of covenant [Covenant (1982)] was entered into by -
(a) SSSB;
(b) “Covenantors” [certain individuals (including SP1)

whose names were stated in Part 1 of the Schedule to
the Covenant (1982)];
(c) “London Partners” whose names were stated in Part

2 of the Schedule to the Covenant (1982); and
(d) Pacific Proprietors whose names were stated in Part 3

of the Schedule to the Covenant (1982).
13
Clause 1(a) of the Covenant (1982) stated that the

Covenantors covenanted that the Covenantors shall not at
any time during the term of the Sub-Licence (1982) for any
reason, register or attempt to register in Malaysia Jones
Lang Wootton name, JLW mark or any name or style
materially or substantially the same, literally or
phonetically, in English, Chinese or Malay languages, or
any name incorporating any one or more of the words
“Jones”, “Lang” or “Wootton”. In clause 1(b)(i) of the
Covenant (1982), the Covenantors agreed, among others,
not to accept appointment as directors in any company
which uses the Jones Lang Wootton name.
[14] With effect from 7.9.1984, the Valuers and Appraisers

(Amendment) Act 1984 (Act A598) amended VAA. Act A598,
among others, renamed VAA as VAEA and required the
registration of estate agents with the Board. Act A598 also
renamed the Board as the Board of Valuers, Appraisers and
Estate Agents.
[15] On 6.7.1993, a Deed of Sub-Licence of Name [Sub-Licence

(1993)] has been agreed between JLW Pacific Ltd. (JLWP) and
SSSB. Clause 6 of Sub-Licence (1993) has provided that, among
others, if the license between the London Proprietors and the
Pacific Proprietors is terminated or is not renewed for any
reason, JLWP and its “assigns or successors shall endeavour” to
ensure that a new sub-licence is granted to enable SSSB to
continue using Jones Lang Wootton name and JLW mark “on
terms no less favourable” to SSSB [Clause 6 Sub-Licence
(1993)].
[16] With effect from 31.1.1997, Valuers, Appraisers and Estate

Agents (Amendment) Act 1997 (Act A980) amended VAEA.
14
[17] In 1999, LaSalle Partners acquired Jones Lang Wootton

partnerships (except in Malaysia). Thereafter the merged entity
is known as Jones Lang LaSalle.
[18] By a series of assignments dated 8.3.1999, the London

Proprietors have assigned all Intellectual Property (IP) rights
(including trade marks and goodwill) in, among others, Jones
Lang Wootton name and JLW mark, to JLWL.
[19] On 26.2.2002, SSSB entered into a “Global Operating

Framework” with JLLPC (GOF).
[20] On 24.8.2006, SSSB applied to register Jones Lang Wootton

Registered Trade Mark (SSSB’s Trade Mark Application)
which was allowed by the Registrar.
[21] Valuers, Appraisers and Estate Agents (Amendment) Act 2011

(Act A1404) amended VAEA with effect from 19.8.2011.
[22] The GOF was terminated by JLLPC by way of JLLPC’s letter

dated 17.1.2012 to SSSB (JLLPC’s Termination Notice).
JLLPC’s Termination Notice gave 12 months’ notice of the
termination of GOF. GOF was therefore terminated with effect
from 18.1.2014.
[23] In 2014, JLL Group undertook a rebranding exercise and is now

known only as JLL. JLL Group now uses a JLL composite mark
which is annexed hereto as Annexure C.
D. Case for SSSB
[24] SP1 is the Executive Chairman, Managing Director (MD) and

major shareholder of SSSB. SP1 testified, among others, as
follows:
15
(1) SP1 was employed by the Malaysian Firm in 1974. In

1976, SP1 became a proprietary partner of the Malaysian
Firm;
(2) when VAEA was first enforced in 1981, the foreign

partners of the Malaysian Firm were not qualified for
registration with the Board. Hence, SSSB was
incorporated;
(3) SSSB purchased the assets, business and goodwill of the

Malaysian Firm, including the exclusive right to use JLW
Marks. Thereafter SSSB provides real estate services based
on JLW Marks;
(4) the GOF provided for, among others, “rules of practice”

in Malaysia between SSSB and JLL Group. The GOF was
terminated because SSSB alleged that JLLPC had
requested for SSSB to act in certain real estate transactions
in Malaysia which would be unlawful, unethical and
unprofessional (SSSB’s Allegations of Misconduct);
(5) except for valuation services, the Defendants (1 st Suit)

provide all the real estate services offered by SSSB. The
Defendants (1 st Suit) promote themselves as Jones Lang
LaSalle. Accordingly, this causes confusion between the
real estate services provided by SSSB and the Defendants
(1 st Suit);
(6) regarding Jones Lang Wootton Registered Trade Mark -
(a) SP1 agreed that SSSB did not obtain the written
consent of the London Proprietors or JLWP before
SSSB’s Trade Mark Application was filed;
16
(b) SP1 was aware that SSSB had an obligation under the
Covenant (1982) not to register Jones Lang Wootton
name as a trade mark;
(c) SP1 disagreed that-
(i) the statutory declaration (SD) affirmed by Ms.

Lilian Chee Sooi Hiong in support of SSSB’s
Trade Mark Application (Ms. Chee’s SD)
stated falsely in paragraph 3 of the SD that
SSSB “is the bona fide proprietor of [Jones
Lang Wootton composite mark] ... and is
entitled to be registered as the proprietor” of
Jones Lang Wootton composite mark;
(ii) SSSB had concealed from the Registrar the fact

that SSSB was only a mere licensee of Jones
Lang Wootton name and JLW mark; and
(iii) Jones Lang Wootton Registered Trade Mark

had been obtained by SSSB by
misrepresentation to the Registrar; and
(d) SP1 was not aware why row 11 of Form TM5 in

SSSB’s Trade Mark Application (Form TM5) stated
that SSSB’s first use of Jones Lang Wootton mark in
Malaysia was 1.2.1982. SP1 however testified that
when SP1 joined the Malaysian Firm in 1974, the
Malaysian Firm was already using Jones Lang
Wootton composite mark. SP1 disagreed that SSSB
had misled the Registrar regarding row 11 of Form
TM5 (that SSSB was the first user of Jones Lang
Wootton composite mark in Malaysia);
17
(7) with respect to Jones Lang LaSalle name, after the

termination of GOF -
(a) SSSB did not issue a public notice to state that it was
no longer associated with Jones Lang LaSalle;
(b) SP1 admitted that there were “surplus” letters sent

by SSSB which stated that SSSB was still in
association with Jones Lang LaSalle. Such a practice
had however been stopped by SSSB;
(c) SP1 was not aware of SSSB’s business cards which

stated that SSSB was in association with Jones Lang
LaSalle; and
(d) SP1 disagreed that SSSB has passed off itself as an

associate with Jones Lang LaSalle; and
(8) as regards Jones Lang Wootton Sdn. Bhd. (JLWSB) -
(a) SP1 agreed that JLWSB was incorporated on

6.5.1982;
(b) SP1 denied that he had concealed the incorporation

of JLWSB from the Australian Partners and
Malaysian partners when SSSB purchased their
interest in the Malaysian Firm; and
(c) SP1 denied that there was a breach of Clauses 1(a)

and 1(b)(i) of Covenant (1982).
[25] Ms. Donna Gay Barnaby (SP2) is SSSB’s Senior Vice-President.

According to SP2, among others -
18
(1) based on SSSB’s records, SSSB has spent RM603,065.00

to market JLW Marks in Malaysia for the period from
1.2.2010 to 31.1.2015;
(2) there was actual confusion between JLW Marks on the one
part and Jones Lang LaSalle name and JLL mark on the
other part as follows -
(a) Kumpulan Wang Persaraan (KWAP) subscribed

SSSB’s quarterly property report, “Malaysian
Quarterly Property Market Report’ (SSSB’s
Property Report). On 20.8.2015, KWAP sent an
email to SSSB which erroneously referred SSSB’s
Property Report as “JLL Quarterly PM Report”
(JLLP’s Property Report). This email also
mistakenly addressed SSSB as “JLL”; and
(b) Ms. Malathi Thevendran, SSSB’s director (Ms.

Malathi), gave a presentation at the Asian Strategy
& Leadership Institute (ASLI). At that ASLI’s event,
Ms. Malathi met one Mr. Shan Saeed (Mr. Shan) and
gave him her Jones Lang Wootton business card. Mr.
Shan however sent to Ms. Malathi an email dated
25.9.2015 which erroneously referred to JLLP’s
Property Report in the subject title;
(3) Jones Lang LaSalle Incorporated (JLL Inc) is a company

listed on the New York Stock Exchange. According to JLL
Inc’s documents filed with USA’s Securities and Exchange
Commission (SEC), the Defendants (2 Cases), JLLPC and
JLL IP Inc are subsidiaries of JLL Inc.;
(4) regarding Jones Lang Wootton Registered Trade Mark,

JLL IP Inc. initially objected to SSSB’s Trade Mark
19
Application. JLL IP Inc. did not however file its notice of

opposition (Form TM7) to SSSB’s Trade Mark
Application despite the fact that the Registrar had given
several extensions of time to JLL IP Inc. to file Form
TM7. The registration of Jones Lang Wootton Registered
Trade Mark has been renewed on 4.4.2016 for another 10
years; and
(5) SP2 referred to registration of Jones Lang Wootton trade

marks in many countries [Jones Lang Wootton
Registered Trade Marks (Other Countries)] which have
expired or have been cancelled.
E. Evidence adduced by JLLP and JLWL
[26] APM did not call any witness to resist SSSB’s Claim. In Part
G(1) below I will discuss the effect of APM’s failure to adduce
evidence in the 1 st Suit.
[27] Mr. David Lee-Young (SD1) is employed by Jones Lang LaSalle

(NSW) Pty Ltd. [JLL (NSW)]. SD1’s designation is “Chief
Operating Officer, Asia Pacific Hotels and Hospitality Group -
JLL”. SD1 testified, among others, as follows:
(1) APM, JLLP and JLL NSW are part of JLL Group. During
cross-examination, SD1 stated that he was giving evidence
for JLL Group; and
(2) regarding the Sub-Licence (1993)-
(a) the Sub-Licence (1993) has not been terminated and

is still subsisting; and
(b) the Sub-Licence (1993) cannot supercede the

Covenant (1982) because the parties in the Sub-
20
Licence (1993) are different from the parties in the

Covenant (1982).
[28] Mr. lain Mackenzie (SD2) is employed by JLLPC as “Head of

Solutions Department - JLL”. According to SD2, among others-
(1) there was a “massive re-branding exercise” by JLL Group

and by 2014, JLL Group is known as “JLL”. JLL Group
uses only JLL name, JLL composite mark and JLL
Registered Trade Marks for its business. There was a
“deliberate move” by JLL Group to stop using Jones Lang
LaSalle name for branding;
(2) regarding the relationship between JLL Group and SSSB-
(a) JLL Group’s corporate clients were not happy with

SSSB’s services;
(b) SP1 was “quite litigious” and had threatened to sue

JLL Group’s corporate clients. In fact, SSSB did
enter into litigation with a number of JLL Group’s
corporate clients;
(c) SSSB’s fees were “uncompetitive”;
(d) to protect JLL Group’s interest in Malaysia, JLL

Group had to-
(i) engage APM to support JLL Group’s corporate

clients in Malaysia; and
(ii) allow JLL Group’s corporate clients to seek

business from competitors of JLL Group; and
(e) SD2 denied SSSB’s Allegations of Misconduct; and
21
(3) after the termination of the GOF, JLL Group “expanded

directly into Malaysia with the acquisition of [JLLP]”.
[29] Ms. Jane Louise Niven (SD3) is employed by JLLPC. SD3 holds
the position as “Global Compliance Counsel”. S03 gave the
following evidence, among others:
(1) GOF was terminated because JLL Group was “held to

ransom” by SSSB because JLL Group was obliged under
the GOF to refer its corporate clients to SSSB even though
SSSB provided “sub-par services”;
(2) after the termination of GOF, no decision was made by

JLL Group to terminate SSSB’s licence to use Jones Lang
Wootton name and JLW mark; and
(3) regarding Jones Lang Wootton Registered Trade Mark-
(a) JLL IP Inc. considered filing an opposition to

SSSB’s Trade Mark Application but decided not to
do so as a business decision. This was because at the
material time, SSSB was servicing all of JLL
Group’s clients in Malaysia and JLL Group’s
approach was to “engage” with SSSB to see if an
overall business solution could be achieved;
(b) due to a global rebranding of JLL Group,

registrations of Jones Lang Wootton Registered
Trade Marks (Other Countries) were allowed to
lapse; and
(c) as the Sub-Licence (1993) was still subsisting, SSSB

was only a licensee of Jones Lang Wootton
composite mark. SSSB therefore committed a fraud
22
on the Registrar by dishonestly portraying itself to be

the owner of Jones Lang Wootton composite mark.
[30] Ms. Lau Yock Yin (SD4) is JLLP’s MD. SD4 gave the following
evidence, among others:
(1) SD4 worked as a manager in SSSB for about 3 years from

1992 to 1995. SD4 has been in real estate business for
more than 25 years;
(2) SD4 started YY Property Solutions as a sole proprietorship

in 1995. YY Property Solutions Sdn. Bhd. (YYPS) was
subsequently incorporated with SO4 as its MD. YYPS was
the former name of JLLP;
(3) on or around June 2014, JLLPC acquired 49%

shareholding in JLLP and JLLP became a part of JLL
Group. SD4 sold 49% of shares in JLLP to JLLPC because
she wanted to expand JLLP’s customer base and to take
JLLP’s business to “an international level”. Furthermore,
JLLP joined JLL Group to ensure that JLLP’s staff receive
better training and exposure which will then enhance their
skill sets;
(4) by a letter dated 18.2.2014, JLLP had applied for the

Board’s approval, among others, to-
(a) sell 51% of shares in JLLP to AHCM;
(b) sell 49% of shares in JLLP to JLLPC;
(c) change its name from YYPS to JLLP; and
(d) appoint two directors in JLLP from AHCM and to

appoint one director in JLLP from JLLPC
23
(JLLP’s Letter dated 18.2.2014).
In a letter dated 27.3.2014, the Board approved the above

application by JLLP and expressly informed JLLP that the
Board “shall withdraw its approval” if JLLP contravenes,
among others, any of the provisions of the then applicable
VAEA;
(5) JLLP uses JLL brand for its business. In fact, JLL mark is
part of JLLP’s name. JLL brand is a global brand which is
used across 230 offices worldwide in 80 countries
(including Malaysia);
(6) JLLP does not use Jones Lang LaSalle name as a brand for
marketing purposes. Jones Lang LaSalle name refers to the
name of the “holding company” in USA, namely JLL Inc.;
(7) there is no confusion among the public with regard to the

identity of SSSB and JLLP. This is evident when SSSB
and JLLP have been invited to speak at the same seminars
and conferences. On or around April 2016, “The Edge”
newspaper had interviewed both Ms. Malathi (from SSSB)
and SD4 on the same subject matter without any
confusion;
(8) SSSB misrepresents to the public that SSSB is still

associated with JLL Group by using the words “In
association with Jones Lang LaSalle” in SSSB’s letter
dated 10.3.2016 to the Board and a business card of one
Ms. Serene Chin Shi Ying (from SSSB);
(9) Sovereign Asian Properties Inc. (SAP), a Mauritius

company, has given an interest-free loan of
RM1,269,900.00 to AHCM (SAP’s Loan). During cross-
24
examination of SD4, Dato’ Seri Gopal Sri Ram, learned

lead counsel for SSSB, applied for a court order under s.
165 EA (Section 165 Application) for JLLP to produce all
documents relating to SAP’s Loan (AHCM Documents).
The Section 165 Application had been strongly opposed by
the Defendants (2 Cases). After hearing submission from
learned counsel, I have allowed the Section 165
Application (Production Order) - please see Part G (2)
below; and
(10) pursuant to the Production Order, SD4 produced the

following AHCM Documents-
(a) a loan agreement dated 9.6.2014 between SAP and

AHCM (SAP Loan Agreement). Attached to SAP
Loan Agreement were the following documents,
among others-
(i) a PA executed by AHCM in favour of SAP

(AHCM’s PA);
(ii) a PA executed by SD4 in favour of SAP (SD4’s

PA);
(iii) a circular resolution of AHCM’s directors for

the transfer of SD4’s shares in AHCM to a
transferee (AHCM’s Resolution for Transfer
of Shares);
(iv) 2 circular resolutions of AHCM’s directors to

appoint directors in AHCM (AHCM’s
Resolutions to Appoint Directors);
(v) a circular resolution of AHCM’s directors to

appoint AHCM’s corporate representative to
25
attend all general meetings of JLPP’s

shareholders (AHCM’s Resolution to Appoint
Corporate Representative);
(vi) AHCM’s certificate of appointment of AHCM’s

corporate representative to attend all JLPP’s
general meetings of shareholders (AHCM’s
Certificate of Appointment of Corporate
Representative);
(vii) resignation letter of SD4 as AHCM’s director

(SD4’s Resignation Letter);
(viii) “Form 32A”, transfer form of shares in JLLP

by AHCM (AHCM’s Share Transfer Form);
and
(ix) Form 32A regarding transfer of shares in

AHCM by SD4 (SD4’s Share Transfer Form);
and
(b) addendum to SAP Loan Agreement with an effective

date of 30.9.2014 (Addendum).
F. SSSB’s Allegations of Misconduct
[31] At the outset, I must make clear that I will not decide on SSSB’s
Allegations of Misconduct. This is due to the following reasons:
(1) pursuant to O. 34 r. 2(2)(k) RC, in Bundle R, all the

parties have agreed to the issues to be tried in the 2 Cases
(Agreed Issues). The Agreed Issues did not concern
SSSB’s Allegations of Misconduct. Hence, this court shall
only decide on the Agreed Issues; and
26
(2) any allegation of misconduct against, among others, a

“registered valuer”, “registered appraiser” and
“registered estate agent” (as defined in s. 2 of the then
VAEA) should only be investigated into and determined by
the Board in accordance with the disciplinary procedure
provided by rr. 131 to 138 of the Valuers, Appraisers and
Estate Agents Rules 1986 (VAEAR) read with s. 24 of the
present VAEAPM. There is also a right to appeal against
any decision of the Board regarding a disciplinary matter
to the Appeal Board as provided in ss. 27(1)(c) and 29
VAEAPM. The statutory duties and functions of the Board
and Appeal Board under VAEAPM and VAEAR regarding
disciplinary matters, should not be arrogated.
Due to the above reasons, nothing in this judgment should be

construed to support or rebut SSSB’s Allegations of Misconduct.
G. Evidence
G(1). Dual effect of APM’s failure to adduce evidence in 1 st Suit
[32] Firstly, if there is sworn evidence adduced by one party (A) in a

trial against another party (B) and there is no evidence from B to
rebut A’s testimony, the court may presume A’s evidence to be
true - please see the Federal Court’s judgment in Takako Sakao
v. Ng Pek Yuan & Anor [2009] 6 MLJ 751, at paragraph 4, as
follows:
“[4] In our judgment, two consequences inevitably

followed when the first respondent who was fully
conversant with the facts studiously refrained from
giving evidence. In the first place, the evidence given by
the appellant ought to have been presumed to be true. As
27
Elphinstone CJ said in Wasakah Singh v. Bachan Singh

[1931] 1 MC 125 at p 128:
If the party on whom the burden of proof lies gives

or calls evidence which, if it is believed, is
sufficient to prove his case, then the judge is bound
to call upon the other party, and has no power to
hold that the first party has failed to prove his case
merely because the judge does not believe his
evidence. At this stage, the truth or falsity of the
evidence is immaterial. For the purpose of testing
whether there is a case to answer, all the evidence
given must be presumed to be true.”
(emphasis added).
[33] The second consequence of B’s failure to adduce any evidence

to rebut A’s evidence is that the court may draw an adverse
inference under s. 114(g) EA against B - please see Takako
Sakao, at paragraph 5.
[34] In the 1 st Suit, no director, employee or agent from APM had

been called or subpoenaed to rebut oral evidence from SP1 and
SP2 in support of SSSB’s Claim. As such-
(1) this court presumes the evidence in support of SSSB’s

Claim against APM to be true - please see Takako Sakao;
and/or
(2) an adverse inference under s. 114(g) EA is drawn against

APM for the following reasons -
(a) SD3 had testified during cross-examination that she

had met Mr. Tan Loy Fatt, APM’s MD (Mr. Tan), on
a couple of occasions. According to SD3, when she
28
last spoke to Mr. Tan, Mr. Tan “was able to talk and
walk”. Hence, there was no reason why Mr. Tan
could not have testified for APM in the 1 st Suit. In
fact, Mr. Tan as APM’s director owes fiduciary and
statutory duties to APM to act in good faith in the
best interest of APM [s. 213(1) of the Companies Act
2016 (CA)] by defending APM against any baseless
suit. If Mr. Tan is reluctant to testify in the 1 st Suit,
APM should have applied to this court for a
subpoena to compel Mr. Tan to give evidence in the
1 st Suit. APM however did not do so;
(b) even if it is assumed that there is a valid excuse for

Mr. Tan not to testify in the 1 st Suit, no evidence has
been adduced by APM on why APM cannot call or
subpoena a director other than Mr. Tan, any
employee or agent from APM to rebut the evidence
in support of SSSB’s Claim against APM;
(c) APM had actively participated in the 1 st Suit as

follows-
(i) APM had filed an application together with

JLLP to join JLWL as a third defendant in the
1 st Suit (Enc. 4). I have dismissed Enc. 4 with
costs (Dismissal of Enc. 4). Both APM and
JLLP had appealed to the Court of Appeal
against the Dismissal of Enc. 4. This appeal
was subsequently withdrawn by the Defendants
(1 st Suit); and
(ii) jointly with JLLP, APM had filed an

application for further and better particulars of
29
SSSB’s Statement of Claim (Enc. 7). Enc. 7

had been dismissed by me with costs.
In view of APM’s active involvement in the 1 st

Suit, the only inference which may be drawn by
this court is that any witness who may be called
or subpoenaed by APM to testify in the 1 st Suit,
will only give evidence in favour of SSSB’s
Claim against APM; and
(d) SSSB had adduced evidence regarding APM’s breach

of s. 23 of the then VAEA (APM’s Breach) - please
see Part J(1) below. APM’s refusal to adduce any
evidence to rebut SSSB’s evidence regarding APM’s
Breach, amounts to a suppression of material
evidence regarding APM’s Breach and this in turn
attracts an adverse inference against APM - please
see Mohd. Azmi SCJ’s judgment in the Supreme
Court case of Munusamy Vengadasalam v. Public
Prosecutor [1987] 1 MLJ 492, at 494.
It is to be noted that in Guthrie Sdn Bhd v. Trans-

Malaysian Leasing Corp Bhd [1991] 1 MLJ 33, at 34-35,
Hashim Yeop Sani CJ (Malaya) in the Supreme Court
affirmed the High Court’s decision [which drew an adverse
inference under s. 114(g) EA against a defendant].
Premised on the above 2 reasons, SSSB’s Claim against APM

should be allowed.
G(2). Section 165 Application
[35] The Section 165 Application was made during cross-examination

of SD4. Ms. Elaine Yap Chin Gaik [learned co-counsel for
30
Defendants (2 Cases)], objected to the Section 165 Application

on the following grounds:
(1) AHCM Documents were not relevant to the 2 Cases.

Accordingly, the Section 165 Application was a fishing
expedition to bolster unlawfully SSSB’s Claim against
JLLP. Ms. Elaine Yap further contended that the Section
165 Application was filed with a collateral purpose and
constituted an abuse of court process;
(2) SSSB should have applied for discovery of AHCM

Documents before the commencement of the trial in the 2
Cases pursuant to O. 24 rr. 3 or 7 RC
(3) SSSB had closed its case and should not be allowed to re-
open it; and
(4) AHCM Documents are confidential and should not be

disclosed to SSSB.
[36] Section 165 EA provides as follows:
“Judge’s power to put questions or order production
165. The Judge may, in order to discover or to obtain

proper proof of relevant facts, ask any question he
pleases, in any form at any time, of any witness or of
the parties, about any fact relevant or irrelevant;
and may order the production of any document or
thing; and neither the parties nor their agents shall
be entitled to make any objection to any such
question or order, nor, without the leave of the court,
to cross-examine any witness upon any answer given
in reply to any such question:
31
Provided that-
(i) the judgment must be based upon facts declared by

this Act to be relevant and duly proved;
(ii) this section shall not authorise any Judge to compel

any witness to answer any question or to produce
any document which the witness would be entitled to
refuse to answer or produce under sections 121 to
131 if the question were asked or the document were
called for by the adverse party; nor shall the Judge
ask any question which it would be improper for any
other person to ask under section 148 or 149; nor
shall he dispense with the primary evidence of any
document, except in the cases hereinbefore
excepted.”
(emphasis added).
[37] I am of the following view regarding s. 165 EA:
(1) s. 165 EA has two separate limbs (2 Limbs) as follows -
(a) the court has a discretion to ask any question from

any witness or party “to discover or to obtain proper
proper proof of relevant facts” (1 st Limb). Section 3
EA provides that a fact is “relevant” to another when
the fact is connected with the other in any of the
ways referred to in EA relating to the relevancy of
facts; and
(b) the court has a discretion to order any witness or

party to produce any “document” (defined widely in
s. 3 EA) or “thing” (2 nd Limb).
32
The use of a semicolon in s. 165 EA clearly shows

that the 2 Limbs are intended by Parliament to be
distinct. A punctuation mark may be relied on by the
court in the interpretation of a statutory provision -
please see Abdoolcader SCJ’s judgment in the
majority decision of the Supreme Court in Dato
Mohamed Hashim Shamsuddin v. Attorney-General,
Hong Kong [1986] 2 MLJ 112, at 122;
(2) the application of the 2 Limbs is subject to provisos (i) and

(ii) to s. 165 EA (2 Provisos). In this regard-
(a) based on proviso (i) to s. 165 EA, the 2 Limbs can

only be invoked if -
(i) the question to be asked by the court; and
(ii) the evidence to be ordered by the court to be

produced
is relevant within the meaning of ss. 3 and 5 EA -

please see the Court of Appeal’s judgment delivered
by Tengku Baharudin Shah JCA in Paramill Sdn Bhd
& Anor v. Datuk Joseph Pairin Kitingan [2007] 7
MLJ 289, at paragraphs 61 and 63; and
(b) if proviso (ii) to s. 165 EA does not apply, the fact

that a document contains a party’s confidential
information, does not bar the court’s power to order
its production pursuant to the 2 nd Limb. In any event,
if a party is concerned about the confidentiality of
information contained in any document to be
produced in court, the party may apply to court-
33
(i) to redact the document in respect of the

confidential information - please see Tokai
Corporation v. DKSH Malaysia Sdn Bhd [2016]
MLJU 621, at sub-paragraphs 26(1) and (2);
(ii) for a protective order to ensure that only the

court, the opposing party’s lawyers and certain
persons from the opposing party can have
access to the confidential information - please
see Buckley LJ’s judgment in the English Court
of Appeal case of Warner-Lambert Co v. Glaxo
Laboratories Ltd [1975] RPC 354, at 359-360;
and/or
(iii) for an order that the document can only be

produced if the opposing party undertakes to
the court that the opposing party shall only use
the document for the purpose of the case;
(3) if the court exercises its discretion to apply the 2 Limbs,

the court should ordinarily grant leave for-
(a) further cross-examination by the party who has not

called the witness in question (Further Cross-
Examination). The Further Cross-Examination is
limited to the question asked by the court or the
evidence ordered to be produced by the court; and
(b) further re-examination by the party who has called

the witness in question (Further Re-Examination).
The Further Re-Examination is confined to matters
raised in the Further Cross-Examination;
34
(4) in criminal cases, the court should be circumspect in

exercising its discretion under the 2 Limbs - please see
Edgar Joseph Jr SCJ’s judgment in the Supreme Court case
of Teng Boon How v. Public Prosecutor [1993] 3 MLJ 553,
at 561-564, and Andrew Phang JA’s decision in the
Singapore Court of Appeal case of Mohammed Ali bin
Johari v. PP [2008] 4 SLR 1058, at paragraph 175. It is to
be noted that our s. 165 EA is substantially similar to s.
167 of Singapore’s Evidence Act [EA (Singapore)].
Hence, Singapore cases on s. 167 EA (Singapore) may be
referred to in the interpretation of our s. 165 EA.
The above view is due to the fact that in criminal cases,

the prosecution bears the heavy legal burden to prove the
guilt of an accused beyond all reasonable doubt and this
legal burden on the prosecution does not shift or be
perceived to be alleviated by the court’s invocation of the
2 Limbs. If there is any reasonable doubt in the
prosecution case, the benefit of such a doubt should be
given to an accused - please see the Supreme Court’s
judgment given by Lee Hun Hoe CJ (Borneo) in Public
Prosecutor v. Kau Joo Huat [1988] 2 MLJ 91, at 93;
(5) in civil cases, the court may apply the 2 Limbs on its own
motion. In Chew Lip Seng v. Perwira Habib Bank (M) Bhd
[1999] 1 MLJ 310, at 314-315, NH Chan JCA (sitting as a
the High Court judge) exercised his discretion under the 1 st
Limb suo motu to call a witness for the plaintiff after the
plaintiff had closed his case;
(6) s. 165 EA does not provide any particular time period for
the court to apply the 2 Limbs. In fact, it is provided that
the 1 st Limb may be invoked “at any time”. Having said
35
that, the court may be reluctant to invoke the 2 Limbs if

there is irreparable prejudice to any party due to the
advanced state of the trial in question; and
(7) the 2 nd Limb is not fettered by a party’s failure to apply for

discovery of documents pursuant to O. 24 rr. 3 or 7 RC.
This is because firstly, O. 24 RC concerns discovery and
inspection of documents. O. 24 RC does not provide for
questioning of witnesses and admissibility of evidence
during trial. Secondly, the 2 Provisos do not refer to O. 24
RC and as such, the 2 Limbs cannot be subject to O. 24
RC.
[38] I allow the Section 165 Application for the following reasons:
(1) AHCM Documents are relevant to the 2 Cases as follows -
(a) SSSB had pleaded in paragraphs 11, 13 and 19D of

the Re - Amended Reply to Defence and Defence to
Counterclaim that JLLPC is the alter ego of the
Defendants (2 Cases). As such, AHCM Documents
are relevant in the 2 Cases on the question of whether
the court should exercise its discretion to lift the
corporate veil of the Defendants (2 Cases) to reveal
that JLLPC is the alter ego of the Defendants (2
Cases). AHCM Documents are also pertinent for the
court to ascertain whether the Defendants (2 Cases),
JLLPC and all Relevant JLL Companies should be
treated as a single entity for the purpose of the 2
Cases; and
(b) Dato’ Seri Gopal has alleged that the Defendants (1 st

Suit) have breached s. 23 of the then VAEA (Alleged
36
Illegality). I will elaborate later in this judgment

regarding the Alleged Illegality;
(2) as ACHM Documents are relevant to the 2 Cases, the

Section 165 Application is not -
(a) a fishing expedition;
(b) filed with a collateral purpose; or
(c) an abuse of court process;
(3) there is no delay on SSSB’s part in making the Section 165

Application. This is because the Defendants (2 Cases) only
adduced Bundle T (containing, among others, documents
concerning JLLP) on 14.4.2017, after SSSB has closed its
case on 8.3.2017. During cross - examination of SD4 on
18.4.2017 based on, among others, Bundle T, SSSB’s
learned counsel then became aware of the existence of
ACHM Documents. Hence, the making of the Section 165
Application; and
(4) as explained above, the fact that JLLP considered ACHM

Documents to be confidential, does not bar the Section 165
Application. To avoid any prejudice to JLLP -
(a) the court first perused AHCM Documents and

ascertained that ACHM Documents only contained
commercial terms between AHCM and JLLP. This
was orally confirmed by Ms. Chew Kherk Ying,
learned co-counsel for the Defendants (2 Cases);
(b) the court requested SSSB to undertake to court that

SSSB would only use AHCM Documents solely for
the 2 Cases. Such an undertaking was duly given and
37
only then a copy of AHCM Documents were given to

SSSB; and
(c) the court granted leave for Further Cross-

Examination and Further Re-Examination. It is to be
noted that at the time of allowing the Section 165
Application, the Defendants (2 Cases) had not closed
their case. In other words, the Defendants (2 Cases)
were not prejudiced by the order of production of
AHCM Documents because they could call any
witness or tender any documentary evidence to
explain AHCM Documents.
G(3). Admissibility of Email dated 14.10.2015
[39] The Defendants (2 Cases) applied to court to expunge “without

prejudice” communications, including the Email dated
14.10.2015. Despite the fact that there was no settlement of the
dispute in question, Dato’ Seri Gopal has contended that the
Email dated 14.10.2015 is admissible to prove estoppel. Dato’
Seri Gopal relies on Robert Walker LJ’s (as he then was)
judgment in the English Court of Appeal case of Unilever plc v.
The Proctor & Gamble Co [2001] 1 All ER 783, at 792, as
follows:
“(3) Even if there is no concluded compromise, a clear

statement which is made by one party to negotiations, and
on which the other party is intended to act and does in
fact act, may be admissible as giving rise to an estoppel.
That was the view of Neuberger J in Hodgkinson & Corby
Ltd v. Wards Mobility Services Ltd [1997] FSR 178 at
191, and his view on that point was not disapproved by
this court on appeal ([1998] FSR 530).”
(emphasis added).
38
Unilever has been approved by Lord Clarke in the Supreme

Court of the United Kingdom (UK) in Oceanbulk Shipping and
Trading SA v. TMT Asia Ltd & Ors [2011] AC 662, at
paragraphs 21-32. Lord Clarke held in Oceanbulk, at paragraph
29, as follows:
“[29] In para [43] [Ofulue & Ors v. Bossert [2009] AC

990] Lord Rodger recognised the breadth of the without
prejudice rule and rejected the proposed exception. So
too did Lord Walker. He said at [57] that he would not
restrict the without prejudice rule unless justice clearly
demands it. This seems to me to be entirely consistent
with the approach of Lord Griffiths in Rush & Tompkins
Ltd v. Greater London Council [1989] AC 1280, 1300,
where he said that the rule is not absolute and that resort
may be had to the without prejudice material for a variety
of reasons where the justice of the case requires it. See
also per Lord Neuberger at [89], endorsing the passage
from the judgment of Robert Walker LJ in the Unilever
case [2001] 1 WLR 2436, 2448-2449 (referred to above).”
(emphasis added).
[40] Section 23 EA reads as follows:
“Admissions in civil cases when relevant
s. 23. In civil cases no admission is relevant if it is made

either upon an express condition that evidence of it is not
to be given, or under circumstances from which the court
can infer that the parties agreed together that evidence of
it should not be given.”
(emphasis added).
39
[41] Section 23 EA bars the admissibility of an “admission”.

According to s. 17(1) EA, an “admission” is-
(1) “a statement, oral or documentary, which suggests any

inference as to any fact in issue or relevant fact”; and
(2) the statement is made by any of the persons and under the
circumstances mentioned in ss. 18(1), (3)(a), (b), 19 and
20 EA - please see “Evidence - Practice and Procedure”,
Augustine Paul, 3 rd Ed. (2003), at p. 162.
[42] The Email dated 14.10.2015 stated as follows:
“Dear [SP1],
Thank you for your email of the 29 th September.
We have looked at your key terms and find a number of

them unacceptable. As the gaps are big and it is unlikely
that we will come to an understanding that works for both
parties, I think it is best that we withdraw from our
discussion to acquire your business in Malaysia. It is an
unfortunate decision but the right one in the
circumstances.
On behalf of JLL I would like to thank you for the time

you have put into these negotiations and we wish you all
the best for the future.
...
[Mr. Fossick]”
(emphasis added).
[43] I am of the view that the contents of the Email dated 14.10.2015
concerned negotiations by JLLPC to acquire SSSB’s business.
40
The Email dated 14.10.2015 does not amount to an “admission”

within the meaning of s. 17(1) EA because-
(1) the contents of the Email dated 14.10.2015 did not suggest
any inference as to any “fact in issue” (defined in s. 3 EA)
or “relevant fact” in the 2 Cases; and
(2) the Email dated 14.10.2015 was not made by any of the
persons and under the circumstances mentioned in ss.
18(1), (3)(a), (b), 19 and 20 EA.
Based on the above two reasons, I have no hesitation to admit

the Email dated 14.10.2015 as evidence in the 2 Cases.
[44] All the cases cited on behalf of the Defendants (2 Cases) may be
distinguished on one or both of the two reasons stated in the
above paragraph 43.
[45] The Defendants (2 Cases) have contended that Mr. Fossick has
affirmed an affidavit on 3.3.2017 (Enc. 75) (Mr. Fossick’s
Affidavit) to oppose SSSB’s application to re-amend its
Amended Reply to Defence and Defence to Counterclaim
(SSSB’s Amendment Application). Paragraph 4 of Mr.
Fossick’s Affidavit has alleged that “without prejudice”
negotiations were carried out to acquire SSSB as a “business
solution” and as a means to resolve the 2 Cases. I am not able to
accept Mr. Fossick’s Affidavit as evidence in the 2 Cases
because Mr. Fossick has not been called by any party to give
evidence in the 2 Cases. As such, the truth of the contents of Mr.
Fossick’s Affidavit cannot be tested by way of cross-
examination. It is unjust for any party to rely on an affidavit
filed in respect of interlocutory proceedings when the party did
not call the deponent of the affidavit to testify in the trial.
41
[46] With respect, I am not able to accept Oceanbulk and Unilever

because -
(1) our EA, despite its name, is a code of law which is

intended to be comprehensive - please see the Privy
Council’s opinion delivered by Lord Diplock on an appeal
from Malaysia, PP v. Yuvaraj [1969] 2 MLJ 89, at 90. UK
has no statutory provision which is identical or similar to
s. 23 EA. Accordingly, s. 23 EA should be given its literal
effect without being affected by cases from jurisdictions
which have no equivalent to our s. 23 EA; and
(2) in the Federal Court case of SPM Membrane Switch Sdn

Bhd v. Kerajaan Negeri Selangor [2016] 1 MLJ 464, at
paragraph 29, Zainun Ali FCJ did not follow Oceanbulk
and held as follows-
“[29] While evidence of previous negotiations of

the parties and their declarations of subjective
intent have been excluded from the admissible
background in the third ICS principle (see above),
there is reason to believe that this rule has been
somewhat diluted as a matter of English law in the
case of [Oceanbulk] [2011] 1 AC 662 where the
Supreme Court accepted as admissible ‘without
prejudice’ negotiations prior to a settlement
agreement to demonstrate the ‘relevant background’
and aid in the interpretation of the settlement
agreement. While the intentions of the Supreme
Court were noble, it is the view of this court that the
approach taken in Oceanbulk is too permissive to be
applied to the Malaysian context.”
(emphasis added).
42
G(4). Credibility of witnesses
[47] I find as a fact that SP1 is a credible witness because-
(1) for reasons explained in paragraphs 76-79 below, SSSB is

the lawful proprietor of goodwill attached to its real estate
business regarding JLW Marks in Malaysia (not in other
countries). Furthermore, SSSB has actually used JLW
Marks in its business in this country;
(2) SSSB has a proprietary interest in Jones Lang Wootton

name and JLW mark - please see paragraph 95 below; and
(3) as elaborated in sub-paragraph 96(2) below, among others,

the Covenant (1982) has been superceded by the Sub-
Licence (1993). Accordingly, the Defendants (2 Cases)
cannot complain that the following acts have breached
clauses 1(a) and (b) of Covenant (1982)-
(a) the filing of SSSB’s Trade Mark Application and the

subsequent registration of Jones Lang Wootton
Registered Trade Mark; and
(b) the incorporation of JLWSB and the appointment of

SP1 as its director.
[48] I have not overlooked Ms. Chee’s SD. Firstly, SP1 can only be
cross - examined as to his previous statements (oral or written)
and not in respect of Ms. Chee’s SD - please see 145(1) and (2)
EA. Furthermore, SP1’s credit may only be impeached based on,
among others, his own former statements - please see s. 155(c)
EA. In other words, the contents of Ms. Chee’s SD cannot prove
that SP1 is not a reliable witness.
43
[49] SP2 and SD1 gave evidence based on documents. There is no

documentary evidence to prove that SP2 and SD1 are not
witnesses of truth.
[50] I doubt SD2’s credibility because-
(1) during cross-examination, SD2 testified that “Intel”

company terminated its contracts with SSSB because Intel
was dissatisfied with SSSB’s services. However, Intel’s
letter dated 25.3.2011 to SSSB stated, among others, that
Intel terminated its contracts with SSSB at the “request of
Jones Lang LaSalle” (Intel’s Letter dated 25.3.2011).
The contents of Intel’s Letter dated 25.3.2011 clearly
undermined SD2’s credibility. When there is a conflict
between contemporaneous documentary evidence and self-
serving oral testimony, I will readily accept the former -
please see Siti Norma Yaakob JCA’s (as she then was)
judgment in the Court of Appeal case of Guan Teik Sdn
Bhd v. Hj Mohd Noor Hj Yakob & Ors [2000] 4 CLJ 324,
at 330; and
(2) SD2’s first witness statement categorically alleged that

JLL Group’s corporate clients were unhappy with SSSB’s
services. During cross-examination, SD2 testified that he
has documents, letters and emails from JLL Group’s
corporate clients which expressed their discontent with
SSSB’s services. SD2 however admitted that such
documents, letters and emails had not been adduced as
evidence in the 2 Cases. It is difficult to believe a witness
who makes a serious allegation against an adverse party
and claims to have documentary evidence to support that
allegation but does not however tender such evidence in
court.
44
[51] I do not find SD3 to be a reliable witness. This is because SD3’s

second witness statement stated that Intel was “very unhappy”
with SSSB’s services and this was the reason for Intel’s decision
to terminate its agreement with SSSB. SD3 had seen Intel’s
Letter dated 25.3.2011 and she claimed that she had taken up its
contents with Intel because those contents were inaccurate.
During cross-examination, SD3 admitted that she did not inform

SSSB that the contents of Intel’s Letter dated 25.3.2011 were
inaccurate. SD3 further admitted that her allegation (the
contents of Intel’s Letter dated 25.3.2011 were inaccurate) was
only raised for the very first time in the 2 Cases. I do not accept
SD3’s evidence that the contents of Intel’s Letter dated
25.3.2011 were inaccurate. This is because Intel’s Letter dated
25.3.2011 had been copied to SD3. SD3 is a lawyer by training
and as Regional General Counsel for JLL Group for Asia Pacific
at the material time, she had the responsibility to protect the
interest of JLLPC. If the contents of Intel’s Letter dated
25.3.2011 were indeed inaccurate, in the discharge of SD3’s
duties owed to JLLPC, she should have written to both Intel and
SSSB to state as such.
[52] It is this court’s finding of fact that SD4 lacks credibility. This
decision is premised on the following evidence and reasons:
(1) SD4 is not a simpleton. SD4 has an accounting background

and is a member of Malaysian Institute of Accountants.
SD4 is the MD for JLLP and AHCM. SD4 was one of the
two signatories of the relevant financial statements of
JLLP and AHCM. Pursuant to the then s. 169(16) of the
Companies Act 1965, SD4 affirmed a SD regarding
AHCM’s financial statements as the “director primarily
responsible for the financial management” of AHCM. SD4
45
has also more than 25 years of experience in real estate

business.
Despite SD4’s accounting background and vast work

experience in the field of real estate, she gave the
following evidence -
(a) during further cross-examination, SD4 disagreed with

Dato’ Seri Gopal that AHCM’s directors’ resolution
dated 9.6.2014 (AHCM’s Resolution dated
9.6.2014) did not authorize -
(i) AHCM to purchase SD4’s shares in JLLP; and
(ii) part of SAP’s Loan to be credited directly into

SD4’s personal bank account in Singapore.
A perusal of AHCM’s Resolution dated 9.6.2014

clearly showed that SD4’s above testimony could not
be true. Furthermore, AHCM’s Resolution dated
9.6.2014 had been co-signed by SD4 as a director of
AHCM and she admitted during further cross -
examination that she understood the contents of
AHCM’s Resolution dated 9.6.2014;
(b) initially, SD4 denied being “in charge” of JLLP’s

financial matters. SD4 even claimed that one Ms.
Wong Jien Yee (Ms. Wong), JLLP’s finance
manager, was in charge of JLLP’s accounts.
Subsequently, when SD4 was confronted with her
own signature (as JLLP’s director) on the relevant
JLLP’s financial statement, she did a volte-face and
admitted that she was responsible for JLLP’s
financial matters. During re-examination, SD4 stated
46
that Ms. Wong was “in charge” of JLLP’s accounts

because Ms. Wong prepared JLLP’s accounts! A
person who is not a director of a company and who
merely prepares the company’s accounts, cannot be
described, by any stretch of imagination, to be “in
charge” of the company’s accounts;
(c) when asked whether SD4 knew the source of SAP’s

Loan, she gave conflicting answers. Firstly, she
stated that she did not know the source of SAP’s
Loan. She then testified that she could not remember
the source of SAP’s Loan. There is a difference
between a person who has no knowledge of a matter
and a person who knows about that matter but has
forgotten about it; and
(d) when SD4 was asked whether she would agree that if
a person subscribes shares in a company, the
payment for the subscription should have been paid
to the company, she incredulously answered “I think
so”. Such an answer is less than honest;
(2) in view of SD4’s prevarication during cross-examination,

the court had to remind her that she had taken an oath to
tell the truth. Despite such a reminder, SD4 continued to
be evasive throughout her cross - examination. When
asked whether AHCM is a subsidiary of JLL Inc., SD4
initially answered that she did not know the answer.
Shortly thereafter, SD4 testified that AHCM is not a
subsidiary of JLL Inc. In view of such a material
contradiction in SD4’s own evidence, in the interest of
justice, the court read and explained s. 132 EA to SD4.
The relevant part of s. 132 EA reads as follows-
47
“Witness not excused from answering on ground

that answer will criminate
s. 132(1) A witness shall not be excused from

answering any question as to any matter relevant to
the matter in issue in any suit, or in any civil or
criminal proceeding, upon the ground that the
answer to that question will criminate or may tend
directly or indirectly to criminate, him, or that it
will expose, or tend directly or indirectly to expose,
the witness to a penalty or forfeiture of any kind, or
that it will establish or tend to establish that he owes
a debt or is otherwise subject to a civil suit at the
instance of the Government of Malaysia or of any
State or of any other person.
(2) No answer which a witness shall be compelled

by the court to give shall subject him to any arrest
or prosecution, or be proved against him in any
criminal proceeding, except a prosecution for giving
false evidence by that answer.
(3) Before compelling a witness to answer a

question the answer to which will criminate or may
tend directly or indirectly to criminate him the court
shall explain to the witness the purport of
subsection (2).”
(emphasis added);
(3) SD4 had a motive within the meaning of s. 8(1) EA to

conceal JLPP’s breach of s. 23 VAEA from this court
(JLLP’s Breach). This is because if JLLP’s Breach is
revealed in the 2 Cases, the Board may subsequently
exercise its discretion to, among others, cancel JLLP’s
48
registration with the Board. Hence, SD4 gave untrue and

self-serving evidence in the 2 Cases so as to conceal
JLLP’s Breach; and
(4) when SD4 was cross-examined, she was hesitant,

uncertain, slow and even evasive. During re-examination,
SD4 was a changed person - she answered questions
confidently, clearly and timeously.
G(5). Have AHCM Documents been executed?
[53] SD4 initially answered during cross-examination that she was

not sure whether she had signed SD4’s PA and AHCM’s PA (as
AHCM’s director). Subsequently, SD4 testified that she could
not remember whether she had signed SD4’s PA and AHCM’s
PA (as AHCM’s director). SD4 further testified that except for
SAP Loan Agreement, she was unsure whether she had signed
the other AHCM’s Documents.
I am not able to accept the above evidence from SD4 because

SD4 is not a witness of truth (please see the above paragraph
52). I find as a fact that the following AHCM Documents have
been executed by AHCM and/or SD4:
(1) AHCM’s PA;
(2) SD4’s PA;
(3) AHCM’s Resolution for Transfer of Shares;
(4) AHCM’s Resolutions to Appoint Directors;
(5) AHCM’s Resolution to Appoint Corporate Representative;
49
(6) AHCM’s Certificate of Appointment of Corporate

Representative;
(7) SD4’s Resignation Letter;
(8) AHCM’s Share Transfer Form; and
(9) SD4’s Share Transfer Form.
The above finding is based on the following evidence and

reasons:
(a) the definition of “Security Documents” in clause 1.1 of

SAP Loan Agreement included AHCM’s PA and SD4’s
PA. Clause 3.1(c) of SAP Loan Agreement has expressly
provided as one of the conditions precedent that SAP
“shall not be obliged to make available” SAP’s Loan
unless AHCM delivers the “duly executed Security
Documents”;
(b) certain AHCM Documents have been expressly referred to

in the definitions of “Power of Attorney”, “Resignation”,
and “Resolutions” in clause 1.1 SAP Loan Agreement. In
fact, the form of certain AHCM Documents has been set
out in Appendices 2A, 28, 4 and 5 to SAP Loan
Agreement;
(c) the Addendum amended SAP Loan Agreement only in

respect of the amount of SAP Loan. Clause 2 of the
Addendum stated that except as amended by the
Addendum, “all other terms and provisions” of SAP Loan
Agreement “shall remain in full force and effect”. The
Addendum did not vary SAP Loan Agreement by releasing
AHCM’s obligation to execute and deliver AHCM
Documents to SAP; and
50
(d) it is inconceivable for SAP to have disbursed the entire

interest-free loan sum of RM1,269,900.00 if the AHCM
Documents had not been executed and delivered by AHCM
to SAP.
H. Whether court should lift corporate veil
[54] Section 20 CA provides that a company is a body corporate with

a legal personality (General Rule). The effect of the General
Rule is that a company is a legal entity which is distinct from all
other companies, including its -
(1) “holding company” [explained in s. 4(4) CA];
(2) “subsidiary” [please see s. 4(1),(2) and (3) CA];
(3) “wholly-owned subsidiary” [explained in s. 6(a) and (b)

CA]; and
(4) “related company” [as defined in s. 7(a), (b) or (c) CA].
[55] In the following cases, the court has pierced or lifted the
corporate veil of a group of companies to reveal a single entity
controlling all the relevant companies [Piercing/Lifting
Corporate Veil (Group of Companies)]-
(1) in the Federal Court case of Hotel Jaya Puri Bhd v.

National Union of Hotel, Bar & Restaurant Workers &
Anor [1980] 1 MLJ 109, at 112, Salleh Abas FJ (as he then
was) lifted the corporate veil of the holding company
(hotel) and its wholly-owned subsidiary (Chinese
restaurant in the hotel) to reveal the hotel as the employer
of the workers in the Chinese restaurant. According to
Hotel Jaya Puri, the court would lift the corporate veil of
companies “when the justice of the case so demands”; and
51
(2) Edgar Joseph Jr J (as he then was) in the High Court case
of Tan Guan Eng & Anor v. Ng Kweng Hee & Ors [1992] 1
MLJ 487, at 502, pierced the corporate veil of the
companies in question “whenever it is just and equitable
to do so”.
[56] In Chanel v. Melwani2 International Sdn Bhd & Ors and other
suits [2017] 10 MLJ 592, at paragraph 16, I have followed a
trilogy of Federal Court cases in Solid Investment Ltd v. Alcatel
Lucent (M) Sdn Bhd [2014] 3 CLJ 73, at 92, Gurbachan Singh
s/o Bagawan Singh & Ors v. Vellasamy s/o Pennusamy & Other
Appeals [2015] 1 MLJ 773, at paragraphs 96-99 and Giga
Engineering & Construction Sdn Bhd v. Yip Chee Seng & Sons
Sdn Bhd & Anor [2015] 9 CLJ 537, at paragraphs 39, 44 and 45
(3 Federal Court Cases). The 3 Federal Court Cases have laid
down the following two conditions to be fulfilled cumulatively
(2 Conditions) for the court to pierce or lift a corporate veil to
reveal an individual as the alter ego, controller or “directing
mind and will” of the company [Piercing/Lifting Corporate
Veil (Company vis-à-vis Individual)]-
(1) there exists special circumstances to pierce or lift the

corporate veil (1 st Condition), such as -
(a) there has been commission of actual fraud or

Common Law fraud;
(b) equitable fraud or constructive fraud has been

committed;
(c) to prevent an evasion of liability; or
(d) to prevent an abuse of corporate personality; and
52
(2) the piercing or lifting of a corporate veil is in the interest

of justice (2 nd Condition).
[57] Regarding the court’s discretionary power in respect of

Piercing/Lifting Corporate Veil (Group of Companies), I am of
the following view:
(1) the exercise of the court’s power regarding

Piercing/Lifting Corporate Veil (Group of Companies)
should be the same as that for Piercing/Lifting Corporate
Veil (Company vis-à-vis Individual). This is because both
Piercing/Lifting Corporate Veil (Group of Companies) and
Piercing/Lifting Corporate Veil (Company vis-à-vis
Individual) constitute exceptions to the General Rule.
Furthermore, there is nothing in principle or policy to
distinguish the exercise of the court’s discretion with
respect to Piercing/Lifting Corporate Veil (Companies)
and Piercing/Lifting Corporate Veil (Company vis-à-vis
Individual); and
(2) as the court’s power regarding Piercing/Lifting Corporate

Veil (Group of Companies) is an exception to the General
Rule, I am not able to apply the wide and less stringent
test (merely in the interest of justice or equity) as laid
down in Hotel Jaya Puri and Tan Guan Eng. This is
because an application of a less exacting test will
undermine the General Rule. Accordingly, I am in favour
of the more stringent test requiring the fulfillment of the 2
Conditions as laid down by the 3 Federal Court Cases for
Piercing/Lifting Corporate Veil (Company vis-à-vis
Individual).
[58] In the 2 Cases, SSSB applied to lift and not to pierce the
corporate veil of the Defendants (2 Cases). This is because
53
SSSB’s Claim does not seek to impose liability on JLLPC or any

company other than the Defendants (1 st Suit) - please see
Staughton LJ’s judgment in the English Court of Appeal case of
Atlas Maritime Co SA v. Avalon Maritime Ltd (The Coral Rose)
(No. 1) [1991] 4 All ER 769, at 779.
[59] I am of the view that the 2 Conditions have been fulfilled for the
court to lift the corporate veil of the Defendants (2 Cases) to
show that their alter ego is JLLPC. This decision is based on the
following evidence and reasons:
(1) the 1 st Condition has been satisfied as the following special

circumstances exist in the 2 Cases-
(a) Clause 6 Sub-Licence (1993) should not be

unlawfully circumvented by the reliance on separate
legal personalities of the Defendants (2 Cases);
(b) the corporate veil of the Defendants (1 st Suit) is

lifted to prevent the Defendants (1 st Suit) from
evading their liability for the tort of passing off to
SSSB in the 1 st Suit;
(c) to ascertain whether the Defendants (1 st Suit) have

abused their corporate personality by committing the
Alleged Illegality or by unlawfully circumventing s.
23 of the then VAEA; and/or
(d) to decide whether JLWL has abused its corporate

personality by filing the 2 nd Suit when JLWL is
prohibited from carrying on real estate business in
Malaysia with the use of Jones Lang Wootton
composite mark by s. 23 of the then VAEA; and
54
(2) the 2 nd Condition is met because the following evidence

and reasons show that it is in the interest of justice to lift
the corporate veil of the Defendants (2 Cases) to reveal
that JLLPC is their alter ego-
(a) Mr. Fossick is employed by JLLPC as the MD for the

business of JLL Group for Singapore and South East
Asia. Mr. Fossick’s Email dated 14.10.2015 clearly
showed that JLLPC controls the Defendants (2
Cases) because -
(i) JLLP negotiated with SSSB to settle the 2

Cases on behalf of the Defendants (2 Cases);
and
(ii) if JLLPC is not the alter ego of the Defendants

(2 Cases), the latter would not have objected to
the admissibility of Mr. Fossick’s Email dated
14.10.2015 as evidence in the 2 Cases;
(b) Mr. Fossick’s Affidavit had been affirmed on behalf

of the Defendants (2 Cases) to oppose SSSB’s
Amendment Application;
(c) SD2 and SD3 are part of JLLPC’s senior

management. SD2 and SD3 are not directors,
employees or agents of the Defendants (2 Cases) and
yet, they gave evidence in the 2 Cases on behalf of
the Defendants (2 Cases);
(d) SD4 admitted during cross-examination that JLLPC

introduced SAP to SD4. If JLLPC did not control
JLLP, JLLPC would not have arranged for an
interest-free SAP Loan of RM1,269,900.00 to
55
AHCM. Furthermore, no part of SAP Loan has been

repaid by AHCM;
(e) JLLP owns 49% of the total shareholding of JLLP

while Mr. Fossick is a director of JLLP. SD4
testified that every month, she would have a “call”
with Mr. Fossick and JLLP’s finance department to
give Mr. Fossick a “general overview”. If JLLPC is
not the alter ego of JLLP, JLLP would not have a
monthly discussion with Mr. Fossick (who represents
JLLPC); and
(f) Ms. Marina Krishnan (Ms. Marina) is a director of

APM. SD3 admitted during cross-examination that
Ms. Marina is employed by JLLPC or a company in
the JLL Group.
[60] It is also the decision of this court that the 2 Conditions have
been satisfied for the court to lift the corporate veil of the
Defendants (2 Cases), JLLPC, JLL Inc., JLL IP Inc., JLWP and
all other Relevant JLL Companies to reveal that these companies
have acted as a single entity (as JLL Group) in the 2 Cases. This
decision is supported by the following evidence and reasons:
(1) the 1 st Condition is met as explained in any one or more

the above sub-paragraphs 59(1)(a) to (d); and
(2) the 2 nd Condition is fulfilled by the following evidence and

reasons -
(a) according to SD3, JLL IP Inc. considered opposing

SSSB’s Trade Mark Application. However, JLL IP
Inc. did not do so as a business decision because
SSSB was then servicing all the clients of JLL Group
56
in Malaysia. In this sense, all Relevant JLL

Companies acted as a single entity;
(b) JLL Group rebranded itself in 2014 and only uses

JLL name, JLL composite mark and JLL Registered
Trade Marks in the business of all the companies in
JLL Group. JLL Group has also stopped using Jones
Lang LaSalle name for its business. Hence, Jones
Lang Wootton Registered Trade Marks (Other
Countries) have expired or have been cancelled. In
this regard, JLL Group has acted as a single entity;
and
(c) SD1 is employed by JLL (NSW). SD1 is not a

director, employee or agent of the Defendants (2
Cases). JLL (NSW) has no interest in the 2 Cases and
yet, SD1 testified in the 2 Cases. Clearly, all
Relevant JLL Companies acted as one entity to
oppose SSSB in the 2 Cases.
I. Effect of s. 23 VAA and its subsequent amendments
I(1). VAA
[61] The title to VAA states that VAA is to, among others, provide
for the registration of valuers and appraisers. The Board has,
among others, the function under s. 10(b) VAA to approve or
reject applications to register valuers and appraisers. Section 19
VAA provides that only “registered valuers” and “registered
appraisers” (defined in s. 2 VAA) who have been issued with
“authority to practise” (under s. 16 VAA) by the Board, are
“entitled to practise” their profession.
[62] Section 23 VAA initially provided as follows:
57
“23. Practice of partnership or body corporate
The Board may approve, subject to such conditions or

restrictions as it may deem fit to impose, a partnership or
body corporate to practise valuation with the right to
charge and be charged and to recover in any court any
fee, charge or remuneration for any professional advice
or services rendered by it pursuant to its practice
provided that -
(a) the partners or Board of Directors, as the case may

be, of the partnership or body corporate consists
entirely of registered valuers or registered
appraisers;
(b) the shares in the partnership or body corporate are

held entirely by registered valuers or registered
appraisers; and
(c) the partnership or body corporate accepts the

obligation to furnish to the Board a true written
report of any change in the composition of its
organisation or in shareholding thereof within two
weeks of the occurrence of such change, but not
otherwise.”
(emphasis added).
It is clear that under s. 23 VAA-
(1) for partnerships providing services as valuers and

appraisers-
(a) all the partners must be registered with the Board as

registered valuers/appraisers; and
58
(b) all the shares in the partnerships must be owned by

registered valuers/appraisers;
(2) for companies providing services as valuers and appraisers -
(a) all the directors must be registered with the Board as

registered valuers/appraisers; and
(b) all the shares in the companies must be owned by

registered valuers/appraisers.
[63] With the introduction of VAA on 6.2.1981, by reason of s. 23

VAA, the Malaysian Firm could not offer services as valuers and
appraisers. This is because firstly, not all the partners of the
Malaysian Firm could be registered with the Board as registered
valuers/appraisers. Secondly, all the shares in the Malaysian
Firm were not owned by registered valuers/appraisers.
I(2). Act A980
[64] A new s. 23 VAEA is substituted by Act A980.
I(3). Act A1404
[65] Act A1404 has amended, among others, s. 23 VAEA. I

reproduce below the relevant part of the present s. 23 VAEA:
“23(1) No registered valuer, appraiser or estate agent

shall practice valuation, appraisal or estate agency or
have the right to recover in any court any fee,
commission, charge or remuneration for any professional
advice or services rendered by him pursuant to his
practice unless he practises as a sole proprietor of a sole
proprietorship, a partner of a partnership, a shareholder
59
or director of a body corporate registered with the Board,

or as an employee of such sole proprietorship,
partnership or body corporate.
...
(2) A partnership or body corporate practising

valuation, appraisal or estate agency, as the case may be,
shall not be registered by the Board unless -
...
(a) all partners of the partnership or all directors and

shareholders of the body corporate are -
(i) in the case of a valuation practice -
(A) solely registered valuers;
(B) a combination of registered valuers,

registered appraisals and registered
estate agents; or
(C) a combination of registered valuers and

any other persons or bodies corporate;
(ii) in the case of an appraisal practice -
(A) solely registered appraisers;
(B) a combination of registered appraisals,

registered valuers and registered estate
agents; or
(C) a combination of registered appraisers

and any other persons or bodies
corporate; and
60
(iii) in the case of an estate agency practice -
(A) solely registered agents;
(B) a combination of registered estate agents,

registered valuers and registered
appraisals; or
(C) a combination of registered estate agents

and any other persons or bodies
corporate; and
(b) the shares in the partnership or body corporate are

held -
(i) in the case of a valuation practice, solely by

registered valuers;
(ii) in the case of an appraisal practice, solely by

registered appraisers;
(iii) in the case of an estate agency practice, solely

by registered estate agents; and
(iv) in the case of a partnership or body corporate

where all partners of the partnership or all
directors and shareholders of the body
corporate are a combination of registered
valuers, registered appraisers and registered
estate agents and any other persons or bodies
corporate -
(A) in the case of a valuation practice, by a

majority of valuers who hold the
majority interest and the voting rights;
61
(B) in the case of an appraisal practice, by a

majority of appraisers who hold the
majority interest and the voting rights;
and
(C) in the case of an estate agency practice,

by a majority of estate agents who hold
the majority interest and voting rights;
and
...
(4A) Notwithstanding subsection (2) or (4), the Board

shall cancel the registration of a firm if the Board finds
that -
...
(b) the composition of the partners of the

partnership or the directors of the body
corporate practising valuation, appraisal or
estate agency does not comply with the
requirement in subsection (2);
(c) the shareholding of the partnership or body

corporate practising valuation, appraisal or
estate agency does not comply with the
requirement in subsection (2);
(d) any partner of a partnership or director of a

body corporate practising valuation, appraisal
or estate agency, whether such a partner or a
director is a registered valuer, appraiser or
estate agent or otherwise, commits, or
62
contributes to, any of the acts specified in

paragraphs (a), (b) or (c); and ...”
(emphasis added).
[66] Regarding a firm or a company (X) which offers services of a

valuer, appraiser and estate agent, I am of the following view:
(1) X has to apply to be registered with the Board - please see

s. 23(1) VAEA;
(2) the Board may register X which has partners (if X is a

firm) or directors and shareholders (if X is a company)
who are -
(a) registered valuers, registered appraisers and

registered estate agents (Registered Persons); and
(b) not registered valuers, registered appraisers and

registered estate agents (Non-Registered Persons)
provided that the Registered Persons shall -
(i) hold a majority of the shares in X and control the

voting rights in X; and
(ii) have control of X’s management and operation.
The above interpretation is supported by the following

reasons -
(2A) s. 23(2)(b)(iv)(A), (B) and (C) VAEA expressly

require the Registered Persons to “hold the majority
interest and voting rights” of X. Hence, the above
view is supported by a literal construction of s.
23(2)(b)(iv)(A), (B) and (C) VAEA; and
63
(2B) Part 1 of the Interpretation Acts 1948 and 1967 (IA)

applies to VAEA by virtue of s. 2(1)(a) IA (VAEA is
enacted after 18.5.1967). According to s. 17A IA (in
Part 1 of IA), an Act of Parliament should be
construed in a manner which would promote the
purpose or object of the Act - please see the Federal
Court’s judgment in Palm Oil Research and
Development Board Malaysia & Anor v. Premium
Vegetable Oils Sdn Bhd [2004] 2 CLJ 265.
The purpose of s. 23 VAEA is to ensure that

firms/companies offering services by Registered
Persons, are controlled solely by Registered Persons
in terms of the shareholding and operation of the
firms/companies. The control of X’s shareholding
and operation by Registered Persons cannot be
delegated to or replaced by any Non-Registered
Person;
(3) pursuant to the above interpretation of s. 23 VAEA,

Registered Persons may incorporate a company (X’s
Holding Company) to control X’s shareholding and
operation subject to the fulfillment of all the following
three conditions (3 Conditions) -
(a) all the shares and voting rights in X’s Holding

Company are owned by Registered Persons only;
(b) all the directors of X’s Holding Company are

Registered Persons; and
(c) Registered Persons have control of the management

and operation of X’s Holding Company.
64
If all the 3 Conditions are not met, this will allow an

unlawful circumvention of s. 23 VAEA in this manner - a
Non-Registered Person has control of X’s Holding
Company and consequently, the Non - Registered Person
has control of X’s shareholding and operation;
(4) the above construction of s. 23 VAEA is in consonance

with a notification dated 28.12.2011 issued by the Board
regarding the criteria to be adopted by the Board in
registering companies under s. 23 VAEA [Board’s
Notification (28.12.2011)]. The Board’s Notification
(28.12.2011) is issued pursuant to the Board’s function
under s. 10(i) of the then VAEA [generally, to do all such
acts, matters and things as are necessary to carry out ...
(Part 6 VAEA which contains s. 23)]. According to the
Board’s Notification (28.12.2011), among others -
“SECTION 23 - LIBERALISATION
... the Board shall adopt the following criteria when

registering companies with local or foreign equity:
A. Equity Shareholding Structure for a Body

Corporate
i) A Company shall comprise both registered

persons and/or non-registered persons as
shareholders SUBJECT ALWAYS TO the
registered persons collectively holding
(whether directly or indirectly) not less than
51% of the equity interest or ordinary
shareholding in the company.
65
ii) A group of Registered Persons shall

incorporate a company as an investment
holding company to hold the majority equity
interest in a Registered Company SUBJECT
ALWAYS TO approval being granted by the
Board.
Such a company shall be recognised as an

“Approved Holding Company”. An Approved
Holding Company must have all its directors
being Registered Persons and its entire equity
interest being held directly in the name of the
Registered Persons only.
(iii) A Registered Company shall ensure that at all

times not less than 51% of its effective equity
interest shall be held by Registered Persons
via Approved Holding Company. ...
...
B. Board of Directors and Management
(i) The board of directors of a Registered

Company must have at least 2 directors who
are Registered Persons.
(ii) The board of directors of a Registered

Company must have a majority of directors
who are Registered Persons SUBJECT
ALWAYS TO the composition of the board of
directors to reflect the proportion of equity
interest between the Registered Persons and
non-Registered Persons with the number of
66
directors appointed by non-Registered Persons

not exceeding the proportion of the equity
interest held by non-Registered Persons.
...
(iv) The Chair person of the board of directors of

a Registered Company or Registered
Subsidiary shall be nominated by the Approved
Holding Company.
(v) The Senior Management of a Company shall

be vested in the hands of Registered Person(s)
only.
...
D. Management of a Company
...
(i) The management of a Registered Company,

Registered Approved Holding Company and
Registered Subsidiary shall be vested in the
hands of Registered Persons only.
...
Glossary of Terms
...
“Effective Equity Interest” means determination of

the shareholding in a
Company as held by its
ultimate shareholders,
67
who must be Registered

Persons.
...
“Senior Management” means the [MD],

executive director or
chief executive officer
or such other like
positions carrying on
the day-to-day
management of a
Company or functions of
similar nature
notwithstanding how
such positions are
styled, named or titled.”
(emphasis added);
(5) the above construction of s. 23 VAEA does not prohibit X

from entering into a strategic alliance, affiliation,
association, arrangement or co - operation with any Non-
Registered Person so long as-
(a) Registered Persons own a majority of the shares in X,

control the voting rights and operation of X; or
(b) all the 3 Conditions are satisfied with regard to X’s

Holding Company; and
(6) if X is initially controlled by Registered Persons (either

directly or through X’s Holding Company) and is then
registered by the Board, the Board has a discretion to
cancel X’s registration if -
68
(a) X is subsequently not controlled by Registered

Persons - please see s. 23(4A)(b) or (c) VAEA;
(b) any one of the 3 Conditions regarding X’s Holding

Company is not fulfilled; or
(c) any partner or director of X, whether such a partner

or director is a Registered Person or not, “commits or
contributes to” any act which may cause -
(i) the Registered Persons to lose control of X -

please see s. 23(4A)(d) VAEA; or
(ii) the non-fulfilment of any one of the 3

Conditions regarding X’s Holding Company.
Despite the use of the word “shall” in s. 23(4A) VAEA, I

am of the opinion that the Board has a discretion to cancel
the registration of any firm or company if the Board finds
the existence of any of the circumstances stipulated in s.
23(4A)(a) to (e) VAEA. This is because if there is a
complaint that X has breached s. 23(2)(b)(iv)(A), (B) or
(C) VAEA, this may constitute a disciplinary matter under
s. 24(1)(d) for which the Board has wide discretionary
powers of sanction under s. 24(1)(i) to (vi) and (1A)
VAEA.
I(4). Valuers, Appraisers and Estate Agents (Amendment) Act

2017 (Act A1550)
[67] In the course of preparing this judgment, Parliament has passed

Act A1550. Act A1550 comes into force on 2.1.2018 and has,
among others -
(1) renamed VAEA as VAEAPM;
69
(2) renamed the Board as the Board of Valuers, Appraisers,

Estate Agents and Property Managers;
(3) required the registration of property managers by the

Board; and
(4) extended the application of s. 23 VAEAPM to the practice

of “property management” by “registered property
managers”. The above interpretation s. 23 VAEAPM is
now applicable to registered property managers.
J(1). Has APM breached or unlawfully evaded s. 23 VAEA?
[68] According to APM’s records with Suruhanjaya Syarikat

Malaysia, all the shares in APM are held by 2 individuals, Mr.
Tan and Mr. Jamie Tan Mun Onn (who are presumably
Registered Persons). Despite such evidence, based on the
interpretation of the then s. 23 VAEA in the above Part 1(3), I
am of the view that APM has breached or has unlawfully
circumvented s. 23 VAEA in the following manner:
(1) JLL Inc’s documents filed with SEC in 2014 to 2016 (JLL
Inc’s Filing with SEC) stated that APM was a subsidiary
of JLL Inc. Accordingly, JLL Inc. (Non-Registered Person)
holds a majority of the shares in APM and controls the
voting rights of APM’s shares;
(2) Registered Persons do not have control of the management

and operation of APM. This is clear from APM’s own
documentary evidence as follows -
(a) APM’s profile stated, among others, as follows -
“[APM] was incorporated in 2010 principally to

support [JLLPC] of Singapore to carry out
70
Integrated Facilities Management for commercial,

Institutional and Industrial buildings in Malaysia’
...
[APM] follows the Jones Lang LaSalle’s operating

and management procedures including industry’s
best practices in carrying out its Integrated
Facilities Management in Malaysia. The following
page shows that APM is an integral part of the
Jones Lang LaSalle’s Asia Pacific operations.”
(emphasis added);
(b) APM’s six advertisements of job vacancies in

“JobStreet.com” in 2014 and 2015 stated that JLL
Inc. “operates in Malaysia” through APM; and
(c) APM’s profile stated that the following persons hold

positions in APM-
(i) Mr. Jordi Martin is the MD for Integrated

Facilities Management;
(ii) Mr. Peter Hilderson is in “Energy, Engineering

& Operation”;
(iii) Mr. Cameron Scott is the Chief Operating

Officer;
(iv) Mr. Chris Hunt is “Australasia Hub Lead”;
(v) Mr. Yash Kapila is “West Asia Hub Lead”;
(vi) Mr. Ian Bottrell is “North Asia Hub Lead”;
71
(vii) Ms. Marina is “South Asia Hub Lead and Head

of Regional Accounts”;and
(viii) Mr. Susheel Koul is “Asia Pacific Solutions

Development Lead”.
SD3 confirmed during cross-examination that all the

above persons were employed by JLLPC or a
company in the JLL Group at the material time; and
(3) APM did not correct or retract the above publications. Nor
did APM’s MD, director, employee or agent give any
evidence to rebut or explain the above publications by
APM.
I have not overlooked the oral evidence of SD2 and SD3

who disagreed with the contents of APM’s profile. As
explained in Guan Teik Sdn Bhd, I prefer contemporaneous
documentary evidence over self-serving oral testimony.
J(2). Whether JLLP has breached or unlawfully circumvented s.

23 VAEA
[69] JLLP has been registered with the Board regarding the provision
of estate agency services while AHCM has been approved by the
Board as JLLP’s Approved Holding Company.
[70] I find as a fact that JLLP’s Breach has been proven as follows:
(1) JLL Inc’s Filing with SEC stated that JLLP was a
subsidiary of JLL Inc. Accordingly, JLL Inc. (Non-
Registered Person) holds a majority of the shares in JLLP
and controls the voting rights of JLLP’s shares; and
72
(2) one of the 3 Conditions regarding AHCM is not fulfilled -

the management and operation of AHCM is controlled by
SAP (Non - Registered Person) and not by Registered
Persons. This is clear from the following evidence and
reasons -
(a) according to the SAP Loan Agreement, AHCM

“undertakes and agrees” with SAP that unless SAP
otherwise agrees, AHCM “shall not”-
(i) “appoint, replace or remove any member of the

board of directors, auditors, company
secretary, or senior management” of AHCM
and JLLP - clause 12.2.(a);
(ii) “approve the key corporate policy, management

rules ... and incentive plan” of AHCM and
JLLP - clause 12.2.(b);
(iii) “change the shareholdings in or ownership or

control (direct or indirect)” of AHCM and
JLLP - clause 12.2.(e);
(iv) “approve or adopt the business plan, annual

budgets” of AHCM and JLLP - clause 12.2.(f);
(v) “approve or enter into any contracts or

agreements to be entered into” by AHCM and
JLLP in an amount exceeding RM20,000.00 -
clause 12.2.(1); and
(vi) “open or close any bank accounts” of AHCM

and JLLP - clause 12.2.(r);
73
(b) both AHCM’s PA and SD4’s PA provide for, among

others, the appointment of SAP or SAP’s nominee as
the attorney for AHCM and SD4 to, among others,
vote at all meetings of directors and shareholders of
AHCM; and
(c) SD4’s Resignation Letter, AHCM’s Resolutions to

Appoint Directors, AHCM’s Resolution to Appoint
Corporate Representative, AHCM’s Share Transfer
Form and SD4’s Share Transfer Form show that SAP
controls AHCM’s board of directors and
shareholding.
[71] I am of the view that AHCM Documents, especially SAP Loan

Agreement, should have been disclosed to the Board in JLLP’s
Letter dated 18.2.2014 (signed by SD4 on JLLP’s behalf). JLLP
and SD4 had therefore concealed AHCM Documents from the
Board.
[72] As SD4 had signed SAP Loan Agreement (as AHCM’s director)
and JLLP’s Letter dated 18.2.2014 (on behalf of JLLP), I find as
a fact that SD4 had committed or contributed to JLLP’s Breach
within the meaning of s. 23(4A)(d) of the then VAEA.
K. Tort of passing off
[73] Malaysian case law has applied the following three tests to
decide whether a tort of passing off has been committed or not
(3 Tests):
(1) Lord Diplock’s test in the House of Lords case of Erven

Warnink v. Townend & Sons (Hull) Ltd [1979] AC 731
(Lord Diplock’s Test) has been accepted by our apex
courts as follows -
74
(a) the majority judgment of the Supreme Court

delivered by Gunn Chit Tuan CJ (Malaya) in Seet
Chuan Seng & Anor v. Tee Yih Jia Food
Manufacturing Pte Ltd [1994] 3 CLJ 7, at 15; and
(b) the decision of Richard Malanjum CJ (Sabah &

Sarawak) in the Federal Court case of Maestro Swiss
Chocolate Sdn Bhd & Ors v. Chocosuisse Union Des
Fabricants Suisses De Chocolat (a co-operative
society formed under title XXIX of the Swiss Code of
Obligations) & Ors and another appeal [2016] 2
MLJ 359, at paragraphs 41-44; and
(2) the majority decision in Seet Chuan Seng and Maestro

Swiss Chocolate (at paragraph 45) have also affirmed Lord
Fraser’s test as laid down in Erven Warnink (Lord
Fraser’s Test); and
(3) Nik Hashim JCA (as he then was) in the Court of Appeal
case of Sinma Medical Products (M) Sdn Bhd v. Yomeishu
Seizo Co Ltd & Ors [2004] 3 CLJ 815, at paragraph 33, has
applied Lord Oliver’s test in the House of Lords in Reckitt
& Colman Products Ltd v. Borden Inc & Ors [1990] 1 All
ER 873, at 880 (Lord Oliver’s Test).
K(1). Whether SSSB has goodwill in its business regarding JLW

Marks
[74] The 3 Tests require a plaintiff in a passing off action based on a

mark or get-up to prove that the plaintiff enjoys goodwill in the
business regarding the mark or get-up.
[75] Goodwill has been described by Lord MacNaghten in the House

of Lords case of The Commissioners of Inland Revenue v. Muller
75
& Co’s Margarine Ltd [1901] AC 217, at 223-224, as an

“attractive force which brings in custom”.
[76] The following cases have explained the requirement of goodwill

for the purpose of a passing off suit:
(1) in an appeal to the Privy Council from Singapore, Star

Industrial Co Ltd v. Yap Kwee Kor (t/a New Star Industrial
Company) [1976] 1 MLJ 149, at 154-155, Lord Diplock
held as follows:
“Whatever doubts there may have previously been

as to the legal nature of the rights which were
entitled to protection by an action for “passing-off”
in courts of law or equity, these were laid to rest
more than sixty years ago by the speech of Lord
Parker of Waddington in AG Spalding & Bros v.
AW Gamage Ltd [1915] 32 RPG 284 (“the Gamage
Case”) with which the other members of the House
of Lords agreed. A passing-off action is a remedy
for the invasion of a right of property not in the
mark, name or get-up improperly used, but in the
business or goodwill likely to be injured by the
misrepresentation made by passing-off one person’s
goods as the goods of another. Goodwill, as the
subject of proprietary rights, is incapable of
subsisting by itself. It has no independent existence
apart from the business to which it is attached. It is
local in character and divisible; if the business is
carried on in several countries a separate goodwill
attaches to it in each. So when the business is
abandoned in one country in which it has acquired
a goodwill the goodwill in that country perishes
76
with it although the business may continue to be

carried on in other countries. (See: Inland Revenue
Commissioners v. Muller & Co’s Margarine Ltd
[1901] AC 217 Lord Macnaghten at page 224 per
Lord Lindley at page 235). Once the Hong Kong
company had abandoned that part of its former
business that consisted in manufacturing tooth-
brushes for export to and sale in Singapore it
ceased to have any proprietary right in Singapore
which was entitled to protection in any action for
passing-off brought in the courts of that country. “
(emphasis added).
Based on Star Industrial -
(a) to sue for the tort of passing off based on a mark, a

plaintiff has to prove ownership of goodwill attached
to the business with regard to that mark. The plaintiff
need not prove that the plaintiff owns the mark. As
such, the ownership of JLW Marks does not confer
the right to sue for the tort of passing off; and
(b) goodwill is divisible in the sense that -
(i) one party may own goodwill attached to the

business regarding a mark in a particular
country; and
(ii) goodwill in respect of the same business

concerning the same mark in another country
may be owned by another party; and
(2) Star Industrial has been affirmed in the following cases -
77
(a) the judgment of Lord Neuberger P in UK’s Supreme

Court in Starbucks (HK) Ltd & Anor v. British Sky
Broadcasting Group plc & Ors [2015] 3 All ER 469,
at paragraphs 23, 48, 52 and 53; and
(b) the following decisions of the Singapore Court of

Appeal-
(i) LP Thean JA’s judgment in CDL Hotels

International Ltd v. Pontiac Marina Pte Ltd
[1998] 2 SLR 550, at paragraph 50; and
(ii) Sundaresh Menon CJ’s decisions in Staywell

Hospitality Group Pty Ltd v. Starwood Hotels
& Resorts Worldwide Inc [2014] 1 SLR 911, at
paragraphs 134-136, and Guy Neale & Ors v.
Ku De Ta SG Pte Ltd [2015] 4 SLR 283, at
paragraphs 134-136.
[77] As explained in the above Part 1(1), with the introduction of s.

23 of the then VAA on 6.2.1981-
(1) the Malaysian Firm cannot lawfully offer services in

Malaysia as registered valuers/appraisers based on JLW
Marks. Accordingly, based on cases from UK and
Singapore as elaborated in the above paragraph 76, with
the enforcement of s. 23 VAA, the Malaysian Firm could
not have any goodwill attached to the business of
registered valuers/appraisers with regard to JLW Marks;
and
(2) in place of the Malaysian Firm, SSSB was specifically

incorporated to provide services in this country as
registered valuers/appraisers based on JLW Marks. All the
78
interest in the Malaysian Firm was then sold to SSSB.

Thereafter, SSSB carries on business of registered
valuers/appraisers in Malaysia and generates goodwill
attached to its business regarding JLW Marks.
[78] When Act A598 came into force on 7.9.1984, only SSSB (not
the London Proprietors, Pacific Proprietors, JLWP or JLWL) can
lawfully provide services in Malaysia as registered estate agents
with the use of JLW Marks. Thereafter, SSSB carries on real
estate business in Malaysia by the use of JLW Marks and creates
goodwill attached to such a business.
[79] Based on the reasons explained in the above paragraphs 77 and

78, SSSB is the owner of goodwill in its real estate business
regarding the use of JLW Marks (SSSB’s Goodwill). The
London Proprietors, Pacific Proprietors, JLWP and JLWL are
prohibited by s. 23 of the then VAEA from providing real estate
services based on JLW Marks in Malaysia and cannot therefore
claim any goodwill in any real estate business with respect to
JLW Marks. SSSB’s ownership of goodwill in its real estate
business based on JLW Marks is proven by the following
evidence:
(1) SSSB has adduced documentary evidence regarding its

expenditure in promoting JLW Marks in this country;
(2) SSSB has won various awards for its real estate services
based on JLW Marks. In fact, SSSB has been awarded
“The Brand Laureate Award for Best Brand in Real Estate
Advisory Services” for ten consecutive years from the
inception of the award in 2006/2007 to 2015/2016;
(3) documentary evidence has been adduced regarding SSSB’s

talks concerning its real estate services under JLW Marks
79
which have been given at various conferences, seminars,

dialogues and forums. I refer to SSSB’s presentation dated
21.5.2010 with Jones Lang Wootton composite mark and
the words “Proprietor: [SSSB]” below the mark;
(4) there are newspaper articles and reports relating to SSSB’s

real estate business under JLW Marks;
(5) SSSB’s clients include the Malaysian Government, Bank

Negara Malaysia, almost all the banks and financial
institutions in the country, public and private companies
(both Malaysian and foreign) and individuals;
(6) SSSB has given a long list of public listed companies in

Malaysia which have appointed SSSB to undertake
valuations of real property and development projects;
(7) SSSB is a member of Panel of Valuers of various banks in

Malaysia; and
(8) SSSB’s Property Report has been produced since 1991 and
is subscribed by about 50 clients of SSSB. From 2009,
SSSB has produced a weekly property report, “In The
News” for its clients without the need for subscription.
[80] There is another reason the Defendants (1 st Suit) cannot deny

SSSB’s Goodwill - the Defendants (1 st Suit) are estopped from
doing so [please see Part N below].
[81] Ms. Chew has submitted that any goodwill generated by the use
of a mark by a licensee shall accrue to the licensor. The
following cases have been cited in support of such a contention:
80
(1) the decision of Low Hop Bing J (as he then was) in the
High Court in Lam Soon (M) Bhd v. Forward Supreme Sdn
Bhd & Ors [2001] 6 MLJ 651;
(2) Azizah Nawawi J’s judgment in the High Court case of

Colliers International Property Consultants Inc v. Colliers
International Property Consultants Sdn Bhd [2015] 1 LNS
252; and
(3) the English Court of Appeal case of Scandecor

Development AB v. Scandecor Marketing AB & Anor
[1999] FSR 26.
[82] I am of the following view regarding Lam Soon, Colliers

International Property Consultants and Scandecor Development:
(1) the licensor of the device mark in Lam Soon was not
prohibited by law from carrying on business and could
therefore enjoy the goodwill generated by the exclusive
licensee’s use of the mark. In the instant matter, the
Malaysian Firm was prohibited by the then s. 23 VAA
from practising as registered valuers/appraisers and was
therefore barred from enjoying any goodwill created
subsequently by SSSB;
(2) no issue regarding s. 23 VAEA had been raised in Colliers

International Property Consultants;
(3) the Court of Appeal’s decision in Scandecor Development

should be read with caution because on appeal, [2001] All
ER (D) 29, the House of Lords referred certain questions
to the European Court of Justice on the meaning and effect
of the Council of the European Union’s Directive No.
89/104/EEC (EEC Directive). The UK’s Trade Marks Act
81
1994 was enacted to implement the EEC Directive.

Furthermore, Scandecor Development did not involve any
illegality which bars the conduct of business and
enjoyment of goodwill attached to the business; and
(4) the material facts of all the cases cited by Ms. Chew did
not -
(a) involve a licensee’s proprietary interest in the mark

in question - please see Part M below; and/or
(b) concern an application of the equitable estoppel

doctrine as explained in Part N below.
K(2). Have Defendants (1 st Suit) misrepresented their business

based on Jones Lang LaSalle name?
[83] A defendant misrepresents the defendant’s mark in respect of the

defendant’s goods/services if the use of the defendant’s mark is
likely to deceive or confuse the public between the
goods/services of the defendant and plaintiff (Likelihood of
Deception/Confusion) - please see Sinma Medical Products, at
paragraph 37. A plaintiff in a passing off action is not required
to prove that the public is actually deceived or confused between
the goods/services of the plaintiff and defendant - Sinma
Medical Products, at paragraph 37.
[84] I am of the view that there is a Likelihood of

Deception/Confusion between Jones Lang Wootton name and
Jones Lang name on the one part and Jones Lang LaSalle name
on the other part. This decision is based on the following
reasons:
(1) SSSB and the Defendants (1 st Suit) are in the same real
estate business except that SSSB also provides valuation
82
services. As such, the clients and prospective clients of

SSSB and the Defendants (1 st Suit) are similar and would
likely to be deceived or confused-
(a) between Jones Lang Wootton name and Jones Lang

LaSalle name; and
(b) between Jones Lang name and Jones Lang LaSalle

name;
(2) a visual comparison shows the following-
(a) there are two striking similarities between Jones

Lang Wootton name mark and Jones Lang LaSalle
name mark - the first two names (“Jones” and
“Lang”) in both marks are identical and are in the
same sequence (2 Striking Similarities); and
(b) as between Jones Lang name and Jones Lang LaSalle

name, the Likelihood of Deception/Confusion is
higher. This is because in addition to the 2 Striking
Similarities, a reasonable consumer of real estate
services is likely to be deceived or confused into
believing that Jones Lang name is an abbreviation for
Jones Lang LaSalle name; and
(3) a pronunciation of -
83
(a) Jones Lang Wootton name and Jones Lang LaSalle

name sounds alike as the first two names in both
marks are identical. Admittedly, the last name of
both marks are different but when the first two names
are pronounced, a Likelihood of
Deception/Confusion will arise; and
(b) Jones Lang name and Jones Lang LaSalle name

shows a high Likelihood of Deception/Confusion.
This is because firstly, the pronunciation of “Jones”
and “Lang” in both marks is the same. Secondly,
when a reasonable consumer of real estate services
hears both marks, especially the first two names, he
or she is likely to be deceived or confused into
believing that Jones Lang name is an abbreviation for
Jones Lang LaSalle name.
[85] In addition to the Likelihood of Deception/Confusion, I find as a

fact that APM has misrepresented its real estate business by
using Jones Lang LaSalle name as follows:
(1) APM’s profile stated, among others, that APM -
(a) followed “Jones Lang LaSalle’s operating and

management procedures”; and
(b) was “an integral part of the Jones Lang LaSalle’s

Asia Pacific operations”; and
(2) APM’s “Proposal for Project Management Services,

Malaysia, October 2012” has used Jones Lang LaSalle
composite mark and has stated in its introduction, among
others, as follows -
84
“Jones Lang LaSalle, Malaysia is pleased to present

this proposal for Project Management Services to
your company in respect to your Malaysian real
estate needs.”
(emphasis added).
[86] Ms. Chew has contended that the Defendants (1 st Suit) have not
committed any misrepresentation by their use of Jones Lang
LaSalle name simply because the Defendants (1 st Suit) are in
fact part of JLL Group (with JLL Inc. as its holding company). I
am unable to accede to this submission. As explained in the
above paragraph 84, there is a Likelihood of
Deception/Confusion. SSSB has used JLW Marks and SSSB’s
Goodwill has been acquired much earlier than the use of JLL
mark by the Defendants (1 st Suit). Even if it is true that the
Defendants (1 st Suit) are in fact part of JLL Group, the burden is
on the Defendants (1 st Suit) to conduct their real estate business
in such a manner so as not to cause a Likelihood of
Deception/Confusion. I rely on Lord Jauncey’s judgment in
Reckitt & Colman Products, at p. 894, as follows:
“My Lords, if I had been asked to express my views on this

matter without the aid of able argument and copious
citation of authority but guided by common sense, I should
have stated the following propositions.
...
(c) Where trader A enters the market to compete with

trader B whose goods have acquired a reputation and are
identified by a particular get-up it will be a question of
degree to what extent trader A must differentiate his get-
up from that of trader B in order to avoid deception. If
B’s goods have been in the market for a relatively short
85
time with a get-up which is not particularly distinctive,

the steps required to differentiate may not be very
substantial. If, on the other hand, those goods have been
in the market for a long time with a particularly
distinctive get-up then A, seeking to market his goods
with a similar get-up, will require to take far more drastic
steps to inform the public that his goods are not those of
B, since the public, having long become used to such a
get-up as identifying the goods of B, are likely to be less
mindful of differences in detail.”
(emphasis added).
[87] In view of the above evidence and reasons, I have no hesitation

to find that the Defendants (1 st Suit), by their use of Jones Lang
LaSalle name, have misrepresented their business as that of
SSSB’s [Misrepresentation by Defendants (1 st Suit)].
K(3). Have Defendants (1 st Suit) misrepresented their business

based on JLL mark?
[88] I find as a fact that there is no Likelihood of

Deception/Confusion between JLW Marks and JLL mark. This
decision is based on the following reasons:
(1) a visual comparison between Jones Lang Wootton name

and Jones Lang name on the one part and JLL mark on the
other part, does not show any similarity, let alone a
similarity which is deceptive or confusing;
(2) when JLW mark is visually compared with JLL mark, there
is no Likelihood of Deception/Confusion because the third
alphabet in both marks are different. I am not persuaded by
the fact that the similarity of the first two alphabets in
JLW and JLL marks, is likely to deceive or confuse a
86
reasonable consumer of real estate services. Due to the

nature and high cost of real estate services, a consumer of
real estate services is probably more discerning than a
customer of consumer goods who buys goods off the shelf;
and
(3) a pronunciation of-
(a) Jones Lang Wootton name, Jones Lang name and

JLW mark on the one part and
(b) JLL mark on the other part
- does not indicate any Likelihood of

Deception/Confusion.
[89] The above decision concerning JLL mark is supported by the

fact that if there is a Likelihood of Deception/Confusion
between JLW Marks and JLL mark, SSSB would have applied to
court to remove JLL Registered Trade Marks from the Register
pursuant to s. 45(1)(a) TMA. Furthermore, on 9.10.2017, Ms.
Chew informed the court that the Defendants (1 st Suit) have a
license from JLL IP Inc. to use JLL Registered Trade Marks
(JLL IP Inc’s License). Ms. Chew further undertook to produce
JLL IP Inc’s License within two weeks from 9.10.2017. In view
of JLL IP Inc’s License, the Defendants (1 st Suit) have a right to
use JLL Registered Trade Marks. Accordingly, the Defendants
(1 st Suit) have not misrepresented their business as that of
SSSB’s by the use of JLL mark.
K(4). Has SSSB proven likelihood of damage?
[90] A plaintiff in a passing off action is only required to prove a

probability or likelihood of damage to the goodwill attached to
the plaintiff’s business which has been caused by the
87
defendant’s misrepresentation (Likelihood of Damage) - please

see Abdul Malik Ishak JCA’s judgment in the Court of Appeal
case of Yong Sze Fun & Anor (t/a Perindustrian Makanan &
Minuman Layang-layang) v. Syarikat Zamani Hj Tamin Sdn Bhd
& Anor [2012] 1 MLJ 585, at paragraph 240.
[91] I am satisfied that SSSB has proven a Likelihood of Damage to

SSSB’s Goodwill caused by Misrepresentation by Defendants
(1 st Suit). This finding is based on the following evidence and
reasons:
(1) as decided in Seet Chuan Seng, at p. 15, if the goods in

question are in direct competition with one another, the
court will readily infer a likelihood of damage to the
plaintiff’s goodwill through loss of sales and loss of
exclusive use of the plaintiff’s trade name. In this case,
SSSB and the Defendants (1 st Suit) are business
competitors. Consequently, there is a Likelihood of
Damage to SSSB’s Goodwill caused by the
Misrepresentation by Defendants (1 st Suit) in the form of-
(a) loss of real estate business; and
(b) loss of SSSB’s exclusive use of JLW Marks;
(2) there is a likelihood that SSSB’s Goodwill is damaged by a

dilution of JLW Marks to SSSB’s detriment - please see
Abdul Hamid Mohamad J’s (as he then was) decision in
the High Court in The Scotch Whisky Association & Anor
v. Ewein Winery (M) Sdn Bhd [1999] 6 MLJ 280, at 303;
and
(3) the Misrepresentation by Defendants (1 st Suit) will prevent

SSSB from controlling the reputation to which SSSB’s
88
Goodwill is associated with JLW Marks - please see

Falconer J’s (as he then was) judgment in the English High
Court case of Lego System Aktieselskab & Anor v. Lego M.
Lemelstrich Ltd [1983] FSR 155, at 190-191.
K(5). Whether 3 Tests have been fulfilled
[92] Based on the evidence and reasons elaborated in the above Parts
K(1) to K(4), I am satisfied that SSSB has satisfied the 3 Tests
and the Defendants (1 st Suit) have therefore passed off their real
estate services as SSSB’s business by the use of Jones Lang
LaSalle name (not by the use of JLL mark). My application of
the 3 Tests is as follows:
(1) based on Lord Diplock’s Test-
(a) the Misrepresentation by Defendants (1 st Suit) has

been proven - please see the above Part K(2);
(b) the Misrepresentation by Defendants (1 st Suit) has

been made in the course of business;
(c) the Misrepresentation by Defendants (1 st Suit) has

been made to prospective or ultimate clients of real
estate services;
(d) the Misrepresentation by Defendants (1 st Suit) is

calculated to injure SSSB’s Goodwill in the sense
that this is a reasonably foreseeable consequence;
and
(e) the Misrepresentation by Defendants (1 st Suit) will

probably cause damage to SSSB’s Goodwill - please
see the above Part K(4);
(2) applying Lord Fraser’s Test -
89
(a) SSSB’s business includes the provision of real estate

services to which JLW Marks apply;
(b) SSSB’s real estate services is a class of services

which is clearly defined in the minds of the
Malaysian public and JLW Marks distinguish SSSB’s
real estate services from other real estate services;
(c) because of the reputation of SSSB’s real estate

services, there exists SSSB’s Goodwill - please see
the above Part K(1);
(d) SSSB is the owner of SSSB’s Goodwill in Malaysia

which is of substantial value - please see the above
Part K(1); and
(e) SSSB is really likely to suffer substantial damage to

SSSB’s Goodwill by reason of the Misrepresentation
by Defendants (1 st Suit) - please see the above Part
K(4); and
(3) premised on Lord Oliver’s Test -
(a) SSSB’s Goodwill has been proven - please see the

above Part K(1);
(b) the Misrepresentation by Defendants (1 st Suit) has

been committed - please see the above Part K(2); and
(c) SSSB has proven that SSSB is likely to suffer

damage by reason of the Misrepresentation by
Defendants (1 st Suit) - please see the above Part
K(4).
L. Whether illegality would deprive Defendants (1 st Suit) from

defending themselves against SSSB’s Claim
90
[93] Dato’ Seri Gopal has contended that public policy requires the
court to reject the defence of the Defendants (1 st Suit) against
SSSB’s Claim because they have breached s. 23 of the then
VAEA (Illegality).
[94] Firstly, all the cases cited by SSSB concerned the operation of
public policy to dismiss claims by parties who have committed
an illegal act. My research is not able to reveal any case which
has rejected a defence in a claim merely because the defendant
is a party to an illegality. I am of the view that Illegality does
not deprive the Defendants (1 st Suit) of their right to defend
themselves against SSSB’s Claim. My opinion is premised on
the following reasons:
(1) under Article 8(1) of the Federal Constitution

(Constitution), all litigants, including a defendant, has a
constitutional right of equality before the law and are
entitled to equal protection of the law. Such a
constitutional right includes a right of the defendant to
oppose a claim on its merits. This right cannot be denied
merely because a defendant has committed an illegality;
(2) SSSB has the legal burden under s. 101(1) and (2) EA to
prove SSSB’s Claim. This burden cannot be discharged by
the Illegality; and
(3) if a defence is rejected merely because the defendant is

involved in an illegality, this may unjustly enriched the
plaintiff and may financially wreck the defendant in an
unjust manner.
M. Whether SSSB has a proprietary interest in Jones Lang

Wootton name and JLW mark
91
[95] I am of the following view regarding Clause 6 Sub-Licence

(1993):
(1) Sub-Licence (1993), as a commercial contract, should be

construed in a commercially sensible manner - please see
the Federal Court’s judgment in Berjaya Times Squares
Sdn Bhd (formerly known as Berjaya Ditan Sdn Bhd) v. M
Concept Sdn Bhd [2010] 1 MLJ 597, at paragraph 10. An
objective interpretation of Clause 6 Sub-Licence (1993) in
a commercially sensible manner, clearly shows the
manifest intention of JLWP to confer a proprietary interest
on SSSB in Jones Lang Wootton name and JLW mark
(SSSB’s Proprietary Interest);
(2) I am unable to accept the submission by the Defendants (2

Cases) that Clause 6 Sub-Licence (1993) only imposes a
mere contractual obligation on JLWP to “endeavor to
ensure” a new deed of sub-licence on no less favourable
terms for SSSB in the event of a termination or non-
renewal of Sub-Licence (1993). If I have acceded to such a
submission, Clause 6 Sub-Licence (1993) is not given a
commercially sensible construction;
(3) clause 14 of the Sub-Licence (1993) states that the Sub-

Licence (1993) “shall” bind the “assigns” of JLWP
[Clause 14 (Sub-Licence (1993)]. The London Proprietors
have, among others, assigned all IP rights in Jones Lang
Wootton name and JLW mark to JLWL. Accordingly,
JLWL is bound by SSSB’s Proprietary Interest;
(4) the Defendants (2 Cases) are not parties to the Sub-

Licence (1993). However, as explained in the above
paragraph 60, the court has lifted the corporate veil of all
the Relevant JLL Companies to reveal that, among others,
92
the Defendants (2 Cases) and JLWP act as one entity (JLL

Group). This is supported by JLLPC’s Termination Notice
which stated that “We will be reviewing the [Sub-Licence
(1993)]”. If all the Relevant JLL Companies did not act as
a single entity, JLLPC [which is not a party to the Sub-
Licence (1993)] would not have referred to the Sub-
Licence (1993) in JLLPC’s Termination Notice.
Accordingly, all the Relevant JLL Companies, including
the Defendants (2 Cases), are bound by SSSB’s Proprietary
Interest; and
(5) all the parties in the 2 Cases have agreed in paragraphs 10

and 23 of the Agreed Facts that the Sub-Licence (1993) is
still valid. Such a fact is also impliedly admitted in
JLLPC’s Termination Notice. Even if JLWL subsequently
terminates the Sub-Licence (1993) for any reason, SSSB’s
Proprietary Interest is still valid and enforceable.
[96] Clause 13 of the Sub-Licence (1993) provides that the Sub-

Licence (1993) “represents the whole agreement and
arrangement between the parties and entirely supersedes all
prior written agreements and arrangements made between them”
[Clause 13 Sub-Licence (1993)]. I am of the following view
regarding Clause 13 Sub-Licence (1993):
(1) the first part of Clause 13 Sub-Licence (1993) has the

effect of an “entire agreement clause”. In the Court of
Appeal case of Master Strike Sdn Bhd v. Sterling Heights
Sdn Bhd [2005] 2 CLJ 596, at 607, Nik Hashim JCA (as he
then was) held that the effect of an entire agreement clause
is that the agreement in question “constitutes a binding
agreement between [the parties] with regard to all matters
mentioned in the contract and ... the contract does not
93
permit any term to be implied or import any other

consideration not in the contract”; and
(2) the second part of Clause 13 Sub-Licence (1993) has

expressly provided that the Sub-Licence (1993) supercedes
all agreements and arrangements regarding the right to use
Jones Lang Wootton name and JLW mark. As elaborated in
the above paragraph 60, the court has lifted the corporate
veil of all the Relevant JLL Companies to reveal that,
among others, the Defendants (2 Cases) and JLWP act as
one entity (JLL Group). It is therefore clear that the
Defendants (2 Cases) are bound by Clause 13 Sub-Licence
(1993) and cannot rely on the following contracts and
instruments against SSSB -
(a) SPA (1974);
(b) Partnership Agreement (1977) and PA (1977);
(c) Partnership Agreement (1979) and PA (1979);
(d) 1 st SPA (1982);
(e) 2 nd SPA (1982);
(f) Sub-Licence (1982); and
(g) Covenant (1982).
N. Whether equitable estoppel doctrine applies
[97] SSSB and the Defendants (2 Cases) have relied on the equitable
estoppel doctrine.
[98] In Boustead Trading (1985) Sdn Bhd v. Arab-Malaysian

Merchant Bank Bhd [1995] 4 CLJ 283, at 295, the Federal Court
94
has decided that a plaintiff may rely on the equitable estoppel

doctrine to support his or her cause of action.
[99] I find that there is no evidence to invoke the equitable estoppel

doctrine against SSSB. To the contrary, the following evidence
and reasons support the finding that the Defendants (2 Cases)
and all Relevant JLL Companies are estopped from denying
SSSB’s Goodwill:
(1) in Part 2.0 (History) of the GOF, it was stated that, among
others, “To conform with [VAEA], contracts between the
Pacific Proprietors ... and [SSSB] were executed giving
[SSSBJ exclusive rights to the income derived from all
property services related to real estate in Malaysia. These
contracts are binding in perpetuity upon successors of the
Pacific Proprietors ..., now JLL” [Admission (GOF)];
(2) as explained in the above paragraph 59, JLLPC (party to

the GOF) is the alter ego of the Defendants (1 st Suit).
Accordingly, the Defendants (1 st Suit) are bound by the
Admission (GOF) and are estopped from denying SSSB’s
Goodwill; and
(3) due to the reasons explained in the above paragraph 60, the
court has lifted the corporate veil of all the Relevant JLL
Companies to reveal that, among others, the Defendants (2
Cases) act as one entity (JLL Group). Accordingly, the
Defendants (2 Cases) are estopped by the Admission
(GOF) from denying SSSB’s Goodwill.
[100] The Defendants (2 Cases) and all Relevant JLL Companies are
estopped from denying SSSB’s Proprietary Interest. This
decision is premised on the following evidence and reasons:
95
(1) SSSB has openly stated in all its letters, reports and
documents that it is the proprietor of Jones Lang Wootton
composite mark (subsequently Jones Lang Wootton
Registered Trade Mark). There is no objection or protest
by the Defendants (2 Cases) or any one of the Relevant
JLL Companies against SSSB’s claim of ownership to
Jones Lang Wootton composite mark and Jones Lang
Wootton Registered Trade Mark;
(2) JLL IP Inc. did not file any objection to SSSB’s Trade
Mark Application. It is to be noted that JLL IP Inc. was
legally represented at the material time and had the benefit
of legal counsel. Nor did JLL IP Inc. object to the renewal
of the registration of Jones Lang Wootton Registered
Trade Mark. As explained in the above paragraph 60, all
the Relevant JLL Companies (including JLL IP Inc.) act as
one entity. As such, all the Relevant JLL Companies,
including the Defendants (2 Cases), are estopped by JLL
IP Inc’s above conduct from denying SSSB’s Proprietary
Interest; and
(3) since 2014, JLL Group [which includes the Defendants (2

Cases)] has stopped using Jones Lang LaSalle name and
has only used JLL name, JLL composite mark and JLL
Registered Trade Marks. The registrations of Jones Lang
Wootton Registered Trade Marks (Other Countries) were
allowed by the JLL Group to expire. Accordingly, the
conduct of JLL Group [including Defendants (2 Cases)]
estops them from denying SSSB’s Proprietary Interest.
O. Does SSSB’s Claim constitute a tort of abuse of court

process?
96
[101] As explained in the above Parts K(1) to (5), the Defendants (1 st

Suit) have committed the tort of passing off their real estate
business as that of SSSB. Accordingly, SSSB’s Claim cannot
constitute an abuse of court process, much less give rise to
liability on SSSB’s part to the Defendants (1 st Suit) for the tort
of abuse of court process.
P. Has SSSB committed tort of passing off?
[102] I am not persuaded that SSSB has passed off its real estate
services as being associated with the services provided by JLL
Group. This is because firstly, there is no evidence on a balance
of probabilities that SSSB has misrepresented to the public that
its real estate services is associated with JLL Group’s business.
[103] Secondly, I am of the view that JLLP’s Counterclaim is an

afterthought which has been filed to stifle SSSB’s Claim. This
view is based on the fact that JLLP did not serve any demand on
SSSB to cease and desist from misrepresenting SSSB as being
associated with JLL Group.
[104] In any event, even if JLLP’s Counterclaim has any basis, I

accept Dato’ Seri Gopal’s submission that due to public policy,
the court will not come to the aid of JLLP in view of the
Illegality - please see the opinion of the Privy Council delivered
by Lord Denning in Palaniappa Chettiar v. Arunasalam Chettiar
[1962] MLJ 143, at 146, an appeal from Malaysia.
Q. 2 nd Suit
Q(1). Is JLWL aggrieved by SSSB’s Registered Trade Mark?
[105] A person can only apply to court under s. 45(1)(a) TMA to

expunge a registered trade mark from the Register if the person
97
is “aggrieved” by the registered trade mark. In Doretti

Resources Sdn Bhd v. Fitters Marketing Sdn Bhd & Ors and
Another Case [2017] 5 MLRH 1, at paragraph 28, I have
followed Federal Court decisions regarding the meaning of an
aggrieved person under s. 45(1)(a) TMA-
“28. In deciding whether the 3 Companies are aggrieved

by the Registered Mark under s. 45(1)(a) TMA, I am
bound by the following 2 tests laid down by the Federal
Court:
(1) in McLaren International Ltd v. Lim Yat Meen

[2007] 7 MLJ 581, at paragraph 22, Abdul Aziz FCJ
has decided as follows-
“[22] We understand that passage as laying

down the principle that a person aggrieved is a
person who has used his mark as a trademark
- or who has a genuine and present intention
to use his mark as a trademark - in the course
of a trade which is the same as or similar to
the trade of the owner of the registered
trademark that the person wants to have
removed from the register.”
(emphasis added).
The above 2 limbs of the meaning of aggrieved

person in McLaren International has been affirmed
by the Federal Court in -
(a) the judgment of Zulkefli CJ (Malaya) in LB

(Lian Bee) Confectionery Sdn Bhd v. QAF Ltd
[2012] 4 MLJ 20, at paragraph 14;
98
(b) Azahar Mohamed FCJ’s decision in Mesuma

Sports Sdn Bhd v. Majlis Sukan Negara
Malaysia (Pendaftar Cap Dagangan Malaysia,
interested party) [2015] 6 MLJ 465, at
paragraph 28; and
(c) Balia Yusof Hj Wahi FCJ’s judgment in

Liwayway Marketing Corporation v. Oishi
Group Public Company Ltd [2017] 5 CLJ 133,
at paragraph 11; and
(2) Azahar Mohamed FCJ held as follows in Mesuma

Sports, at paragraph 28-
“[28] ... The person must be someone who has

some element of legal interest, right or
legitimate expectation in its own mark which
is being substantially affected by the presence
of the registered trademark. The interest and
right must be legal or lawful.”
(emphasis added).
The above meaning of aggrieved person in Mesuma

Sports has been approved in Liwayway Marketing
Corporation, at paragraph 13.”
(emphasis added).
[106] It is clear that JLWL is not aggrieved by Jones Lang Wootton

Registered Trade Mark because-
(1) JLWL is a Non-Registered Person and is prohibited by s.

23 of the then VAEA from providing any real estate
services (Prohibition). Hence, JLWL cannot use Jones
Lang Wootton Registered Trade Mark or have a “genuine
99
and present intention” to use that mark within the meaning

of both limbs of McLaren International;
(2) in view of the Prohibition, it cannot be said that JLWL has

an “element of legal interest, right or legitimate
expectation” which is adversely affected by Jones Lang
Wootton Registered Trade Mark as explained in Mesuma
Sports;
(3) as explained in the above sub-paragraph 95(3), JLWL is

bound by SSSB’s Proprietary Interest by virtue of Clause
14 Sub-Licence (1993);
(4) there is no evidence of actual “use” of Jones Lang

Wootton Registered Trade Mark by JLWL in Malaysia
within the meaning of s. 3(2)(a) and (c) TMA - please see
Hyundai Motor Co v. Sun Yuen Rubber Manufacturing Co
Sdn Bhd [2017] MLJU 700, at paragraphs 49 and 50
Section 3(2)(a) and (c) TMA provide as follows -
“3(2) In this Act-
(a) references to the use of a mark shall be

construed as references to the use of a printed
or other visual representation of the mark;
...
(c) references to the use of a mark in relation to

services shall be construed as references to the
use thereof as a statement or as part of a
statement about the availability or
performance of services.”
(emphasis added); and
100
(5) since 2014, JLL Group (including JLWL) has stopped

using Jones Lang LaSalle name and has only used JLL
name, JLL composite mark and JLL Registered Trade
Marks. Jones Lang Wootton Registered Trade Marks
(Other Countries) have also been allowed to expire or be
cancelled. In such circumstances, JLWL cannot be
aggrieved by Jones Lang Wootton Registered Trade Mark.
Q(2). Whether Jones Lang Wootton Registered Trade Mark had

been obtained by fraud
[107] I will now proceed to decide on the merits of the 2 nd Suit on the
assumption that JLWL has been aggrieved by Jones Lang
Wootton Registered Trade Mark.
[108] According to s. 36 TMA, the fact that SSSB is registered as the

proprietor of Jones Lang Wootton Registered Trade Mark shall
be prima facie evidence of the validity of the original
registration of Jones Lang Wootton Registered Trade Mark.
More importantly, SSSB can rely on s. 37 TMA which provides
that Jones Lang Wootton Registered Trade Mark shall be
conclusive after the expiry of 7 years from the date of its
original registration unless one of the three circumstances
pursuant to s. 37(a) to (c) TMA, can be proven by JLWL.
[109] JLWL has relied on s. 37(a) TMA, namely the original

registration of Jones Lang Wootton Registered Trade Mark has
been obtained by fraud on the Registrar.
[110] This court cannot expunge Jones Lang Wootton Registered

Trade Mark pursuant to s. 37(a) TMA because of the existence
of SSSB’s Proprietary Interest - please see the above Part M.
Furthermore, as explained in the above paragraph 100, JLL
101
Group (including JLWL) is estopped from denying the existence

of SSSB’s Proprietary Interest.
[111] I have not overlooked JLWL’s submission based on, among

others, the Federal Court’s judgment in Ho Tack Sien & Ors v.
Rotta Research Laboratorium SpA & Anor; Registrar of Trade
Marks (Intervener) and another appeal [2015] 4 CLJ 20. Ho
Tack Sien has decided that if a ground to remove a registered
trade mark has been proven under s. 37(a) to (c) TMA, the court
has no discretion but to remove the registered trade mark and
estoppel cannot bar such a removal. In this case, as explained in
the above paragraph 110, JLWL has failed to prove fraud under
s. 37(a) TMA so as to expunge Jones Lang Wootton Registered
Trade Mark. As such, JLWL cannot rely on Ho Tack Sien to
support the 2 nd Suit.
R. Should court certify fees for 2 counsel?
[112] SSSB’s solicitors served a bill of costs consisting of the

following items:
(1) getting up fee of RM500,000.00;
(2) certified fee for two counsel of RM1,350,000.00; and
(3) out of pocket expenses (OPE).
[113] Ms. Elaine Yap firstly objected to the certified fee for two
counsel on the ground that the 2 Cases did not require the
services of two counsel. Ms. Yap further submitted that the
getting up fee was excessive.
[114] O. 59 rr. 8(b) and 14(1) RC provide as follows:
102
“r. 8 The Court in exercising its discretion as to costs

shall, to such extent, if any, as may be appropriate in the
circumstances, take into account-
...
(b) the conduct of all the patties, including conduct

before and during the proceedings; ...
r. 14(1) The fees for more than one counsel for one party
or set of defendants shall not be allowed unless the Court
or Judge at the hearing so certifies.”
(emphasis added).
[115] Regarding the court’s power to certify fees for 2 counsel under
O. 59 r. 14(1) RC, I am of the following view:
(1) the court has a discretion pursuant to O. 59 r. 14(1) RC to

certify fees for more than one counsel. The court’s
exercise of discretion is based on the particular facts of the
case at hand and does not constitute a binding legal
precedent from the view point of stare decisis doctrine;
(2) I refer to Barwick CJ’s judgment in the 4-1 majority

decision of the High Court of Australia in Stanley v.
Phillips [1966] 115 CLR 470, at paragraph 16, which
decided that the court may allow fees for more than one
counsel where the court is satisfied that “the nature and
circumstances of the case are such that the services of two
counsel are required if the case is to be presented to the
court in such a manner that justice can be done between
the parties”. It is to be noted that the High Court of
Australia is its apex court; and
103
(3) the court should be wary in certifying fees for more than
one counsel because as explained by Vincent Ng Kim
Khoay J (as he then was) in the High Court in Pen Apparel
Sdn Bhd v. Leow Chooi Khon & Ors [1995] 4 CLJ 606, at
616-617, “the process of litigation is solely to enable a
litigant to have his rights litigated, rather than to permit
him to acquire monetary gains”. Costs is not a remedy in
itself. Excessive costs amounts to an unjustifiable windfall
and impedes a party’s fundamental right of access to
justice as provided in Article 5(1) Constitution - please see
the Federal Court’s judgment in Sivarasa Rasiah v. Sadan
Peguam Malaysia & Anor [2010] 3 CLJ 507, at 514-515.
[116] The 2 Cases raise novel issues regarding s. 23 of the then VAEA
and s. 23 EA (2 Novel Questions). Having said that, I accept
Ms. Elaine Yap’s contention that the nature and circumstances
of the 2 Cases are such that the services of two counsel are not
required for the 2 Cases to be presented to the court in such a
manner that justice can be done between the parties - please see
Stanley. Justice can be attained in the 2 Cases with only one
learned lead counsel for SSSB.
[117] I exercise my discretion under O. 59 rr. 8(b), 16(1), (2), (3) and
19(1) RC to award a sum of RM300,000.00 as getting up fee (in
addition to OPE). This exercise of discretion is based on the
following considerations:
(1) costs is awarded in the 2 Cases on a standard basis and not

on an indemnity basis - please see O. 59 r. 16(2) and (3)
RC;
(2) 2 Novel Questions arise in this matter - please see O. 59 r.

16(1)(a) RC;
104
(3) the court takes into account the Illegality perpetrated by

the Defendants (1 st Suit) - please see O. 59 r. 8(b) RC
(conduct of parties) and Dawama Sdn Bhd v. Mohd Fadel
bin Yusof & Ors [2015] 7 MLJ 1, at paragraph 25;
(4) JLLP had concealed AHCM Documents from the Board

(please see the above paragraph 71). Furthermore, JLLP
had strenuously objected to the Section 165 Application;
(5) the skill, specialized knowledge and responsibility

required of SSSB’s learned lead counsel - please see O. 59
r. 16(1)(b) RC;
(6) the importance of the 2 Cases to SSSB cannot be

overstated - please see O. 59 r. 16(1)(e) RC; and
(7) the 2 Cases involved voluminous documents - please see

O. 59 r. 16(1)(c) RC.
S. Summary of court’s decision
[118] Premised on the above evidence and reasons-
(1) SSSB’s Claim is allowed with costs;
(2) JLLP’s Counterclaim is dismissed with costs; and
(3) the 2 nd Suit is dismissed with costs.
[119] A summary of the above decision is as follows:
(1) SSSB’s Claim should be allowed against APM because due

to APM’s failure to adduce evidence in the 1 st Suit-
(a) the court shall presume the evidence in support of

SSSB’s Claim against APM to be true; and/or
105
(b) an adverse inference under s. 114(g) EA is drawn

against APM;
(2) the court exercises its discretion under the 2 nd Limb of s.

165 EA to order JLLP to produce AHCM Documents which
are relevant to the 2 Cases;
(3) the Email dated 14.10.2015 does not constitute an

“admission” under s. 17(1) EA and its admissibility as
evidence is therefore not barred by s. 23 EA;
(4) the 2 Conditions have been fulfilled for the court to lift the
corporate veil to reveal that -
(a) JLLPC is the alter ego of the Defendants (2 Cases);

and
(b) all the Relevant JLL Companies have acted as one

entity (JLL Group) in the 2 Cases;
(5) the Defendants (1 st Suit) have breached or have unlawfully

circumvented s. 23 VAEA as follows-
(a) the Defendants (1 st Suit) are subsidiaries of JLL Inc.;

and/or
(b) the management and operation of AHCM, JLLP’s

holding company, is controlled by SAP (Non-
Registered Person);
(6) SSSB’s Goodwill has been acquired which entitles SSSB

to sue the Defendants (1 st Suit) for the tort of passing off;
(7) a breach of s. 23 VAEA by the Defendants (1 st Suit) would

not deprive them of their right to defend themselves
against SSSB’s Claim;
106
(8) the Defendants (1 st Suit) have passed off their real estate
services as SSSB’s business by the use of Jones Lang
LaSalle name. The Defendants (1 st Suit) however have not
committed the tort of passing off regarding the use of JLL
mark;
(9) SSSB’s Proprietary Interest in Jones Lang Wootton name

and JLW mark-
(a) has been conferred by Clause 6 Sub-Licence (1993);

and
(b) binds JLL Group, including the Defendants (2

Cases);
(10) the Defendants (2 Cases) are estopped from denying

SSSB’s Goodwill and SSSB’s Proprietary Interest;
(11) SSSB’s Claim does not constitute an abuse of court

process;
(12) JLLP’s Counterclaim is dismissed because -
(a) SSSB has not misrepresented its real estate business

as being associated with the services offered by JLL
Group;
(b) JLLP’s Counterclaim is an afterthought which is

filed to stifle SSSB’s Claim; and
(c) in view of the Illegality, the court will not come to

the aid of JLLP;
(13) the 2 nd Suit is dismissed because -
107
(a) JLWL is not aggrieved by Jones Lang Wootton

Registered Trade Mark within the meaning of s.
45(1)(a) TMA; and/or
(b) in view of, among others, SSSB’s Proprietary

Interest, Jones Lang Wootton Registered Trade Mark
has not been registered by way of fraud on the
Registrar; and
(14) the court declines to exercise its discretion under O. 59 r.

14(1) RC to certify fees for two counsel because the nature
of the 2 Cases are such that the services of two counsel are
not required for the 2 Cases to be presented to the court in
a manner which can achieve justice between the parties.
[120] In closing, I wish to express my gratitude to Dato’ Seri Gopal,

Ms. Chew and Ms. Elaine Yap for their persuasive submission,
without which this judgment is not possible.
(WONG KIAN KHEONG)

Judicial Commissioner
High Court (Commercial Division)
Kuala Lumpur
Dated: 7 MARCH 2018
COUNSEL:
For SSSB - Gopal Ram, Lua Ai Siew, Lim Choon Khim, Chin Yan Leng
& David Yii Hee Kiet; M/s Soo Thien Ming & Nashrah
For the defendants (2 cases) - Chew Kerk Ying, Elaine Yap Chin Gaik
& Chong Tze Lin; M/s Wong & Partners
108
109
110
111

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[2018] 1 LNS 277 Legal Network Series

IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR

[SUIT NO: WA-22IP-5-02/2016]

SINGHAM SULAIMAN SDN BHD

1. APPRAISAL PROPERTY MANAGEMENT SDN BHD

(By Original Action)

JLL PROPERTY SERVICES (MALAYSIA) SDN BHD

SINGHAM SULAIMAN SDN BHD

JONES LANG WOOTTON LTD

SINGHAM SULAIMAN SDN BHD

EVIDENCE: Adverse inference - Failure to adduce any evidence to rebut

EVIDENCE: Judge - Power to put questions or order production -

EVIDENCE: Admissions - Email written without prejudice - Contents of

COMPANY LAW: Lifting of corporate veil - Power of court - Lifting of

TORT: Passing off - Trade marks - Real estate services - Goodwill -

use of Jones Lang Wootton (‘JLW’) Marks - Whether The London

INTELLECTUAL PROPERTY: Registered trade mark - Expungement -

[SSSB’s claim is allowed with costs. JLLP’s counterclaim is dismissed

Case(s) referred to:

Atlas Maritime Co SA v. Avalon Maritime Ltd (The Coral Rose) (No. 1)

Boustead Trading (1985) Sdn Bhd v. Arab-Malaysian Merchant Bank

Colliers International Property Consultants Inc v. Colliers International

Dato Mohamed Hashim Shamsuddin v. Attorney-General, Hong Kong

Gurbachan Singh Bagawan Singh & Ors v. Vellasamy Pennusamy &

Guthrie Sdn Bhd v. Trans-Malaysian Leasing Corp Bhd [1991] 1 CLJ

Mohammed Ali bin Johari v. PP [2008] 4 SLR 1058 (refd)

Palaniappa Chettiar v. Arunasalam Chettiar [1962] 1 LNS 115 (refd)

PP v. Yuvaraj [1968] 1 LNS 116 (refd)

Scandecor Development AB v. Scandecor Marketing AB & Anor [1999]

SPM Membrane Switch Sdn Bhd v. Kerajaan Negeri Selangor [2016] 1

Teng Boon How v. Public Prosecutor [1993] 4 CLJ 545 SC (refd)

The Commissioners of Inland Revenue v. Muller & Co’s Margarine Ltd

Tokai Corporation v. DKSH Malaysia Sdn Bhd [2016] 1 LNS 1092 HC

Legislation referred to:

Companies Act 2016, s. 20

Trade Marks Act 1976, ss. 36, 37(a), (c), 45(1)(a)

Other source(s) referred to:

Evidence - Practice and Procedure, Augustine Paul, 3rd Ed. (2003), at p.

[2] In Civil Suit No. WA-22IP-5-02/2016 (1 st Suit)-

(1) Singham Sulaiman Sdn. Bhd. (SSSB) uses the following

(a) “Jones Lang Wootton” name;

(b) Jones Lang Wootton composite mark has been

(c) “Jones Lang” name; and

(d) “JLW” mark;

(2) SSSB claims that Appraisal Property Management Sdn.

(a) “Jones Lang LaSalle” name; and

(b) “JLL” mark. Jones Lang LaSalle IP Incorporated

In this judgment, APM and JLLP will be referred

(3) JLLP counterclaims against SSSB (JLLP’s Counterclaim)

off its real estate services as being associated with the

[3] In the second case, Civil Suit No. WA-22IP-31-06/2016 (2 nd

[4] The 1 st and 2 nd Suits (2 Cases) have been consolidated. In this

[5] The 2 Cases raise the following questions:

(a) due to APM’s failure to call any witness to rebut

(b) by drawing an adverse inference against APM under

(2) should JLLP be ordered by the court under s. 165 EA to

(3) whether an email dated 14.10.2015 (Email dated

prejudice” negotiations. This issue discusses the scope of