In the high-stakes arena of patent litigation, securing a judgment of infringement is often only half the battle. The second, equally critical half is the quantification of victory.
For patent owners in Malaysia, a plain reading of the legislation presents a confusing anomaly. While most Commonwealth jurisdictions explicitly offer a choice between damages (compensation for loss) and an account of profits (gain-stripping from profits of infringement), the Malaysian Patents Act 1983 is silent on the latter.
Patents Act 1983
Upon successfully proving patent infringement under the Patents Act 1983 (“Patents Act”), a patent owner is entitled to a range of remedies which are prescribed in Section 60(1) of the Patents Act, which reads:
“Injunction and award of damages
60(1) If the owner of the patent proves that an infringement has been committed or is being committed, the Court shall award damages and shall grant an injunction to prevent further infringement and any other legal remedy”.
Based on a literal interpretation of the provision, due to the word ‘shall’ the Court is mandated to award:
- damages;
- injunction (e.g. court order to compel infringers to immediately and permanently stop manufacturing and selling infringing products); and
- any other legal remedy.
Account of profits is not mentioned at all in the Patents Act, in stark contrast to the legislation of peer jurisdictions like the United Kingdom[1] and Singapore[2]. The relevant statutes in both jurisdictions explicitly list both damages and account of profits as remedy options, as well as additional clauses disallowing a plaintiff from claiming both remedies simultaneously.
The Malaysian Patents Act contains no such clauses, leading to the question: Does the remedy exist in Malaysia and, if so, can a plaintiff claim both award of damages and account of profits or must elect only one?
An acknowledged right
Despite the statutory silence, Malaysian courts have in numerous cases granted to successful plaintiffs the right to elect an award of damages or an account of profits, without referring specifically to Section 60(1) of the Patents Act.
An example may be seen in a recent High Court decision in Kendek Products Sdn Bhd v Dip Chan Manufacturing Sdn Bhd [2024] 11 MLJ 75.
Rules of the game
One pick, zero mulligans
Based on the well-established common principle in Malaysia, where both award of damages and account of profits are available, a plaintiff has to pick between one of them and once decided, no takebacks are allowed so as to avoid double recovery.
In Karen Yap Chew Ling v Binary Group Services Bhd and another appeal [2023] 4 MLJ 792, a case on breach of confidence, the Court of Appeal set aside the High Court’s order granting both damages and an account of profits to the successful plaintiff.
In Manjung Aquatic Sdn Bhd (In liquidation) & Anor v Mohamad Zahid bin Putera & Ors [2025] MLJU 2876, the High Court rejected the plaintiffs’ claim for general damages as the plaintiffs had earlier elected for an account of profits.
An informed choice
In Kingtime International Ltd & Anor v Petrofac E&C Sdn Bhd [2020] 11 MLJ 141, the High Court held that the court has a discretion under Order 24 rule 3(1) and/or rule 7(1) of the Rules of Court 2012 to grant a post-trial discovery order to enable a successful plaintiff to make an informed election between an assessment of damages and an account of profits. This is reflective of the principle that a party generally cannot be compelled to choose between the two remedies until they possess sufficient, readily available information. This ensures the election is an informed decision rather than a mere gamble or speculation.
Reconciling the word ‘shall’
Since Section 60(1) of the Patents Act states that the courts “shall award damages”, does this seemingly mandatory language eliminate the availability of an account of profits as a remedy in cases of patent infringement when considered together with the principle of election discussed above?
It is interesting to note that the High Court in Billion Prima Sdn Bhd & Anor v Nuctech Co Ltd & Anor [2019] CLJU 1006 held that despite the word ‘shall’ in Section 60(1) of the Patents Act, courts have the discretion to not grant an injunction in patent infringement cases.
Numerous judicial precedents illustrate this principle including the Federal Court decision in Tebin bin Mostapa v Hulba-Danyal bin Balia & Anor [2020] 4 MLJ 721 where it was held that the interpretation of any statutory provision must be guided by the purposive approach to ensure the legislative object is advanced and to prevent a literal reading from leading to an absurd or unjust outcome. In Benjamin William Hawkes v PP [2020] 5 MLJ 417, the Federal Court held that the word ‘shall’ is not always mandatory.
It is also interesting to note that in the Federal Court case of Lim Phin Khian v Kho Su Ming @ Seng Meng [1996] 1 MLJ 1, one of the presiding judges opined that where great inconvenience or injustice will follow as a result of requiring strict compliance with a statute, the courts will be disinclined to hold that the provision imposes an obligation even though it may be couched in mandatory terms.
Where does this leave us?
At present, this issue is yet to be considered by the highest court of the land. Hence, there is no guidance addressing this conundrum. However, in light of the authorities discussed earlier, coupled with the term “any other legal remedy” in Section 60(1) of the Patents Act, an account of profits may well be a legitimate remedy available to patent owners who are successful in patent infringement actions.
This article is authored by our Partners, Lee Lin Li, Ng Kim Poh, and Associate, Erin Yew Pui Yi. The information in this article is intended only to provide general information and does not constitute any legal opinion or professional advice.
[1] Sections 61(1) & (2) Patents Act 1977 (United Kingdom)
[2] Section 67(1) & (2) Patents Act 1994 (Singapore)
Written by:
Lee Lin Li
Partner
T: +603 2050 1898
Ng Kim Poh
Partner
T: +603 2050 1870
Erin Yew
Associate