Honda Giken Kogyo Kabushiki Kaisha (also known as ‘Honda Motor Co Ltd’) v MForce Bike Holdings Sdn Bhd & Anor [2021] 6 MLJ 594

Honda Giken Kogyo Kabushiki Kaisha (also known as ‘Honda Motor Co Ltd’) v MForce Bike Holdings Sdn Bhd & Anor [2021] 6 MLJ 594

Court of Appeal (Putrajaya) 

Copyright – Infringement – Artistic Works 

1. The Appellant, Honda Giken Kogyo Kabushiki Kaisha (also known as Honda Motor Co Ltd), a multinational corporation and one of the largest manufacturers of motorcycles.
2. The First Respondent (MForce Bike Holdings Sdn Bhd) was the primary distributor of SYM motorcycles. The Second Respondent was the exclusive import agent and assembler of SYM motorcycles in Malaysia.
3. The Appellant sued the Respondents for infringing the copyright of its artistic works, specifically the two-dimensional drawings and three-dimensional forms of the ‘Honda EX-5’ and ‘Honda EX-5 Dream’ motorcycles.
4. The Appellant claimed the Respondents’ SYM E-Smart motorcycle was a reproduction of the EX-5 works or a substantial part thereof.
5. Previously, the High Court dismissed the Appellant’s claim, finding that while copyright subsisted in the EX-5 works, there was no infringement by the Respondents.
6. An earlier appeal concerning the subsistence and ownership of copyright (IPCV Appeal 2) was already dismissed by the Court of Appeal and the Federal Court refused leave to appeal, confirming that the EX-5 works were protected by copyright and owned by the Appellant. 
7. The present appeal by the Appellant only concerned the issue of infringement. The Respondents cross-appealed regarding the non-infringement issue and the statutory defence under subsection 13A and 13B of the Copyright Act 1987 (‘the Act’).

1. Whether the Respondents infringed the Appellant’s copyright by reproducing the EX-5 works or a substantial part thereof, without license or consent, contrary to paragraph 13(1)(a) of the Act.
2. Whether the Respondents could successfully rely on the statutory defences under sections 13A and 13B of the Act.

(1) Whether the Respondents infringed the Appellant’s copyright by reproducing the EX-5 works or a substantial part thereof, without license or consent, contrary to paragraph 13(1)(a) of the Act.

(a) To establish copyright infringement by reproduction under paragraph 13(1)(a) of the Act, the Appellant must prove on the balance of probabilities of these two essential elements, sufficient objective similarity between the copyright work and the infringing work, and a causal connection, whereby the copyright work must be the source of the infringing work. 

(b) The Court cited the test in the landmark case of Francis Day & Hunter Ltd and Another v Bron and Another [1963] Ch 587 which established the two-pronged test of subjective similarity and a causal connection. Besides, the Court also cited the Federal Court judgment of Mohd Syamsul bin Md Yusof & Ors v Elias bin Idris [2019] 4 MLJ 788 whereby this apex Court adopted the Francis Day test and clarified the shifting burden of proof. 

(c) The Court stated that the originality and similarity must be determined by looking at the work as a whole rather than through individual sub-divided parts.

(d) The infringement covers both direct and indirect copying (copying a “copy” of the original work). Establishing that an infringing work was derived from an intermediate source which itself was copied from the original still constitutes a causal connection.

(e) Once sufficient objective similarity and prior access to the work are established, the burden shifts to the Respondent to prove that the work was an independent creation.

(f) The Court found sufficient objective similarity between the SYM E-Smart and the EX-5 motorcycle by conducting a visual comparison between those two. This matter had been referred by the Court to the case of Elster Metering Ltd & Anor v Damini Corp Sdn Bhd & Anor [2011] 8 MLJ 253 which guided the Court on comparing features and assessing similarity.

(g) A causal connection was established because the SYM E-Smart was modelled after the “Sanda Boss” motorcycle, which the Court determined was derived from the EX-5 works.

(2) Whether the Respondents could successfully rely on the statutory defences under sections 13A and 13B of the Act.

(a) The statutory defences under sections 13A and 13B of the Act (which limit copyright protection for certain industrial designs) do not apply retrospectively to artistic works where copyright subsisted before the 1996 Amendment Act came into force on 1 September 1999.

(b) The Court stated that the EX-5 works enjoyed copyright protection in Malaysia from 1 October 1990, the 1996 amendments (sections 13A and 13B) were inapplicable.

(c) The Respondents’ reliance on these sections as a defense was deemed “devoid of merits” due to the timing of copyright subsistence.

1. The Appellant’s appeal was allowed.
2. The Respondents’ cross-appeal was dismissed.
3. The High Court order regarding the copyright infringement was set aside.
4. The Appellant’s claim for relief was allowed for injunctions (to restrain infringement, reproduction, manufacturing/distribution and importation of parts), an inquiry as to damages (or account of profits), interest and costs.

1. To prove infringement by reproduction of an artistic work, a plaintiff must establish two elements on a balance of probabilities which are sufficient objective similarity between the two works and a causal connection between the copyright work and the infringing work.
2. Copyright infringement covers both direct and indirect copying. Copying a copy of the original work is still an infringement, provided there is an unbroken chain of causation from the original work to the allegedly infringing product.
3. The originality of an artistic work should be judged by looking at the work as a whole, not by dissecting it into individual, commonplace parts in an attempt to deny originality (the ‘mosaic’ approach).
4. Minor differences or alterations in the infringing product will not save a defendant from liability where a substantial part has been copied and a causal link is proven.
5. Statutory provisions that seek to limit copyright protection (such as sections 13A and 13B of the Copyright Act 1987) will generally not apply retrospectively to works in which copyright already subsisted prior to the amendment’s commencement date, as determined by savings and transitional clauses in the amending legislation.