In Malaysia, the issue of when “use” of another company’s brand, logo, or trademark amounts to infringement has now been clarified by the courts. A recent High Court landmark case, decided under the Trademarks Act 2019, confirmed that mere “use” of a sign in the course of trade without the owner’s consent, even if not “used as a trademark” can still constitute infringement. This marks a significant shift in Malaysian trademark law that all businesses, especially online platforms, must take note of.
A Landmark Ruling on Trademark ‘Use’ in Malaysia
In Malaysia Airlines Sdn Bhd & Anor v AirAsia Com Travel Sdn Bhd (KLHC Suit No. WA-22IP-14-03/2022), Malaysia Airlines and Firefly brought an action against AirAsia Com Travel, the operator of the AirAsia SuperApp.
The dispute arose because the AirAsia SuperApp displayed Malaysia Airlines’ and Firefly’s registered trademarks when listing and selling their flight tickets. AirAsia contended that it was only using the marks in a descriptive manner simply to show that the flights were operated by those airlines and not as its own trademark.
However, the High Court rejected AirAsia’s argument. It held that “any commercial use of another’s trademark in the course of trade” can amount to trademark infringement under the new Trademarks Act 2019. The Court clarified that “use” is no longer limited to applying a mark as a brand or source identifier but has broadened to include acts set out under Section 56 of the Trademarks Act 2019.
How the Law Has Shifted
Under the Trademarks Act 1976 (old act), liability only arose if a company used another party’s mark as its own trademark to identify or promote its own goods or services. This meant intermediaries like travel agents and marketplaces could often defend themselves by arguing that they were merely referring to the original brand owner.
However, the position shifted with the introduction of the Trademarks Act 2019 (new act), Section 54(3) of the Trademark Act 2019 now provides that infringement occurs where there is unauthorised “use” of a registered trademark includes, among others:
a) applying the mark to goods or their packaging;
b) offering or exposing goods for sale under the mark;
c) putting goods on the market under the mark;
d) stocking goods under the mark for the purpose of offering or exposing them for sale, or of putting them on the market;
e) offering or supplying services under the mark;
f) importing or exporting goods under the mark;
g) using the mark on an invoice, catalogue, business letter, business paper, price list, or other commercial document—regardless of the medium; or
h) using the mark in advertising.
In short, the Trademarks Act 2019 has broadened the scope of what counts as “use,” meaning that even applying a mark on packaging, invoices, advertisements, or online platforms without permission of the trademark owner may now amount to trademark infringement in Malaysia. Businesses should review their marketing and sales practices to ensure compliance and avoid costly disputes.
If you are unsure whether your business is at risk, or if you need guidance on protecting and enforcing your trademark rights, our team at FLEXLY IP is here to help. Contact us today to schedule a consultation.
