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MALAYSIA: MARKETING GOODS VIA INSTAGRAM IS STILL A TRADE MARK INFRINGEMENT

29th May, 2019

On 1 March 2019, High Court of Malaya at Kuala Lumpur delivered a judgement to the matter of 30 Maple Sdn. Bhd. (hereinafter referred to as the “Plaintiff”) v Siti Safiyyah Binti Mohd Firdaus Chew, an individual (hereinafter referred to as the “Defendant”).

The Plaintiff is a private limited incorporated under the laws of Malaysia and is engaged in manufacturing, supplying, and promoting the sale of clothing under several trade marks. The Plaintiff is the registered proprietor of several trade marks in Class 25 for clothing, footwear, and headgear, i.e. Trade Mark Registration Numbers No. 2016066466 for the mark “DUCK” (a series mark), No. 2015057890 for the mark “DUCKSCARVES” (a series mark), and No. 2015057891 for a device mark of a duck (hereinafter referred to as “Plaintiff’s Trade Marks”). The Plaintiff asserted with evidential argument at the trail that they had manufactured, supplied, distributed, and sold clothing bearing the Plaintiff’s Trade Marks since 2014 in Malaysia.

The Plaintiff later came to discover that the Defendant was actively advertising, distributing, promoting, and selling headscarves and snow cap bearing the Plaintiff’s Trade Marks of which were not the Plaintiff’s products (hereinafter referred to as “Infringing Products”). The Defendant engaged in the aforementioned activities via her Instagram account (hereinafter referred to as “Infringing Page”).

In the efforts to further establish the alleged advertising, distributing, promoting, and selling of the Infringing Products, the Plaintiff made a trap purchase of the Infringing Products from the Defendant. The trap purchased products were then confirmed to be not of the Plaintiff’s products. The Plaintiff then proceeded to send a cease and desist letter through their counsel demanding the cease of the Infringing Products. Initially ignoring the correspondence sent by the Plaintiff’s counsel, the Defendant subsequently replied via email that she had taken down all postings relating to the Infringing Products from the Infringing Page. The Defendant however failed to reveal the source of the Infringing Products as well as failing to compensate the Plaintiff. It is later discovered that the Defendant had once again re-commenced the advertising, distributing, promoting, and selling of the Infringing Products via Instagram and Facebook accounts. With the evidence obtained from the social media sites as well as the trap purchase, the Plaintiff proceeded to file a suit. However, the Defendant submitted that she had not case to answer.

Based on the evidence adduced by the Plaintiff, the Court was in the view that the Infringing Marks looked identical when compared with the Plaintiff’s Trade Marks. It Court also found that the Defendant’s activities of advertising, distributing, promoting, and selling was done without a license, consent, and/or authority from the Plaintiff. Not only the Defendant engaged in advertising, distributing, promoting, and selling of the Infringed Products, she had also continued to do so on the social media sites despite receiving an injunction.

The High Court therefore found that the Defendant had indeed infringed the Plaintiff’s Trade Marks pursuant to Section 35 of the Trade Mark Act 1976 in which the Defendant had breached the Plaintiff’s exclusive rights that bars a third party from using the Plaintiff’s Trade Marks without prior approval.