MAXCARE SUCCESS SDN. BHD. v Motionquest Sdn. Bhd. (W-02(IPCv)(W)-1149-07/2023)

that the cause of action for the tort of passing ought not have been dismissed, as the cause of action has been adequately pleaded;

that the republication of the video containing the offending sign on the defendant’s Facebook page was sufficient to constitute use in the course of trade within the meaning of section 54(2) of the Trademarks 25 Act 2019, and hence all the elements that were necessary to prove trademark infringement have been established. Maxcare Success v Motionquest 5 Summary of this Court’s Decision [12] On the cause of action for passing off, we found that:

it had not been adequately pleaded in the statement of claim, and could not be raised either in the after-trial submissions or in the appeal before this court; and 5

there is no basis for us to disturb the finding of fact by the trial judge that passing off had not been established, as the evidence at trial showed that neither the offending sign nor the plaintiff’s mark had been applied to the defendant’s products. [13] The republication of the videos on the defendant’s Facebook page 10 infringed the plaintiff’s trademark in the manner provided under sections 54(2)(b) and 54(4) of the Trademarks Act 2019 because:

the re-posting of the video containing the offending sign on the defendant’s Facebook page constituted “use in the course of trade”, as existence of that Facebook page was to promote products sold by 15 the defendant and hence can only be for a commercial purpose. This was the case despite the fact that the offending sign was not applied to the product labelling or packaging of goods sold by the defendant; and

the facts of the case support the inference that the defendant had 20 reason to believe that he was not authorised to use the plaintiff’s trademark in Malaysia. The re-posting by the defendant of the video with the offending sign to the defendant’s Facebook page triggered the deeming provision in section 54(4) of the Trademarks Act 2019, Maxcare Success v Motionquest 6 and consequently the defendant is treated as having infringed the plaintiff’s trademark. [14] These conclusions are explained in further detail in the following paragraphs. PASSING OFF 5 [15] The general rule on pleadings is contained in order 18 rule 7(1) of the Rules of Court 2012, which require all the material facts upon which a party relies upon to prove its case to be set out in the pleadings. [16] Order 18 rule 7(1) of the Rules of Court 2012 provides as follows:

(1) Subject to the provisions of this rule and rules 10, 11 and 12, every pleading 10 shall contain, and contain only, a statement in a summary form of the material facts on which the party pleading relies for his claim or defence, as the case may be, but not the evidence by which those facts are to be proved, and the statement shall be as brief as the nature of the case admits. [17] In the present case, there was no express reference in statement of claim 15 to the tortious cause of action for passing off. In paragraph 38 of the statement of claim, the plaintiff sought for certain declarations from the court, but these declarations did not include any reference to the defendant being liable for passing off. Paragraph 38 of the statement of claim stated as follows:

Plaintif menuntut satu perintah untuk satu deklarasi bahawa: 20 38.1 Defendan telah melanggar cap dagangan berdaftar No. 08014209 iaitu "Maxoil”;

38.2 Defendan telah mengelirukan perdagangan, perniagaan dan barangan Defendan sebagai perdagangan, perniagaan dan barangan Plaintif atau sebagai berkaitan atau berhubungan dengan Cap Dagangan Plaintif dan 25 logo Plaintif;

38.3 Defendan telah melakukan tindakan perihal dagangan palsu akibat daripada tindakan-tindakan perlanggaran di atas; Maxcare Success v Motionquest 7 38.4 Defendan dengan perlanggaran dan tindakan salahnya yang dinyatakan di atas, telah secara menyalahi undang-undang mengganggu perdagangan dan perniagaan Plaintif. [18] The tort of passing off had not been raised at any time before the after-trial submissions. Significantly, the issues to be tried that was settled in the 5 course of case management conferences at the High Court did not specify the elements of the tort of passing off as issues to be tried. [19] There was also no express reference to any misrepresentation, one of the key elements to be proven in the tort of passing off. [20] For these reasons, we agree with the trial judge that the tortious cause of 10 action for passing off had not been adequately pleaded in the statement of claim, and could not be raised either in the after-trial submissions or in the appeal before this court. [21] On the facts, the trial judge found that passing off had not been made out, and there is no basis for us to disturb this finding of fact, as the evidence at trial 15 showed that neither the offending sign nor the plaintiff’s mark had been applied to the defendant’s products. [22] For these reasons, the appeal on passing off was dismissed. TRADEMARK INFRINGEMENT AND USE IN THE COURSE OF TRADE [23] It was common ground that the offending sign was contained in a video 20 that the defendant re-published on its Facebook page. According to the evidence received at trial, the video had been taken down shortly after the suit had been commenced at the High Court. Maxcare Success v Motionquest 8 [24] The key—and in our view determinative—question in this appeal is whether the defendant had used the offending sign in the course of its trade. Does the re-publication of the video on the Facebook page amount to use in the course of trade for the purposes of section 54(2) of the Trademarks Act 2019? [25] We found that the plaintiff has successfully proven infringement of its 5 mark because:

the re-posting of the video containing the offending sign on the defendant’s Facebook page constituted “use in the course of trade”, as existence of that Facebook page was to promote products sold by the defendant and hence can only be for a commercial purpose. This 10 was the case despite the fact that the offending sign was not applied to the product labelling or packaging of goods sold by the defendant;

the facts of the case support the inference that the defendant had reason to believe that he was not authorised to use the plaintiff’s trademark in Malaysia. The re-posting by the defendant of the video 15 with the offending sign to the defendant’s Facebook page triggered the deeming provision in section 54(4) of the Trademarks Act 2019, and consequently the defendant is treated as having infringed the plaintiff’s trademark. [26] These conclusions are explained in detail in the following paragraphs. 20 The Applicable Principles [27] Section 54 of the Trademarks Act 2019 is the key provision prohibiting use of trademarks by persons other than its rightful proprietor. Two different prohibitions are provided for: Maxcare Success v Motionquest 9

under section 54(1), the infringing use is in respect of an identical sign on identical goods or services — that is, exactly the same sign on the same class or type of goods or services as what the registered trademark covers; whereas

under section 54(2), the infringing use is in respect of an identical sign 5 on similar goods or services, or a similar sign on identical or similar goods or services, that is likely to cause confusion for consumers. [28] The precise wording of section 54 is as follows: 54 Acts amounting to infringement of registered trademark

A person infringes a registered trademark if he uses a sign which is identical 10 with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor.

A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign— 15

that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or

that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public.

For the purposes of this section, a person uses a sign if he—

applies it to goods or their packaging;

offers or exposes goods for sale under the sign;

puts goods on the market under the sign;

stocks goods under the sign for the purpose of offering or exposing them 25 for sale or of putting them on the market;

offers or supplies services under the sign;

imports or exports goods under the sign; Maxcare Success v Motionquest 10

uses the sign on an invoice, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or

uses the sign in advertising.

A person who— 5

applies a registered trademark to any material used or intended to be used for labelling or packaging goods; or

uses a sign in advertising or on any document described in paragraph

(3)(g), shall be treated as a party who uses the material which infringes the registered 10 trademark if when he applied the trademark, he knew or had reason to believe that the application of the trademark was not duly authorized by the registered proprietor of the trademark or a licensee. [29] As can be seen, subsection (3) defines “use”, and would clearly include the republication of a video containing the offending mark on the defendant’s 15 website, on the basis that this definition would encompass electronic media accessible on the Internet. The defendant is engaged in a commercial activity, and one can only surmise that the purpose of its Facebook page is to provide visibility to, and to promote, the products that the defendant sells. The Facebook page is thus indisputably a “commercial document” within the meaning of 20 section 54(3)(g). [30] Learned counsel for the appellant cited the case of 30 Maples v Siti Saffiyah binti Mohd Firdaus Chew, which was decided under the predecessor Act. It was held in that case that the publication for sale of infringing products bearing the plaintiff’s marks in social media such as Instagram, Instatories and 25 Facebook would amount to advertising and hence would be caught by the prohibition under the section 38(1)(b) and (c) of the repealed Trade Marks Act

This case is instructive, because it establishes that social media publications promoting the offending products amounted to “advertising”. Maxcare Success v Motionquest 11 [31] Under section 54(3)(h), a person would be considered to be using a mark for the purposes of infringement provisions of section 54(1) and (2) if the mark is used “in advertising”. As such, the case of 30 Maples supports the position that a post on Facebook would constitute advertising within the meaning of section 54(3)(h), and would therefore amount to “use” of the mark under 5 sections 54(1) and (2). [32] That, however, was not sufficient for the plaintiff to prove its case. It must also be shown that the use by the defendant of the offending sign was “in the course of trade”. [33] This Federal Court in Mesuma Sports v Majlis Sukan Negara [2015] 9 CLJ 10 125 had occasion to consider the meaning of the term “in the course of trade”. This case was also decided under the repealed Trade Marks Act 1976, but it is nonetheless instructive because the same expression used in the predecessor Act found its way into the Trademarks Act 2019. [34] The plaintiff respondent in that case was a statutory body, and was not a 15 for-profit entity. It was advanced for the defendant appellant that use in the trademark sense can only be achieved through the manufacturing and sale of goods, and goodwill that can only be achieved through business activities such as “manufacturing, supplying and selling” such goods. The Federal Court rejected any such notion, and found that the activities by the plaintiff in 20 obtaining sponsorships and granting merchandising and other licensing rights over the marks were sufficient to constitute use in the course of trade: [66] The plain and natural interpretation of the phrase "in the course of trade" does not bear out the proposition advanced by learned counsel for the defendant that the use in "a trade mark sense" can only be achieved through the manufacturing and sale 25 of sports attire with the tiger stripes design embodied and goodwill can only be achieved through such business activities. We are quite unable to agree with his Maxcare Success v Motionquest 12 contention. From a perusal of the provisions of s. 3 of the Act, we can find not a word in it to support the restrictive interpretation of learned counsel. An implication of learned counsel's contention, as pointed out by the Court of Appeal in the present case, and we respectfully agree, would mean disregarding other forms of use in the course of trade such as obtaining sponsorships, granting merchandising rights and 5 other licensing rights over the use of the tiger stripes design. With respect, we would be wrong if we were to hold so. [35] It will be apposite at this point to consider section 54(4) of the Trademarks Act 2019. Pursuant to this subsection, a person who uses a registered trademark on the packaging of goods or uses an offending mark in any advertising or any 10 document described in section 54(3)(g) will be considered to have infringed the relevant registered trademark if he “knew or had reason to believe” that he was not authorised to use the mark. [36] Two observations may be made of section 54(4):

first, it is a deeming provision. It creates an irrebuttable presumption 15 of law that there has been infringement of the relevant trademark if the person using the mark knew or had reason to believe that he was not authorised to do so; and

second, it is not the only means by which contravention may be established. If there is proof of use of the mark in the course of trade, 20 then infringement may be established under sections 54(1) or (2). Our Decision [37] In our judgment, the re-posting of the video containing the offending marks on the defendant’s Facebook page constitutes “use in the course of trade” because the existence of that Facebook page can only be for a commercial 25 purpose. It is there to promote the products sold by the defendant. Even if the offending sign was not applied to the product labelling or packaging of goods Maxcare Success v Motionquest 13 sold by the defendant, the appearance of the offending sign in the video posted to its Facebook page was sufficient to constitute contravention of section 54(2)(b) of the Trademarks Act 2019, as the Facebook page itself exists for the purposes of trade. [38] In addition, we are also of the view that section 54(4)(b) is engaged on the 5 facts of the present case. [39] Counsel for the respondent readily acknowledged that the manufacturer of the Maxxoil products is located in the United States. As a result of prior litigation, its products cannot be sold under the Maxxoil mark in Malaysia, because that mark has been held to be sufficiently similar to the plaintiff’s 10 MaxOil registered mark. It is for this reason that the Maxxoil products are repackaged and sold with the Maxx Performance branding in Malaysia. Because of this, it could not have escaped the defendant’s attention that it is not permitted to sell products bearing the Maxxoil sign in Malaysia, for why else would the defendant, as the distributor in Malaysia of products manufactured 15 by Maxxoil in United States, be required to repackage the products with the Maxx Performance branding? [40] Thus, the facts in this case support the inference that the defendant had reason to believe that he was not authorised to use the offending sign in Malaysia. With this, section 54(4) becomes triggered, and the defendant is 20 treated as having infringed the plaintiff’s trademark.

[41] We allow the plaintiff’s appeal in part, with costs of RM20,000 here and below, such costs to be subject to an allocatur. We set aside the order of the Maxcare Success v Motionquest 14 High Court, and order a permanent injunction against the defendant in accordance with the terms prayed for in paragraph 39 of the statement of claim. [42] However, we decline to order damages or any account as to profits. This is on the basis that the evidence did not show that the defendant had applied the plaintiff’s mark or the Maxxoil sign to any of the products that had actually 5 been sold by the defendant. 29 January 2026 Azizul A Adnan 10 Judge of the Court of Appeal Malaysia 15 For the appellant: Ms Nur Dianah Mohamed Zubir & Ms Reza Natasha Redzawan—Messrs Natasha & Co. For the respondent: Ms Tee Kuo Ying—Messrs Hisham Yoong – KC Lim