Maxcare Success Sdn. Bhd. v Motionquest Sdn Bhd (WA-22IP-4-01/2021)

The plaintiff filed a claim for trademark infringement against the defendant.

Having considered the evidence after a full trial and hearing submissions of counsel, the court dismissed the plaintiff’s claim.

The plaintiff is the registered proprietor of the registered trademark “ ” (“Plaintiff’s Mark”) for goods in class 4 since 21 July 2008, vide application number 08014209. It sells and manufactures lubricant products for automobiles, motorcycles and heavy equipment.

The defendant is also in the business of selling lubricant oil.

The plaintiff alleged that sometime in 2020, the defendant had used a sign, “ ” (“Maxxoil Mark”), in a Facebook posting and had infringed the Plaintiff’s Mark. The plaintiff claimed the Maxxoil Mark is similar to the Plaintiff’s Mark, and the defendant’s action has caused confusion and deception to the public.

The plaintiff filed this action, claiming reliefs and damages arising from the infringement of the Plaintiff’s Mark. C. The Law

This action is filed under the Trademarks Act 2019 (“TMA 2019”). Section 54 of the TMA 2019, which deals with acts amounting to trademark infringement, states that: “(1) A person infringes a registered trademark if he uses a sign which is identical 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 –

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.” (emphasis added) [8] The plaintiff’s case falls under section 54(2)(b) of the TMA 2019. The plaintiff alleged that the defendant, in the course of its trade, used the Maxxoil Mark which is similar to the Plaintiff’s Mark, in relation to goods for which the Plaintiff’s Mark is registered, resulting in the likelihood of confusion on the part of the public. D. The Plaintiff’s Case [9] The plaintiff’s allegation of trademark infringement is set out in paragraph 21 of the statement of claim. The plaintiff alleged that the defendant had infringed the plaintiff’s trademark in the following manner: “21.1 Defendan dan/atau ejen-ejen dan/atau wakil-wakilnya telah menggunakan tanda nama “MAXXOIL” dan/atau dengan logo tersebut di dalam perdagangan/perniagaannya dan saluran pengagihan yang sama seperti bengkel dan kedai motosikal dan kenderaan-kenderaan lain melalui logo/tanda yang hampir sama dengan Cap Dagang Plaintif iaitu "Maxoil" dengan logo atau yang begitu hampir dengannya sehingga boleh memperdayakan dan/atau menyebabkan kekeliruan dalam perdagangan/perniagaan serta menyumbang kepada kekeliruan yang serius kepada orang awam kerana berada di dalam saluran perdagangan, sasaran pengguna dan pasaran yang sama dengan Plaintif;

21.2 Perniagaan dan/atau produk-produk Defendan sengaja di rekabentuk, dicetak dan menyerupai dengan Cap

21.3 Mengiklankan atau menyebabkan perniagaan Defendan menggunakan tanda nama yang sama dan/atau serupa dan mengeliukan dengan Cap Dagangan Plaintif (selepas ini dirujuk kolektifnya sebagai "Pelanggaran Hak Cap Dagang tersebut").” [10] From the above paragraphs, the plaintiff’s allegations of infringement arise from: a. The defendant’s use of the Maxxoil Mark, which is similar to the Plaintiff’s Mark; and b. The design and advertisement of the defendant’s business and products, which are similar to the Plaintiff’s Mark. The plaintiff alleged that these actions resulted in the likelihood of confusion on the part of the public. [11] The plaintiff further pleaded in paragraph 30 of the statement of claim that the defendant used the Maxxoil Mark on the defendant’s products, and sold the defendant’s products with the Maxxoil Mark, hidden behind the façade of the Plaintiff’s Mark, when in fact the products sold by the defendant are products with the “ ” Mark (“Maxx Performance Mark”). It is not in dispute that the defendant is allowed to use the Maxx Performance Mark. [12] Essentially, it is the plaintiff’s case that the defendant had made use of the plaintiff’s image, goodwill and reputation by using the Maxxoil Mark (which is similar to the Plaintiff’s Mark), to sell products with the Maxx Performance Mark. In doing so, the defendant had infringed the Plaintiff’s Mark. [13] These acts of infringement arise from the publication of four videos on 28 August 2020, 31 August 2020, 15 October 2020 and 21 October 2020 (collectively, “Videos”) on the defendant’s official Facebook page (“Defendant’s Facebook Page”). The Videos contain the Maxxoil Mark, and were shared on the Defendant’s Facebook Page. They were only taken down by the defendant when the defendant was served with the writ of summons for this claim, in January 2021. E. The Defendant’s Defence [14] The defendant’s defence is that the Videos were not created by the defendant. Instead, the defendant merely shared the Videos, which were originally uploaded by a third party, on the Defendant’s Facebook Page. [15] The defendant also claimed it shared the Videos because the end of the Videos showed and complimented the defendant’s Maxx Performance Mark. F. Considerations and Findings Elements of trademark infringement [16] From the provisions in section 54(2)(b) of the TMA 2019, in order to prove infringement of the Plaintiff’s Mark, the plaintiff must establish the following: a. That the Maxxoil Mark is similar to the Plaintiff’s Mark; b. That the defendant trades in goods or services similar to those for which the Plaintiff’s Mark is registered; c. That the Maxxoil Mark was used in the course of the defendant’s trade; d. That the defendant used the Maxxoil Mark without the plaintiff’s consent; and e. That the use of the Maxxoil Mark by the defendant resulted in the likelihood of confusion on the part of the public. [17] I am of the view that all the above elements must be proven before a case for trademark infringement under section 54(2)(b) of the TMA 2019 can be made out. Is the Maxxoil Mark similar to the Plaintiff’s Mark? [18] The issue of the similarities between the Maxxoil Mark and the Plaintiff’s Mark was adjudicated in Kuala Lumpur High Court Suit No. WA- 22IP-46-11/2017 (“Suit IP 46”), filed by the plaintiff against Shift Holdings Sdn Bhd and Tam Wei Han (“Defendants in Suit IP 46”). In Suit IP 46, the plaintiff obtained a judgment on 9 January 2019, pursuant to which the court granted a declaration that the plaintiff is the owner of the Plaintiff’s Mark. The court ordered the Maxxoil Mark, which had been registered by the Defendants in Suit IP 46, to be expunged from the Register of Trademarks. The decision of the High Court was upheld by the Court of Appeal. [19] The judgment was granted after the court found that there is a likelihood of deception and confusion between the Plaintiff’s Mark and the Maxxoil Mark. [20] With the finding and judgment in Suit IP 46, it is beyond dispute that the Maxxoil Mark is similar to the Plaintiff’s Mark. Does the defendant trade in goods or services similar to those for which the Plaintiff’s Mark is registered? [21] The defendant does not dispute that the defendant’s business and trade are similar to the plaintiff’s. Both are in the business of oil lubricants. [22] As such, the defendant does trade in goods and services similar to which the Plaintiff’s Mark is registered. Was the Maxxoil Mark used in the course of the defendant’s trade? [23] To determine whether the third element of trademark infringement has been met – that the Maxxoil Mark was used in the course of the defendant’s trade – the court examined the manner in which the Videos were shared and the content of the Videos. [24] It is undisputed that the Videos contain the Maxxoil Mark, and were shared on the Defendant’s Facebook Page. The defendant claimed that it only shared the Videos because the end of the Videos showed and complimented the Maxx Performance Mark. [25] The question arising is whether the publication of the Videos on the Defendant’s Facebook Page constitutes the defendant’s use of the Maxxoil Mark in the course of the defendant’s trade. [26] To answer this question, the court considered section 54(3) of the TMA 2019, which provides that: “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 for sale or of putting them on the market;

offers or supplies services under the sign;

imports or exports goods under the sign;

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.” [27] I find there to be no evidence before this court that in sharing the Videos on the Defendant’s Facebook Page, the defendant had used the Maxxoil Mark in any of the ways set out in section 54(3) of the TMA 2019. Specifically, there is no evidence that the defendant: a. Applied the Maxxoil Mark to goods or their packaging (section 54(3)(a)); b. Offered or exposed goods for sale under the Maxxoil Mark (section 54(3)(b)); c. Put goods on the market under the Maxxoil Mark (section 54(3)(c)); or d. Stocked goods under the Maxxoil Mark for the purpose of offering or exposing them for sale or of putting them on the market (section 54(3)(d)). [28] As such, the plaintiff has failed to show that the defendant used the Maxxoil Mark in the manner set out in section 54(3) of the TMA 2019. [29] Further, section 54(3) of the TMA 2019 must be read with section 54(2), which states that the use of the Maxxoil Mark must have been in the course of the defendant’s trade. [30] Mesuma Sports Sdn Bhd v Majlis Sukan Negara, Malaysia (Pendaftar Cap Dagangan, Malaysia, interested party) [2015] 2 MLJ 176 is instructive on the question of what constitutes usage in the course of trade. The Court of Appeal held as follows: “[44] We are of the considered view that the learned trial judge was correct in her approach when determining the meaning of the phrase ‘in the course of trade’ when she held that ‘In my view, what amounts to ‘in the course of trade’ for the purposes of the issue in this case is not what can be argued to be its meaning in the strict sense or scope, but what the ordinary perception of the concept in the course of trade is in the eyes of the public’ and in relying on the case of Law Society of England and Wales v Society of Lawyers [1996] FSR 739. [45] It can be said that the purpose of a mark is to indicate that the goods are the goods of the proprietor of such trademark by virtue of manufacture, selection, certifications, and dealing with or offering for sale. In the present case, the least that the respondent did with the sports goods bearing the design was to distribute them for free to Malaysian delegates thereby dealing with the goods. The respondent had legitimate expectations when dealing with the sports goods in that its activities would be affected if the appellant was to be allowed to continue using the design as a trademark.” (emphasis added) [31] Following Mesuma Sports (supra), the court must consider what the ordinary public perception of using a sign “in the course of trade” would be. In the present case, this would mean that the defendant’s trade must necessarily be the sale of products with the Maxxoil Mark, as the allegation of usage relates to the Maxxoil Mark. [32] It is in evidence that at all material times, the defendant was selling products with the Maxx Performance Mark. Further, it is undisputed that the defendant had the right to use the Maxx Performance Mark. Thus, even if there had been any use of the Maxxoil Mark as alleged by the plaintiff, I am of the view that it is misconceived for the plaintiff to argue that the usage of the Maxxoil Mark, while the defendant was selling products with the Maxx Performance Mark had led to an infringement of the Plaintiff’s Mark (i.e. the “Maxoil” mark). For the publication of the Videos to qualify as usage of the Maxxoil Mark in the course of trade, it must be shown that the defendant was selling products with the Maxxoil Mark. There is no evidence before this court that the defendant was selling such products. [33] The court also considered the allegation that the defendant had used the Maxxoil Mark in advertising, pursuant to section 54(3)(h) of the TMA 2019. For the same reason that the court found the allegation of usage of the Maxxoil Mark in the course of trade to be unfounded, the court is of the further view that the allegation that the defendant had used the Maxxoil Mark in advertising to be equally unfounded, as the advertisement must necessarily relate to the sale of products with the Maxxoil Mark. [34] The High Court in 30 Maple SDN BHD v Siti Safiyyah binti Mohd Firdaus Chew [2019] MLJU 424 examined what constitutes advertising: “[18] Additionally by the Defendant having published for sale Infringing Products bearing the Plaintiff’s Products in the social media such as Instagram, Instatories, Facebook, etc. I find that they amount to advertising circulars or other advertisement representing the Plaintiff as registered proprietor or user using the Plaintiff’s Trademarks in breach of s.38(1)(b) of the TMA. Although the words “advertising circular” and “advertisement” used in ss. 38(1)(b) and (c) of the TMA are not statutorily defined therein, I hold that the ordinary meaning ascribed to the verb “advertising” such as that described in the Black’s Law Dictionary (8th edn.) p.168 is applicable to interpret the provision, viz. :-

the action of drawing the public’s attention to something to promote its sale;

(ii) the business of producing and circulating advertisements. Consequently, the Defendant’s offering for sale of the Infringing Products in her social media platforms amounted to the use of the Plaintiff’s Trademarks on an advertisement. It is undoubtedly to promote the sale of the Infringing Products …” (emphasis added) [35] A similar finding was made in Behn Meyer Europe GmbH & Anor v Lee Chen Chao & Ors [2023] MLJU 264, where the High Court held as follows: “[16] From the Facebook postings, the Whatsapp representations, the invoice and the physical sale of the Defendants’ Products at the premises of Supreme Construction, I would hold that the Plaintiffs have established the other two prerequisites for establishing trademark infringement, more so when the products that the Defendants advertised for sale and actually sold to the Plaintiffs all carried the Marks and/or the 2nd Plaintiff’s name and address.” (emphasis added) [36] It is clear from these cases that in order to prove the use of an infringing mark for advertising, the infringing mark advertised should relate to the sale of products that carry the infringing mark. In the present case, although the Maxxoil Mark was shown in the Videos, what was sold by the defendant were products that carry the Maxx Performance Mark, not the Maxxoil Mark. [37] The defendant’s witness, Jason Wong Hoong Kuan (“DW1”) explained in Q&A 23 of his witness statement that the reason why the Videos were posted on the Defendant’s Facebook Page was because the Videos showed Maxx Performance products: “23. Why did the Defendant post those videos on the Defendant’s facebook? The Defendant believed the videos dated 15 October 2020 and 21 October 2020 contain something good on Maxx Performance products.” [38] It is an established fact that the end of the Videos showed the Maxx Performance Mark, and on this basis, the court accepts DW1’s testimony that the reason why the Videos were shared was to promote products with the Maxx Performance Mark. As such, the plaintiff’s claim that the defendant had used the Maxxoil Mark in advertising, in the course of the defendant’s trade (the sale of products with the Maxx Performance Mark) is misconceived. [39] As a final point on this issue, the court notes that it is also in evidence that the defendant posted an announcement to warn the public against purchasing products with the Maxxoil Mark. DW1 testified as follows: “16. Please refer to pages 61-64 of the "Ikatan Dokumen Bersama Tambahan (Bahagian B)", why did the Defendant post those messages on the Defendant's facebook page? On October 2020, we noticed that someone was selling MAXXOIL products in the market. As far as we know, MAXXOIL US company has made an announcement that MAXX PERFORMANCE are the official products rebranded in Malaysia with immediate effect since 24 Jun 2020. As such, there should not have any MAXXOIL product selling in Malaysia market since then to compete the MAXX PERFORMANCE products. In this connect, we posted the announcements to warn the public from purchasing any MAXXOIL product in the market as those available MAXXOIL products in the market are counterfeit products. We wanted to highlight to the public that the differences between the counterfeit products and our products can be identified through the brand names and the bottle shape of the products.

Please refer to page 46 of the "Ikatan Dokumen Bersama Tambahan (Bahagian B)", why did you lodge the police report? I lodged the police report to protect the interest of the Defendant from any liability regarding the MAXXOIL products in the market. The Defendant only sells MAXX PERFORMANCE products at all material times. MAXX PERFORMANCE products are rebranded from MAXXOIL products in US. As such, the Defendant does not sell any MAXXOIL products in Malaysia and no MAXXOIL products should be sold in Malaysia market.” (emphasis added) [40] The act of the defendant in posting announcements on the Defendant’s Facebook Page to warn the public against buying products with the Maxxoil Mark indicates that the defendant did not support products with the Maxxoil Mark. Consequently, it would not have been likely for the defendant to use the Maxxoil Mark in the course of the defendant’s trade. Further, as products with the Maxx Performance Mark are a rebrand of products with the Maxxoil Mark, it would not make commercial sense for the defendant to have promoted products with the Maxxoil Mark, an act that would be detrimental to its business of selling products with the Maxx Performance Mark. [41] Considering the totality of the evidence before the court, the court finds that the publication of the Videos on the Defendant’s Facebook Page does not constitute the defendant’s use of the Maxxoil Mark in the course of the defendant’s trade. Did the defendant use the Maxxoil Mark without the plaintiff’s consent? [42] It cannot be disputed that the Videos containing the Maxxoil Mark were shared by the defendant on the Defendant’s Facebook Page without the plaintiff’s consent. [43] However, with the finding that the sharing of the Videos does not constitute the use of the Maxxoil Mark in the course of the defendant’s trade, the issue of the plaintiff’s consent is no longer relevant. Did the use of the Maxxoil Mark by the defendant result in the likelihood of confusion on the part of the public? [44] The plaintiff’s contention is that the defendant’s use of the Maxxoil Mark has caused the likelihood of confusion between the plaintiff’s product and the defendant’s products. [45] The court finds that the likelihood of confusion on the part of the public must arise in relation to the products for which the infringing mark was used. In this case, the allegation is that the Maxxoil Mark was used in the course of the defendant’s trade. [46] However, the court had earlier found that the sharing of the Videos on the Defendant’s Facebook Page does not constitute usage of the Maxxoil Mark in the course of the defendant’s trade. The court further found that the defendant’s trade is the sale of products with the Maxx Performance Mark, and that there is no evidence of products with the Maxxoil Mark being sold by the defendant. With this finding, the likelihood of confusion would not arise. [47] During submissions, the plaintiff also argued that it has a valid cause of action of passing-off against the defendant. However, from my consideration of the statement of claim, I find that the plaintiff had not pleaded the cause of action of passing-off. I note that under the heading “C. BUTIR-BUTIR-BUTIR PELANGGARAN HAK CAP DAGANG” in the statement of claim, only elements related to trademark infringement under section 54 of the TMA 2019 had been pleaded. [48] In Roadstar-Anseah Investments Pte Ltd v Thian Hock Electric Sdn Bhd [1989] MLJU 1, the court disregarded the claim of passing-off as the plaintiff had failed to plead the elements of passing-off. The court held as follows: “I shall first examine the question of passing-off. In Erven Warnick B.V. & Anor. v. J. Townend & Sons (Hull) Ltd. and Anor. [1980] RPC 31 Lord Diplock (at p. 93) mentioned five characteristics which must be present in order to create a valid cause of action for passing-off. The five characteristics are:

a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. … … the plaintiff in the present case must plead that it has marketed its goods in Malaysia and that it has acquired reputation and goodwill and the act of the defendant would injure the business and goodwill of the plaintiff in Malaysia. Mr. Nagarajah has rightly pointed out that the plaintiff has not pleaded in the statement of claim that it was carrying on business in respect of the product in Malaysia and that its product had acquired substantial reputation and goodwill in this country … … Since the plaintiff has failed to plead the essential elements of passing-off in the statement of claim or in the affidavit in support of the ex-parte application, the plaintiff has no cause of action on passing-off … (emphasis added) [49] In the present case, the elements of passing-off have not been sufficiently pleaded in the statement of claim. The plaintiff did not plead how the defendant had made misrepresentations to customers in the sale of products with the Maxxoil Mark, and that such actions are calculated to injure the business or goodwill of the plaintiff, and caused damage to the plaintiff. [50] Further and in any event, the elements of passing-off have not been proven, as the plaintiff has not shown that the defendant was selling products with the Maxxoil Mark at the material time. The defendant’s products (with the Maxx Performance Mark) could not be argued to have been passed off as products with the Plaintiff’s Mark. G. Decision [51] To summarise, the court considered the elements of trademark infringement under section 54(2)(b) of the TMA 2019, and found that although the Maxxoil Mark is similar to the Plaintiff’s Mark (first element) and the defendant trades in goods or services similar to those for which the Plaintiff’s Mark is registered (second element), the sharing of the Videos on the Defendant’s Facebook Page does not constitute the use of the Maxxoil Mark in the course of the defendant’s trade (third element). [52] Following the finding on the third element – that the defendant did not use the Maxxoil Mark in the course of its trade – the questions of whether the defendant used the Maxxoil Mark without the plaintiff’s consent (fourth element) and whether the use of the Maxxoil Mark by the defendant resulted in the likelihood of confusion on the part of the public (fifth element) are no longer relevant. [53] As the plaintiff has failed to meet all elements required to prove trademark infringement and to prove that the defendant has committed the tort of passing-off, the court dismissed the plaintiff’s claim, with costs. Dated 28 November 2024 - sgd - ADLIN ABDUL MAJID Judge High Court of Malaya Kuala Lumpur Counsel: Plaintiff : Tengku Irene of Messrs. Natasha & Co Defendant : Tee Kuo Ying of Messrs. Hisham Yoong - KC Lim