Case: Mohammad Faisol Ahmad Tajuddin & SPM Telecommunications (M) Sdn Bhd vs. Malik Streams Corporation Sdn Bhd [2024] CLJU 831
Key Details of the Case:
In a notable decision by the Kuala Lumpur High Court, plaintiffs Mohammad Faisol Ahmad Tajuddin and SPM Telecommunications (M) Sdn Bhd alleged trademark infringement against Malik Streams Corporation Sdn Bhd.
The case centred on the importation of tobacco products bearing the "Hans Chaap Tobacco" trademark into Malaysia, despite the goods being intended for export to a third country. The court was tasked with determining if this act constituted "use in the course of trade" under Section 54 of the Trademarks Act 2019.
Legal Arguments and Rulings:
The plaintiffs argued that the defendant's importation of goods bearing the "Hans Chaap Tobacco" trademark infringed on their trademark rights, as these goods were introduced into Malaysia's territory. The defendant contended that since the goods were merely in transit and not sold within Malaysia, it did not amount to trademark infringement.
The court, referencing previous case such as Philip Morris Brands Sari v. Goodness for Import and Export & Ors [2018] 7 MLJ 350, concluded that the importation for transit purposes still constituted "use in the course of trade" and ruled in favour of the plaintiffs, finding the defendant liable for trademark infringement.
Case Excerpt:
“[24] I further find that, given the provisions of the act and cases hitherto mentioned, in my view, the term "in the course of trade" should be interpreted widely and liberally and not be straightjacketed into a single scenario where goods must exist physically in the marketplace before being assumed to be such. Section 54(3)(c) already provides for "use" to include "puts goods on the market under the sign" and yet there are seven other forms of use other than that that are not necessarily dependent on physically presence of the goods in the marketplace. A simple example of that is limb (h), "uses the sign in advertising".
Practical Implications:
This ruling has significant implications for businesses involved in the import-export trade in Malaysia. It highlights that even goods in transit can lead to trademark infringement if they bear a registered trademark.
Business owners must ensure that their import-export practices do not infringe on existing trademarks, even if the goods are not intended for sale within Malaysia. This case underscores the importance of conducting thorough trademark checks and obtaining necessary permissions when dealing with branded goods.
My Comments:
This case serves as a stark reminder that intellectual property laws can have far-reaching implications, even for goods merely passing through a jurisdiction. The High Court's decision underscores the broad interpretation of "use in the course of trade," demonstrating that importers cannot evade trademark laws simply because the goods are in transit.
For business owners, this ruling highlights the necessity of robust compliance measures and due diligence in international trade. It also emphasizes the importance of strategic legal planning to safeguard against potential IP infringements, ensuring that all aspects of trademark law are meticulously observed.
If you have any questions regarding the article, please feel free to contact our managing partner, Eugene Yeong.
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