In a recent decision the Malaysian High Court in the case of Abercombie & Fitch Co & Anor V Fashion Factory Outlet KL Sdn Bhd & Ors  4 MLJ 127, held that sale of goods bearing a trade mark over the internet or using a website is use of the trade mark.
In the case, the first and second plaintiffs were retailers of the popular American brand Abercrombie & Fitch and Abercrombie. The second plaintiff was a wholly owned subsidiary of the first plaintiff and the registered proprietor of the Abercrombie & Fitch and Abercrombie trade marks in Malaysia for articles of clothing, footwear, headgear all included in Class 25.
In addition to numerous stores throughout the US and Canada, the plaintiffs operate three e-commerce websites at www.abercrombie.com, www.abercrombiekids.com and www.hollisterco.com, which sell their products to various countries worldwide including Malaysia.
The five defendants were companies connected, associated and/or affiliated to each other and all incorporated in Malaysia and their common directors and were in the business of retailing, wholesaling and distributing garments, textiles and fashion goods.
Following several trap purchases by the plaintiff at the defendant's outlets, the enforcement division of the Ministry of Domestic Trade and Consumer Affairs conducted a search and seizure of goods bearing the plaintiff's marks at the defendant's premises. A total of 2240 units of various articles of clothing were seized from three of the defendant's premises. Abercrombie & Fitch then filed this action for a permanent injunction against the defendants for trade mark infringement and passing off on grounds that the defendants blatantly infringed their marks.
As one of its defences, the defendants put into issue the alleged non-use of the second plaintiff's registered trade marks Abercrombie & Fitch and Abercrombie. The court held that the allegation of non-use in this instance was irrelevant to the claim for trade mark infringement as the defendants did not challenge the validity of the plaintiff's registrations of its Abercrombie & Fitch and Abercrombie marks. The plaintiff's marks have been registered for more than seven years and are to be regarded as valid and conclusive in all legal proceedings.
Nevertheless, to clear any doubt on the matter, the court went on to say that it was incorrect and misleading to say that Abercrombie & Fitch has not used the registered trade marks in Malaysia. It held the three e-commerce websites operated by the plaintiff that sell their products to customers in various countries around the world including Malaysia constituted use of the trade mark.
Abercrombie & Fitch's products bearing the marks were available for purchase over the internet using these websites. These websites were maintained and continue to be maintained by the plaintiff and are accessible to all customers who have access to the internet including customers and potential customers in Malaysia.
The court held that "If the website is intended to be used to seek world wide trade with a view towards commercial gain (as in the present case) its activities fall squarely within the category of 'doing business over the internet' and may constitute use for the purpose of trade mark proceedings".
This case thus serves as authority that the sale of goods bearing a trade mark over the internet or via a website (as opposed to mere access to a website without additional steps by the owner to bring the mark into use) is recognized as use of the trade mark in Malaysia, which is an important development in trade mark law in Malaysia.
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