Malaysia: Wide scope of activities for trade mark use affirmed

The concept of establishing trade mark use plays a central role in brand protection. In addition to forming one of the requirements in trade mark infringement actions, establishing trade mark use mitigates the risk of expungement proceedings due to non-use.

In Mesuma Sports Sdn Bhd v National Sports Council Malaysia; Trade Marks Registrar of Malaysia (Interested Party), the Federal Court of Malaysia affirmed the Court of Appeal's wide interpretation given to "use in the course of trade" in establishing trade mark rights.

The appellant was a company appointed to manufacture and supply sports clothing bearing a "tiger stripes design" for the respondent, a non-profit statutory body. The appellant registered a mark similar to the trade mark under the Malaysian Trade Marks Act claiming to be the first user of the trade mark in the course of trade. At first instance, the respondent plaintiff obtained judgment that the trade mark had been registered wrongfully on the basis that it was the first user of the trade mark. The respondent's claim was upheld by the Court of Appeal.

The issues raised before the Federal Court centred on the question of who can rightfully claim to be the proprietor of the trade mark. The appellant claimed to be the first user of the trade mark by virtue of its manufacture and distribution of sports apparel bearing the trade mark. Although it was the creator of the trade mark, the respondent plaintiff had not been involved in the usual commercial activities, such as sales, pertaining to the trade mark.

In finding for the respondents, the Federal Court endorsed the wide interpretation of "use in the course of trade" referred to in the Act. Such use includes non-profit activity and the respondent's acts of appointing manufacturers to make and supply sports apparel bearing the subject trade mark. As such, the respondent was the first user of the trade mark.

The Court's decision affirms the wide interpretation adopted in respect of activities that constitute trade mark use. In the context of trade mark protection, companies may potentially rely on acts of appointment or engagement of a manufacturer as evidence of "use of the trade mark in the course of trade". It appears further that any promotional or business activities undertaken prior to actual use of the trade mark on a product may constitute sufficient "use" to stake a claim as proprietor of a trade mark.

Chew Kherk Ying	Adeline Lew

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