MAXCARE SUCCESS SDN. BHD. Motionquest Sdn. Bhd.

MAXCARE SUCCESS SDN. BHD. Motionquest Sdn. Bhd.

The Court held that republication of a video containing the offending sign on the defendant's commercial Facebook page constituted 'use in the course of trade' under s54(2) because the page existed for commercial promotion of the defendant's products; further, the facts supported an inference that the defendant had reason to believe it was not authorised to use the Maxxoil sign, thereby engaging s54(4) and treating the defendant as having infringed the plaintiff's registered trademark. The tort of passing off failed for inadequate pleading and lack of proof that defendant's products were passed off as plaintiff's.

Citation
W-02(IPCv)(W)-1149-07/2023 (Mahkamah Rayuan)
Parties
Appellant / Plaintiff: Maxcare Success Sdn Bhd; Respondent / Defendant: Motionquest Sdn Bhd
Court
IPCv
Jurisdiction
Malaysia
Judgment Date
29 January 2026
Case Number
W-02(IPCv)(W)-1149-07/2023 (Mahkamah Rayuan)
Procedural Posture
Trademark Infringement and Passing Off (civil) / Court of Appeal Decision on Appeal From High Court
Outcome
Appeal allowed in part; High Court order set aside in part; permanent injunction granted; costs awarded; damages/account of profits refused
Legal Topics
Use in the Course of Trade, Section 54 Trademarks Act 2019, Deeming Provision (s54(4)), Pleadings Requirements (order 18 R7(1)), Social Media Advertising
Source Language
Malay/English
Intellectual Property Trade Marks Law Tort (passing Off) Civil Procedure Use in the Course of Trade Section 54 Trademarks Act 2019 Deeming Provision (s54(4)) Pleadings Requirements (order 18 R7(1)) +1 more

Case Brief

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Parties

Maxcare Success Sdn Bhd

Appellant / Plaintiff

Motionquest Sdn Bhd

Respondent / Defendant

Procedural Posture

Trademark Infringement and Passing Off (civil) / Court of Appeal Decision on Appeal From High Court

Legal Issues

  1. 1 Whether republication of a video on defendant's Facebook page constituted 'use in the course of trade' under s54(2) Trademarks Act 2019
  2. 2 Whether s54(4) deeming provision is engaged where distributor repackages imported goods and republishes material containing an offending sign
  3. 3 Whether the tort of passing off was sufficiently pleaded and proved

Ratio Decidendi

The Court held that republication of a video containing the offending sign on the defendant's commercial Facebook page constituted 'use in the course of trade' under s54(2) because the page existed for commercial promotion of the defendant's products; further, the facts supported an inference that the defendant had reason to believe it was not authorised to use the Maxxoil sign, thereby engaging s54(4) and treating the defendant as having infringed the plaintiff's registered trademark. The tort of passing off failed for inadequate pleading and lack of proof that defendant's products were passed off as plaintiff's.

Court Disposition

Appeal allowed in part; High Court order set aside in part; permanent injunction granted; costs awarded; damages/account of profits refused

Orders

  • Allow appeal in part
  • Set aside the High Court order insofar as it dismissed trademark infringement